Super Simon – a super trade mark?

20th November 2023

Can a 22-second video be a trade mark? Perhaps a 22-second video featuring Super Simon can? That’s what an applicant wanted to know from the EUIPO, with an astonishing result.

Introduction

When we think of trade marks, we often first think of branded products, i.e. products that are marked with a trade mark. This is not surprising because, after all, the primary function of a trade mark is to indicate its commercial origin from a particular company.

The very classic trade marks that undoubtedly fulfil this function are therefore word marks, figurative marks or combinations thereof (often logos with word and figurative elements). More unusual are sound marks, for example advertising jingles or typical sounds. Rare – also because they can only be obtained with increased effort – are abstract colour marks (often only accepted if acquired distinctiveness can be proven), multi-colour marks or 3D/shape marks, which can e.g. be an iconic product packaging or a mascot. Things get quite exotic in the field of olfactory marks – here there is only one successful example in European trade mark law at all: once, “the smell of fresh cut grass applied to the product” was allowed protection for tennis balls.

New trade mark forms in the Multiverse of Madness

Under the current EU Trade Mark Law, trade marks “may consist of any signs”, provided that such signs are capable of indicating commercial origin and are capable of being represented in 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 short: Whatever functions as a trade mark is permitted. This now also allows for multimedia marks consisting of a combination of visual and aural elements. Previously, such trade marks failed because of the characteristic of “graphic representability” in the register.

Super Simon – The First Avenger?

Enter “Super Simon”: In May 2019, the EUIPO received an application for such a multimedia trade mark. It consisted of the cartoon-style video embedded below, showing the superhero “Super Simon” flying off on holiday after a successful mission, landing in a deck chair reserved for him and having a breakfast of “lekkere eieren”:

The trade mark was applied for “Books, including the following products: biographies” in Nice Class 16, “Wine, including the following products: Luxembourg wine, Alsatian Pinot Noir and Red wine” in Nice Class 33 and “Entertainment services; Cultural activities; Performances of classical music” in Nice Class 41. The applicant was a Dutch trade mark agency which, according to its own statements, applied for the trade mark in order to clarify the criteria for the protectability of such trade marks.

Super Simon v. The Guardians of the Trade Mark Register

As expected, the trade mark was initially not registered by the EUIPO: By decision of 13/06/2022, the examiners certified that the trade mark lacked distinctiveness according to Art. 7(1)(b) UMV. They found that four criteria were lacking:

• The video was too complex;
• The video does not contain clearly identified goods and services;
• Unlike typical TV advertising, it was not clear who was advertising at all and whose business origin was thus to be referred to;
• Super Simon lacked a sufficient connection with the goods and services applied for.

Super Simon: Homecoming

However, the appeal against this decision was successful: On 07.03.2023, the EUIPO allowed the trade mark “with minimal distinctiveness”. In the decision (Dutch original here; English machine translation here), the Board of Appeal addresses the arguments of the original examiners and finds:

• Multimedia marks are necessarily always complex, so that cannot in itself be a ground for refusal. Therefore, as long as one element, either image or sound, is distinctive in itself, the multimedia mark generally has distinctiveness.
• A multimedia mark may be a video clip, but it is not an advertising spot. Therefore, it is not necessary that a product is the focus or that the goods and services applied for are part of the trade mark itself. After all, that is not the case with a word or figurative mark either. It is therefore sufficient that the clip itself fulfils an origin function.
• Likewise, the company of origin of the goods/services need not be recognisable. Here, too, the abstract suitability to indicate the origin of goods/services from a certain company is sufficient, without this company having to be recognisable. This is also in line with the Office’s previous case law.
• Ultimately, it was therefore sufficient that “Super Simon” was distinctive as a protagonist. The viewers of the multimedia mark would also not have to be able to remember all the details of the clip. It was sufficient if they remembered the character and that he was flying to a holiday destination.

Endgame?

The case shows that there is always movement in the development of new forms of trade marks and that the EUIPO can be open to new developments.

Another question is whether this trade mark can be used at all. But the EUIPO also had some thoughts on this: on the one hand, it does not matter for the question of registrability whether and how the trade mark is later used, because the intention to use – unlike in US trade mark law, for example – is not a prerequisite for protection in Europe. On the other hand, in view of the further development of digital marketing technology, the EUIPO can imagine digital product packaging or wine labels with animation and points out that it could even be sufficient if labels are scanned with a smartphone and the clip is then played on the smartphone. This side note will possibly still have to face the reality test in other cases of rights-preserving use.

Finally, the scope of protection of such a trade mark seems questionable. The EUIPO has expressly found the trade mark to have only a very low degree of distinctiveness. There would have to be a very high degree of trade mark similarity for such a trade mark to be considered infringed. But experience also shows that once a trade mark is successful enough, sooner or later it will be imitated and infringed. This certainly also applies to multimedia trade marks.