Nematomo žymens registravimo Europos Bendrijos prekių ženklu problematika: kai kurie teoriniai ir praktiniai aspektai
The Problems of the Registration of Non-Visible Sign as European Community Trademark: Theory and Practice

Summary/Abstract: The registration of sounds, smells and tastes as Community Trademarks, became possible from April 1, 1996. Office for Harmonisation in the Internal Market (Trademarks and Designs) (OHIM) began accepting applications for these new forms of marks when EC Regulation 40/94 on the Community Trademark came into force. These new forms of trademarks (sounds, smells and tastes) are known as trademarks consisting of a non-visible sign. One of the requirements, which have to be satisfied by trademarks consisting of a non-visible sign before registration will be granted, is that mark must be capable of graphical representation. The purpose of this requirement is to ensure that infringement rights can be determined and third parties can understand from the graphical representation, the nature of the mark. A number of cases, analyzed in the article (Case C-273/00, Ralf Sieckmann v. Deutsches Patent-und Markenamt, Case C-283/01, Shield Mark BV v. Joost Kist h.o.d.n. Memex, etc.) have considered whether the requirement of graphical representation can be satisfied by marks consisting of sounds, tastes and smells. The first decision of the Court of Justice of the European Union (ECJ) relating to trademarks consisting of a non-visible sign was Sieckmann decision (Case C-273/00, Ralf Sieckmann v. Deutsches Patent-und Markenamt), which dealt with the issue of graphic representation, specifically for smells. The ECJ confirmed that a trademark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. In principle ECJ has not ruled out the possibility of a smell being registered as a trademark, the criteria it has set out are likely to be very difficult to satisfy and this is the main reason why non-visual marks have been available to register as a Community Trademark for more than fourteen years, but still prove problematic. The ECJ Shield Mark decision (Case C-283/01, Shield Mark BV v. Joost Kist h.o.d.n. Memex, etc.) made clear that sound marks must be considered capable of being regarded as trademarks provided they are capable of distinguishing and capable of being represented graphically. This decision confirms that the requirements for graphical representation set out in Sieckmann case apply also to sound marks. Shield Mark judgment allowed sound marks to be represented by musical notation, even though to most people this kind of representation is not easily accessible. Later on, the OHIM made a clarification relation to onomatopoeic sounds that cannot be represented in the form of musical notation, it was held that a description of the sound along with the sound recording in MP3 format would meet the criterion as well. The advent of electronic filing has been particular trademarkly useful

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