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IP > 9. TM I - registration > Flashcards

9. TM I - registration Flashcards

1
Q

TO BE REGISTERED AS TM

A

must be

a) sign
b) capable of being graphically represented
c) capable of distinguishing

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2
Q

Libertel (sign)

A

colour CAN be a sign but not necessarily

  • Colour usually just seen as property/character
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3
Q

Dyson v Registrar TM

A

SIGN MUST CONVEY SPECIFIC INFORMATION

transparent collection bin NOT a sign

  • mere property of the product
  • would be giving unfair advantage
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4
Q

Siekmann v Deutsches

A

COPSDIE - graphical representation

Clear
Objective
Precise
self-contained
Durable
Intelligible
Easily Accessible

Chemical formula –> not objective and represents the SUBSTANCE not the smell

Sample –> not stable or durable

Words –> not clear/precise/objective

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5
Q

Libertel (AG Legar - graphically rep)

A

AG Legar - “sufficiently accessible and intelligible and did not require excessive effort to understand”

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6
Q

Eden Sarl

A

“ripe” strawberries

  • no COPSDIE
  • not precise enough to add ripe, lots of kinds of strawberries
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7
Q

Shield Mark v Joost

A 
first 9 notes of fur Elise:
SCORE = ACCEPTABLE
-intelligibility doesn't mean immediate intelligibility
- score = internationally accepted
- different to scientific knowledge

SEQUENCE OF LETTERS = NOT ACCEPTABLE

  • does not say pitch or duration (not precise)
  • not clear or self-contained

VERBAL DESCRIPTION = NOT ACCEPTABLE

  • not self-contained
  • can’t work out from specification itself, need to find out the first 9 notes

crowing of a cock
VERBAL DESCRIPTION = NOT ACCEPTABLE
- uncertain and not objective

ONOMATOPEIC REP = NOT ACEPTABE

  • no consistency between onomatopoeia and the sound
  • subjective (or culturally determined)
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8
Q

Edgar Rice Burroughs

A

spectrogram for Tarzan’s Yell

  • not self contained
  • not easily accessible
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9
Q

Libertel v Benelux (capable of graphical representation?)

A

colour orange NOT CAPABLE

sample: not objective or durable (fades)
words: not clear and precise (“orange” not precise enough unless they’re claiming ALL orange which is not possible)

CAN register a colour if supplemented with international colour codes (Pantone) - that meets COPSDIE requirement

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10
Q

Phillips v Remington (capacity to distinguish)

A

capable of distinguish = low threshold

  • because it works with devoid of distinctive character
  • capable of distinguish = just preliminary requirement
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11
Q

Phillips v remington (s.3(2)a)

A

RESULTS FROM NATRE OF GOODS - S.3(2)A

  • s.3(2)a doesn’t apply
  • if C can show other shapes of same good on the market, s.3(2)a doesn’t apply
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12
Q

Phillips v Remington (s.3(2)b

A

SHAPE NECESSARY TO OBTAIN TECHNICAL RESULTS

  • s.3(2)b can apply
  • does not matter that there are other ways of obtaining technical result
  • if shape is attributable solely to technical result = s.3(2)b (even if result can be achieved with other shapes)
  • non-functional elements cannot just be minuscule

MANDATORY: MANDATORY RELATIONSHIP BETWEEN SHAPE AND FUNCTION

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13
Q

Lego Juris v OHIM

A

Lego argued s.3(2)b shouldn’t apply if there are other ways to make the goods

COURT REJECTED

  • s.3(2)b justification is keep free
  • a feature is “essential” if feature performs a technical function
  • necessity does not mean only way to achieve a technical result
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14
Q

Hauck v Stokee

A

trip trap high chair

s. 3(2)a
- not limited to shapes “indispensable” to nature of product
- covers shapes with characteristics inherent to function of product and consumers look for

s.3(2)c
- not limited to aesthetics
- consider:
public perception
category of goods
aesthetic value
dissimilarity to other goods
feature promoted
- people pay more for many reasons
- s.3(2)c could apply here as it works better than other normal high chairs

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15
Q

Henkel Proctor and Gamble v OHIM

A

attentiveness for everyday goods are lowed

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16
Q

Linde

A

look through eyes of an average consumer who is well-informed, reasonably observant, and circumspect

17
Q

PSAT 1 v OHIM

A

Purpose of s.3(1)b = does mark meet essential function (indicating origin)?

  • enable public to identify origin
  • no requirement of: imaginative, unusual, creative, different, unusual
  • only excluded if DEVOID of distinctive character
  • minimal distinction = fine

DO NOT SALAMI SLICE - look at mark as a whole

18
Q

Proctor & Gamble v OHIM (s.3(1)b)

A

simple signs like babydry

  • distinctive
  • allusive (tells you realm but not what it does)
  • indicates origin
19
Q

Libertel v Benelux (s.3(1)B)

A

colours not usually capable if distinguishing

  • want to keep colours free (so limited)
  • exclusive TM rights = unjustified competition
20
Q

Proctor & Gamble v OHIM (shapes, s.3(1)b

A

LOOK at other shapes in the market - if it departs from the norm/custom it COULD indicate origin and not be devoid

  • more closely shape resembles shape most likely taken by product in Q = more likely devoid of distinctive character
21
Q

Windsurfing Chiemsee v Boots

A

Chimsee
s.3(1)c - aim is protecting public interest by keeping descriptive signs free

  • KEEP FREE extends to future uses
  • doesn’t matter that no one currently using it geographically
22
Q

OHIM v Wrigley

A

DOUBLE MINT

  • descriptive (just subtraction of space - still describes it as mint flavoured)
  • yes two meanings (ambiguous as to which)

AS LONG AS ONE MEANING DESIGNATES CHARACTER OF GOODS, S.3(1)C APPLIES

s. 3(1)c
- aim is public interest of descriptive words being kept free
- it doesn’t say mark has to be “exclusively descriptive” just “descriptive capacity”
- existence of another non-descriptive meaning is irrelevant

23
Q

Proctor & Gamble v OHIM (descriptive)

A

babydry

  • not exclusively descriptive
  • syntactically unusual
  • in subsequent cases, combination of two descriptive words together was not enough for it to be not descriptive (doublemint)
24
Q

PostKantoor

A

ECJ: can be any characteristic description

  • e.g. stinky for weed killer
  • descriptive word even if that’s not the most important characteristic of weed killer
25
Q

Linde AG (s.3(1)c)

A

ECJ said s.3(1)c can apply to shape marks

e. g. plastic lemon
e. g. bonio dog biscuits shaped like bones

26
Q

Merz v Krell

A

“Bravo”

  • descriptive (describing quality)
  • but not excluded under s.3(1)d which only excludes marks which have become customary in the current language or trade practices to designate the goods or services in respect of which registration of that mark is sought
27
Q

Windsurfing v Boots (acquired distinctiveness)

A

descriptive name (geographical) can be registered if USE HAS BEEN MADE and it has come to identify the product’s origin

  • if mark indicated origin it can be TM
  • primary meaning displaced

IP (18 decks)

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