#3614 - Trademarks 1 Cases - Intellectual Property Law

TRADEMARKS 1

Registrable Subject Matter

Dyson v Registrar of Trade Marks [2007] (ECJ)

Dyson had made and sold bagless vaccum cleaners since 1993. Sought to register trademark of: “a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation” (image attached to application). High Court took view that illustrations were entirely descriptive of product. Then made a preliminary reference to ECJ on issue of distinctiveness; however ECJ ignored this question, and instead chose to answer question of whether subject matter of application was in fact capable of registration at all. Held:

Subject matter of case is not a particular type of transparent bin or collection chamber.

Rather it is all the conceivable shapes of such a bin or collection chamber.

Thus the sign sought to be registered is a mere property of product concerned

Hence does not constitute a ‘sign’ for purposes of Article 2.

Justifications

Were someone to be given trademark relating to non-specific subject matter, would gain an unfair competitive advantage.

i.e. as they would be able to prevent competitors designing vacuum cleaners with any sort of transparent collection bin on its external surface, regardless of its shape.

This would be contrary to purpose of Article 2.

Thus on facts,

Graphic Representation

Smell

Sieckmann [2002] (ECJ)

C sought to register trademark described as a ‘balsamically fruity odour with a slight hint of cinnamon’. When making application, C also deposited its chemical breakdown and a sample of odour in a container to German Trade Mark office. Issue was whether an intangible sign may be registered. Held:

‘Graphic Representation’

1. As per Article 2:

1. Trade mark may consist of something not capable of being perceived visually

2. but only provided it can be REPRESENTED GRAPHICALLY

2. This graphic representation must allow the sign to be represented visually (so that it can be precisely identified in trade mark registry.

3. This representation usually done via images, lines or characters

4. Any graphic representation must be:

   clear,

   precise,

   self-contained,

   easily accessible,

   intelligible,

   durable,

   objective.

‘Facts’

On facts, C had not given adequate graphic representation of odour it wished to register.

Neither a chemical formula, description of odour nor a sample of odour is sufficiently clear and precise to constitute a graphic representation

As these are not sufficiently precise.

Eden [2006]

Company sought to register ‘smell of ripe strawberries’. Used this verbal description, and an image of a strawberry. Held:

A picture is not sufficiently precise to constitute a ‘sign’.

However is not impossible that in some circumstances, a smell may be adequately graphically represented by a description.

Colour

Libertel [2003] (ECJ)

C was a mobile phone company. Sought to register trade mark for colour orange in relation to certain telecommunication goods and services. Two issues in case:

1. Can a colour constitute a trademark?

2. Is the application distinctive?

Held:

‘Sign’

In relation to a product or service, a colour per se is capable of constituting a sign.

With regards what may constitute ‘sign’:

1. Colour sample does not suffice

   i.e. as colour fades over time

   thus 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.

Distinctiveness

Colour marks usually not distinctive

i.e. as colour is simply a property of a good

thus consumers not used to making assumptions as to origin on basis of a colour

Thus is practically impossible for a colour to be distinctive without prior use.

Additionally, is public interest in keeping use of colours free for other traders.

Thus less likely that colour can be registered for large group of goods than for a specific good.

Swizzels Matlow’s Trade Mark Application [1998]

Company sought to register trade mark for shape of a lollipop. Application used phrase “a chewy sweet on a stick” to describe shape. Held:

Verbal description of shape does not suffice

Is necessary to have drawings or photographs.

Shield [2003]

C sought to register the first nine notes of ‘Fur Elise’, as well as the sound of a cock crowing. C used musical notation, onomatopoeic representation (‘kukelekuuuu’), and a verbal description (‘the crowing of a cock’). Held:

Fur Elise

No need for immediate intelligibility

Suffices that intelligibility is ‘easy’

Thus fact that not everyone can read music does not stop a stave being sufficient graphical representation

Cock Crowing

Verbal description of sounds does not suffice

1. Is lack of consistency between onomatopoeia and sound

• Thus not precise

2. Different people have different perceptions of onomatopoeia

• Thus not objective

MGM Lion Corp [2004] (ECJ)

Suggested that sonogram might be appropriate way of representing a lion’s roar.

Edgar Rice Burroughs [2007] (OHIM)

Held that sonogram of Tarzan’s yelp was not a sufficient graphical representation.

Sufficiently Distinguishing

Danjaq [2009]

C sought to register trade mark ‘DR NO’. Held:

Sign must be distinctive as indicator of commercial origin

And not of artistic origin

‘Dr No’ is seen as distinguishing one Bond film from another, and not as designation of commercial origin.

Service Marks

Praktiker Bau [2005] (ECJ)

C sought to register mark for ‘retail trade in building, home improvement and gardening goods for the home improvement sector’. Held:

Is possible to obtain trade mark in respect of provision of retail services.

However particular type of goods to which service relates must be specified.

“Retail services” does not just include act of selling goods; includes e.g.:

Selection of goods

Provision of services designed to induce customer to buy their products at C’s store rather than at a competitor

Therefore no need to restrict definition of services so as to exclude ‘retail services’

Absolute Grounds for Refusal

Simba Toys [2009]

• E.g. rotating function of a rubix cube cannot be ‘read back’ into a pictorial representation of the cube

  • As a mere picture of a cube does not suggest any technical result to be achieved; is simply a shape

Bang & Olufsen [2011]

• shape of loudspeaker could not be registered, as main selling point of speaker was its sleek design

Marks Devoid of Distinctive Character

Storck (Werther’s Original) [2006] (ECJ)

C sought to register shape of Werther’s Original. Claimed that use of pictures of Werther’s original on front of packets amounted to use of 3D shape mark. Held:

• Held that use of pictures of Werther’s Originals on the front of packets did not amount to use of the 3D shape mark.

Oska’s Trade Mark Application [2006]

C sought to register name ‘Morgan’ in relation to clothing.

• Rejected due to how common name was, and frequency with which it was used in clothing industry.

• Stated that in clothing industry, consumers see names only as indicator of source only where they are full (e.g. Ted Baker)

Procter & Gamble [2002]

Shape for a bar of soap, even if sufficient departure from norm, would be interpreted as a functional feature making soap easier to grip or aesthetic (rather than as indicator of origin)

Descriptive Marks

Baby Dry [2001]

Company sought to register trade mark ‘Baby Dry’ in relation to nappies. Held:

“Baby dry” was a lexical invention

Thus as a whole, mark was not descriptive

Juxtaposition of words was unfamiliar in English language

Combination of words was not used to describe either nappies or their characteristics

This was case even though individual words themselves were descriptive.

Doublemint [2003]

Chewing gum company sought to register trademark “doublemint” in relation to a chewing gum. Held:

Facts

“Doublemint” simply indicated a doubling of mint flavour

The two individual words themselves were descriptive

And word as a whole was no different from sum of its parts

i.e. as only difference was that space between words had been subtracted

Thus was descriptive of goods characteristics

Multiple Meanings

Mark is excluded if at least one of its possible meanings is descriptive of goods

Even if some of its other possible meanings are not descriptive

Thus fact that there is ambiguity as to nature of mint involved (peppermint, spearmint) is irrelevant.

Futurity

Trade mark may be refused even if mark is not actually descriptive of goods at time of application

provided that it could be used for descriptive purposes

Postkantoor [2004]

Company sought to register term ‘STINKY’ a trade mark for weedkiller. Held:

Mark is excluded where it is capable of designating characteristic of goods or services.

This case even if characteristic in question is of peripheral importance to goods.

Thus ‘STINKY’ might not be registrable for weedkiller

even though most important characteristic of weedkiller is its effectiveness at killing weed

Windsurfing Chiemsee [1999]

Company sought to register word ‘Chiemsee’, the largest lake in Bavaria, as trade mark for clothing and sportswear. Question was whether it was descriptive. Held:

Descriptive Marks

Mark which is the name of a geographical place not registrable where place is:

1. Currently associated with goods concerned

2. Or it is reasonable to assume that such an association may be established in future

   Relevant association may be belief amongst consumers that:

   Goods are manufactured in that place

   Goods are ...