EU reforms could open the way for smells and noises to be trade mark protected, says expert

The European Parliament backed a new directive designed to "approximate" the different national trade mark laws (70-page / 538KB PDF), and a new regulation that updates existing Community trade marks rules (202-page / 1.19MB PDF) on Tuesday. The changes had already been endorsed by the EU's other law-making body, the Council of Ministers.

The new regulation is likely to come into force within the first few months of 2016, whereas the directive will need to be transposed into national laws, although it could be early 2019 before the new rules have been adopted.

Trade mark law specialist Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said that one of the main changes, both under the new regulation and directive, will be the removal of the need for a trade mark to be capable of graphic representation. Instead it will be sufficient that the proposed trade mark can be “represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor”.

"This change will make it easier for businesses to obtain non-conventional trade marks, such as for smells, noises and music," Connor said. "Businesses should reassess their trade mark portfolios and assess whether there are opportunities to expand the protection of business assets that previously would not qualify for trade mark registration."

According to a non-binding recital set out in the new regulation "a sign should be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective". Similar provisions are contained in the directive.

Among the other changes being implemented under the new regulation is a change in terminology. A Community trade mark will in future be referred to as a European trade mark. In addition, the existing Office for Harmonisation in the Internal Market (trade marks and designs) will change its name to the European Union Intellectual Property Office.

"Businesses should be aware of the potential rise in scams that might arise from these name changes," Connor said. "Unfortunately there are unscrupulous operators in the market that send out fake renewal notices and use official-sounding language to scare businesses into paying up. It is likely that scammers will see these changes in the names of Community trade marks and the OHIM as an opportunity to play on the fact businesses may be aware of these reforms and perpetuate a fraud."