The sum of the cardamom regarding the new EU Trademark Regulation

In Sweden, we have a saying that translates “the sum of the cardamom”. Even though the origin of the saying is probably lost in the mists of time, the saying is still used for expressing a conclusion or outcome, often being a result of a prolonged exposure of information.

This is our “sum of the cardamom” regarding last week’s change in the EU Trademark Regulation.

On October 1st, the EU Trademark Regulation changed, quite a lot. The updated EU Trademark Regulation was a continuation of the changes that entered into force in March last year where, among other changes, the name of the Office was changed from OHIM to EUIPO (European Union Intellectual Property Office) and the CTM (Community Trademark) was renamed EUTM (EU Trademark).

Now it was time for implementing the rest of the changes.

The information regarding the new Trademark Regulation is characteristically complicated, even in EUIPO’s attempts to be educational (found here).

Here follows our interpretation with a simplified/tailored version of this simplified EUIPO video of the changes in the regulation. It is worth a watch, we will explain it afterwards.

Still with us?

Firstly, let us disregard from the impact these changes will have on us as a trademark agent (that is, of course, our headache and not yours), it is the impact this will have on you as a trademark holder that we will be focusing on.

Arguably, the most notable change is “an abolition of the graphical representation requirement”.

But what does that mean in practice?

The bottom line
The old regulation was based on an “analogue” approach to trademark protection, meaning basically only trademarks that could be presented on a piece of paper. The abolition of what has been a very limiting aspect of the trademark application process will now result in brand new possibilities, since you are now able to apply for trademarks that are only in digital format.

EUIPO calls it a “what you see is what you get” system.

This means that starting October 1^st, the signs in a trademark application can “be represented in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

This has resulted in that we have the following set of old and new trademark categories:

• Word
• Figurative
• Pattern
• Shape
• Position
• Colour (single)
• Colour (combination)
• Sound
• Multimedia
• Motion
• Hologram

Most of these categories can be perceived as new, but quite a few have actually been possible to register for quite a while. The difference the abolition of graphic representation means is that the applications will (hopefully) be much more of a fair presentation of what it is meant to protect. We feel this change in the regulation is a welcome evolution that brings trademark law up to speed with how modern businesses communicate today.

However, the change is quite reactive in the sense that it includes aspects of brands that has been possible to create and communicate for many years now. Does this showcase a more lean forward approach to trademark regulation, and will the concerned trademark offices be more proactive in the future? Only time will tell.

Our own response to the new regulation
At Ports Group, we decided early that we wanted to explore the possibilities of this new regulation.

We designed a rotating version of the logo mark found in our registered figurative trademark (i.e. our green circle with the green dot in it), to be registered as a “motion mark”. The purpose of the motion mark is not to replace the figurative mark, but to be used in marketing contexts where appropriate.

Our application was submitted immediately when the new regulation entered into force, on the eve of Sunday the 1^st of October. The application included a video of the actual logo rotating, something that has not been possible before the change in regulation.

Our application was mentioned in the Swedish trademark magazine Brandnews (found here) and an interview with us was published on their website (found here) that will also be featured in their upcoming print version.

For more information on the new EU Trademark Regulation, please contact your dedicated contact at Ports Group, or simply get in touch at +46 31 720 20 00 or fill out the contact form below!