#1694 - Trademarks Subject Matter - Intellectual Property Law

1. Subject Matter – Is it a registrable mark?

Test: A sign must comply with the definition of a TM in s.1(1)/Article 4 CTMR.

!! S.3(1)(a): Failure to comply with any requirement means the sign will not be registered as absolute refusal ground.

!! S.47: If a mark is incorrectly registered, the registration may be declared invalid.

----------------------------------------------------------------------------------------------------------------------------------------------

(i) What is a ‘sign’?

No statutory definition. No limit a priori on what constitutes a sign – very broad. Positive approach taken.

Starting point: S.1(1) non-exhaustive list: ‘words (including personal names), designs, letters, numerals or the shape of goods or their packaging.’

• Wm. Wrigley/Light Green [1999]; ‘to be interpreted as a very broad, ‘open’ and general term encompassing all conceivable types of marks (including, for example, sound marks and three-dimensional marks)’ (para 17).

• Ralf Sieckman [2002]; ECJ held the concept of a ‘sign’ is not limited to visually perceptible matter. Both sounds and smells fall within this category.

Limitations:

1. Application must be specific. Registration of a mere, unspecific property of a product would provide an unfair advantage to the trader who registered it:

• Dyson [2007];

Facts: Attempt to register idea of a transparent collection chamber on a vacuum cleaner in ‘all conceivable forms’.

Decision: Too vague. ECJ held this was a mere property of the product, and the protection of anything so unspecific (i.e. no colour was even mentioned) would provide any unfair advantage to the trader because he would be able to prevent other manufacturers from selling vacuum cleaners with transparent collection bins. Sign must be capable of conveying origin.

Criticism: + Bently: Not clear when a TM gives ‘unfair advantage’ nor what this has to do with whether the subject matter is a ‘sign’. Maybe the real objection in both bases is that the application is applying for a category of signs, and the TM system requires individual apps.

2. An applicant for a colour mark must establish that the colour in question is seen as a ‘sign’, to prevent unfair advantage, and not simply a property or characteristic of a thing:

• Heidelberger Bauchemie [2004];

Facts: Attempt to register a combination of colours (blue/yellow) howsoever applied to articles or packaging.

Decision: ECJ held that, while a colour could be a sign, it was normally just a property.

Criticism: + Bently: ECJ provided little guidance on how an applicant was to establish (or an office to assess) the semiotic status of a colour of colour combination. If the requirement is that the applicant must show that consumers see the colour as indicative or origin then it seems to add nothing over the demand that the mark not be devoid of distinctive character.

----------------------------------------------------------------------------------------------------------------------------------------------

(ii) ‘Graphic Representation’

Why? Legal certainty - ensures mark is delineated clearly to show the limit of the TMO’s rights. Assists people looking in the TM register to see whether their mark would infringe another’s rights.

• Ralf Sieckmann [2002]; Graphic representation: ‘Must enable the sign to be represented visually, particularly by means of images, lines or characters. The representation must be ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’.

Graphic representation can be a significant hurdle. Case law development:

*Smells?

Initially generous approach:

• Vennootschap/The Smell of Fresh Cut Grass [1999];

Decision: Succeeded in his registration. Held, ‘the smell of freshly cut grass is a distinct smell which everyone immediately recognises from experience. For many, the scent or fragrance of freshly cut grass reminds them of spring, or summer, manicured lawns or playing fields, or other such pleasant experiences.’

Criticism: + Seville thinks could distinguish between different smells of grass. Also the smell is very subjective. Smell senses may be different in different people.

More restrictive approach:

• Ralf Sieckmann [2002];

Facts: RS wanted to register the smell of cinnamon – described the scent in words (‘balsamically fruity with a slight hint of cinnamon’), included a chemical formula, and deposited an odour sample with their application.

Decision: Words held to be a graphic representation but were not clear, precise, effective or specific enough. Odour sample was not specific or durable. Nobody could read the chemical formula and know what it smelt like. So neither effort, on their own, or in combination, was sufficient to be graphic representation.

Significance: Virtually impossible to register smell.

• Eli Lilly and Company/The Taste of Artificial Strawberry Flavour [2004];

Decision: Office said the smell of ripe strawberries varies from variety to variety. There is subjectivity. As there is no internationally recognised classification of smell, the smell cannot be identified objectively by a name or code.

• Eden v. OHIM [2006] (‘the smell of ripe strawberries’); Same as in Eli Lilly above.

• Institut Pour la Protection des Fragrances (IPF)’s Application [2005];

Facts: Sign purported to be a graphic representation of a particular fragrance – coloured rectangle with stripes. Additional descriptive phrase – ‘a lawn green note, citrus (bergamot, lemon), pink floral (orange blossom, hyacinth) musky’ – samples could be obtained from the applicant’s lawyers. Rectangle produced by using a protocol common to the fragrance industry – electrical signals used for identification and comparison.

Decision: Relevant public would not be aware of system of classification, so registration on register would not convey the smell. Ordinary traders searching the register would not know. Using the language of fragrance failed.

Significance: High thresholds for smells because there are means of categorising smells in this area.

Issue: If smells were protected, by wearing the perfume, would I be distributing it?

Protection for ‘smell-alikes’? Remote possibility. See essay plans.

*Colours? Fine for graphic representation, but hard to distinguish

• Libertel Groep BV v. Benelux-Merkenbureau [2003];

Facts: ECJ considered whether a single colour could constitute a TM?

Decision: Yes, although it is normally a property of a sign. However, depending on the context a single colour could constituent a sign. Referred to Sieffman criteria – mere samples are insufficiently specific, but a verbal description may do, but a sample and international recognised code may be ok. Colour on paper not durable enough.

NB. Second hurdle - For colours, even if the graphic representation is acceptable, the requirement of distinctiveness is also a significant hurdle. Dual problem. Could be possible if an international code was used.

*Sound marks?

• Shield Mark BV v. Joost Kist [2003];

Facts: SC of Netherlands asked ECJ questions about how they could satisfy requirements for sound marks. Concerned two marks:

1. Für Elise: a musical stave with first nine notes; a description, “Sound mark. The trade mark consisted of the representation of the melody formed by the notes/staves (graphically) transcribed on the stave’; and the sequence of musical notes ‘E, D#, E, D#, E, B, D, C, A”.

Decision 1: Musical staves are common enough to be graphically represented. The sequence of musical notes failed because there was no indication of pitch, and the first 16 notes are not enough.

2. Cockcrow: represented in different ways, including: ‘Kukelekuuuuu’, an onomatopoeic word suggesting (in Dutch) a cockcrow; and a description, ‘Sound mark, the trade mark consists of an onomatopoeia imitating a cockcrow’. Invoked Sieffman requirements again.

Decision 2: Words lacked necessary precision and clarity. Onomatopoeic representations allow people searching the register to comprehend the actual noise. Musical notes without indication of pitch or duration not ok, but correct written music may constitute faithful representation of sound so would allow public/traders to know sound precisely.

*Sonograms?

• Metro-Goldwyn-Mayer Lion Corporation’s Application [2004];

Facts: Mark ‘constituted by the sound produced by the roar of a lion’ and ‘represented’ by a spectrogram. Would sonograms suffice?

Decision: Board willing to consider sonograms as adequate representations and drew an analogy with musical scores. The fact that you would need practice to read it is irrelevant as the same is true for music. But this particular sonogram was not precise for pitch etc.

Significance: Left door open for sonograms. Not even an expert could read it.

More strict approach – closed door on sonograms:

• Edgar Rice Burroughs, Inc. v OHIM (2007);

Facts: Mark consisted ‘of the yell of the fictional character TARZAN. The yell consisted of five distinct phases, namely: sustain, followed by ululation, followed by sustain, but at a higher frequency, followed by ululation, followed by sustain at the starting frequency’.

Decision: A spectrogram did not meet the Shield Mark requirements, for a number of reasons: not self-contained (not even a superior specialist of spectrograms could read it on their own without special instruments, so not accessible to reader of the CTRegister). In contrast, musical notation was not ambiguous. Community Trade Mark rules now allow you to register sound files. Hard for expert to figure out, so not enough for graphic representation.

Development: CTMIR Rule 3(6); Decision No. EX-05-3...