At the beginning of 2019, UK Trade Mark law was updated in order to implement EU Directive 2015/2436 and to further harmonise the laws of the EU Member States. One of the changes abolished the requirement for a sign to be graphically represented on trade mark application forms. Marks can now be submitted to the UKIPO in multiple formats, including digitally. This makes it easier to apply for non-traditional marks such as sound, motion, multimedia and hologram marks. It also means that those viewing the register can more easily understand the mark for which protection is claimed. For example, sounds marks could previously be represented as musical notes (fulfilling the now redundant graphical representation requirement), but now a sound file can be submitted instead, meaning that anyone viewing the register can actually listen to the sound mark rather than simply looking at a musical score. In the UK, the following electronic file formats are now acceptable: JPEG, MP3, MP4.
At the time of writing, we are not aware of anyone that has registered a sound mark using digital format in the UK. The Toshiba Corporation has, however, taken advantage of the change in law and registered the first ever motion mark (i.e. a moving logo) in digital format in the UK in respect of a wide range of goods and services. The mark can be viewed on the register here.
Notwithstanding the above, the most popular or common marks are still likely to be traditional word and image marks. Toshiba’s registration nevertheless represents a landmark moment in UK trade mark history and is likely to pave the way for other marks of its kind.
Interestingly, the London Deaf Information Service has applied for a multimedia mark for a three second video clip which can be viewed here. It is yet to be seen if this mark will proceed to registration.
At present there is unfortunately no facility on the UKIPO database to specifically search marks that utilise electronic file formats and there are no separate categories to search for motion and hologram marks. It is hoped that this will be available in time. It is also worth noting that for the purposes of conducting clearance searches, there are added challenges and difficulties in doing this in respect of non-traditional marks. More sophisticated searching tools will no doubt be developed in the future to keep pace with changing times.
Whilst the change in law has made it easier to apply to register non-traditional marks, it is important to remember that such marks must still fulfil other criteria in order to achieve protection. For example, marks must still be distinctive and must truly be perceived by the public as an indication of origin distinguishing one trader’s goods and services from those of others. In addition, whatever format is chosen for representing a mark, it must still fulfil the “Sieckmann” criteria and be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. Digital formats will no doubt assist with satisfying this criteria.