The transposition of the Trade Marks Directive has introduced new forms of trade marks in Germany and France and simplified the modalities of their representation.
Since the reform of the trade mark law, it is no longer necessary to ensure the graphic representation of trade marks as it was necessary before the reform. It is now sufficient that trade marks can be identified so clearly and precisely that third parties can identify their scope of protection.
Article 3 of the Trade Marks Directive defines which signs benefit from protection as trade marks and provides for the following list:
“A trade mark may consist of 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: (a) distinguishing the goods or services of one undertaking from those of other undertakings; and (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.”
In Germany, the definition of trade marks in § 3 of the Trade Mark Act (MarkenG) is almost identical to this provision, with the difference that three-dimensional designs and colour combinations are also listed. Especially the three-dimensional mark has again been subject of great discussion since the highly anticipated decision of the Federal Court of Justice (BGH) on Rittersport of 23 July 2020 (I ZB 42/19, I ZB 43/19). ( For details see the article on our website).
France, for its part, abolished this " enumeration à la Prévert " concerning the definition of trade marks with the reform: Article L. 711-1 of the Intellectual Property Code, in its new version, simply provides: This sign must be presented in the national trade mark register in such a manner that any person may clearly and precisely identify the subject-matter of the protection granted to its proprietor - full stop. This definition reflects the desire for modernisation and simplification.
It is therefore now possible to file trade mark applications at the DPMA and INPI which cannot be represented graphically. However, the trade marks must be so clearly and precisely identifiable that third parties can recognise their scope of protection. Modern forms of trademarks such as sound marks, multimedia marks and holograms can thus be registered as trademarks in suitable electronic formats (MP 3 or MP4).
However, as the official Trade Mark Journal in France is still in paper form and therefore not compatible with certain formats, the representation of the trade mark is done by reproducing the cryptographic code of the document registered with the INPI. For example, the trade mark "I AM AN EQUESTRIAN le podcast", No 4637748 is a multimedia trade mark available in MP4 format, the cryptographic code of which is be4067f3789b37324af8639fec28bf37ce47d8677ea72b42ed63ac373fd90a3b.
In Germany, the Trade Mark Journal (Markenblatt) edited by the DPMA is published weekly as an electronic PDF file. The representation of a graphically not representable trademark is done there by indicating a QR code, such as:
