Registration of multimedia trademarks can be a challenge taking into account that they are relatively new forms of marks as well as the lack of sufficient practice in this area.
One interesting case, reported by Anna Maria Stein for IPKat focuses our attention on the following multimedia EU trademark application in the form of 22 sec. video for the Super Simon charter, filed by the Dutch company Chiever B.V., covering goods and services from classes 16, 33, and 41:
The EUIPO refused registration based on art. 7 (1)(b) of the EUTMR- lack of distinctiveness. According to the Office:
The mark applied for would be perceived, by the average consumer in the EU, as a gripping animation or drawing video, but not as a sign of origin which will distinguish the undertaking covered by the mark applied for from other undertakings.
The complexity of the representation of the individual elements (which are not summarised at the end of the story, as usual in TV spots, and show a clear commercial origin), plus the fact that the public is accustomed to a different ‘format’ TV spot, means that the relevant consumer in the trademark will not see more than a joy narrative. In other words, the remembrance of the story cannot replace the need for a link to an indication of origin.
The decision was appealed and the Board of Appeal overturned it entirely. According to the Board, it is sufficient for only one of the elements in the multimedia mark to be distinctive in order for the mark to be accepted as a whole. In the case, at hand, the main superhero character is distinctive per se.
With the evolution of technology, it cannot be excluded that multimedia brands are also effectively placed on goods. Moreover, digital packaging is already a reality.
First of all, it is not necessary for the trademark to provide precise information on the identity of the manufacturer of the product or of the service provider. It is sufficient that the trademark enables the relevant public to distinguish the goods or services designated by it from those having a different commercial origin (21/01/2011, T 310/08, executive edition, EU:T:2011:16, § 22) and to conclude that all the goods or services which it designates have been manufactured, marketed or supplied under the control of the proprietor of that mark, to whom responsibility for quality can be attributed (10/10/2008, T 387/06, Representation of a pallet, not published, § 27).
Thus, by requiring that the multimedia mark applied must make clear who the producer or supplier is, the examiner has imposed a requirement that is not in line with the case law.
It is not intended that a trademark should refer to goods and services. That is exactly what a trademark should not do. From the moment a trademark refers directly and exclusively to certain goods and services, the network becomes descriptive or non-distinctive.
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