“Super Simon” and the rise of Multimedia Marks

Although the EUIPO has allowed the registration of multimedia marks since October 2017, the criteria for registration was somewhat unclear. In 2019, Dutch brand protection firm Chiever B.V. (Chiever) filed a test multimedia trade mark application, consisting of a 22-second video featuring super-hero “Super Simon” going on holiday – in comic book style. The application was initially refused under art. 7 (1)(b) EUTMR and Chiever appealed in 2022. The resulting Board of Appeal decision in March 2023 provides clear guidelines on these new marks. Of particular note is that whilst a multimedia mark has to be distinctive, a consumer does not need to remember all the details of the mark. This is perhaps not so surprising given that these are by their nature, complex marks, but the guidance is useful for those considering filing this type of mark.

What is a Multimedia Mark?

A multimedia mark consists of, or extending to, the combination of image and sound. Examples of such marks may include advertising or animation, such as the MGM logo, ‘Leo the Lion’. As with other trade marks, multimedia marks must meet the criteria for registration, including being sufficiently distinctive. Applications will be refused where the criteria for registration is not met.

The “Super Simon” Trade Mark Application

Chiever’s application was unashamedly a test case. The 22-second video had originally been made to mark to occasion of the departure of the then-director of the Benelux Trade Mark Office, Mr L. Simon. The application was filed for goods and services in classes 16, 33 and 41 (books, wine and cultural and other relaxing leisure activities). The mark was filed to determine what criteria an animated film must meet in order to be registerable as a multimedia trade mark, the EUIPO being unclear on what basis an animated film could function as a trade mark and how it could be considered sufficiently distinctive.

The Refusal

In the first instance, the EUIPO examiner refused the application due to lack of distinctiveness pursuant to art. 7 (1)(b) of the EUTMR. In short, the examiner found that the sign was not perceived as a badge of origin after making the following considerations:

1. the overall complexity of the video;
2. the fact that the clip did not contain clearly identified products/services;
3. the clip did not provide a clear origin of products/services;
4. the identity of the manufactures was not clear; and
5. the ‘Super Simon’ character lacked a sufficient link with the applied for products/services.

The Appeal

On appeal, the EUIPO Board of Appeal overturned the decision of the examiner and found the mark to be distinctive. The Board of Appeal noted that, given their relatively recent existence, there was no case law on multimedia brands and therefore used its judgment to provide the following clarification on the requirements for the registration of multimedia marks.

1. Multimedia marks are necessarily complex signs in which the relevant public is confronted with a variety of figurative, sound and word elements. So long as the relevant public is able to identify the sign as a commercial origin, the length of the sign or the complexity of the individual elements are irrelevant.
2. In general, if at least one element (the sound or image) of the multimedia sign is distinctive, the whole multimedia mark will be distinctive. The Board held that the main character of the video “Super Simon” was distinctive and that the relevant public will remember that he flies (literally) away to a holiday destination.
3. There was no reason why, when watching the video, the relevant public could not identify it as originating from a particular undertaking and could not distinguish it from animation videos of other undertakings. Nor was there any reason why the video could not be an indicator of the origin of the goods and services applied for.
4. The examiner in the first instance considered that the sign should be analysed as an advertisement for television and that it would not identify the company of origin of the products/services. Such an analogy was also rejected. The Board of Appeal cited case law according to which it is not necessary for a trade mark to convey precise information as to the identity of the manufacturer of the goods or the provider of the services.

Comment

The introduction of new types of trade marks raised questions for rights holders as to the possibility of how they could protect further their branding and media beyond the protection granted by “standard” trade marks. Filing a multimedia mark was something of an adventure, rather like Super Simon’s flight into the sun. The Super Simon case has provided clarity on more complex, animated signs, which can now be added to a brand owner’s portfolio, with somewhat more certainty on the outcome of an application.

If you are interested in filing a multimedia trade mark application or would like advice on other types of non-traditional trade marks, please contact Claire Lehr and George Curie or any other member of the Intellectual Property team, who would be pleased to assist.

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