Historically, every business has used trademarks in order to function as a business. This is not without good reason. Using a sign to promote your goods and services and distinguish them from those of other businesses is a necessary step that all business owners take when they start their business. From words and phrases to creative logos and slogans, trademarks have always been the most valuable asset of every successful brand. But what about their protection?
Due to the great value that they hold, trademarks need to be protected through registration. The focal question is what can be protected as a trademark? Is there a specific list of signs that can be registered? And how can business owners choose wisely which type of mark is suitable for their commercial needs? All these questions are quite common not only amongst those who want to start a business but also to everyone who is truly interested in protecting a brand.
The European Union Trade Mark Regulation (EUTMR 2017/1001) gives us the types of signs which can be registered and protected by law in the European Union. According to the Regulation, a European trademark may consist of several signs, such as words, personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or even sounds. As seen from the above list, the law is not strict on the types that can be registered. However, it sets a strict condition that cannot be overruled. The sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. In other words, the sign must have a character that will allow the consumers to associate your goods and services with your business. For more information about the requirements of registration, keep up to date with our posts.
In principle, there is a non-exhaustive list of signs that have this capability. This means that in theory, a trademark may consist of sounds, movements, along with more “traditional” marks, such as words and logos.
The most commonly used type of trademark is the word mark. A word mark consists exclusively of words, letters, numerals, other standard typographic characters or a combination thereof that can be typed. A word mark can also consist of personal names, for instance, the name or/and surname of the owner of the business, which is a common practice in many fields, such as in the fashion industry.
Examples: ‘Coca-Cola’ (EUTM 002091569), ‘Philips’ (EUTM 000205971), ‘CHRISTIAN LOUBOUTIN’ (EUTM 001026905), ‘STARBUCKS’ (EUTM 000175539).
Another commonly used type of mark is the figurative mark, which is a trademark where non-standard characters, stylisation or layout, or a graphic feature or a colour are used, including marks that consist exclusively of figurative elements. A figurative mark may contain word elements, namely, a combination of verbal and figurative elements.
Examples: EUTM 005271598, by Adidas AG; registered for, among others, clothing, footwear, headgear in Class 25:
EUTM 000325126, by Goody’s Societe Anonyme of Catering Services; registered for, among others, meat, fish, poultry in Class 29:
TM 1210187, by Bayerische Motoren Werke Aktiengesellschaft; registered for, among others, motor vehicles in Class 12:
A less common type of trademark is a shape mark, which is a mark consisting of a three-dimensional shape (not to be confused with a design, which is another IP right). A shape mark can include packaging, the product itself or its appearance (i.e the appearance of a bottle). Again, a shape mark can also contain word elements, as seen in the following first two examples.
Examples: EUTM 014141113 by The Coca-Cola Company; registered for, among others, non-alcoholic drinks in Class 32:
EUTM 004361192, by Panadol GmbH; registered for, among others, dental and oral care apparatus in Class 10:
EUTM 000473983, by PIVIDAL, Joseph-Marie; registered for soaps, perfumery, essential oils, cosmetics, hair lotions and dentifrices in Class 3:
A colour mark is a non-traditional trademark that consists of at least one colour (or a combination of colours) that is used to identify the commercial origin of a product and/or a service.
Examples: EUTM 000655019, by 3M Company; registered for self-stick notes, stationery notes containing adhesive on one side for attachment to surfaces in Class 16.
EUTM 004381471, by Red Bull GmbH, registered for energy drinks in Class 32.
EUTM 000463174, by The Black & Decker Corporation; registered for, among others, manually operated portable electric power tools (excluding gardening tools), drills, chop saws in Class 7.
A mark can also be registered for the specific way it is placed or affixed to a product. These are called position marks, namely trademarks consisting of the specific way in which some elements, such as colour, are placed on the product. For a position mark to function as a trademark it must be able to allow the relevant consumer to identify the sign in question as being different from the normal appearance of the products themselves.
Examples: EUTM 001027747, by PRADA S.A.; registered for footwear in Class 25.
EUTM 018160386, by Antonio Mastrojanni societa’ Agricola Societa’ Semplice; registered for, among others, alcoholic beverages, cider in Class 33, as well as temporary accommodation, providing food and drink, rental of furniture, linens, table settings, and equipment for the provision of food and drink and animal boarding in Class 43.
A pattern mark is a mark which consists exclusively of a set of elements which are repeated regularly, such as figurative elements which are repeated in such a way that they create a pattern.
Examples: EUTM 000015602, by Louis Vuitton Malletier; registered for, among others, goods made of leather or of imitations of leather in Classes 16, 18, 25:
EUTM 017869029, by Guccio Gucci S.p.A; registered for goods in Class 12, 24,35 and 43.
Sounds can also perform the trademark function of identifying the commercial origin of products or services. A sound mark is a trademark consisting exclusively of a sound or a combination of sounds.
Examples: EUTM 017592031, by Lidl Stiftung & Co. KG; registered for, among others, retail services in Class 35. The sound is available here: https://euipo.europa.eu/eSearch/#details/trademarks/017592031
EUTM 003673308, by Edgar Rice Burroughs, Inc.; registered for, among others, electrical and electronic communications and telecommunications apparatus and instruments and other goods in Classes 9, 16 and 41. The sound is available here: https://euipo.europa.eu/eSearch/#details/trademarks/003673308.
A motion mark is a mark consisting of, or extending to, a movement or a change in the position of the elements of a mark.
Examples: EUTM 017492513, by Castrol Limited; registered for, among others, hydraulic fluid, transmission fluid, brake fluid, power steering fluid, de-icing fluids, fluids for use in metal working in Class 1, lubricants, engine oils in Class 4 and lubricating services and other relevant services in Class 37. The video is available here: https://euipo.europa.eu/eSearch/#details/trademarks/017492513.
EUTM 017894840 by Vodafone Group Public Limited Company; registered for, among others, telecommunications, mobile and fixed telecommunication and telephone, satellite telecommunication, cellular telecommunication, radio and cellular telephone, radio facsimile, radio paging and radio communication services in Class 38 and other goods and services in Classes 9, 35 and 41. The video is available here: https://euipo.europa.eu/eSearch/#details/trademarks/017894840
This is a relatively new category of trademark (as and from 1 October 2017). A multimedia mark consists, or extends to, the combination of images and sound.
Examples: EUTM 017941596, by Calzados Hergar, S.A.; registered for footwear in Class 25. The video is available here: https://euipo.europa.eu/eSearch/#details/trademarks/017941596.
EUTM 018160306, by Mr. Fields and Friends Cinema, S.L.; registered for entertainment, production of audio-visual recordings, editing, production and assembly service of radio and television programmes, television series and films in Class 41. The video is available here: https://euipo.europa.eu/eSearch/#details/trademarks/018160306.
This is another new category of trademark (as and from 1 October 2017). Hologram marks consist of elements with holographic characteristics, such as the following marks:
EUTM 017579491, by ZWILLING J.A. Henckels AG; registered for goods in Classes 16, 21 and services in Class 35. The video is available here: https://euipo.europa.eu/eSearch/#details/trademarks/017579491.
EUTM 002559144, by Eve Holdings Inc.; registered for cigarettes in Class 34.
Which type is best for me?
The best choice of trademark for your business is the one that will best serve its function; that is to distinguish your goods and services from those of competitors. Therefore, depending on the business field you are operating in, you must choose a trademark which will make your products and services easily remembered by the relevant public as originating from your company only. And don’t forget! The more creative, unique and distinctive your trademark is, the more value it will bring to your business.
Contact us today to find out more