#1689 - Trademarks Absolute Grounds For Refusal - Intellectual Property Law

2. Absolute Grounds for Refusal

Cover inherent objections to a sign’s distinctiveness, and various public interest objections, including bad faith. Signs which do not comply may not be registered, or, if registered are liable to be declared invalid.

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S.3(1)(a) Signs which do not conform to the requirements of a trade mark (see above)

Signs which do not fall within the definition of a trade mark just discussed (for instance because they are not capable of graphic representation, or are not ‘capable of distinguishing’) may not be registered.

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S.3(1)(b) Trade marks which are devoid of any distinctive character (most general): These products cannot be distinguished from other items. Guarantee of origin is not satisfied.

Case law development:

• Joined Cases Linde AG, Winward Industries, Rado Uhren AG [2003]; To exclude marks which are not ‘capable of identifying the product as originating from a particular undertaking and thus distinguishing it from other undertakings’.

• Eurocermex v. OHIM [2005];

Test: To assess whether a TM has any distinctive character, consider the overall impression given by it. However, it may be useful, in the course of the overall assessment, to examine each of its components.

• Koninklijke [2004]; A TM’s distinctiveness is assessed by reference to the goods or services listed in the application and 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.

• SAT.1 2004]; An element of public interest is that other traders, offering the same type of goods or services, should not be unduly restricted.

• Eurohypo AG [2008]; The level of distinctiveness required is not challenging: mark must be ‘devoid’ of distinctive character. No requirement that the sign should exhibit any particular level of linguistic or artistic creativity. But the trade mark must enable the relevant public to identify the origin of the goods or services protected by it, and to distinguish them from those of other undertakings.

Examples which are devoid of ‘distinctive character’

• Volkswagen AG (Silhouette of a Car) [2008];

Facts: ‘The trademark illustrates the silhouette of a motor vehicle appearing in the dark through the use of an illuminated white dotted line and other areas of the vehicle that are also luminous.’

Decision: BoA held, ‘The appellant rather invokes an abstract idea, namely the notion of a car silhouette seen at night. Just as copyright or design protection, trade mark protection does not have the protection of abstract ideas as its purpose. Protection of a trade mark can only be granted for the representation of the mark as actually filed and to the extent that it discloses distinctive features.’

• X Technology Swiss v. OHIM (2010); Orange toes for socks not distinctive. The relevant consumer here was ‘just buying socks’. These colours were not an indication of origin, they were decorative.

• Lindt; Lindt bunnies shape and the red bell were not distinctive.

Part of a mark:

If the mark is a compound mark, the whole of the mark must be assessed for distinctiveness (the overall impression). The mere fact that each element, considered separately, is devoid of distinctive character does not mean their combination cannot present a distinctive character.

• Cargo Partner v. OHIM [2005];

Facts: Co. wanted to register the name ‘Cargo Partner’ for the transport, packaging and storage of goods.

Decision: Held ‘cargo’ and ‘partner’ were generic words. There was nothing in the sign as a whole to indicate that it had a meaning other than that of presenting a partner offering services of transport, packaging and storage of goods. Even where these two words are put together this cannot be a TM because the overall impression is devoid. Can look at elements leading to an overall assessment.

Vs.

• SAT.1 SatellitenFernsehen GmbH v. OHIM [2004]; SAT.2, for services connected with satellite broadcasting. Not devoid of distinctive character when considered as a whole. Overall impression was considered just over the line.

• The Smiley Company v. OHIM (2009);

Facts: Co. wanted to TM half of the smiley face for their emoticons business.

Decision: Held no. CFI pointed out that just because a whole mark is distinctive, it does not mean that an extract from it (part of the sign) is likewise distinctive.

*NB. All signs (every single type) are to subject to the same tests for the purpose of assessing their distinctiveness: Linde AG, Winward Industries, Rado Uhren AG [2003]

But still helpful to look at the way different types of signs are handled in practice: test functions differently depending on the type of sign.

*Letters, numbers, geometric shapes?

• Numeral 7 [2000]; A plain numeral alone, without any unusual or fanciful feature, is devoid of distinctive character. It ‘belongs in the public domain and forms part of the store of signs available to all traders’.

• Cargo Partner v. OHIM [2005]; Simple designs such as circles or squares are generally considered to be devoid of distinctive character.

• BORCO-Marken-Import Matthiesen GmbH [2010];

Facts: App. to register Greek letter alpha (lower case, no graphic modifications) for certain alcoholic beverages.

Decision: Alpha could not be presumed to be devoid. However, there had to be a concrete indication that alpha meant ‘quality’ to the public.

Significance: Test same for all categories of marks. Even though certain categories may be prima facie less likely to be distinctive, must still assess whether, given the facts, the sign is capable of distinguishing the goods or services.

*Colours?

General approach: Though it may constitute a sign, normally a colour is a simple property of things. Consumers not accustomed to making assumptions about origin of goods on basis of their colour, or colour of their packaging alone. Usually there will be some additional graphic or textual element. Hence, colour per se is not normally distinctive.

Also, ECJ acknowledged in Libertel that there is, in Community trade-mark law, a public interest in not unduly restricting the availability of colours for the other traders:

• Libertel;

Facts: Applicant dyed his seeds orange before he sold them to farmers.

Decision: The Court noted that in the case of a colour per se, ‘distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific’. However, orange seeds could come to be regarded as from a particular origin if farmers were educated to think that (prior use).

= Possible for a narrow class of goods in a narrow market.

• KUKA Roboter (2010);

Facts: Applicants wanted to register a particular colour of orange for industrial robots.

Decision: Devoid of distinctive character as consumers would not think colour meant origin. Bar to the registration.

Significance: A single colour mark is got only in exceptional circumstances where there is a narrow range of goods and a well educated public. Do not want trader’s unfair advantage.

However, distinctive character may be acquired through use:

• Heidelberger Bauchemie GmbH. [2004];

Facts: Application was for a combination of the company’s corporate colours – blue and yellow. Claimed them ‘in every conceivable form’.

Decision: The application for registration must include ‘a systematic arrangement associating the colours concerned in a predetermined and uniform way’.

• BCS SpA v. OHIM, Deere & Company (2009); Green and yellow tractors were successfully registered – green for vehicle body and yellow for the wheels. This combination successfully survived a recent challenge in the court.

*Texture? Possible, hard to show…

• Glaverbel v. OHIM [2008] (textured glass); Textured glass held to be devoid of distinctive character because it looks like patterned glass, not a TM. The public have not been educated to think of textured glass as a TM.

• Freixenet v. OHIM (2010) (appearance of wine bottles);

Facts: Argued the surface of wine bottle was TM – the surface of a black and clear bottle that looked gold embossed.

Decision: Not distinctive because it did not indicate origin.

*Shapes? Look for something beyond norms and customs…

Criteria for assessing the distinctiveness of three-dimensional shape of product marks are no different from those to be applied to other trade marks (Phillips v. Remington). Nevertheless, it may in practice be more difficult to establish distinctiveness in relation to a shape mark than a word or figurative trade mark. The public is accustomed to perceiving word and figurative marks as identifying the trade origin of the goods, but may not regard shape as communicating anything at all.

• Henkel [2004] (Ovoid Dishwasher Tablet);

Facts: Applicant tried to register the red, blue and white tab – two layered bi-coloured dishwasher tab. The relevant consumer is ‘tablet buyers’, who would not pay a high degree of importance to the shape.

Decision: Distinctiveness here demands, ‘only a trade mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin’ would not be devoid of distinctive character.

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