#3611 - Trade Marks 1 - Intellectual Property Law

TRADE MARKS 1

Registrable Mark

To be validly registered, trademark must:

1. Fall within definition of a registrable mark

2. Not be excluded by any absolute grounds of refusal

3. Not be excluded by any relative grounds of refusal

   To be registrable, sign must be:

1. Capable of graphic representation

2. Distinctive

Trade Marks Act 1994

Section 1

Trade mark may consist of any sign capable of being represented graphically.

This includes

personal names,

designs,

letters,

numerals,

the shape of goods or of their packaging,

Any sign must be capable of distinguishing the goods or services of one undertaking from those of another.

Definition is “very broad”

Also includes:

Sound marks

3D marks

Wrigley [1999]

However TM cannot be registered if it is merely a property of the product over which trade mark is sought.

Dyson [2007]

‘Graphic Representation’

A trademark:

1. Need not be capable of being perceived visually

2. But must represent the trade mark graphically

• Sieckmann [2002]

  Graphic representation usually by lines, images, letters or numbers

  Sieckmann [2002]

  Any graphic representation must be:

1. Clear; 2) precise; 3) self-contained; 4) easily accessible; 5) intelligible;

6. durable

• i.e. so that it is perceived the same way every time it is seen

7. objective

• i.e. so that it is perceived in the same way by everyone

• Sieckmann [2002]

  ‘Intelligible’

  mark is sufficiently intelligible where it does not require excessive efforts by public to understand it

  Libertel [2003]

  thus e.g. a chemical formula is not sufficiently intelligible

  Sieckmann [2002]

  No need for immediate intelligibility

  suffices that intelligibility is ‘easy’

  Shield [2003] (stave of music)

1. Shape

   A verbal description of a shape does not suffice

   e.g. “a chewy sweet on a stick”

   Swizzels Matlow’s Trade Mark Application [1998]

   Is necessary to have drawings or photographs

2. Smell

   Smell is not adequately graphically represented by either:

1. a verbal description of smell,

2. a chemical formula

3. an odour sample

   Sieckmann [2002]

4. nor a picture

   Eden [2006] (confirming Sieckmann)

   OHIM used to think description of a smell sufficed.

   The Smell of Freshly Cut Grass [1999]

3. Taste

   A verbal description of a taste does not suffice

   The Taste of Artificial Strawberry Flavour [2004]

4. Colour

   Colours can be registered.

   Libertel [2003]

   However as for graphic representation:

1. Colour sample does not suffice

   fades over time: not durable

2. Verbal description of colour may suffice

   but only if sufficiently clear and precise

   this will not normally be case

3. Designation from an international colour code may suffice

   i.e. as this is sufficiently clear and durable

4. Use of colour sample, verbal description and designation from an international colour code in combination may suffice.

   Libertel [2003]

   However even if colour is adequately graphically represented, will probably not be sufficiently distinguishing (see below)

Multiple Colours

Where C wishes to register multiple colours, to satisfy Sieckmann C must specify:

1. Proportion of product that will be taken up by each colour

2. Way in which colours will interrelate

• Heidelberger Bauchemie [2004]

5. Soundmarks

1. Stave with notes on does suffice

   Shield Mark [2003] (ECJ)

2. Verbal description of sounds (i.e. “onomatopoeic representation”) does not suffice

   Shield Mark [2003]

3. Sonogram might suffice

   possibility not ruled out in one case

   Shield Mark [2003]

   possibility expressly approved in later case

   MGM Lion Corp [2004] (ECJ) (Suggested it might be appropriate way of representing roar of a lion)

   however possibility expressly rejected in even later case

   Edgar Rice Burroughs [2007] (OHIM) (Sonogram of Tarzan’s yelp not sufficient)

   2. Sufficiently Distinguishing

      Sign must be distinctive as indicator of commercial origin

      And not of artistic origin

      Danjaq [2009] (‘Dr No’)

      Is not possible to have a mark that is ‘distinctive’, but not ‘capable of distinguishing’

      wherever a mark is distinctive, always satisfies Art 2/section 1

      and vice-versa

      Philips v Remington [2002]

      The three specific exclusions (Article 3(b)-(d)) are merely elaborations of basic requirement of capacity to distinguish

      Philips v Remington [2002]

SERVICE MARKS

Is possible to register a service mark under TMA 1994.

This is a TM applicable in respect of the services of a company

i.e. the trade mark protects the goodwill attached to the provision of those services

as opposed to the goodwill attached to manufacturers/sellers of goods (as is usually the case)

E.g. financial services, professional services etc.

Retail Services

Has been held that it is possible to register trade mark in respect of “retail services”

i.e. where the service in question is the selling of goods by C

Praktiker Bau [2005]

For this to be case however, particular type of goods to which service relates must be specified

i.e. so as to prevent confusion

Praktiker Bau [2005]

Used to be thought this was not possible

i.e. as retailer sells goods, rather than providing services

Absolute Grounds for Refusal

• Absolute grounds for refusal of registration set out in section 3/Article 3.

• These are:

1. Does not satisfy section 1

2. Shape exclusions

3. Not distinctive

• Devoid of distinctive character

• Descriptive

• Generic

4. Public policy and morality

5. Mark is prohibited by law

6. Application is made in bad faith

   1. Does Not Satisfy Requirements of Section 1

      I.e. no registration if trade mark is not a ‘sign’, or not capable of distinguishing.

   2. Certain Shapes

Section 3(2)

Shape cannot be registered as trade mark if it:

1. Results from the nature of the goods themselves

2. Is necessary to obtain a technical result

3. Gives substantial value to the goods

Results from nature of goods

Where designer of product has no choice but to use the shape in question in order to make the relevant goods.

i.e. in principle such a shape should be available to all traders

Procter & Gamble [2000] (no registration of a soap bar)

Necessary to Obtain a Technical Result

For exclusion to apply, no need for shape to be the only one that can achieve the technical result

i.e. fact that it is possible to achieve the same technical result via different shapes does not suffice to make shape registrable

Philips v Remington [2002]

For grounds to apply must be case that:

1. Part of shape performing the technical function are its essential characteristics

2. essential characteristics were chosen to achieve that result

3. shape is one of a limited number that can achieve that result

• Lego Juris [2010]

  Whether shape is necessary to obtain technical result depends on representation of the mark as it is filed

  And not on any “invisible functions” which the shape is known to have

  Simba Toys [2009] (rubix cube)

Shape Gives Substantial Value to Goods

OHIM Guidelines: Shape cannot be registered where it exclusively realises an aesthetic function

and thus has nothing to do with commercial value of goods

Thus where main selling point of an object is aesthetic appeal of its shape, shape of that product cannot be registered

even if product has some other purpose

Bang & Olufsen [2011] (shape of loudspeaker)

1. Distinctiveness

Section 3(1)

Trade mark cannot be registered if:

1. Devoid of distinctive character

2. Descriptive

3. Generic

1. Devoid of Distinctive Character

   Trade mark cannot be registered if it is incapable of identifying product as originating from a particular undertaking

   SAT.1 v OHIM [2004]

   Relevant test is how mark would be perceived by average member of relevant public

   Eurohypo v OHIM [2008]

   Sign must be ‘devoid’ of distinctive character

   thus if there is slightest bit of distinctive character, absolute ground does not apply

   SAT.1 v OHIM [2004]

1. Simple Signs

   Numbers, letters and grammatical signs usually devoid of distinctive character.

   Caterham Car Sales [2000] (number ‘7’ could not be registered for use on cars, as public would simply believe it to be a model number)

   To be distinctive, must have some unusual feature

   Level 3 Communications [2004] (OHIM) (considered that number ‘3’ inside parentheses might be capable of being trade mark)

2. Colour Marks

   Colour marks usually not distinctive

   as consumer not used to making assumptions as to origin on basis of colour

   Libertel [2003] (ECJ)

   Practically impossible for colours to be distinctive except via acquired distinctiveness

   e.g. Heidelberger Bauchemie [2004]

   There is strong public interest in keeping use of colours free for other traders

   Thus likely that colour can only ever be registered in relation to specific good/service

   And not in relation to multiple goods/services

   Libertel [2003]

3. 3D Shapes

   Difficult to register 3D shapes

   i.e. as consumers do not tend to associate them with origin.

   Shape only registrable if it:

1. “departs significantly from the norm or customs of the sector”

2. and thereby has come to act as indicator of origin

• Henkel v OHIM [2004] (ECJ)

‘Significant Departure’

Variations of a common shape usually non-distinctive

Henkel v OHIM [2004]

Shapes similar to those ordinarily used in relevant trade are not distinctive; e.g:

Kit Kat Chunky shape NOT distinctive

Nestlé [2004]

Chain of sausages in a pretzel shape NOT distinctive

Rotter v OHIM [2009]

Shape of a cheese NOT distinctive

BANGRAIN’s Trade Mark [2004]

Grille of a jeep IS distinctive

i.e. as consumers have come to understand car grilles as a sign of origin in general

DaimlerChrysler [2003]

Commercial Origin

Even if shape departs significantly, it must indicate COMMERCIAL origin.

Shape not distinctive if consumers consider it to be merely ‘doing a job’ or ‘decorative’

i.e. here, consumers less likely to thin of shape...