#16783 - Trademarks - Intellectual Property Law

Must be a (i) sign (ii) capable of being represented clearly and precisely.

When a mark is a ‘concept’ rather than a ‘sign’ and thus does not satisfy s1(1)

• When multitude permutations can satisfy the mark.

Case examples

• Dyson:

  • Tried to register ‘mark consists of a transparent bin on the surface of a vacuum cleaner’ multitude of permutations possible.

• Nestlé v Cadbury:

  • Tried to register this as a trade mark: ‘the predominant colour purple applied to visible surface of the packaging’ multitude of permutations possible.

• Spear & Mattel v Zynga:

  • attempt to register a scrabble tile design failed as there was a huge range of possible combinations of ivory-coloured tiles, roman numerals and letters of the alphabet.

• As per Recital 13 New Trade Mark Directive 2015 (New TMD), this still requires the 7 Sieckmann criteria to be met.

1. Shapes

1. Verbal description of a shape mark: not clear and precise (Dyson ; Nestlé v Cadbury)

2. Smells

• Unlikely to be clear and precise as no international classification of smells.

1. Verbal description of smell: not clear and precise (Sieckmann)

2. Sample of smell: not durable (Sieckmann)

3. Chemical formula: not intelligible (Sieckmann)

3. Colour

• Yes: clear and precise if the Pantone number is included (Libertel)

• Not for a verbal description of the colour without the pantone number (not clear and precise) (Libertel)

• Not a sample of a colour as not durable (Libertel)

4. Sound

1. Sound file: yes as is clear and precise + we don’t have the requirement anymore for it to be a graphical representation in new TMD 2015 (which came into force in 2019)

2. Shield Mark:

   • Verbal description (application said ‘I want to register the crowing of a cock’) = not clear and precise.

   • Onomatopoeia = not clear and precise.

   • Series of notes (AB#CEFG..) = not clear and precise.

   • Musical stave = yes clear and precise.

5. Taste

• No - not clear and precise (Levola Hengelo)

• The mark must possess a distinctive character, i.e. indicate trade origin to the average consumer (Linde, Winward)

1. For shapes

• Shape mark is only distinct if the shape departs significantly from the norms and customs of the relevant sector. (London Taxi)

2. For colours

• Colours are devoid of distinctive character (so cannot be registered) except in exceptional circumstances (Libertel)

3. For slogans

Compare these two cases

• KitKat:

  • Slogan trying to register: ‘Have a break’

  • Held: devoid of distinctive character.

  • Why? would be understood by the average consumer to be a neutral invitation to consume a snack, rather than indicating trade origin

• Audi AG:

  • Slogan trying to register: ‘Advancement through technology’

  • Held: was distinct

  • Why? phrase had a number of meanings; could be said as being imaginative.

4. Personal names

• If the surname is common (e.g. ‘Smith’) then that indicates it is not distinct/not indicative of trade origin.

• Combining forename + surname (like in ‘Ted Baker’) makes it more likely to be distinct/indicate trade origin (Oska)

s3(1)(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, the time of production of goods or of rendering of services, or other characteristics of goods or services,

• If the mark is descriptive of the goods/services then falls under s3(1)(c) absolute ground for refusal.

1. A word mark which has a descriptive and non-descriptive element

2. Lexical inventiveness

• A mark which consists of two descriptive terms will be descriptive itself, unless it has a degree of lexical inventiveness:

  • Baby Dry: the word ‘baby’ and ‘dry’ each were descriptive of the good, diapers, but because of their lexical inventiveness, i.e. was not a familiar expression for describing nappies, it was not excluded. (syntactically unusual juxtaposition)

3. Dual meaning

• Provided that at least one of its meanings is descriptive of his goods/services, then it falls within the s3(1)(c) (Doublemint)

4. Peripheral/ancillary characteristics count

• If the mark is descriptive of a peripheral characteristic of a good (e.g. contains ‘silver’ for a silver laptop) then that still means it falls within s3(1)(c) and is excluded (Postkantoor)

• Even if the mark falls under s3(1)(b)-(d), it will not be excluded it the mark has acquired distinctiveness (s3(1)), i.e. acquired secondary meaning/indicates trade origin to the average consumer.

• Windsurfing factors to consider to determine whether has acquired distinctiveness (i.e. secondary meaning)

1. Market share held by the mark

2. Whether the use of the mark has been for a long time + geographically widespread.

3. C has spent a lot of money/done extensive advertising using the mark

Under s3(2) TMA, a sign shall not be registered if it consists exclusively of the shape (or another characteristic)

(a) which results from the nature of the goods;

(b) which is necessary to obtain a technical result; or

(c) which gives substantial value to the goods.

Effect of new TMD 2015

• Following New Trade Mark Directive 2015, (came into force 2019) s3(2) applies to shapes or ‘another characteristic’, i.e. colour, surface design (e.g. pattern mark on surface), sound, smell.

Under s3(2) TMA, a sign shall not be registered if it consists exclusively of the shape (or another characteristic)

(a) which results from the nature of the goods;

Under s3(2) TMA, a sign shall not be registered if it consists exclusively of the shape (or another characteristic)

(b) which is necessary to obtain a technical result; or

• The functional shape exclusion only applies to shapes which achieve a technical result, rather than being the consequence of a technical process (KitKat):

Under s3(2) TMA, a sign shall not be registered if it consists exclusively of the shape (or another characteristic)

(c) which gives substantial value to the goods.

• Applies when the shape gives substantial value to the goods (covering aesthetic/ornamental value), even if the shape has other characteristics such as comfort, safety etc. (Huack)

Hauck criteria

To determine whether the ornamental shape exclusion applies, the criteria must be considered:

1. How important the shape is to the consumer

2. Artistic value of the shape

3. Whether it is dissimilar from other shapes in the relevant market

4. If there is a substantial price difference in relation to similar products

5. If advertising is focused around accentuating the aesthetic characteristics of the shape

(3)A trade mark shall not be registered if it is—

(a)contrary to public policy or to accepted principles of morality, or

(b)of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).

• A mark will not be registered if it is contrary to public policy (s3(3)(a))

Note

• Mere bad taste is insufficient (Ghazillian)

• A mark will not be registered if it is of such a nature as to deceive the public (s3(3)(b))

Case examples

• Elizabeth Emanuel:

  • Her clothing brand was called ‘Elizabeth Emanuel’ (apparently a very famous designer). She left the brand and then claimed that the mark ‘Elizabeth Emanuel’ was deceitful as it indicated that the clothes were still designed/sold by her when they were not.

  • Held: no deception as the quality of the goods stayed the same; look at s3(3)(b): there was no deception as to quality.

(6)A trade mark shall not be registered if or to the extent that the application is made in bad faith.

(1) Trader has no intention of using the mark

• It is not clear whether the mark will be excluded for bad faith under s3(6) - the question has been referred to the CJEU in Sky v Skykick. Common sense would indicate, however, that this would be bad faith.

s5(1)

A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.

Identical marks

• Interpreted strictly, though insignificant differences between the marks, which go unnoticed by the average consumer, do not matter (Diffusion)

Identical goods/services

s5(2)A trade mark shall not be registered if because—

(a)it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or

(b)it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the...