Grant of Multimedia mark by UKIPO

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The United Kingdom Intellectual property Office (UKIPO), on 26th June 2019, granted a multimedia mark to Japan’s technology giant Toshiba. With this grant, Toshiba has become the first enterprise ever to have been granted a multimedia mark by the UKIPO. The trademark shows several multi-coloured polygons that zoom out representing an Origami and disappearing.

Interestingly, this grant also corresponded with the British IP day which is also celebrated on the 26th of June. The grant of first-ever multimedia trademark is seen by many as a way of marking the IP day by the UKIPO.

WHAT IS A MULTIMEDIA MARK

Unlike the traditional trademark, a multimedia mark combines elements of sounds and images. Earlier, marks that were capable of being represented graphically were only allowed to be registered with the trademarks office, but now animation clips, brief video clips, jingles, etc. are also allowed to be registered as a trademark.

CHANGE OF LAW IN EUROPEAN UNION

As mentioned above, only those marks which were capable of being represented graphically were allowed to be registered as a trademark under the laws of the European Union earlier. This changed with the introduction of the new law that was made applicable on the 1st of October, 2017.

The European Union directive 2015/2436 has changed the requirement of graphical representation of a trademark, and in effect has allowed multimedia marks to be registered. Article 3 of the 2015/2436 directive[1] that has allowed the registration of multimedia trademarks reads as follows:

Signs of which a trade mark may consist:

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

Hence, the above definition excludes the necessity of a trademark to be represented graphically. Now, all that is required is that the competent authorities and the public is able to determine the precise subject matter.

CHANGE OF LAW IN THE UK

These provisions were introduced in the UK trademark law through the 2018 trademark directive. The directive, issued by the UKIPO, clearly states[2] that the applicant of the trademark is no longer required to provide a graphical representation of his trademark. He can instead present his trademark in a different range of electronic formats such as mp3 or mp4 as long as it has been presented clearly and others can understand what it is.

The new changes have opened a whole new Pandora box for the enterprises who would be really interested in availing these opportunities in the near future. But it is important to remember that the very basic requirement of a trademark registration still remains in place i.e. the mark must be capable of distinguishing the applicant’s product. The new multimedia trademark still will have to satisfy this requirement for a successful registration.

Author: Varun Sharma, LL.B., 3rd Year, Campus Law Centre, University of Delhi,Intern at Khurana & Khurana, Intern at IP and Legal Filings  and can be reached at support@ipandlegalfilings.com.