#19700 - 12. Introduction To Trademarks - Intellectual Property Law

WEEK 12

INTRODUCTION TO TRADEMARKS

The process of registration attempts to delineate what sign is protected and in which commercial spheres it is to be protected. The register, which is open to the public, also acts as an important source of information.

Registration enables traders to protect their marks before they are put on the market. Also advantageous in that, once a mark is registered, there is a presumption, although not a guarantee, that the registration is valid.

Registering a trade mark also reduces the possibility of disputes and confers on the trade mark proprietor increased certainty, insofar as the registration determines the scope of the property protected as a trade mark.

UK traders might take to register a trade mark in three possible routes:

1. Nationally

The UK Trade Marks Registry, which is based in Newport in Wales, provides successful applicants with rights in the United Kingdom in relation to the sign as registered. Trade Mark Directives harmonized the national trade mark regimes of EU member states. The most recent one of these Directives is (EU) 2015/2436 (TMD 2015)

2. at the EU level, or

By a single application to the European Union Intellectual Property Office (EUIPO), which is based in Alicante in Spain.

A successful application to the EUIPO results in the grant of a single, unitary EU trade mark (EUTM) that operates throughout the European Union.

The governing framework that is the most recent is EU Trade Mark Regulation (EU) 2017/1001 (EUTMR)

EU trade mark regime no longer extends to the United Kingdom but it is important nonetheless to understand how the EU system works to fully grasp why certain rules and approaches have been adopted and continue to apply domestically.

3. Internationally

The international filing system facilitates the acquisition of national marks. International registration, which is administered by the International Bureau of the World Intellectual Property Organization (WIPO) at Geneva, will be carried out either under the 1891 Madrid Agreement or the 1989 Madrid Protocol.

The main advantage of the international system is administrative – instead of filing separate applications in countries they’d like protection, it allows traders to obtain protection in a number of different jurisdictions via a single application.

Chapter 36 – Subject Matter

Pg. 962-982

Outline

1. The three requirements that a sign must satisfy to be validly registered or if it is already registered to ensure it is not subsequently invalid

   1. There is a sign

   2. The sign can be represented adequately

   3. The sign must be capable of distinguishing the goods and services of one undertaking from those of other undertakings.

2. Specific policy-based limits on registration of shapes or other characteristics of products

   1. Three functionality exclusions

3. Certification and collective marks

The sign must conform to the definition of a trade mark in section 1(1) of the Trade Marks Act 1994

It is necessary to show that there is

1. a sign,

2. which can be represented adequately on the register, and

3. which is capable of distinguishing the goods or services of one undertaking from those of other undertakings.

* this is one of the absolute grounds for refusal set out in section 3(1)(a)

If a mark is incorrectly registered, the registration of the mark may be declared invalid under section 47(1).

What is a sign?

No statutory definition - one of the notable features of the current law is that there are very few a priori restrictions placed on what may be registered as a trade mark

• section 1 of the 1994 Act - non-exhaustive list

  • words

  • designs

  • letters

  • numerals

  • shape of goods; or

  • their packaging

• The Court of Justice has held that the concept of a sign is not limited to visually perceptible matter - both sounds and smells have been held to fall within the notion of a sign (Ralf Sieckmann v. Deutsches Patent-und Markenamt, Case C-273/00 [2002] ECR I–11737, [43]–[44])

Trade mark registries have come to recognise the following category of signs which have the potential to be marks

• Media titles

• Slogans

• Hashtags potentially

• Figurative marks including pictorial elements

• Stylised words or numerals

• 3d shapes – product packaging

• Single colours and colour combinations - little guidance by the CoJ on how an applicant was to establish (or an office to assess) the semiotic status of a colour or colour combination

• Sounds

• Elements or images in motion

• Multimedia, combining images and sound

• Hologram

• Residual ‘other category’

Some registries also recognize scents, tastes, and textures.

Engaging customers’ senses of sound, sight, smell and touch during a shopping experience has a verified impact on decision-making and spending thresholds

* Multisensory branding is of considerable interest to marketers.

The concept of sign is nevertheless not limitless.

• Heidelberger Bauchemie, Case C-49/02 [2004] ECR I–6129 - an attempt to register a combination of colours (blue and yellow) howsoever they were applied to articles or packaging.

  • While a colour can be a sign, it is not necessarily so – in many situations, a colour is merely a property or characteristic of a thing

  • An applicant for a colour mark must establish that the colour in question is seen as a ‘sign’

• Dyson Ltd v Registrar of Trade Marks – concerned a trade mark which consisted ‘of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation’

  • CoJ reasoned that since a multitude of bin shapes and configurations could satisfy the representation and description of the sign, it related to non-specific subject matter.

  • Recognising such a right in such an abstract, technical concept would allow Dyson to obtain an unfair competitive advantage in a useful property of the underlying product.

  • It was not a specific sign – it related to the abstract property of the product which can be implemented in a variety of different ways.

Subject matter will not constitute a sign when it is (i) an impermissible abstraction, as a mental concept capable of manifesting in different ways; and (ii) the concept has a purpose (in this case, technical) such that recognizing exclusive rights through trade mark law will bestow an unfair competitive advantage upon the applicant.

• emphasizing clarity and precision (Ralf Sieckmann v. Deutsches Patent-und Markenamt, Case C-273/00 [2002] ECR I–11737, [43]–[44])

Société des Produits Nestlé SA v. Cadbury UK Ltd [2013] EWCA Civ 1174, [2015] RPC (7) 202 rev’g [2012] EWHC 2637 (Ch), [2013] RPC (14) 363. - Colours rarely evolve beyond a property of goods or a decorative purpose.

• Rejected Cadbury’s application for ‘the colour purple (Pantone 2685C), … being the predominant colour applied to the whole visible surface, of the packaging of the goods’ should not have been accepted because it referred to a ‘multitude of permutations, presentations and combinations of the subject matter of the registrations’

• Spear v Zynga affirmed this invalidating the registration of a ‘three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range 1 to 10’, on the grounds that it potentially covered many signs.

Limitations for shapes and other characteristics

Section 3(2) provides for a ‘preliminary obstacle’ to registration – a sign shall not be registered a trade mark if it consists exclusively of a shape, or another characteristic that

1. Results from the nature of the goods themselves

2. Is necessary to obtain a technical result; or

3. Gives substantial value to the goods.

Preliminary Issues

1. Rationale: Anticompetitive effects of granting a legal monopoly via TM law, on a product feature which consumers are likely to seek in a product of that type from any producer.

Phillips v. Remington - the faceplate of a three-headed electric shaver qualified as a trade mark;

• section 3(2) is intended to prevent the protection conferred by the trade mark right from being extended …, so as to form an obstacle preventing competitors from freely offering for sale products incorporating such technical solutions or functional characteristics in competition with the proprietor of the trade mark

2. Rationale: Risks of overlapping protection and impermissible ‘life extension’

Lego Juris A/S v OHIM Case C-48/09P [2010] ECR I–8403, [45]–[46]. - undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions …

Hauck - If such shapes (or other characteristics) could be protected indefinitely under trade mark law, this would subvert the logic of having finite terms of protection under other intellectual property regimes.

• ‘Trade mark law, which is intended to facilitate competition by reducing consumer search costs in the marketplace, would instead inhibit competition’ [AG25]–[AG40] (AG Szpunar).

Court of Justice confirmed and clarified that the mode of representation of a mark could not restrict the Registry - ‘no distinction between three-dimensional shapes, two-dimensional shapes, or two-dimensional representations of three-dimensional shapes’ (confirming the General Court in Yoshida v. OHIM, Case T-416/10, EU:T:2012:222, [24].)

The Registry was entitled to look beyond the (supposedly two-dimensional) representation and consider the application in the round, as well as the ‘the actual use made of the trade mark following its registration’, provided that use shed light on the situation at the time of filing the application (Pi-Design AG v. Yoshida, Cases C-337/12P–340/12P [2014] ETMR 32, [54]–[58].)

3. To be excluded, the...