#16184 - Trademarks - Intellectual Property Law

Koninklijke Philips Electronics v Remington: essential function: badge of origin

• Functions of Trade Marks:

  • Quality function: incentive to maintain good quality

  • Advertising function: sales promotion or as instrument of commercial strategy

  • Investment function: preserve reputation attracting consumers/ retaining loyalty

  • Communication function: communicative instrument for brand/ marketing image. This encompasses above functions as well

Specsavers – protects the mark as it is registered. No need to look for goodwill – just bring to court the paper of certification

• Registration of Trade Marks:

  • File an application with a representation of a mark

  • Application is examined

  • Successful application is published in IPO journal

  • Opposition by anybody who has problems with application, 3 months after publication of journal. Can oppose to:

    • An identical mark (double identity cases)

    • A mark that confuses the origin of a goods/ services to consumers because of their similarity

    • A later, similar mark that may dilute your business

  • If no opposition, mark is registered

• Just because trademark registered, still needs to be maintained

• Principle of specialty: marks cannot be claimed in abstract but only in respect to some goods or services. Have to be given under a class heading (45 classes) with some 11,000 types of goods and services under them.

• Section 1, TMA 1994 defines Trademark as a:

  • Any sign

  • Capable of being represented graphically or in a way that competent authorities and public to determine clear and precise subject matter

  • Capable of distinguishing goods or services of one undertaking from those of other undertakings

START by looking at last point: capability of distinguishing feature

• Libertel Groep v Benelux Markenbureau –Found colours can carry meaning (flags, emotions, team, public services), so while having little capacity to convey information about the commercial source, can still be capable of being distinguishing.

• Ralf Sieckmann v Deutsches Patent – Smells can be distinguishing feature

• Shiekd Mark v Joost Kist – Sounds can be distinguishing feature

• Interactive Intelligence – word mark ‘Deliberately Innovative’ lacked distinctiveness

A sign – “a symbol for something else”

• Libertel Groep – Colours can be signs

• Dyson – sought to register the transparent bin or collection chamber forming part of the external surface of a vacuum cleaner. Can be dist. but not a sign. Instead it is a CONCEPT

Represented graphically or in a way that competent authorities or public can determine clear and precise subject matter

• Purpose of requirement is to:

  • Enable competent authorities to know what mark is so that they can rule on its protectability and allow for objections (reproduce in 8x8cm box in TM Journal)

  • Enables courts to determine the scope of the right when assessing infringement.

  • Enables mark itself to perform its functions (mainly communication) since it can be perceived by the consumers in a precise and uniform manner

• ! Post January 2019 will replace ‘capable of graphically being represented’ to ‘sufficiently clear and precise’!

• Sieckmann criteria – defines what graphic is, particularly by means of images, lines or characters. Representations must be:

  • Clear

  • Precise

  • Self-contained

  • Easily accessible

  • Intelligible

  • Durable

  • Objective (by a reasonably observant person)

Sieckmann case dealt with smell marks of a chemical substance: balsamically fruity with a hint of cinnamon. Provided chemical formula, written description and sample of the smell. Chemical formula was found to be graphic but not a representation (does not tell what the smell is). Also indeterminable by the public. Found also to not be sufficiently intelligible. Was not clear (needed more information) and was subjectively determined so each person could describe the smell differently. Odour sample was a representation but not graphic because not sufficiently stable or durable. Very high threshold to meet to show that smell should be trademarked.

• Smells can be trademarked though post-Sieckmann. For example the “smell of fresh cut grass” for tennis balls. In UK registered scent marks are the “floral fragrance/ smell reminiscent of roses” for tires or the “strong smell of bitter beer” for darts.

• Libertel Groep – representation was made in colour sample, description of colour and internationally recognized colour identification code. Go back to Sieckmann criteria and need to satisfy all of them even if it is through different representations (so even if colour sample is not durable, not objective can use in combination with word description or international recognizable colour identification code).

• Shield Mark – can sounds be signs? Yes – for example a hymn for a country. Graphically representable? Yes but have to use exact notation so that 3P are able to reproduce the sound themselves. What about the normal consumer who can’t read piano scores? Does not matter, found still complete Sieckmann criteria. Threshold lowered for sound.

What about onomatopoeia (like the sound of a crow)? Found that it’s not very objective because no consistent reproduction. May be contexts in which it may work (cows moos)

• Shapes can be registered so long as it is NOT:

  • A shape which results from the goods itself (ice cream – Nestle v Unilever)

  • A shape which is necessary to achieve a technical result (shaver – Phillips v Remington)

  • A shape which gives substantial value to the goods (normal shape marks on jeans - Benneton)

Show the shape as being distinctive, eye-catching and memorable in some way. Very high threshold as high danger with a monopoly on shapes

• TMA 1994, section 3 (1):

  1. Not a sign or cannot be represented as a sign

  2. Devoid of any distinctive character

  3. Descriptive of: kind, quality, quantity, intended purpose, value, geographical origin, time of production, other characteristic of good

  4. Customary sign

• The absolute grounds for refusal:

  • Are separate and independent from each other ( the factors listed above)

  • Must each be interpreted in the light of the underlying public interest test (ALWAYS consider this FIRST) to prevent monopoly

  • Must be assessed with reference to the specification (specific to the relevant goods and or services); assessment should not be abstract

  • Legal Test: From the perspective of an average consumer who is reasonably well-informed, observant and circumspect “enabling consumers to ascertain the commercial source of the goods”

No Distinctive Character

• Can always ACQUIRE distinctiveness over time

• Libertel v Benelux – whether orange could be tm for a telecommunications services. Consumers are not accustomed to perceiving colors distinctive save exceptional circumstances.

  • Public interest test: limited number of colours consumers can distinguish; incentive to abuse the registration system (by registering wide range of colours); must be stringent to prevent anticompetitive effects from emerging in the first place.

  • Legal test: Niche area and recognized by consumers as originating from libertel.

• Audi v OHIM – Slogan: Vorsprung durch Technik. Consumers do not normally view slogans as part of the company. Nevertheless, if there is something that departs from the norm and that is very unique and individual then it will stick. Remember, inventiveness and originality is not a prerequisite but it helps to establish distinctiveness!

Descriptive -section 3(1c)

e.g. ‘soft’ for tissues; ‘mild’ for yoghurt; ‘quick print’ for printing services.

• Why? Ensures that descriptive terms are free to be used by all traders and cannot fulfill the essential function of TMs to differentiate.

• Easynet v Easygroup – correct approach is overall assessment of the composite expression as to whether it is descriptive or not

• OHIM v WM – DOUBLEMINT in Wrigley’s chewing gum found descriptive

• Streamserve v OHIM – STREAMSERVE descriptive in intended market.

• Procter & Gamble – BABYDRY for nappies was allowed as while descriptive, together created an unusual combination which was not used commonly in English language (as it was reverse-order unlike DOUBLIEMINT)

• Windsurfing Chiemsee – CHIEMSEE is a specific and popular lake in Bavaria, descriptive:

  • Public interest test: keep descriptive terms free (especially as consumers are familiar with the geographic terms; familiar with the characteristics of the place and the goods concerned)/ no essential function.

  • Legal test: ascertain the semantic content of sign; currently serving a designation of the geographical origin of the goods (no, don’t manufacture the clothes in the lake and the surrounding area ); is it likely to serve as an indication of geographical origin in the future. Look below.

Customary signs - section 3(1(d).

These include tm which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade: e.g. Tupperware, aspiring, thermos, cellophane. They are excluded because they become the descriptive term for a particular genus (type) of goods/ services

Against Public Policy

• Ghazilian’s Application – moral reasons in the public policy for absolute grounds of refusal. In this case TINY PENIS for a clothes brand was not allowed. Look at the “right-thinking but open-minded” public and whether it would “justifiably cause outrage”

• Scranage – FOOK, similar to fuck, unacceptable to ‘right thinking members of the public’

• Basic Trademark – JESUS in this case was denied for the same reasons as previous case. Found that religious significance alone does not...