9. TM I - registration Flashcards
TO BE REGISTERED AS TM
must be
a) sign
b) capable of being graphically represented
c) capable of distinguishing
Libertel (sign)
colour CAN be a sign but not necessarily
- Colour usually just seen as property/character
Dyson v Registrar TM
SIGN MUST CONVEY SPECIFIC INFORMATION
transparent collection bin NOT a sign
- mere property of the product
- would be giving unfair advantage
Siekmann v Deutsches
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
Libertel (AG Legar - graphically rep)
AG Legar - “sufficiently accessible and intelligible and did not require excessive effort to understand”
Eden Sarl
“ripe” strawberries
- no COPSDIE
- not precise enough to add ripe, lots of kinds of strawberries
Shield Mark v Joost
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)
Edgar Rice Burroughs
spectrogram for Tarzan’s Yell
- not self contained
- not easily accessible
Libertel v Benelux (capable of graphical representation?)
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
Phillips v Remington (capacity to distinguish)
capable of distinguish = low threshold
- because it works with devoid of distinctive character
- capable of distinguish = just preliminary requirement
Phillips v remington (s.3(2)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
Phillips v Remington (s.3(2)b
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
Lego Juris v OHIM
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
Hauck v Stokee
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
Henkel Proctor and Gamble v OHIM
attentiveness for everyday goods are lowed
Linde
look through eyes of an average consumer who is well-informed, reasonably observant, and circumspect
PSAT 1 v OHIM
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
Proctor & Gamble v OHIM (s.3(1)b)
simple signs like babydry
- distinctive
- allusive (tells you realm but not what it does)
- indicates origin
Libertel v Benelux (s.3(1)B)
colours not usually capable if distinguishing
- want to keep colours free (so limited)
- exclusive TM rights = unjustified competition
Proctor & Gamble v OHIM (shapes, s.3(1)b
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
Windsurfing Chiemsee v Boots
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
OHIM v Wrigley
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
Proctor & Gamble v OHIM (descriptive)
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)
PostKantoor
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
