European Business Law, the fourth volume in our series, shows how the European authorities simultaneously abolish all restrictions on access to and exercise of economic activities and support the growth of domestic markets, through the harmonization the internal legislation or the enactment of genuinely unified regulations.

European Business Law

Article 2 of Directive No 2008/95 provided a non-exhaustive list of examples of signs capable of constituting a trade mark: “words, including personal names, designs, letters, numerals, the shape of goods or their packaging”.  Article 3 of Directive No 2015/2436 has added “colors and sounds” to that list. Those additions bring the directive into line with the case of the EU judicature.
Although Di …

Types of signs

Article 2 of Directive No 2008/95 provided a non-exhaustive list of examples of signs capable of constituting a trade mark: “words, including personal names, designs, letters, numerals, the shape of goods or their packaging”.  Article 3 of Directive No 2015/2436 has added “colors and sounds” to that list. Those additions bring the directive into line with the case of the EU judicature.

Although Directive No 2015/2436 no longer necessarily requires a graphic representation, it still requires that the sign be “represented in a manner which is clear, precise, self-contained, easily accessible, intelligible, durable and objective” . A sign must be capable of being identified with certainty . Where the sign does take the form of a graphic representation, it must be based on images, lines or characters, so it can be clearly and precisely described. It must also be self-contained, easily accessible, intelligible, durable and objective . The representation, by a design alone, without indicating the size or the proportions, of the layout of a retail store of a goods manufacturer, may be registered as a trade mark for services relating to those goods even if they do not form an integral part of the offer for sale .

An olfactory sign cannot be a trade mark where its chemical formula is not sufficiently intelligible and the description of odor is not sufficiently clear, precise and objective . The European Court also excludes registration as a Community trade mark of an olfactory sign , whilst the OHIM (Office of Harmonization in the Internal Market) had previously accepted it . 

Combining a sample of color and a verbal description of it may meet the conditions of a clear and precise graphic representation, in particular where it is with an internationally recognized identification code . Likewise, colors or combinations of colors may give rise to a clear and precise graphic representation where they include a systematic arrangement associating the colors in a pre-determined and uniform way . 

Lastly, a sound sign may be regarded as a trade mark where it is represented graphically by means of a stave of musical notes and where the applicant has been careful to specify in his application for registration that the sign in question must be understood as a sound sign .

In the course of decisions, European case law has tried to specify the signs which fall within the scope of the protection even if they are not capable of being perceived visually whilst the directive lists rather two-dimensional or three-dimensional signs which can be represented by means of letters or written characters or by a picture. In this respect, the Court of Justice has indicated that although the directive does not mention signs which are not in themselves capable of being perceived visually, it does not expressly exclude them: they may therefore be trade marks as long as they can be represented graphically. See Case C-273/00 Sieckmann [2002] ECR I-11737, LawLex200900001366JBJ: for an olfactive sign associated to a chemical formula and a description through written words, the filing of an odor sample or by a combination of these elements; Case C-104/01 Libertel Groep BV [2003] ECR I-37936, LawLex200900000317JBJ for a color.

According to the Court of Justice, a sound sign represented graphically by means of a description using the written language, such as an indication that the sign consists of the notes going to make up a musical work, or the indication that it is the cry of an animal, or by means of a simple onomatopoeia, without more, or by means of a sequence of musical notes, without more, cannot constitute a trade mark, while a sign represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary accidentals, is regarded as a trade mark: Case C-283/01 Shield Mark [2003] ECR I-14313, LawLex200900001406JBJ.

It must be perceived unambiguously and in the same way.

Case C-273/00 Sieckmann [2002] ECR I-11737, LawLex200900001366JBJ.

Case C-421/13 Apple Inc., Judgment of 10 July 2014, LawLex201400002221JBJ.

Case T-305/04 Eden v OHIM [2005] ECR II-4705: The description "smell of ripe strawberries" which could refer to several varieties and therefore to several distinct smells, is neither unequivocal nor precise and does not eliminate all elements of subjectivity in the process of identifying and perceiving the sign claimed.

See, regarding the "smell of fresh-cut grass": OHIM, 2nd Board of Appeal, 11 February 1999, Case No R0156/1998.2.

Case C-273/00 Sieckmann [2002] ECR I-11737, LawLex200900001366JBJ; C-104/01 Libertel [2003] ECR I-3793, LawLex200900000317JBJ, regarding the registration of the color orange as a trade mark for telecommunications goods and services; Case C-104/01 Libertel Groep BV [2003] ECR I-37936, LawLex200900000317JBJ for the registration of the color orange for telecom services and products.

Case C-49/02 Heidelberger Bauchemie [2004] ECR I-6129, LawLex200900000977JBJ, regarding the registration of the colors blue and yellow as a trade mark for certain products used in the building trade.

European Business Law

232. Types of signs

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

232. Types of signs

Demandez un accès gratuit au contenu exclusif Livv – juristes d’entreprise

Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

Demandez un accès gratuit
au contenu exclusif Livv – juristes d’entreprise