By Ulrike Gruebler (Hamburg) and Gaspard Debiesse (Paris)

To stay ahead of the competition, players of the fashion industry have a permanent need to renew their communication strategies, including the use of new technologies and media.  “Sensory marketing”, the art of playing on the various senses of the customers (sound, smell, taste, touch, in addition, or in lieu of, vision), has lately become an important trend.  Retailers like Abercrombie & Fitch use their customers’ senses as a communication tool:  the same fragrance is diffused in every stores worldwide, so customers instantly associate this scent to the products sold inside the stores.

The Community trademark system and the national trademark systems of the majority of the EU member states have been reluctant to register so-called unconventional trademarks, notably on the ground that marks must be capable of being “graphically represented”.  In 2003, the Paris Court of Appeals rejected a trademark application for the taste of “artificial strawberry aroma”.  In 2012, the French Supreme Court invalidated a Louboutin red sole registration notably because neither the form nor the color of the sole was graphically represented in a way that it could be clearly visually depicted (i.e. in perspective).  The French trademark office has also refused applications for smells although various means of graphic representation had been used (such as colored matrices, or chromatography in gas phase).

In 2014, the European Court of Justice ruled in Apple’s Flagship Stores case that the graphical representation of the layout of a retail store may be registered as a trademark, provided that the sign is distinctive (Apple Inc V. Deutsches Patent und Markenamt, C-421/13).  The ECJ judgment rectified a contrary decision issued by the German Patent and Trademark Office (DPMA).  The graphic representation criteria remained however at the heart of the ECJ’s reasoning.

In order to modernize European trademark law and adapt it to current business practices, the EU Trademark Reform Package will now abolish such requirement once and for all.  Both the new Trademarks Directive (Directive (EU) 2015/2436) and the European Union Trademark Regulation (Regulation (EU) 2015/2424) affirm in harmony that to provide legal certainty and more flexibility “a sign should be permitted to be represented in any appropriate form using generally available technology, and thus not necessarily by graphic means…”.  Both texts however immediately limit the foregoing:  “…as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective” (incorporating the ECJ decision in Sieckmann V. Deutsches Patent und Markenamt, C-273/00).

From a legal point of view, national trademarks and European Union trademarks (EUTMs) shall from now on consist in:

any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:

(b) being 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 is one of the most important aspects of the EU Reform Package.  Once the amendments have come into force, it will be easier for brand owners to apply for sound and colour marks (now expressly mentioned), but also holograms, shapes or movements.  Formerly a musical score was deemed an appropriate graphical representation of a music mark; offices may now accept a digital sound file, therefore allowing not only musical sentences but also mere sounds, as long as they are distinctive.  The same applies to motion marks, for which a video file may be submitted.  But will this change really provide new brand strategies for the fashion industry?

In France, the trademark reform could be an opportunity for luxury brands to register perfumes as marks, and therefore circumvent the long refusal of the Supreme Court to consider fragrances as works of authorship protectable by copyright.

That said, from a practical point of view, there remain uncertainties and technical obstacles to the protection of unconventional trademarks.  These obstacles are inherent to the current filing system for trademark applications, the examination process, and the need for a mark to be distinctive.

The assessment of a sound or smell mark’s distinctiveness will indeed be a challenge.  Likewise, given that the perception of a taste or a smell is subjective and variable, searches of any earlier rights will be problematic, let alone subsequent enforcement of those rights.  Copyright law may also clash with trademark law, because trademark offices would not be in a position to assess who is the true author of a shape, a movement, a sound, or a jingle.  Finally, the legality of unconventional signs with respect to public order may be an issue.

In spite of such challenges this aspect of the reform looks like a formidable opportunity for brand owners to renew their communication strategies.  The years to come will certainly see fascinating developments and debates, from both a legal and technological perspective.

The EUIPO and national offices will have time to figure out what should now be acceptable means and forms to represent a trademark.  The relevant provisions of the European Union Trademark Regulation will become effective on October 1, 2017 for EUTMs, while the Directive will have to be implemented no later than January 14, 2019 with respect to national trademark systems of t EU member states.