Quick notes for absolute grounds Q

Question 1

What is s. 1(1) TMA?

Answer 1

Section 1
(1)In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

Question 2

What is s. 3(1)?

Answer 2

(1) The following shall not be registered—
(a) signs which do not satisfy the requirements of section 1(1),
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate […] characteristics of goods or services,
(d) trade marks 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:

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

Question 3

What is section 3(2)?

Answer 3

(2) A sign shall not be registered as a trade mark if it consists exclusively of—
(a) the shape which results from the nature of the goods themselves,
(b) the shape of goods which is necessary to obtain a technical result, or
(c) the shape which gives substantial value to the goods.

Question 4

What is section 3(3)?

Answer 4

(3) A trade mark shall not be registered if it is—
(a) contrary to public policy or to accepted principles of morality, or
(b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).

Question 5

What is section 5?

Answer 5

(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.
(2) A trade mark shall not be registered if because—
(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

(3) A trade mark which—
(a) is identical with or similar to an earlier trade mark,

shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a European Union trade mark or international trade mark (EC), in the European Union) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

(4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented—
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, or
(b) by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) above, in particular by virtue of the law of copyright, design right or registered designs.

A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an “earlier right” in relation to the trade mark.

Question 6

What is the methodology of assessment?

Answer 6

• Reiterate the underlying public interest of the absolute ground
• Reiterate the legal test that implements the public policy
consideration behind the absolute ground for refusal
• Apply the legal test to the facts of the case at hand

Question 7

What are the general principles of application?

Answer 7

The absolute grounds for refusal
• are separate and independent
• must be interpreted in the light of the underlying public
interest
• must be assessed with reference to the specification (the relevant goods and/or services); the assessment is not abstract (contrast with s. 1(1) TMA 1994)
• from the perspective of the average consumer who is reasonably well-informed, observant and circumspect

Question 8

What is the public interest and legal test underlying s. 3(1)(b)?

Answer 8

The public interest: enabling consumers to identify the origin of the goods so as to repeat or avoid previous purchases (essential function)

The legal test: does it enable consumers to distinguish the relevant goods and services from those of other undertakings?

Question 9

What is the public interest and legal test underlying s. 3(1)(c)?

Answer 9

The public interest

• ensuring that descriptive terms can freely be used by all traders
• Descriptive terms cannot fulfil the essential function of TMs

The legal test

• does a given mark for which registration is sought currently represents, in the mind of the relevant class of persons, a description of the characteristics of the goods or services?
• If not, is it reasonable to assume that that might be the case in the future?

(For descriptive terms specifically: keeping descriptive terms free/essential function
The legal test is set out in ‘Windsurfing Chiemsee’)

Question 10

What are the public policy considerations underlying s. 3(2) as a whole?

Answer 10

Public interest in preventing the monopolization of technical solutions of functional characteristics of products which a user is likely to seek in the products of competitors

Preventing the exclusive and permanent rights which a trade mark confers from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods

Question 11

What are the public policy considerations underlying s. 3(2) specifically?

Answer 11

Public interest in excluding the registration of shapes with essential characteristics which are inherent to the generic function or functions of the relevant goods

Question 12

What are the public policy considerations underlying s. 3(2)(b) specifically?

Answer 12

TM Protection would limit the possibility of competitors supplying a product incorporating functional characteristics

TM Protection would limit competitors’ freedom of choice in regard to the technical solution they wish to adopt

Signs performing a technical function should be freely used by all and not end up being reserved to one undertaking alone because they have been registered as trade marks

Perpetual patents

Question 13

What is the public policy consideration underlying s. 3(2)(c) specifically? [this is a guess]

Answer 13

Preventing the exclusive and permanent rights which a trade mark confers from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods

Question 14

Audi v OHIM, Case C-398/08

Answer 14

Audi attempted to register ‘VORSPRUNG DURCH TECHNIK’ (“advance through technology”) and was initially refused under section 3(1)(b).

The Court ruled that:
—All marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message. However, those marks are not, by virtue of that fact alone, devoid of distinctive character.

Court found that Audi’s slogan had distinctive character.

Factors which contributed to decision by Court:

• • requires a measure of interpretation on the part of the public
• – slogan exhibits a certain originality and resonance which makes it easy to remember

(N.B. Originality, creativeness etc. is not a prerequisite but it helps to establish distinctiveness)

Question 15

OHIM v Erpo Mobelwerk

Answer 15

Attempted to register ‘the principle of comfort’ for household furniture

The Court ruled that although there may be difficulty in establishing distinctiveness of such a mark due to the public’s perception, nevertheless the same criteria must be applied when assessing the distinctiveness of the mark as to other categories of marks.

Question 16

Bang & Olufsen A/S v OHIM

Answer 16

This case relates to the grounds for refusal under section 3(2)(c) “substantial value”

The Court considered the following factors in coming to the decision that the claimant’s mark fell within the provision:

–the design is an essential element of its branding and increases the appeal of the product at issue, that is to say, its value.

– it is apparent from the evidence, namely extracts from distributors’ websites and on- line auction or second-hand websites, that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point

Question 17

BioID AG v OHIM

Answer 17

This case is relevant in assessing the distinctiveness of composite marks (words and figures).

The Court rude that:

– any distinctive character may be assessed, in part, in respect of each of the terms or elements, taken separately, but that assessment must, in any event, be based on the overall perception of that trade mark by the relevant public

– thus the mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present such character

[Basically, when assessing individual elements, apply legal test of section 3(1)(b) and come to a conclusion based on the identity of the relevant part of the public (i.e. how observant they out be, as their attention varies depending on g/s at issue)

Then, when considering the overall perception of the trade mark, determine if there is a dominant element of the trade mark–if that element wasn’t found to be distinctive, then overall thing is not. “when the overall impression conveyed by the trade mark applied for to the relevant public is examined, the abbreviation BioID, which is devoid of any distinctive character, is the dominant element of that mark.”]

Question 18

What must you do first before attempting to answer the question in the legal test (i.e. before you delve into case law?)

Answer 18

The legal tests usually come in the form of a question. To answer the question (i.e. to determine registrability), you need to consider the facts of the case through the eyes of the average consumer, using caselaw to guide you, to come to a conclusion.

TO APPLY LEGAL TEST:
First identify the relevant consumer circles (you do this by looking at the G/S, so for “foodstuffs” the relevant consumer circle is the public at large)
Then identify the average consumer of that group (who is reasonably well-informed, reasonably observant and circumspect).
THEN ask the test (“the legal test”) from the perspective of the average consumer.

[An example of identifying the relevant consumer circle from ‘EuroHelath: In the present case, the relevant section of the public is deemed to be the average, reasonably well-informed and reasonably observant and circumspect English-speaking consumer of insurance services.]

Question 19

Lego Juris v OHIM/Mega Brands Inc.

Answer 19

There doesn’t seem to be a general test for the relative grounds under section 3(2)(b). However, Lego sets out the following stages:

(1) Identifying the essential characteristics
• “most important elements of the sign”
• Analysis on a case-by-case basis
• Assessment based on the overall impression produced by the sign, or first examine in turn each of the components of the sign concerned

(2) assess whether those characteristics perform the technical function of the product concerned
[The technical functionality of the characteristics of a shape may be assessed, inter alia, by taking account of the documents relating to previous patents describing the functional elements of the shape concerned]

Question 20

Deutsche Krankenversicherung AG v OHIM (“EuroHealth”)

Answer 20

This case is relevant to the relative grounds under section 3(1)(c).

The Court held that a mark is descriptive when there is a sufficiently direct and specific association between that mark and the goods/services:

the term Health is purely descriptive of health insurance services and the prefix Euro only indicates the European character of the services concerned. Moreover, there is nothing to suggest that the combination of the prefix Euro with the noun Health confers on the word EuroHealth an additional element as a result of which it no longer has a purely descriptive character in relation to health insurance services which can be offered at the European level

It follows that the word EuroHealth allows the relevant section of the public to establish immediately and without further reflection a definite and direct association with the health insurance services which fall within the category of ‘insurance referred to in the application for registration in question. In the present case, the relevant section of the public is deemed to be the average, reasonably well-informed and reasonably observant and circumspect English-speaking consumer of insurance services

Question 21

Red Bull GmbH (supported by Marques) v (EUIPO)

Answer 21

This case relates to signs consisting of colour combinations (incapable of being graphically represented).

The applicant submitted a description of the first contested mark that was worded as follows: ‘Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50%-50%’.

the applicant argued that Heidelberger Bauchemie must be distinguished on the ground that it dealt with ‘arbitrary combinations’ and not ‘juxtapositions’, which amount to ‘precise combinations’

The Court ruled that Heidelberger requires a systematic arrangement. “ 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. That juxtaposition can thus take different forms, giving rise to different images or layouts, while still being in a ‘ratio of … approximately 50%-50%’ or ‘in equal proportion”.