THE FUTURE OF BRANDS – MULTIMEDIA MARKS
Innovative promotion strategies as well as technological advancements shape new types of trademarks. Some of them are created through combining into one designation the elements characteristic of other types of marks. Multimedia marks serve as an example.
MULTIMEDIA MARKS
In previous issues we have already discussed i.a. sound and motion marks. Multimedia marks benefit from advantages they both provide which allows those marks to simultaneously influence several senses of the potential customer.
But does more mean better in every case? Read on and learn what to pay attention to when developing the concept of and registering a multimedia mark.
GENERAL INFO
Due to the fact that multimedia marks contain both visual and audio elements, it is necessary to present them to the relevant office in a form that makes it possible to simultaneously recognise all of them - only then does the perception of the whole mark occur.
Careful! Registration of a multimedia mark always requires the submission of an audiovisual file. It is not possible to present it in an "indirect" way, as is the case with e.g. motion marks (presentation of successive still frames) or audio (presentation of musical notation), including by combining both of those methods. The application cannot be accompanied by a description.
Multimedia marks – representation method:
- Indirect representation
Description: (information on motion, change of picture, sound, method of performing etc.)
[Above are visible representations of two different marks – motion and sound ones; both were registered in their categories (see IP Insights The Future of Brands – Motion and Sound Marks)]
- Representation through audiovisual file
[Held by: EBRO FOODS, S.A.; Number of exclusive right registered with EUIPO: EUTM 018056800]
Visual element + Sound element
REPRESENTATION IN PRACTICE
Due to their complex nature, it is extremely difficult to present multimedia marks in commerce in a traditional way (as is apparent i.a. from the attempts to illustrate them in this material). After all, the name "unconventional marks" did not come out of nowhere!
This does not mean, however, that such marks are useless! Entrepreneurs are still discovering new ways to present them to buyers – not just through file sharing.
REPRESENTATION IN PRACTICE
Some of the potential ways how multimedia marks can be communicated outside of the typical digital environment were pointed out by the European Union Intellectual Property Office in its decision of the Board of Appeals of March 7, 2023 (application R1490/2022-5). These include i.a.:
1) using a QR code,
2) employing augmented reality technology (AR) or
3) utilising digital packaging.
Which of those methods (and how) can be effectively used, to constitute the use of mark, may depend on various factors – it is worth verifying such issues beforehand.
MULTIMEDIA MARKS – EXAMPLES OF REGISTRATIONS
Trademark „E.T - Electronic Technology – Earth Technology – Extreme Technology”
Held by: RENAULT s.a.s.
Number of exclusive right registered with the EUIPO: EUTM 018502040
Trademark
Held by: Netflix, Inc.
Number of exclusive right registered with the EUIPO: EUTM 018140429
Trademark „RADION SYSTEM TAKTYCZNEJ ŁĄCZNOŚCI POLA WALKI”
Held by: TRANSBIT sp. z o.o.
Number of exclusive right registered with the PPO: R.343856
WHAT TO CONSIDER?
We can call multimedia marks complex marks. They consist of numerous different elements. In some cases, these can include words, images, motion, and sound (of spoken words, of other noise, or totally abstract).
The above impacts both the extent of necessary analysis for the purpose of trademark clearance search as well as the registration procedure itself.
Before registering a multimedia mark, you will have to verify whether it is identical or similar to previously used signs in all relevant areas (in relation to each element appearing in the mark). Conflict even in one of those areas may result in refusal of registration!
At the same time, a multimedia mark offers the applicant certain possibilities. If it consists of several elements, the distinctive character of even just one of them may allow the registration of the whole mark.
CAREFUL!
The above does not mean that in the absence of conflict with earlier trademarks, registration of a multimedia mark is straightforward. Two major risks await applicants.
First, it may turn out that the mark consists entirely of non-distinctive elements – the fact that sounds, words, graphics, and/or movement appear in the mark does not in itself mean that the sign will always be suitable for indicating the origin of goods and services. On this basis, protection was denied i.a. to a designation depicting changing amounts, shapes (size), colors, and containing a sound (a triple bell):
Refusal of registration of the designation „€”
[Representation below simplified and only general (selected frames), the application was, as required, accompanied by an audiovisual file]
Start of sound
Applicant: Wintrado Technologie AG [EUTM 017889338]
Class of goods/services: 9, 36, 38, 41 i 42
CAREFUL!
Second, it may happen that the claimed designation contains too many elements, thus failing to meet the requirements of clarity and precision. This is the case when the representation of the sign does not make it possible to indicate in a repeatable manner – self-contained, easily accessible, intelligible, durable and objective – the subject of protection.
Remember, however, that the lack of clarity and precision is not simply a result of the length of the sign, the intensity of the audio or the number of images!
SUMMARY
Multimedia marks are currently the most advanced types of designations available. Undoubtedly, they still hide many possibilities – the number of registered trademarks of this type is not long. The first entrepreneurs who find the most effective ways to use them in commerce will certainly be able to benefit from this a great deal.
HAVE MORE QUESTIONS? CONTACT THE AUTHOR!
Maciej Majewski
Attorney-at-law, Senior Associate