Erika Lunell on trade mark law and technology

 

 

“Digital technology would make it easier to register unconventional trademarks,” says Dr Erika Lunell, who currently teaches at Stockholm University’s Department of Law.

Companies no longer just want to trade mark their logo or company name anymore.

“Nowadays,” explains Lunell, “they’re also applying to trade mark unconventional areas like colour, sound, smell and even sensory experience. The law needs to be reformed to ensure accuracy.”

Lunell, who completed her thesis for the Department of Law on unconventional trademarks, believes graphical depiction is not sufficient.

”The Metro Goldwyn roaring lion, for example is hard to depict graphically,” says Lunell. “Yes, the sound waves can be documented graphically, but it's not particularly comprehensible, is it?”

As an alternative, Lunell would like to see European Law recognise that digital technology is a more natural way to help cope with more complex unconventional trademarks.

”It would be better to require a digital copy of, say, a sound and a link to a spectrogram. Or alternatively, it should be possible to register the sound in a purely digital form. Clearly, the law isn't managing to keep up with technological advancement at present,” says Lunell.

The current requirement of graphic representation blocks certain types of marks from being registered as trademarks.

“This contradicts the principle of equal treatment of different types of marks, that the European Court of Justice established,” says Lunell.

“Another problem is that we need to clarify our own position because Europe has stricter criteria for registration of unconventional marks than countries like the USA and Australia.”

The solution, according to Lunell, is to shift the emphasis from “graphic representation” of unconventional marks to “digital representation”.

“This would solve the problems of both intelligibility and accessibility for several types of marks such as sound marks, where a requirement of digital representation would put musical and non-musical marks on an equal footing if sound files were compulsory.”

With Stockholm University already running a number of Masters programmes in English including European Law and Intellectual Property Law – both of which attract students from around Sweden and the world – Stockholm’s Law Department is actively involved in the debates concerning international law.

Dr Lunell believes it is imperative that Europe’s law practitioners enter into a dialogue about the way technology is changing and reshaping the work they do.

“It’s important we discuss things like how technology affects unconventional trade marks within a broader European context,” says Lunell, whose work has already been noticed by scholars in Spain. “I believe there’s an interesting debate going on here in Sweden. But I would relish the opportunity to further discuss unconventional trade mark law with my counterparts in Europe.”

Interview and text: Jon Buscall