Absolute Grounds cases

Question 1

Nestle v Cadbury (KitKat)

Answer 1

“Art. 3(1)(e)(ii) does not aim to exclude from registration signs having a technical function that relates to the manufacture of the goods”

Question 2

Bang v Olufsen (speaker)

Answer 2

Art. 3(1)(e)(iii) - “the fact that the shape is considered to give substantial value to the goods does not preclude other characteristics of the goods, such as the technical qualities here, from also conferring considerable value on the goods at issue”

Question 3

Hauck v Stokke (Tripp Trapp)

Answer 3

Art. 3(1)(e)(iii) - “The concept of a ‘shape which gives substantial value to the goods’ cannot be limited purely to the shape of products having only artistic or ornamental value”
“The presumed perception of the sign by the average consumer is not a decisive element, it may, at most, be a relevant assessment criterion when identifying the essential characteristics of the sign”

Question 4

Apple Inc.

Answer 4

(store design)

No need to specify the exact dimensions of a retail store (no problem with clarity, precision and uniformity)

Question 5

Libertel

Answer 5

(colours)
SIGN - “a colour per se is capable of constituting a trade mark within the meaning of Article 2 of the Directive [s.1(1) TMA 1994]”
REPRESENTATION - sample of colour, description of colour AND internationally recognised colour identification code

Question 6

Sieckmann

Answer 6

(smell)
Representation, 7 CRITERIA:
- Clear
- Precise
- Self-contained
- Easily Accessible
- Intelligible
- Durable
- Objective

Question 7

Shield Mark

Answer 7

(sounds)
Exact notation with stave would be sufficient for clarity/precision. Under new law, sound files are sufficient.
Onomatopoeia does not allow third parties to determine the subject-matter of protection, is not objective

Question 8

Dyson

Answer 8

(transparent bin)
“the subject-matter … is capable of taking on a multitude of different appearances and is thus not specific”
“the holder of a trade mark relating to such a non-specific subject-matter would obtain an unfair competitive advantage”
“the subject-matter … is, in actual fact, a mere property of the product concerned”

Question 9

Heidelberger

Answer 9

(colour combinations)
“it is possible that colours or combinations of colours may be capable, when used in relation to a product or service, of being a sign”
“it is necessary to establish that in the context in which they are used colours or combinations of colours which is it sought to register in fact represent a sign”
Must be systematically arranged, and must be perceived in a precise and uniform manner to fulfil its essential function of origin

Question 10

Red Bull

Answer 10

(colour combinations)
“While, admittedly, juxtaposition indicates the direct placing of two or more colours side by side, they may be so placed in a number of different arrangements”
“[Higher] degree of precision is required because of the intrinsically less precise nature of colour per se marks … accordingly, different treatment is justified”

Question 11

Nestle v Cadbury

Answer 11

(colour)

The use of the word ‘predominant’ opens the door to a multitude of different visual forms

Question 12

Sony Ericsson Mobile

Answer 12

(movement)
“the test to be applied is whether a reasonably observant person … would, upon consulting the register, be able to understand precisely what the mark consists of, without expending a huge amount of intellectual energy and imagination”

Question 13

Seven Towns (Rubix cube)

Answer 13

Claims a colour mark, but essentially claims a shape mark (description). Potential for description to encompass other designs, not intelligible - requires “huge amount of intellectual energy and imagination” to find out what the mark is

Question 14

Philips v Remington

Answer 14

“Where the essential functional characteristics of the shape of a product are attributable solely to the technical result, Article 3(1)(e)(ii) precludes registration of a sign consisting of that shape, even if that technical result can be achieved by other shapes”

Question 15

Lego v Mega Brands

Answer 15

“once the essential characteristics of the sign have been identified, it is only necessary to assess whether those characteristics perform the technical function of the product concerned”, can be done “by taking account of the documents relating to previous patents describing the functional elements of the shape concerned”

(confirming Philips) - the existence of alternative designs is immaterial

Question 16

Best-Lock v Lego

Answer 16

“the fact that the figure in question ‘represents a manikin’ and may be used by a child in a play context [is] not a technical result. … the fact that objects may be joined to other objects is not a technical result of those objects or their shape”

Question 17

Louboutin

Answer 17

Colours are not shapes - red colour applied to surface of sole of shoe (description specifically disclaims shape of sole depicted as example)

Question 18

Postkantoor

Answer 18

“irrespective of the goods or services for which protection might be sought”

“there is no reason to find that a word like ‘postkantoor’ is not … capable of fulfilling the essential function of a trade mark, which is to guarantee the identity of the origin of the marked goods or services to the consumer”