#15021 - Trademark Absolute And Relative Grounds Of Refusal - Intellectual Property Law

Art 3(1)(b)-(d), s3(1)(b)-(d)

Purpose

• Ensure that the register contains only signs that function as trade marks

• Filter applications on policy grounds

3 independent grounds

• Should be examined separately

• Concerned with the nature of the sign

  • Subject to the Art 3(3) proviso of acquiring distinctiveness through use

• Overlapping: A mark that fails Art 3(1)(c) for descriptiveness would fail Art 3(1)(b)

Approach

• The mark is examined in relation to goods or services

  • Cannot consider it in abstract or in general

• The viewpoint adopted is that of the average consumer

  • Reasonably well-informed, reasonably observant and reasonably circumspect

  • Attributes could differ based on categories of goods and services (e.g. high value items usually warrant more care)

• Consisting exclusively of signs or indications which may serve in trade to designate the kind, quality, intended purpose … or other characteristics of goods or services

• Bentley and Shearman: ‘protective function’

  • If one greengrocer given protection over word ‘oranges’, will limit ability of other greengrocers to convey information about their goods and services

  • In the public interest!

• Chiemsee is the name of a Bavarian lake (in Germany)

• C was situated near the shores of the lake and sold sporting goods (manufactured elsewhere) that were labelled ‘Chiemsee’

• C sued D (operating nearby) for using the same word but in different graphic form

  • D claimed it was a geographical term which couldn’t be protected

• CJEU: Can’t register a geographical name if associated with the goods

  • Purpose of Art 3(1)(c) is in the public interest, “that descriptive signs or indications … may be freely used by all”

  • For geographical names (even if not designating a famous location), “it is in the public interest that they remain available”

  • The question is whether the geographical name “designates a place currently associated in the mind of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future”

  • Relevant factors: “degree of familiarity” with the name, “characteristics of the place designated” and the “category of goods”

  • The connection with the geographical location need not be where the goods are manufactured but could also be where they were “conceived and designed”

• IMPLICATION: Description may be of manufacturing origin or design origin

• IMPLICATION: The relevant time at which the sign is descriptive can be in the future

• C sought to register ‘Baby-Dry’ for diapers, OHIM refused on grounds of descriptiveness and case went to CJEU

• CJEU: ‘Baby-Dry’ could be registered

  • Only purely descriptive signs cannot be registered

  • The test is whether the words are the same as those “used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics”

  • Here, the “syntactically unusual juxtaposition is not a familiar expression” so it is sufficiently distinctive

• ISSUE: This seems to be applying a more lenient test than Windsurfing and only looks at current associations with the goods (not future)

• NOTE: This is NOT the current approach

• C rejected D’s application to register ‘Doublemint’ as a CTM for chewing gum

• CJEU: Applied a strict test, couldn’t be registered

  • It is “not necessary that the signs and indications … actually be in use at the time of the application”, as long as they “could be used for such purposes”

  • A sign fails Art 3(1)(c) “if at least one of its possible meanings designates a characteristic of the goods or services concerned”

  • CFI applied a test of whether the mark is “exclusively descriptive”, which is the WRONG test to apply

• NOTE: This appears to reaffirm the Windsurfing approach instead of Baby-Dry, and subsequent cases have adopted a similar approach

• Application to register ‘Postkantoor’ (Dutch word for post office) for a range of goods including stamps, paper and advice

• CJEU: Applied a strict test on descriptiveness

  • “The fact that a mark has been registered in one Member State in respect of certain goods and services cannot have any bearing on whether” it can be registered in a “second Member State in respect of similar goods or services”

  • Public interest requires descriptive signs to be freely available to allow other undertakings to describe the same characteristics of their goods

  • Applied the Windsurfing test

    • “It is irrelevant whether there are other, more usual, signs or indications for designating the same characteristics”

    • A sign is descriptive even if it is not the “only way of designating”

    • “A word must therefore be refused registration … if at least one of its possible meanings designates a characteristic” of the goods

    • Must protect other operators who might offer the same goods/services in the future

  • A combination of descriptive elements is also descriptive unless it is an unusual combination or has secondary meaning apart from the parts

  • The characteristics of the goods described can be “commercially essential or merely ancillary”

  • Trade marks cannot be registered for goods and services as long as they “do not possess a particular characteristic”, would lead to legal uncertainty

• NOTE: UK has adopted a narrower view of what characteristics are described

  • Agencja Wydawnicza Technopol v OHIM [2011] ETMR 34

    • C sought to register CTM for ‘1000’ in relation to brochures and periodicals

    • OHIM rejected the application on grounds of descriptiveness

    • CJEU: This mark was descriptive

      • Not necessary that the sign “actually be in use at the time … in a way that is descriptive”, as long as it could be

      • Number of existing competitors interested in using the sign is irrelevant

      • The characteristic being described should be a “property, easily recognisable by the relevant class of persons, of the goods”

      • For a numeral sign to be rejected, “it must be reasonable to believe that, in the mind of the relevant class … the quantity indicated by those numerals characterises the goods or services”

• Trade marks which are “devoid of distinctive character”

• Rationale

  • Henkel KGaA v OHIM (2005): There is no public benefit in conferring legal protection on a trade mark that doesn’t fulfil its function in indicating trade origin

  • SAT 1 (2004): The public interest is “indissociable from the essential function of a trade mark” which is to “guarantee the identity of the origin”

A trade mark’s distinctiveness is assessed by reference to the goods or services listed in the application and to the perception of the relevant public. The relevant public consists of average consumers of the goods or services in question, who are reasonably well informed and reasonably observant and circumspect

• CJEU: Dealt with the issue of when a colour could be distinctive within Art 3(1)(b)

• “A colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking” unless in exceptional circumstances and restricted markets

• A colour can ACQUIRE distinctiveness by familiarising the public to use it to “identify the product concerned as originating from a particular undertaking”

• Whether the registration is for a “large number of goods of services, or for a specific product or services … is relevant” in assessing distinctiveness and public interest

  • Distinctiveness: whether the relevant public perceives it as indicating origin

  • Public interest: in keeping the mark available for use by others

• The authority must “carry out an examination by reference to the actual situation”, including actual use of the mark, to determine distinctiveness

  • Based on the specific goods/services and the relevant public’s perception

• C applied to register ‘SAT.2’ as a CTM for services connected with broadcasting

• CJEU: Distinctiveness of a composite mark must be based on “an appraisal of the whole which they comprise”

  • “The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present a distinctive character”

  • Registration “is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness”

    • Need only “enable to relevant public to identify the origin”

  • OHIM was WRONG to find that SAT.2 lacked distinctiveness

• C wanted to register ‘Nichols’ (common surname) as trade mark for vending machines, food and drink

• Registrar allowed application for vending machines but not food and drink

• CJEU: “The criteria for assessment of the distinctive character of trade marks constituted by a personal name are therefore the same as those applicable to the other categories”

  • The perception of the relevant public “is not necessarily the same for each of the categories”

• C wanted to register CTM for shapes (and colors) of washing tablets

• OHIM held that it was devoid of distinctive character

• CJEU: Applied the significant departure test

  • Distinctive character is assessed “by reference to the products or services” and “by reference to the perception of the relevant public”

    • Test of “average consumers … who are...