Deck 2 - TM 001

Question 1

S. 1 (1) TMA ; Art. 4 CTMR

Answer 1

S.1(1)/Article 4 CTMR requires:

(i) ‘Any sign’;
(ii) ‘Capable of being represented graphically’;
(iii) ‘Capable of distinguishing goods or services of one undertaking from those of other undertakings’.

Question 2

s. 3(1) (a) TMA

Answer 2

Failure to comply w/ any req’mnt = not reg’d as absolute refusal ground

Question 3

s. 47 TMA

Answer 3

If a Mk is incorrectly reg’d the reg’ion may be declared invalid;

Question 4

What is a sign?

Answer 4

No stat Def. Broad, positive approach adopted.

Question 5

Wrigley/light green

Answer 5

1999 – a sign is to be interpreted as broad, open, and general term encompassing all conceivable types of Mks

Question 6

Sieckman

Answer 6

2002 – ECJ held the concept of a ‘sign’ is not limited to visually perceptible matter – both sounds and smells fall w/in category;
Graphic Rep – must enable sign to be represented visually;
Representation must be clear, precise, accessible, intelligible, durable, objective;

Question 7

Dyson

Answer 7

2007 – transparent collection chamber = too vague;
Was a ‘mere property of the product’
Sign must be capable of conveying origin;

Question 8

Heidelberger

Answer 8

2004 – ECJ held a colour COULD be a sign, but in this case was just a property;
Criticism – BENTLY – ECJ provided little guidance on how applicant could establish the semiotic status of a colour or colour combo.

Question 9

Can smells be graphically represented?

Answer 9

YES – Vennootschap – 1999 = freshly cut grass
NO –
Sieckman – 2002 – smell cinnamon - Words ≠clear enough; odur sample not specifi nor durable enough; chemical formula couldn’t be read & understood as smelling like…;
Virtually impossible to TM smells
Eli Lilly – smell of strawberries – subjectivity – no clear identification for smell

Question 10

IPF’s application

Answer 10

Attempt to Tm perfume using complex reg’ system – neither traders nor users would know – High threshold for smells
ISSUE – if Smells = protected – would I distribute it by wearing it.

Question 11

Libertel v Benelux

Answer 11

Colour shapes – verbal description can be ok; sample & internat rec. code.

Question 12

Shield Mk

Answer 12

Sound mark – 2003 – musical staves with indication of pitch MAY be a TM – Fur elise failed b/c no pitch & only first 16 notes;
Sound of cockcrow – Sieckmann req’mnts – onomatopoeic reps allow easy search & comprehension but wrds lack precision – musical notes may be OK

Question 13

MGM’s application

Answer 13

Roar of lion no b/c sonogram not precise – door open w/ relationship to music staves but PROB – no expert can read

Question 14

Edgar Rice v OHIM

Answer 14

Sonograms = NO: tarzan yell b/c experts couldn’t figure it out easily

Question 15

Phillips v Remington

Answer 15

Capable of distinguishing test – essential fctn of TM is to guarantee origin by allowing them to, w/out confusion to distinguish the product.
Capable of distinguishing & Devoid of distinctive character = same test

Question 16

Absolute Grounds for Refusal

Answer 16

S. 3 TMA

Question 17

S. 3(1)(a) TMA

Answer 17

Signs which don’t conform to req’mnts of a TM – must satisfy s.1(1)

Question 18

s. 3(1)(b) TMA

Answer 18

Signs devoid of distinct character -

Question 19

Linde AG

Answer 19

2003 – Mks not capable of being distinguished from other undertakings are excluded

Question 20

Eurocermex v OHIM

Answer 20

2005 – 3(1)(b) TEST – consider overall impression given by the MK – may be helpful to examine its components

Question 21

Eurohypo

Answer 21

2008 – Level of distinctiveness req/d not challenging – must enable the relevant public to identify the origin;

Question 22

Volkswagen AG

Answer 22

2008 – distinctiveness FAIL – silhouette of a car – failed b/c invoked an abstract idea

Question 23

Lindt 2012

Answer 23

2012 - Bunnies shape ≠ distinctive on their own & hadn’t acq’d distinctiveness

Question 24

Smiley Co. V OHIM

Answer 24

2009 – Attempt to TM half the smiley face for emoticon business – just b/c a whole MK is distinctive – not mean half that MK is

Question 25

BORCO

Answer 25

2010 – attempt to reg Greek letter alpha – HELD NO – Test is same for all categories of mks – must assess on the facts if the sign is capable of distinguishing goods or services

Question 26

Libertel

Answer 26

Dyed seeds orange before selling to farmers - only in exceptional circumstances will colour be seen as Tm by public.

Question 27

KUKA Roboter

Answer 27

2010 – attmpt to register colour orange for industrial robots – HELD: No – devoid distinct char as consumers would think colour meant origin.
Single colour only = TM in exceptional circumstances where narrow range of goods & well educated public.
Do not want to create trader unfair advantage

Question 28

Bang & Olufsen

Answer 28

2008 - Shape of speakers – ‘specific and arbitrary enough to retain attention of avg consumer’

Question 29

August Storck

Answer 29

2006 – A shape mark = different from 2D graphic – not necessarily amount to use of a MK.

Question 30

Nichols

Answer 30

Names – treat them the same as those applicable to other categories

Question 31

Audi

Answer 31

2010 – SLOGANS not usually perceived by public as identifying origin - vorsprung durch technik = can be both promotional & indicate origin – depends on facts: allowed

Question 32

3 (1) (c) TMA

Answer 32

TMs which are descriptive – MUST be very descriptive. Must immediately think of characteristics – not matter if characteristics = true.

Question 33

Justification for 3 (1) (c) TMA

Answer 33

Public interest – ensure that descriptive signs may be freely used by all

Question 34

3 (1) (c) TMA TEST

Answer 34

2010 - O2 v OHIM – Must be a sufficiently direct & specific r’ltnshp B/twn sign & goods in question.

Question 35

Neologism

Answer 35

A Mk consisting of a neologism will not be regarded as descriptive b/c each of its components is descriptive – the MK as a whole must be found descriptive. – DOUBLEMINT

Question 36

OHIM v DOUBLEMINT

Answer 36

2004 – A word will be refused reg’ion if one of its possible meanings designates a characteristic of the goods/services concerned – doubling the mint = unregistrable.

Question 37

BIOMILD

Answer 37

2004 – To be re’bl, there must be a ‘perceptible difference’ between the neologism & the mere sum of its parts.’

Question 38

Baby Dry

Answer 38

2002 – syntactic juxtaposition was not a familiar expression in English – BABY-DRY not = descriptive but was a lexical invention & distinctive

Question 39

Windsurfin Chiemsee 1999

Answer 39

Name of lake in Bavaria used for sports clothing;
TEST = whether the geo’l name ‘designates a plce which is currently associated in the mind of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an assoc’n may be established in the future;

Question 40

s. 3 (1) (d) TMA

Answer 40

Customary & generic Marks – consisting exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices ≠ reg’bl

Question 41

S. 3 (3) TMA

Answer 41

Acq’d Distinctiveness – absolute grounds for refusal (devoid of distinct char; descriptive; customary) may be overcome if Mk has become distinct in relation to Goods & services.
TO DO SO ‘the mk must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, & thus to distinguish that product from goods of other undertaking’ – Windsurfing

Question 42

Factors influencing Acq’d Distinctiveness

Answer 42

1) Market share;
2) how intensive, geographically widespread & long-standing use of the mk has been;
3) Amount invested in promoting the mk;
4) Proportion of relevant class of persons who, b/c of mk identify goods as originating from a particular undertaking;
5) Statements from chambers of commerce;

Question 43

Nestle v. Mars

Answer 43

Have a Break = always used as part of composite phrase;

No rq’mnt that mk be used independently;

Question 44

Glaverbel v OHIM

Answer 44

For a CTM, the Mk must be distinctive through use in community as a whole & refused reg’ion if devoid of distinctive char. In PART of community..

Question 45

s. 3 (2) TMA / Art 7 (1) (e) Dir

Answer 45

Limit on registration of shapes: No Reg’ion of shapes which:

1) Result from nature of goods themselves;
2) Necessary to obtain tech’l restul;
3) Gives substantial value to goods;

Question 46

Justification for 3 (2) TMA

Answer 46

Prevent reg’ion of MKS which give proprietors a monopoly on tech’l solutions or func’l char’ics of a product thus hampering competitors;

Question 47

Benetton v. G-star

Answer 47

2008 – to be excluded the sign must consist exclusively of an excluded natural, functional or ornamental shape;

Question 48

Protcor & Gamble

Answer 48

Different shapes of soap on market so shape in qtn didn’t result from nature of goods;

Question 49

Henkel’s App

Answer 49

2004 – ECJ - s.3 also applies to packaging of products which have no intrinsic shape of their own e.g. granules.

Question 50

Phillips v Remington

Answer 50

2002 – RIMMER J – Test = ask what are the essential char’ics of shape for which reg’ion is sought;
CA suggests to look to point of view of avg. Cnsmr.
Addition of trivial features to a shape will not render the sign reg’bl;