As a result, since May 6, 2019, the United Kingdom Office no longer collects and forwards to the International Bureau of WIPO (World Intellectual Property Organization) the fees due under these regulations.
In other words, any payment of these fees pursuant to a registration requested of the United Kingdom Office must be made directly to WIPO, as is already the case in France. As a result of this administrative change, a payment can now be made in four ways:
– By debiting a WIPO current account;
– By credit card, but only for payments of fees related to renewal of registered marks, notification of irregularities issued by the Office, or for additional fees relating to the designation of additional contracting parties after the trademark has been registered. Such payments are made in Swiss francs and require a WIPO reference number;
– By bank transfer;
– By postal transfer for inter-European payments.
To be handled correctly, payments by bank transfer must include the name and complete address of the payer, the transaction code (EN), the trademark number, the trademark name, if available, or its verbal elements, and the name of the trademark holder, if different from the payer. In the case of multiple requests, a list containing each request and the amount paid for each request is also required.
It is important to pay all fees in full, otherwise an irregularity notification will be issued. This notification shall specify a payment period beyond which the request shall be deemed to have been abandoned.
As the United Kingdom Registrar no longer makes these payments to WIPO, it is up to the applicant or his representative to be vigilant and diligent when making them.
One of the main innovations introduced by the “Trademark Package” Directive of 16 December 2015 (2015/2436 EU) is the introduction of an administrative procedure for revocation or declaration of invalidity. Some countries, such as Great Britain or Germany, have already introduced this new scheme into their legislation, but this was not the case in France. As the Directive did not specify how this new procedure must be implemented, the Government undertook this task with its draft project of the “Trademark reform Package”. The draft orders introduce several new articles in the French intellectual property Code (CPI) which aim at regulating how this administrative procedure can be implemented before the National Institute of Industrial Property (INPI).
Until now, pursuant to article R. 712-17 of the CPI, the INPI only addressed the issue of revocation for non-use if it was introduced by a trademark owner in an opposition proceeding. The French draft orders make the INPI competent to judge an application for revocation or invalidity of a trademark in a larger number of cases.
The INPI thus becomes primarily competent to deal with applications for invalidity and revocations of trademarks, even if there is no pending litigation. The courts remain competent to deal with counterclaims, asking the court to revoke or invalidate a trademark, and for applications for invalidity as a principal based on commercial names, domain names or author rights. More generally, courts remain exclusively competent to deal with other civil actions and trademark claims, including related issues of unfair competition. The same applies for invalidity or revocation applications’ presented in a case of an infringement request (as a principal or counterclaim), or when provisional or protective measures are being enforced (Articles L 411-4 and L. 716-5 new).
The administrative procedure before the INPI is provided by the articles L. 716-1 and R. 716-1 to R. 716-11 (new) and includes an adversarial investigation phase. The INPI must decide on the application of invalidity or revocation within three months of the end of this phase, otherwise the application is deemed to have been rejected.
The application for invalidity or revocation submitted to the INPI must include:
– the identity of the applicant;
– the indications allowing to establish the existence, nature, origin and scope of the prior rights invoked;
– the references of the trademark and the goods or services covered by the application for invalidity or revocation;
– the presentation of the means;
– the proof of payment of the fee (within one month);
– the authorization of a potential representative.
This request must be carefully prepared since once it has been made its basis and scope cannot be extended.
The instruction phase begins with the notification to the owner of the contested trademark of the action filed against him. This leads to adversarial exchanges through written observations. These written exchanges between the parties may be punctuated by oral observations. Once the instruction phase has been completed, the INPI decides on the application.
In this respect, all these INPI decisions ruling on an application for revocation or invalidity must be reasoned (Article L. 411-5, new) and may be the subject of an action for invalidity or reform before the French Court of appeals of the applicant’s place of residence (Articles L. 411-4-1 and R. 411-19, new).
With this new administrative procedure, it is no longer mandatory to go to court. However, the invalidity of a trademark is often part of a broader litigation, which may itself concern several titles. Not all the multiple issues thus raised will be within the competence of the INPI. Consequently, the judicial judge will recover exclusive jurisdiction to rule on the case (e.g. if there is a related issue of unfair competition). Although his jurisdiction will be mainly limited to counterclaims for revocation and invalidity, the judicial judge is therefore not entirely set apart from this new procedure. The courts will retain their jurisdiction over the more complex cases, and their role will thus be complementary to the role assigned to the INPI.
Though the INPI is given greater jurisdiction, it is unlikely that the new procedure will be less costly, simpler, and faster and that it will indeed declutter the INPI’s registry from many unused trademark, as it was expected.
The accession of Canada to the Madrid Protocol allows a harmonization of Canadian’s trademark law on an international level. With a single international application, Canadian applicants will now be able to file an application in more than 80 different countries. Applicants from a Member State of the Madrid Protocol will have the opportunity to designate Canada in their international applications for registration. This alignment on the international standard brings many changes to Canadian law, which has been duly amended (Bill C-31). Trademark owners will have to take this into account from June 17.
Thus, the classification of goods and services according to the Nice Classification becomes mandatory for all registration applications. The measure is applicable to new filings and unpublished pending applications. Trademarks already registered will be classified in this way when renewed.
In this respect, the term of protection of a trademark is reduced from 15 to 10 years for any trademark registered after the entry into force of these treaties in Canada. Any trademark with a renewal deadline of June 17, 2019 or later will have a renewal term of 10 years.
The Canadian Intellectual Property Office has also established a mechanism allowing a third party to bring to the attention of the Office information that affect the registrability of a trademark filing. This procedure determines whether a trademark is registrable. It is applicable only in three cases :
if there is a likelihood of confusion with a prior trademark
if there is a likelihood of confusion with a previously filed trademark
if goods and services in the application for registration are identical or similar to an prior trademark.
Evidence of past use and written arguments will not be taken into consideration and the Office reserves the right to eliminate this practice in the event of abuse.
Moreover, an opposition to a trademark application may now be partial and only concerns certain goods and services designated by the application for registration. If the opposition is successful, the applicant will be able to keep his trademark application for the goods and services not covered by the opposition.
Finally, the mandatory declarations of use is removed and the registration of specific trademarks (olfactory, gustatory, etc.) becomes possible if the trademark is distinctive in Canada on the filing date of the application. Furthermore, it is no longer required to indicate whether a trademark filed in Canada has already been used in Canada or abroad.
Trademark owners are therefore encouraged to audit their portfolios of protected trademarks in Canada to understand the possible consequences of the new law. Moreover, Canada’s entry into the system of the international trademark is a tremendous opportunity to protect new brands in Canada: to be used without moderation! Dreyfus assists its clients worldwide in their brand protection and defense strategies. Do not hesitate to contact us.
According to this report, the number of top-level domain names registrations (TLDs) reached approximately 348.7 million at the end of the 4th quarter of 2018, an increase of nearly 16.3 million or 4.9% in the number of domain name registrations compared to the previous year.
It is interesting to note that the number of domain name registrations in .com and .net was 153 million at the end of the fourth quarter of 2018, an increase of nearly 6.6 million or 4.5% in one year.
In addition, the number of country code top-level domain names (ccTLDs) registrations at the end of the last quarter of 2018 reached 154.3 million, an increase of nearly 8.2 million or 5.6% in one year.
Finally, domain names registered in new extensions (ngTLDs) at the end of the last quarter of 2018 were 23.8 million, an increase of approximately 3.2 million or 15.5% in one year.
It is important to establish a clear strategy for domain name registration. Dreyfus can assist you in the management of your domain name portfolio.
In its information notice No. 21/2018, the World Intellectual Property Organization (WIPO) details the various changes that have been made to this text. These concern:
The division of an international registration in respect of a designated Contracting Party (new Rule 27bis, new point 7.7)
The merger of international registrations (new Rule 27ter),
The cancellation of an international registration resulting from division due to the ceasing of effect of the basic mark (Rule 22(2)(b)),
The possible notifications under New Rules 27bis, 27ter and 40(6) of the Common Regulations,
The publication in the WIPO Gazette of international marks (Rule 32).
The new features and the main rules concerning these procedures are detailed below:
The division of an international registration in respect of a designated Contracting Party (new Rule 27bis, new item 7.7)
The new Rule 27bis of the Common Regulations under the Madrid Agreement and Protocol specifies in its paragraph (1)(a) that “A request by the holder for the division of an international registration for some only of the goods and services in respect of a designated Contracting Party shall be presented to the International Bureau on the relevant official form by the Office of that designated Contracting Party, once the latter is satisfied that the division whose recording is requested meets the requirements of its applicable law, including the requirements concerning fees.”
Thus, the owner of an international registration may request the division of an international registration for some of the designated goods and services with regard to only one designated contracting party.
Various formalities must be respected in order to make such a division. For example, the request should be made through the intermediary of the intellectual property office concerned by the division request. Moreover, in the information notice No.21/2018, it is specified that “The Office concerned may examine the request for division of an international registration to ensure that it meets the requirements in the applicable national or regional law, as the case may be, before presenting it to the International Bureau of WIPO. The Office may also require the payment of a fee, directly to this Office, different from the fee due to the International Bureau of WIPO.”
It is the responsibility of the International Bureau of WIPO to examine the request in order to determine whether it meets the requirements of Rule 27bis and to notify the Office that submitted the request so that any irregularity can be corrected, while at the same time informing the holder. The concerned office has a period of three months from the date of the notification to correct any such irregularity. Otherwise, the request will be considered abandoned.
Finally, the information notice No.21/2018 specifies that, if the conditions are met, the International Bureau of WIPO shall record the division of the international registration with regard to a designated contracting party and then create “ a divisional international registration for the goods and services specified in the request and with the Contracting Party concerned as the sole designated Contracting Party, notify the Office that presented the request and inform the holder”.
The merger of international registrations (new Rule 27ter)
The information notice specifies that “all provisions dealing with the merger of international registrations will be consolidated in new Rule 27ter of the Common Regulations” following the deletion of Rule 27(3) from the same text.
These provisions relate to the merger of international registrations resulting from the recording of a partial change of ownership, the merger of international registrations resulting from the recording of the division of an international registration and the recording and notification of such mergers.
A request for the merging of international registrations resulting from the recording of a partial change of ownership must be submitted to the International Bureau of WIPO by the holder directly or through the Office of the Contracting Party of the said holder.
The information notice No.21/2018 specifies to that matter that “A divisional international registration may be merged only with the international registration from which it was divided”. A request for the merging of international registrations resulting from the recording of the division of an international registration may be submitted only by the holder through the Office that filed the division request.
The cancellation of an international registration resulting from division due to the ceasing of effect of the basic mark (Rule 22(2)(b))
WIPO says in its information notice No.21/2018 that: “the International Bureau of WIPO will be required to cancel, in whole or in part, as the case may be, an international registration resulting from the recording of division when the international registration from which it was divided is either totally or partially cancelled, at the request of the Office of origin, due to the ceasing of effect of the basic mark”.
The possible notifications under New Rules 27bis, 27ter and 40(6) of the Common Regulations
The information notice No. 21/2018 of the WIPO specifies that “a Contracting Party, the law of which does not provide for the division of applications for the registration of a mark or of registrations of a mark, may notify the Director General of WIPO, before new Rule 27bis enters into force or before that Contracting Party becomes bound by the Madrid Protocol, that it will not present to the International Bureau of WIPO requests for division of international registrations”.
The same applies to requests for the merger of international registrations resulting from a division.
Contracting Parties, having made such notifications to the Director General of WIPO, may subsequently change their position at any time and accept such requests.
Finally, this same information notice specifies that “any Contracting Party may, before new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations enter into force or before the Contracting Party becomes bound by the Madrid Protocol, notify the Director General of WIPO that either one or both of the new Rules 27bis(1) and 27ter(2)(a) of the Common Regulations are not compatible with the applicable national or regional laws, as the case may be”. Contracting Parties which have sent such a notification shall again have the possibility to withdraw it.
The publication in the WIPO Gazette of international marks (Rule 32)
Finally, the amendments and points detailed in the previous paragraphs also have an impact on Rule 32, of the Common Regulations under the Madrid Agreement and Protocol, regarding the publication of marks in the WIPO Gazette of International Marks. Paragraph (1)(a) of this Rule now provides that “The International Bureau shall publish in the Gazette relevant data concerning […] (viiibis) division recorded under Rule 27bis(4) and merger recorded under Rule 27ter”. Moreover, paragraph 2 provides that “The International Bureau shall publish in the Gazette (i) any notification made under Rules […], 27bis(6), 27ter(2)(b) or 40(6) […]”.
The international brand system is becoming more and more technical. Dreyfus can assist you in your brand protection strategies in all countries of the world.
Continuing the review of the changes in the opposition procedure made by the French draft orders transposing the “Trademark reform package”, we will now focus on the conduct of the procedure.
The conduct of the amended opposition procedure
An opposition procedure has been provided for a long time by Article L 712-5, but it is rather concise, as it merely states that the procedure must be contradictory. The procedure itself is detailed in Article R 712-16. It specifies that the opposition must be notified without delay and gives the applicant two months at least to submit his observations and to possibly choose a representative. The parties may then submit their observations during a period of at least two months, subject to any closures or suspensions. The National Institute of Industrial Property (INPI) then publishes its decision. Though the article R 712-16 indeed indicates that the draft decision is notified to the parties so that they may challenge it if they wish to do so, no indication is provided as to the duration of this period or even how many comments may be submitted. Emphasis is placed on respecting the right to be heard, as shown by the obligation for the parties to notify any comments f to the other.
In order to comply with the “Trademark Package” directive, the French government has drafted a new article L. 712-5 and a new article R. 712-16-1, which both detail the stages of the opposition procedure.
Firstly, an investigation phase allows the opponent and the applicant of the contested trademark to debate. The opposition is notified to the applicant, who then has two months following the publication of the registration to submit written observations. He must also provide his identity and the information required to establish the existence, nature, origin and scope of his rights, the references to the application for registration, the disputed goods and/or services, the fee payment receipt, and the power of attorney of his representative, if applicable. The changes thus made are about the delay granted for providing these various documents, which can be extended by one month, except for the communication of the fee payment receipt. Previously, the deadline was two months for all of these documents, except for the power of attorney, which had to be provided within one month.
Furthermore, the applicant may ask the opponent to produce documents establishing that his trademark has been genuinely used, if it has been registered for more than five years. In such a case, the opponent has one month to submit his comments and to contest any documents he may have received. A third and final adversarial exchange of one month may then take place, without the possibility, however, of raising new claims.
Oral observations may be presented during this time, in accordance with the procedures laid down by the Director General of the INPI.
Finally, a decision on the opposition is taken within three months. Failing this, this, the opposition is deemed to have been rejected (this period may be suspended, as provided for in the new Article R. 712-17.
As a result, the opposition procedure is now circumscribed in clearly defined delays. The number of exchanges between the parties, as well as the time allowed to provide documents for the file, or observations, is limited in a concern of speed and efficiency.
The opposition procedure would thus evolve both as regards its conduct, which is now specified and clarified, and in regards to the rights which may be invoked, and their holders. The changes would allow French law to take into account development in practice by giving priority to the protection of holders of previous rights.
Thus, the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 requires, above all, a rapid and efficient procedure, but does not detail which steps must be taken to this effect. However, article 5 of the Directive details the rights, which may be invoked. In its draft orders, the French government plans to extend the prior rights that may be invoked and to modify the opposition procedure, which will lead to a modification of the French Intellectual Property Code.
“(…) 1° the owner of a mark that has been registered or applied for at an earlier date or which enjoys an earlier priority date or by the owner of an earlier well-known mark ;
1° bis The Director of the National Institute of Origin and Quality, where there is a risk of damage to the name, image, reputation or notoriety of a designation of origin or geographical indication (…);
2° The beneficiary of an exclusive right of exploitation, unless otherwise stipulated in the contract ;
3° A territorial community under h of Article L. 711-4 or under an infringement of a geographical indication defined in Article L. 721-2, therefore that this indication includes the name of the community concerned ;
4° A defense and management organization mentioned in Article L. 721-4 which geographical indication has been approved in application of Article L. 721-3 or whose application for approval is being examined by the Institute (…)”
The previous rights that may be protected by a territorial community under paragraph 3 are its name, image and reputation as well as geographical indications, as defined by Article L 721-2 of the French Intellectual Property Code, which contain the name of the territorial community. The geographical indications defense and management organization referred to in paragraph 4 is a private legal entity.
In its draft orders, the French government has chosen to treat separately the rights that may be invoked and the rights holders who may file an opposition: the new Article L. 712-4 of the French Intellectual Property Code focuses on the former, while the new Article L. 712-4-1 deals with the latter. This change of form is accompanied by a change of substance. The rights that may be invoked are extended, which has repercussions on the holders who can act. In this regard, it follows that:
– The existence of an earlier famous trademark, that is to say a trademark which is known worldwide, may be invoked in an opposition procedure;
– Any legal person may invoke the existence of a legalname or a company name if there is a risk of confusion in the public’s mind;
– Any public legal person may report an infringement of the name, image or reputation of a public institution or authority, or of a body governed by public law.
Furthermore, changes have been made regarding the rights that can already be invoked. Approved or registered geographical indications can be invoked, but the law no longer refers to infringement of their name, image or reputation. This change is welcome since a geographical indication is a name used to designate a specific product, and thus it can hardly claim to have a name, an image and even less a reputation. Indeed, only the entity or the territory to which this name is attached can claim it. This expression is therefore reserved for infringement to the rights of a territorial community, institution, authority or a public organization.
In this respect, the draft orders also allow any person exercising his rights over an approved or a registered geographical indication to file an opposition. As the text is not specific, it may be a physical person or a legal entity, such as territorial communities, if their name is being used.
However, designations of origin are no longer mentioned in the new wording of the Article L. 712-4. Today, this term refers to several sub-categories. It is therefore likely that it will be included in geographical indications, as the aim in both cases is to guarantee quality and to recognize a place of production or know-how specific to a particular region.
Moreover, opposition to an application for registration may now be filed by the owner of a trademark, which was registered without his authorization, in the name of his agent or representative. This add-on thus takes this particular practice into account to protect the interests of the trademark holder. Until now, Article R712-13 provided the possibility for a holder to act through a representative, but did not consider that the latter could act without authorization. Besides, the French Intellectual Property Code did not provide any guidelines in such a case.
Finally, it should be noted that, from now on, several of these rights can be invoked at the same time in a sole opposition procedure. It will be necessary, however, that they belong to a single holder, or that the various holders have appointed a common representative (new Article R. 712-13), and that the goods and/or services of the trademarks are at least partly identical to those of the contested trademark.
The Czech Republic has recently amended its Trademark law in order to transpose the EU directive of 16 December 2015 (2015/2436 UE) and integrate these legal provisions into its legislative system. The legal provisions came into force on 1 January 2019.
Various amendments have been made to the Czech law, the main ones are discussed below.
The requirement of graphic representation of the trademark has been removed. It is now possible to register a trademark provided that it can be represented by any existing technological means such as MP3 files. Hence, in addition to the registration of a word trademark, semi-figurative trademark or figurative trademark, it is now possible to register a sound trademark, a position trademark, a shape trademark, a colour trademark, a movement trademark, or a hologram trademark, for example.
Moreover, it is no longer possible to register a trademark for goods and services whose title is too broad, for example by using a title from the Nice classification or by using a term that is too general.
In addition, the Czech trademark office previously carried out a search among prior trademarks registered for identical goods or services. From now on, it is no longer the case. Henceforth, it is now up to the trademark owner to set up a monitoring for its trademarks and to file an opposition within the time limit.
Furthermore, amendments regarding the opposition proceeding have also been introduced. The possibility to request the opponent to provide proof of use in opposition proceedings has been introduced for trademarks that have been registered for more than 5 years. The applicant has a period of two months from the notification of the opposition in order to make such a request. The evidence must be filed by the opponent within 4 months from the request of proof of use.
Finally, changes relating to counterfeiting have also been introduced with this reform in order to provide better protection against counterfeiting. For instance, the owner of prior trademark rights can prevent importation of goods whose main characteristics resemble his prior trademarks before these products are released for free circulation in Czech Republic.
Trademark law in the European Union is becoming increasingly uniform. However, there are still some specific features that need to be taken into account. Dreyfus is a specialist in trademark protection and defense strategy in the European Union. Our IP boutique law firm can develop a strategy tailored to your needs.
“The following may not be adopted as a mark or an element of a mark:
a) Signs excluded by Article 6ter of the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised, or by paragraph 2 of Article 23 of Annex 1C to the Agreement Establishing the World Trade Organization;
b) Signs contrary to public policy or morality or whose use is prohibited by law;
c) Signs liable to mislead the public, particularly as regards the nature, quality or geographical origin of the goods or services.”
Paragraph c) refers here to the arms, flags or emblems of a State of the European Union, as well as to signs containing a geographical indication identifying wines or spirits if the designated products do not actually have this origin.
The draft enactment transposing Directive (EU) 2015/2436 would modify article L.711-3, which is well established in French law. Thus, if the violation of public policy or accepted principles of morality, fraud as to the nature, quality or origin of the product or service, or use of State emblems, would remain grounds for refusal of registration of a trademark, the draft order amends Article L. 711-3 and adds other grounds for refusal.
Designations of origin and geographical indications
In accordance with Article L. 711-3 of the French Intellectual Property Code, an application for registration of a trademark may be refused if the sign is or contains a geographical indication falsely identifying the origin of wines or spirits.
This ground is retained in the draft enactment, but it is reformulated and extended. In that respect, the refusal of an application for registration could now be based on traditional terms for wines and traditional specialities guaranteed, knowing that these terms refer, among others, to the methods of production, elaboration, exploitation and ageing of the wine or to its quality.
Moreover, the previous existence of an appellation of origin or a geographical indicationmay in itself justify the refusal to register a trademark. Article L. 711-4 already allows to invoke an earlier appellation of origin or geographical indication to counter the registration of a new trademark in opposition proceedings. The new wording of article L. 711-3 of the French Intellectual Property Code therefore reinforces the protection granted to appellations of origin and geographical indications and thus demonstrates their economic importance.
Previously registered plant variety denominations
French law protects plant varieties by issuing a plant variety certificate (Article L. 623-4 of the French Intellectual Property Code). However, the Intellectual Property Code did not make any explicit link between this certificate and the registration of a trademark. Protecting a trademark which reproduces the characteristics of a new plant was therefore possible.
From now on, the existence of an earlier registered plant variety constitutes grounds for refusal of the registration of a new trademark which would reproduces its main characteristics or its denomination (Article L. 711-3 modified). Consequently, just as in the case of appellations of origin and geographical indications, the registration of the trademark will be blocked from the beginning of the procedure.
Applicant’s bad faith
The “Trademark Reform Package” allows States to refuse to register a trademark because of applicant’s bad faith. The French Government used this opportunity in his draft orders and introduced this ground for refusal in article L. 711-3.
The text is clear on this point but leaves unanswered the question of the interpretation of the notion of “bad faith”. Therefore, the definition of this concept is left to the discretion of INPI representatives. The scope of this notion of bad faith will progressively be clarified by future decisions. The French Cour de Cassation has already ruled on the meaning of this concept in cancellation proceedings. .It appears that bad faith is a subjective element, which is assessed at the time of the filing, and is determined by all the facts. The applicant will have to intend to prevent the use of an earlier trademark, without regard to the interests of its holder. In other words, it is necessary to characterize an intention to harm. (Cass Com., 3 February 2015 n°13-18025)
In order to characterize this bad faith on the day of the application for registration, it can therefore be assumed that the intention of the applicant to act fraudulently and his knowledge of an existing prior right will also play a role. However, it is not possible to limit bad faith to cases where the applicant seeks to take ownership of the trademark of others. Bad faith might also refer to situations where the applicant seeks to prevent the filing of other trademarks. The refusal to register the mark thus also helps to fight parasitism and unfair competition.
Moreover, it should not be forgotten that, in France, the refusal of registration is made by a representative of the INPI. The latter will interpret bad faith on a case-by-case basis and in complete independence.
In other words, the grounds for refusal introduced by the draft orders implementing the “Trademark Reform Package” are not negligible. They extend the leeway granted to the INPI from the very beginning of the registration procedure. These changes focus on the development of geographical indications, designations of origin and plant varieties in order to take into account economic situations.
Following our previous analysis of the modifications generated by the transposition project of the “Trademark Package” in French law, we focus our analysis on the elimination of the graphical representation requirement.
Indeed, the enactment of the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 marks the disappearance at the European level of the graphical representability requirement, which was essential for the registration of a trademark. It is now sufficient that the sign is distinctive and 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.”(Article 3). This amendment is taken into account by the draft ordinances of the “Trademark reform package” with a new article L. 711-1 of the French Intellectual Property Code, which would make it possible to register olfactory or taste marks.
The graphic representability, a barrier to the recognition of olfactory and gustatory marks
The graphical representation requirement has not prevented the protection of three-dimensional or sound trademarks, but it has proved to be an insurmountable obstacle for the registration of olfactory or taste trademarks.
However, the registrars were not reluctant to grant such protection, as shown by a successful application for a grass smell (OHIM, 11 February 1999, R. 156/1998-2) or a beer smell (Unicorn Products, GB 2000234). If the requests were not always successful, the possibility of protection had at least the merit of existing. However, the European Court of Justice (ECJ) had put an end to this development in its Sieckman judgment (ECJ, 12 December 2002, Case C- 273/00) by stating that “in respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.” Fulfilling the requirement of graphical representation required therefore the presence of “figures, lines or characters”, which was possible for sound (graphic) and three-dimensional (figure) trademarks, but was impossible for olfactory and gustatory trademarks.
An abolition to European case-law
By removing this requirement, the new article L. 711-1 would implement a welcome change. Designs, patents, and copyright, were inadequate to protect these olfactory and gustatory signs. Bringing an action for infringement was therefore not possible, and only the action for unfair competition remained. However, it was too restrictive.
From now on, article L. 711-1 will require that the sign must be represented “in such a way as to enable any person to determine precisely and clearly the object of protection”. The object of protection, that is, the sign for which registration as a trademark is sought, must first and foremost be identifiable.
The main difficulty in registering an olfactory or gustatory trademark will therefore be to find a sufficiently intelligible, durable, clear and precise way to express the smell or the taste one wishes to protect. This translation will be able to make it possible to determine what the sign is and which special feature makes it distinctive. For example, for a rose smell, it will have to be possible to distinguish the smell of a certain type of rose and not all rose smells. The sign will correspond to that particular smell and its representation must make it possible to identify and recognize it. The applicant will also be able to provide a chemical formula. We will thus identify the smell thanks to this formula, which can be represented graphically. Indeed, if the limits of the sign are not clearly determined, it will be then impossible to verify that it satisfies the other criteria of the mark, distinctiveness in particular.
These new representations are now possible to implement thanks to technical means offering sufficient guarantees. Thus, a chemical formula, a description in written words, an odour sample, or a combination of those elements can now satisfy the graphical representation requirement.
Effects of the removal of the graphical representation requirement
Removing the requirement for graphical representation requirement leads up to adapting to new technologies, to the development of innovation and to competitiveness between companies. Nevertheless, the evolution of trademark law in this area is only at its beginning and raises many questions. For instance, the INPI (as other European offices), is not used to having to examine chemical formulas or samples, and it will have to adapt to these new means of representation and their practical consequences. In addition, these changes will also impact in practice how counterfeiting is assessed. For example, establishing fraudulent use of a smell will be more difficult than establishing the same fraud for mark represented graphically.
Consumers make little use of their sense of smell or their tastebuds to identify a brand. Therefore, once registered, an olfactory or a gustatory mark could be at great risk to be forfeited. These marks are few in number, at least for now, and thus it is likely that the competent courts will have to wait a long time before being able to assess what does or does not constitute a precise and clear representation. The recognition of these trademarks by law is welcome, but it will not necessarily lead to their widespread use.
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Necessary cookies are absolutely essential for the website to function properly. These cookies ensure basic functionalities and security features of the website, anonymously.
Dreyfus is concerned about protecting your privacy and the Personal Data ("Data"; "Personal Data") it collects and processes for you.
Hence, Dreyfus complies every day with the European Union legislation regarding Data protection and particularly the European General Data Protection Regulation Number 2016/679 of 27 April 2016 (GDPR).
This Privacy Policy is aimed at informing you clearly and comprehensively about how Dreyfus, as Data Controller, collects and uses your Personal Data. In addition, the purpose of this Policy is to inform you about the means at your disposal to control this use and exercise your rights related to the said processing, collection and use of your Personal Data.
This Privacy Policy describes how Dreyfus collects and processes your Personal Data. The collection happens when you visit our Website, when you exchange with Dreyfus by e-mail or post, when exercising our Intellectual Property Attorney and representative roles, when we interact with our clients and fellow practitioners, or on any other occasion when you provide your Personal Data to Dreyfus, in particular when you register for our professional events.
Written by Dreyfus19/06/2019 
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