Shape marks Flashcards
Can shape marks be registered?
Yes - Reg 4, but subject to all usual requirements of distinctiveness (Philips / Linde)
What 3 categories of marks can never be registered?
Art 7(e) - signs which are exclusively of a shape OR ANOTHER CHARACTERISTIC:
(i) shape/nature of the goods
(ii) technical result
(iii) substantial value
Give 3 policy reasons for not registering the excluded shape marks, irrespective of AD
- Preventing monopolies (Philips)
- Avoiding overlap of IP rights (Lego)
- Avoiding perpetual rights (Hauck)
In the context of Art 7(e), what does ‘exclusively’ mean?
Primarily - Lego
“If a mark consists of a product shape, consumers are less likely to think of it as a trade mark”
Linde
Marks consisting of product shapes - what do they need to prove?
That consumers rely on THE SHAPE ALONE as a badge of origin (Vienetta) (e.g. not aesthetics)
What does “the nature of the goods themselves” really mean?
More about design convention than design freedom - Hauck
In Philips, was it held that the shape resulted from the nature of the goods?
No, as shavers can be made in many shapes
What is the authority from Simba?
Consider the nature of the product when analysing its “essential characteristics”
In Philips, was the shape of the shaver held to “necessary obtain a technical function”
Yes - it means necessary in a causal sense
Can “necessary to obtain a technical function” be overriden by acquired distinctiveness?
No - Lego
What’s the purpose of Art 7(e)(ii) (technical result)?
Exclude patentable matter
What’s the leading case on “substantial value”?
Hauck: if design appeal is one of the reasons for buying goods (even among many) fall into ‘substantial value’ trap
Can the exclusions under Art 7(e) be mosaicked?
No - Hauck. They should be applied independently.
What happened in Bang & Olufsen?
Lovely speaker design excluded for ‘substantial value’ reasons
