#19701 - 13. Subject Matter - Intellectual Property Law

Reading: Bently and Sherman 6^th Ed: 988-1028

WEEK 13

Subject matter

Section 3(1)(a) of the 1994 Act - a sign that does not satisfy the requirements of a trade mark as set out in section 1(1)(a) will not be registrable.

• The requirements to be tested are whether the candidate is specific enough to (i) be a sign and (ii) satisfy the representation requirements

• These are concerned establishing boundaries to the property rights that registration confers

Section 1(1) – in this act, “trade mark” means any sign which is capable

(a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor,

; and

(b) of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of

• words (including personal names),

• designs,

• letters,

• numerals,

• colours,

• sounds; or

• the shape of goods or their packaging.

The types of signs that are registrable are further restricted by section 3(2), providing special rules in relation to the registration of shapes or other product characteristics as trademarks.

Capable of distinguishing – non-distinctive marks

Section 3(1)(b)–(d) provides that the following trade marks shall not be registered: absolute grounds for refusal include these 3

(b) trade marks which are devoid of any distinctive character

(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of the rendering of the service, or other characteristics of the goods or services

(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade

The other grounds of refusal are: they don’t satisfy s.1(1) and s.3(1)(a) and s.2 or they are signs against public policy or which deceive the public (s.3(3)-(6))

Needs to act as an indicator of origin

Needs to be distinctive

If a mark is to be registered, it cannot fall within any of the three above grounds.

• A mark will often be rejected on more than 1ground, they can be applied cumulatively.

• Tribunals often state that a mark falling under (c) also would as a result lack distinctive character in (b).

Subsections (b)–(d) are all subject to the proviso that a sign that falls within any of the provisions (i.e., a sign that is non-distinctive, descriptive, or generic) is not to be treated as invalid if, as a result of use, it has ‘acquired distinctive character’

• The objections in (b)-(d) apply to the inherent characteristics of the sign and may be overcome if the sign comes to be understood by consumers as, in fact, communicating that the particular goods or services (to which the sign is used) come from one particular trade origin.

• Distinctiveness can arise in 2 ways 1) mark has inherent distinctiveness or 2) it has become distinctive through use.

Approach

1. What is the mark?

Applicant has to submit documentation identifying the mark, and indicating whether protection is sought as a word mark, a figurative mark, a colour mark, or a 3d mark.

The average customer

The relevant class from whose perspective the sign must be assessed has been defined as comprising the average consumers of the category of goods or services indicated in the specification

• the relevant consumer has been construed as ‘reasonably well-informed and reasonably observant and circumspect’ (Linde A, Winward Industries, Rado Watch, Cases C-53/01, C-54/01)

case law make clear that levels of attentiveness vary from sector to sector: the general consumer’s level of attentiveness in relation to everyday goods is lower than that of the consumer for expensive good

Where the products are purchased by both professionals and the general public, there will be more than one group of the public to consider.

• If the sign lacks inherent distinctiveness from the perspective of any one of these groups, that will be sufficient to deny registration (Teva Pharmaceutical Industries v. EUIPO, Case T-696/19, EU:T:2020:329, [19], [26].)

• Smart Technologies, Case C-311/11P, EU:C:2012:460, [48] (‘it does not necessarily follow that a weaker distinctive character of a sign is sufficient [for registration] where the relevant public is specialist’).

National marks – the average consumer has the characteristics of a british person;

Whether marks in a foreign language will be treated as registrable or as descriptive will depend on whether the average consumer is likely to understand the meaning of the sign.

• Dependent on the extent to which the mark is recognized in its original language, how widely the language is spoken in the United Kingdom, how familiar the word is, and how common it is for foreign words to be used in that trade

The ‘notional consumer’ will be interpreted by taking into account ‘normal’ and ‘fair’ use, including use on packaging in advertising.

• The assessment takes account of the possibility that the mark will normally be used not only in its represented form, but also orally.

• The mark will be interpreted in terms of overall impression = aurally, conceptual, and visually (Koninklijke Nederland v. Benelux-Merkenbureau, Case C-363/99 [2004] ECR I–1619, [99])

• In situations in which purchasers are attentive and a purchase is rarely made orally, a visual variation of a descriptive word (such as ka for cars) may render a sign registrable, even though the sign is phonetically equivalent to a description.

• If the good is purchased orally, or advertised on the radio/tv, mere visual alterations (misspellings) are unlikely to render the sign registrable.

A sign will be normally viewed as a whole –

• Will not be rejected just because some parts of the sign lack distinctiveness or are descriptive/customary in the trade

• Consumers may expand abbreviated forms into their full unabbreviated form or ignore elements they regard as trivial or insignificant. Court of Justice guidance indicates that the mere fact that an abbreviation derives from two descriptive terms is not dispositive.

  • Consumer usage of those terms in a descriptive sense / consumer recognition of their descriptive content is more important

Assessment

Distinctiveness is assessed by the Registrar at the time of examination or in response to observations (p 992)

One of fact – this has 4 consequences

1. No broad generalisations on the basis of previous decisions must be made

2. A subject on which different minds may well make different views

3. Evidence of similar registrations at the UK Trade Marks Registry itself, or that the sign has been regarded as registrable elsewhere, will be of limited value

   1. British Sugar v. James Robertson [1996] RPC 281, 305;

4. Since an appeal is usually based on a point of law, appealing against a factual distinctiveness determination is not possible.

Devoid of distinct character

Section 3(1)(b) of the 1994 Act – trade marks that are devoid of any distinctive character will not be registered.

Aim - exclude marks that do not even perform the ‘distinguishing function’

• Linde, Winward & Rado - for all trade marks, that the mark must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from other undertakings’

Focus – how the trade mark will be perceived by the relevant public, consisting of average consumers of the goods / services in question (KPN Nederland, Case C-363/99 [2004] ECR I–1619, [34])

Benchmark: does the sign possess origin-indicating ability?—the analytical framework adopted to test for it consists of three basic elements:

1. assess the sign, as applied for,

2. with reference to the goods and services specified,

3. from the perspective of well-informed, reasonably observant, and circumspect consumers for those categories of products.

Examiners should consider ‘the customs of the economic sector concerned … When it is apparent from those customs that several uses are practically significant in that economic sector, [examiners should] take into consideration those various uses in order to determine whether the average consumer of the goods or services covered will perceive that sign as an indication of the commercial origin of those goods or services’ (AS v. Deutsches Patent- und Markenamt, Case C-541/18, EU:C:2019:725, [23]–[30])

Unlikely uses would not be practically significant and would thus require evidence that the applicant is using/intending to use the sign in that unusual way

• Examiners are invited to consider the most likely frame of reference where a mark might be found and then imagine consumers seeing the sign there

• Most signs on a clothing label will be perceived as marks (except cotton, small, large), because that is where consumers expect to find marks

Invented words or neologisms are often considered inherently distinctive.

• Ie. Apple – for computers

• Sometimes the neologism is no more than the sum of its descriptive parts

Trade mark law presumes that consumers are less likely to see colours, shapes, slogans, and the like as indicating origin, as we outline in what follows.

Section 3(1)(b) excludes signs that the average consumer ‘does not identify as reliably indicating the commercial origin of the product’

• The provision excludes signs that would not be perceived to communicate any message because they would be treated simply as part of the goods or the appearance thereof (Libertel Groep v....