Short Answer Questions

Question 1

Describe the “average consumer” as defined by the ECJ in Lloyd Schuhfabrik Meyer &
Co. GmbH v Klijsen Handel BV, Case C-342/97.
(x4)

Answer 1

• Average person in the relevant consumer circles.
• Reasonably well informed, observant and circumspect.
• Does not pay attention to details.
• Has imperfect recollection.

Question 2

Are sounds registrable as trade marks in the UK? Explain your answer.
(x5)

Answer 2

No longer constrained by the requirement for a graphical representation (for EUTMs, soon for UK RTMs), so sound marks are registrable.

Sound files are allowed, as are sufficiently clear and precise musical notation, as long as it is intelligible (e.g. phonograph not intelligible, but a piano score is): see Shield Mark BV v Joot Kist.

For unusual sounds, a sound file may be required if the sounds is not easily represented graphically (e.g. lions roar in MGM).

Question 3

Are shapes registrable as trade marks in the UK? Explain your answer.
(x3)

Answer 3

Shapes are registrable, so long as the trade mark does not consist exclusively of a shape that :

(i) results exclusively from the nature of the goods themselves;
(ii) is necessary to achieve a technical result; or
(iii) gives substantial value to the goods.

To be distinctive, must depart significantly from the norm (Henkel).

Question 4

What is the meaning of an “earlier trade mark” as defined in the Trade Marks Act 1994?

Answer 4

A registered trade mark (UK, EU-UK or International-EU) which has a filing date earlier than the mark in question, taking account of the relevant priorities claimed by the marks.

A registered trade mark which has expired within 1 year of the later registration shall also be taken into account when considering the registrability of the later mark, unless there was no bona fide use of the mark for two years prior to expiry.

Question 5

Describe the effect of invalidity and revocation under the Trade Marks Act 1994.
(x4)

Answer 5

A trade mark may be declared invalid if it was
registered in breach of one of the absolute or
relative grounds for refusal.

The effect of invalidity is that the registration becomes void ab initio (i.e. as though it was never registered).

A trade mark may be revoked for non-use, becoming generic, being deceptive.

The effect of revocation is that the rights of the proprietor ceases to have effect from the date of application for revocation, or earlier if the grounds for revocation were satisfied earlier.

Question 6

Describe the test devised by the ECJ for establishing that a trade mark enjoys reputation.
(x5)

Answer 6

General Motors v Yplon:

There must be a sufficient degree of knowledge of the earlier trade mark that the public, when confronted with the later mark may possibly make an association between the two trade marks, even when used for non-similar products or services, and that the trade mark may consequently be damaged.

It must be known by a significant part of the public concerned by the products or services covered by the TM.

Reputation need only exist in a substantial part of territory

Question 7

Discuss briefly the importance of the decision of the ECJ in Libertel Groep BV v Benelux
Merkenbureau, Case C-104/01.

Answer 7

This case sets out that colours per se are capable of constituting a trade mark, at least in the abstract for the purposes of s.1(1).

Sample of colour, description of colour in words and/or an internationally recognised colour identification code required to meet Sieckmann criteria.

It is possible for colours to be used as a badge of origin for the goods and services of an undertaking.

Applied the same rationale to smell and sound marks.

Question 8

Discuss briefly the importance of the decision of the E.C.J. in L’Oreal SA v Bellure NV,
Case C-487/07.
(x3)

Answer 8

Established the test for taking unfair advantage of an earlier mark that enjoys a reputation:

(i) establish the repute of the earlier mark,
(ii) establish whether advantage has transferred (or is likely to)
(iii) establish is the advantage was unfairly taken.

Question 9

Describe the nature of the searches for prior rights conducted against a CTM application.
(x2)

Answer 9

The EUIPO will conduct a search of the trade mark register for prior marks, but cannot object to an application on relative grounds. However, the applicant is advised of any perceived conflict.

If requested to do so by the applicant, the EUIPO also asks member states that participate in the search system to also perform a search, which results in both an EUTM and a national search report.

The owner of the cited earlier right is notified of the search results when the search has concluded. It is left up to the owners of the earlier rights to bring opposition proceedings (or cancellation proceedings if the mark has already been registered) instead of examining on relative grounds at the EUIPO.

Question 10

Explain the concept of seniority in the context of a Community Trade Mark Registration.
(x5)

Answer 10

Applicants who seek registration of an EUTM may claim the seniority of earlier national registrations of the same mark of which they are the proprietor.

Seniority may be claimed either before or after the registration of the EUTM.

To claim seniority, the applicant must show that the earlier mark is for the same sign, the same goods and/or services, and is owned by the same proprietor as the EUTM.

Seniority effectively allows applicants to allow a national registration to lapse while still maintaining the same rights as if the national registration had never lapsed, allowing for consolidated management of the applicant’s marks.

Question 11

Explain the principle of coexistence in the context of the Community Trade Mark system.
(x3)

Answer 11

This means that both the European Union trade mark system and the national laws exist and operate side by side.

The same sign can be protected by the same proprietor as an EUTM and as a national trade mark in one (or all) of the Member States.

The principle of coexistence further implies that the EUTM system actively acknowledges the relevance of national rights and their scope of protection.

Where conflicts arise between EUTMs and national trade marks or other national rights, there is no hierarchy determining that one system prevails over the other - instead, these conflicts apply the principle of priority.

Question 12

Explain the principle of priority as it relates to trade marks.
(x4)

Answer 12

An applicant can claim priority from an earlier registered mark where:

(i) the mark was registered in a country with reciprocal protection to the UK;
(ii) that was the first registration for that mark; and
(iii) it is done within the 6 month priority period

Question 13

Describe the basis for a registration obtained under the Madrid Protocol.

Answer 13

The international application must be based on an existing national mark, and is dependent on the national mark for 5 years after registration, thus leaving the international mark open to central attack.

An applicant can make an international application for registration under the Madrid Protocol by filing an application with the Bureau at WIPO based on the earlier national registration.

Question 14

Describe the procedure for obtaining a registration under the Madrid Agreement.

Answer 14

The applicant designates the countries/regions they wish to file in and WIPO, following a formalities examination (but no substantive examination) sends the application to the national/regional offices of the designated contracting parties.

If the office of the designated contracting party does not refuse the application within a given time, the application is treated as registered.

Question 15

Describe the effect of a successful central attack under the Madrid system.
(x6)

Answer 15

If, within 5 years from the date of international registration, the basic national mark is declared invalid or otherwise lost in the country of origin, all of the national registrations that are based upon it are also lost.

At the end of the 5 years, the opportunity for central attack ends, such that the derivative (non-country of origin) registrations are not dependent upon the fate of the basic national mark in the country of origin.

Where a central attack is successful under the Madrid Protocol, however, it is possible to transform the international registration into a series of national/regional applications. These fresh applications will have the same effective filing date as the international registration.

Under the Madrid Agreement there is no such opportunity to transform into fresh applications.

Question 16

Describe briefly the scope of protection of a mark with reputation under the Trade Mark Directive.

Answer 16

Article 5(2) protects the proprietor of a mark with a reputation against use of an identical or similar sign where use of that sign without due cause takes unfair
advantage of, or is detrimental to, the distinctive character or the repute of the trade mark'. 

There are thus in principle four types of use which may be caught:
• use which takes unfair advantage of the mark’s distinctive character,
• use which takes unfair advantage of its repute,
• use which is detrimental to the mark’s
distinctive character, and
• use which is detrimental to its repute.

Question 17

Describe the scope of section 9 of the Trade Marks Act 1994.

Answer 17

s.9 sets out the rights conferred by registration of a trade mark.

The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent.

The rights of the proprietor have effect from the date of registration (i.e. the date of filing)

Provided that—

(a) no infringement proceedings may be begun before the date on which the trade mark is in fact registered; and
(b) no offence under section 92 (unauthorised use of trade mark, &c. in relation to goods) is committed by anything done before the date of publication of the registration.

Question 18

Explain the concept of ‘Acquiescence’ under section 48 of the Trade Marks Act 1994.
(x2)

Answer 18

When the holder of an earlier trade mark knows of the use of a later mark, he has only 5 years in which to apply for a declaration of invalidity.

After this period, the earlier rights holder is deemed to have acquiesced to the later use.

Question 19

How is infringement of a registered trade mark defined by section 10 (Infringement of registered trade mark) of the Trade Marks Act 1994?

Answer 19

A person infringes a registered trade mark if he uses in the UK, in the course of trade, and without the consent of the proprietor,

• a mark which is identical to the registered mark, and is used for identical goods or services;
• a mark that is identical/similar to the registered mark, and is used in relation to identical/similar goods or services;
• where the earlier registered mark has a reputation in the UK, a mark that is identical or similar to the earlier mark also infringes.

Question 20

List four defences that are available to the infringement of a trade mark registered under the Trade Marks Act 1994.
(x5)

Answer 20

The rights in a trade mark are not infringed by honest practises in commercial or industrial matters when a person:

(i) uses his or her own name or address;
(ii) uses indications of concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or
(iii) uses the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts, e.g. BMW repair shop).

There shall be no infringement of a registered trademark where there has been use of an earlier right (unregistered or registered TM) in the course of trade in a certain area.

Question 21

Explain briefly in what circumstances may a trade mark owner oppose further dealings in goods which she has put on the market in the European Economic Area?
(x5)

Answer 21

In order to ensure essential function, rights are not exhausted where the trade mark owner had a legitimate reason for opposing further circulation of the goods if it evidence of:

(i) Altering the goods;
(ii) De-packaging;
(iii) Re-packaging and re-branding;
(iv) Advertising the goods

can be shown.

Question 22

Explain when are goods ‘similar’, as defined by the ECJ in Canon Kabushiki Kaisha v
Metro-Goldwyn-Mayer, Case C-39/97 [1999] 1 CMLR 77.

Answer 22

All the relevant factors should be taken into account including, among other things, their:

physical nature, end-users, method of use, their route to market, where they are located in a supermarket and whether they are in competition with each other or are complimentary.

The method of distribution may also me relevant.

In infringement, may also take account of how the defendant marketed its goods.

Question 23

Discuss briefly the importance of the decision of the ECJ in Windsurfing Chiemsee v
Boots C-108/97, with respect to ‘acquired use’.
(x2)

Answer 23

The Act sets out that a mark shall not be refused if, before the date of registration, it acquired distinctiveness as a result of use made of it.

In Windsurfing, the ECJ explained that an unregistrable name (in this case a geographic name) could be registered as a trade mark if it has come to identify the product as originating from a particular undertaking and thus distinguishes the product from those of other undertakings.

This requires a significant proportion of the relevant class of persons has come to rely upon the mark so as to identify goods as originating from a particular undertaking (reliance test).

Question 24

Describe the test for passing off established in Warnink v Townend [1979] A.C. 731, HL
(the “Advocaat” decision).
(x6)

Answer 24

5 characteristics must be present for a valid passing off claim:

(1) a misrepresentation
(2) made by a trader in the course of trade
(3) to prospective customers of his or ultimate consumers of products or services supplied by him
(4) which is calculated to injure the business or goodwill of another trader by whom the action is brought
(5) which causes actual damage to a business or goodwill of the trader bringing the claim.

Question 25

Can the UK law of passing off be used to protect fictitious characters from imitation? Explain briefly your answer using case authority by way of illustration.

Answer 25

As set out in Mirage Studios v Counter-feat Clothing where TMNT characters were placed on a t-shirt, the public are likely to perceive that the characters are subject to copyright, and thus that the t-shirt must be made subject to a licence. Therefore, there is a misrepresentation to the customers if there is in fact no such licence agreement for the characters, and the law of passing off may come into force if goodwill and damage can also be established.

Question 26

Describe the effect of invalidity under the UK Trade Marks Act 1994.
(x2)

Answer 26

A trade mark may be declared invalid if it was
registered in breach of one of the absolute or
relative grounds for refusal.

The effect of invalidity is that the registration becomes void ab initio (i.e. as though it was never registered).

Question 27

What are the consequences of failure to record the assignment of a trade mark registered in the UK under the UK Trade Marks Act 1994?

Answer 27

Registered transactions have priority over unregistered ones, even if the unregistered one occurred first.

In infringement actions, costs cannot be awarded if the assignment is not registered within 6 months of the transaction.

Question 28

Describe briefly the test applied by the ECJ for determining confusion.

Answer 28

In assessing the likelihood of confusion, the global appreciation test is used in which the similarity of the goods/services (the Canon v MGM test) and the similarity of the marks (aural, visual and conceptual similarity) are assessed and weighed up.

All of the relevant factors for a given case are then applied in order to assess whether the average consumer would be confused.

Question 29

Describe briefly the test applied by the ECJ for determining similarity between products.
(x5)

Answer 29

Canon v MGM:

All the relevant factors should be taken into account including, among other things, their: nature, end-users, method of use, and whether they are in competition with each other or are complimentary.
The method of distribution may also me relevant.
In infringement, may also take account of how the defendant marketed its goods.

Question 30

Can goodwill exist in relation to a foreign trader, where the trading activity takes place outside the UK? Explain your answer.

Answer 30

If the foreign trader can show that they have a business link to the UK, such as having an office maintained in the UK, then they may be entitled to relief (see Sheraton Motels), but this doesn’t seem likely to be the case here.

Instead, if the trader has no presence itself in the UK, but it has customers that are resident in the UK (other than foreign customers that have moved here) then it is likely that the court will treat this as sufficient to establish goodwill (see Starbucks v BSkyB). However, mere reputation of the business would not be enough to establish goodwill, actual customers are required.

Question 31

Describe briefly the test applied by the ECJ for determining identity between signs.
(x5)

Answer 31

Arther et Felicie:

A sign is identical if it reproduces, without any modification or addition, all the elements constituting the earlier mark.

Alternatively, if, viewed as a whole, the junior sign contains differences so insignificant that they may go unnoticed by the average consumer who is subject to imperfect recollection.

Question 32

Describe the effect of a registration obtained under the Madrid Agreement. (x3)

Answer 32

It is possible to register a trade mark at a national level to obtain a ‘base registration” which can then be used to file an international application at the national office of the base registration where the applicant designates which contracting parties he wishes to register in.

This results in a bundle of national registrations corresponding to the designated contracting parties. However, the national registrations are ‘anchored’ to the base registration for 5 years, during which they are all vulnerable to central attack.

Question 33

Are scents/smells registrable as trade marks in the UK? Explain your answer.
(x2)

Answer 33

If the applicant applied directly to the UKTMR, then he would need to file his application with a graphical representation of the trade mark. This is notoriously difficult (not yet been done), as the representation needs to meet the Sieckmann criteria: that is, it must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. The problem with scent marks is that any graphical representation in the form of a chemical formula wouldn’t be sufficiently intelligible as it represents the substance, not the odour. Similarly, a written description of a scent would not be sufficiently objective as it depends upon the person reading/writing it.

If, however, the applicant were to file an EUTM application (which would have effect in the UK), there is no requirement for a graphical representation. The representation would still need to meet the Sieckmann criteria, however. This is still a problem, if, for example, the applicant submitted an odour sample because such a sample would not be sufficiently durable.

Therefore, it appears that (for the time being at least) it is not possible to register scent marks in the UK.

Question 34

Discuss briefly the importance of the decision by the ECJ in Gillette Group Finland Oy v LA Laboratories Ltd Oy (Case C-228/03).
(x2)

Answer 34

This case is in regard to the defence for trade mark infringement where the defendant uses the proprietors mark in order to indicate the intended purpose of a product or service.

In this case, the defendant was using Gillette’s mark to indicate that Gillette razor blades were compatible with their razor handles.

The ECJ held that such reference to the claimant’s mark only falls within the defence where the reference is ‘necessary’ to indicate the intended function (including the compatibility of the product). The court went on to state that the reference is only necessary when it is the only way of conveying the information.

Question 35

Are colours registrable as trade marks in the UK? Explain your answer.
(x4)

Answer 35

Article 3 of the TM Directive 2015 states that a trade mark may consist of any sign, including colours, provided that such signs are capable of distinguishing the good and services of one undertaking from those of another undertaking, and are also capable of being represented on the register in a manner which allows the public and the competent authorities to determine the clear and precise subject matter of protection.

However, a pure colour or colour combinations are likely to be treated as being devoid of distinctive character, as seen in Libertel. The court in Libertel also states that there is a public interest in keeping colours freely available as there are relatively few colours available in the first place (colour depletion).

Question 36

Discuss briefly the importance of the decision of the ECJ in Intel Corporation Inc v CPM UK Ltd (C-252/07).
(x3)

Answer 36

This case is concerned with whether a junior mark calls to mind an earlier mark that enjoys a reputation. The ECJ stated that in assessing whether there is sufficient similarity between the marks to give rise to a link depends on a global appreciation of the marks, and suggested a multi-factorial approach to identifying a link.

The factors include the degree of similarity of the marks, the similarity of the goods or services, the strength of the earlier marks reputation and distinctive character, and the likelihood of confusion.

Question 37

Briefly describe the test devised by the ECJ in Ansul BV v Ajax Brandbeveiliging BV C40/01) for what constitutes ‘genuine use’ of a trade mark.

Answer 37

The ECJ stated that use designed solely to preserve the rights under the mark is not genuine use. The use requires real use in the market aimed at the public and not just internal use by the undertaking concerned.

It is necessary to take into account all relevant facts and circumstances in order to decide whether commercial exploitation of the mark was real.

The use does not need to be quantitatively significant to be considered genuine.

Use in relation to after sale services could be genuine even though the goods are not sold anymore.

Question 38

Are geographical names registrable as trade marks in the UK? Explain your answer.

Answer 38

In Windsurfing, the ECJ explained that an unregistrable name (in this case a geographic name) could be registered as a trade mark if it has come to identify the product as originating from a particular undertaking and thus distinguishes the product from those of other undertakings.

The legal test is in assessing the need to keep the sign free for competitors to use in the future:
• are consumers familiar with the geographic term;
• are consumers familiar with the characteristics of the place designated with that name;
• are consumers familiar with the category of goods concerned?

Question 39

Briefly discuss the decision of the ECJ in Dyson Ltd. V Registrar of Trade Marks (Case C-321/03).
(x2)

Answer 39

This case concerned the attempted registration of a transparent bin or collection chamber for a vacuum cleaner, and gave two examples of such bins. The ECJ decided that, as the chamber could form a multitude of different shapes and configurations, it related to non-specific subject matter and thus did not meet the sign requirement.

Acquiring trade mark rights in a functional concept would give Dyson an unfair advantage in a useful property of a product, i.e. Dyson was trying to claim an idea rather than a sign.

Question 40

Describe the test for passing off established in Reckitt & Colman Ltd v Borden Inc [1990]
R.P.C. 340, HL (the “Jif Lemon” decision).
(x2)

Answer 40

(1) establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying “get-up” under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff’s goods or services.
(2) demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff.
(3) demonstrate that claimant suffers or … that he is likely to suffer damage by reason of the erroneous belief that the source of the defendant’s goods or services is the same as the source of those offered by the plaintiff.

Question 41

To what extent does the U.K. law of passing off protect well-known personalities? Explain
briefly your answer, using case authority by way of illustration.
(x3)

Answer 41

As stated by Birss J in Robyn Rihanna Fenty v Arcadia Group Brands:

• English law does not recognise a general right for a person, famous or otherwise, to control reproduction of their image.
• Therefore, still need to show goodwill, misrepresentation and damage.
• Selling merchandise with a well known personalities image on it not automatically passing off. It must make the customer think that the personality somehow had some input in the creation of the product (e.g. if the person had previously done similar things, as in Rihanna’s case).

Question 42

Describe briefly the importance of the decision of the CJEU in Chartered Institute of Patent
Attorneys v Registrar of Trade Marks, Case C-307/10, 19.6.2012, (IP translator).

Answer 42

This case was concerned with the scope of protection offered by the specification of the goods or services that the mark relates to. Class headings can be used for this purpose, but they need to be specified with clarity and precision.

In this case, it was made clear that the applicant should specify whether all the goods/services in a class heading were claimed, or only some of them. Here, the applicant filed the mark “IP Translator” under class 41 which included translation services (without disclaiming that sub-heading), so the registration was refused on the basis of the sign being descriptive.

Question 43

Describe briefly the public interest underlying the absolute ground for refusal contained in
Section 3(2)(b) Trade Marks Act 1994 (non-registrability of signs consisting exclusively of
the shape of goods which is necessary to obtain a technical result).

Answer 43

• 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
• Trade mark protection of technical features would effectively (unfairly) grant perpetual patents.

Question 44

Describe briefly the importance of the decision of the CJEU in Hauck v Stokke, Case C-
205/13, 18.9.2014 (Tripp Trapp children’s chair).

Answer 44

This case was concerned with the exclusion of signs whose shape gives substantial value to the product. The policy of this exclusion being so to demarcate the boundary between trade marks and copyright and design rights.

Particularly, the CJEU stated that products that have multiple features, each of which contributes to the consumer’s perception of its value (such as the visual appeal of the Tripp Trapp chair and its safety, comfort, reliability etc.) would also make the product fall into the exclusion, rather than requiring a single feature to put it inside the exclusion. That is, ‘mosaicing’ of valuable features was deemed to be permitted.

Question 45

Explain briefly the main differences between the U.K. Intellectual Property Office and
OHIM opposition proceedings.

Answer 45

UK:

• can oppose on absolute grounds, EUIPO only relative grounds;
• bad faith is a ground for opposition as well as invalidity, EUIPO only invalidity;
• can use design rights and copyright as relative grounds of opposition, not so for EUIPO.

Question 46

What is the legal test for assessing whether a sign may serve in trade to designate the kind,
quality, […], or other characteristics of the goods or services?

Answer 46

Does the mark currently represent, 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?

OHIM v Wrigley’s (Doublemint case) implemented this test for preserving the public interest that descriptive terms should remain free for anyone to use.

Question 47

What does the trade mark proprietor need to establish in order to be successful in a dilution
by blurring claim? (Intel Corporation Inc. v. CPM United Kingdom Ltd, Case C-252/07,
27.11.2008, ECR I-8823).
(x2)

Answer 47

For blurring to be shown, there must have been a detriment to the origin function of the trade mark that enjoys a reputation (as opposed to the investment or advertising functions).

Any mark with a reputation can be taken as having acquired distinctiveness. The more unique a mark is, the more likely it is that use of a later similar mark will be detrimental to its distinctive character.

To show this, the claimant needs to prove that there is a change in the economical behaviour in the average consumer of the goods/services for which the earlier mark is registered. This could merely be a likelihood that this could happen (Environmental Manufacturing).

Question 48

What does a trade mark proprietor need to demonstrate in order to establish that there are
‘proper reasons for non-use’ within the meaning of Section 46(1)(a)-(b) Trade Marks Act 1994 and Article 51(1)(a) CTMR respectively? (Armin Häupl v. Lidl Stiftung & Co. KG, Case C-246/05, 14.6.2007, [2007] ECR I-4673).
(x2)

Answer 48

(1) the obstacle preventing use of the mark arose independently of the proprietor’s will,
(2) there is a direct relationship between the obstacle and the failure to use the mark, and
(3) the obstacle is such as to make the use of the mark impossible or unreasonable.

Question 49

Explain briefly how the owner of a foreign mark which is well-known in the U.K. may protect his/her interests in the U.K.

Answer 49

The owner may oppose any registrations for similar marks in the UK, provided that the owner’s mark constitutes an ‘earlier mark’ as defined in s.6 of the TM Act (i.e. entitled to protection under the Paris Convention as a well known mark). Similarly, the owner could bring infringement proceedings against an existing (but later) similar mark.

Such oppositions could consist of relying on invalidating the registration based on the relative grounds for refusal as they relate to marks that enjoy a reputation, provided the use of the later mark either harms or take unfair advantage of the earlier mark’s distinctive character or repute.

Alternatively, the owner could rely upon the law of passing off. However, the owner would then have to show that they have customers in the UK rather than a mere reputation in the UK.

Question 50

Is Section 11(2) Trade Marks Act 1994 (the defence of descriptive use that allows third
parties to use descriptive terms) also applicable if a third party uses a descriptive indication
as a trade mark? (Gerolsteiner Brunnen GmbH & Co v. Putsch GmbH, Case C-100/02,
7.1.2004, [2004] ECR I-691).

Answer 50

In Gerolsteiner the ECJ held that the use of a term of geographical origin (KERRY SPRING) did not infringe the German GERRI trade mark for the same goods if it was “in accordance with honest practices”, even if the use of that term (i) was a use as a trade mark and not as a mere descriptor and (ii) that use was likely to cause confusion.

Question 51

Explain the requirement in Trade Mark law that an infringing use must be use “in the course
of trade” in the UK.
(x2)

Answer 51

For the purposes of infringement in s.10 TMA, a person uses a trade mark if, in particular, they:

(a) affix it to goods or packaging thereof;
(b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;
(c) imports or exports goods under the sign; or
(d) uses the sign on business papers or in advertising.

The particular meaning of ‘in the course of trade’ is examined in the case of Reed v Arsenal where the court stated that it is use that “takes place in the context of commercial activity with a view to economic advantage and not as a private matter”.

Question 52

Can the shape of a product, which gives substantial value to that product, be registered as a trade mark in the UK where, prior to the application for registration, it has acquired a distinctive character through use? Explain your answer.

Answer 52

As long as the sign does not consist ‘exclusively’ of a shape that gives it substantial value, then if some other feature of the sign (i.e. other than the shape) has acquired distinctiveness, then the sign overall may be registrable (Tripp Trapp case).

Question 53

Describe the test devised by the CJEU for establishing that a trade mark has acquired a distinctive
character.

Answer 53

Windsuring Chiemsee:

In order to demonstrate that a sign has acquired distinctive character, the applicant or trade mark proprietor must prove that, at the relevant date, a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question and has come to rely upon the sign to identify the g/s of that undertaking.

Question 54

Compare and contrast the decisions of the CJEU in C-383/99 Procter & Gamble v. Office for Harmonization in the Internal Market (the ‘BABY-DRY’ case) and in C – 191/01 OHIM v Wrigley (the ‘DOUBLEMINT’ case).

Answer 54

In Doublemint, the court stated that “Doublemint” is not currently being used as a descriptive sign, but it is likely to become such in the future. The mere juxtaposition of descriptive elements is not enough to give rise to a registrable mark.

On the other hand, in Baby-Dry, the court held that the unusual syntactical juxtaposition of words was enough to make the mark distinctive as a whole, even though the individual elements are descriptive.

There has been dispute of whether the Baby-Dry case is compatible with Doublemint.

Question 55

Explain briefly the ‘imperfect recollection’ aspect of the ‘average consumer’ as applied by the CJEU.
(x2)

Answer 55

The average consumer does not make direct comparisons between marks, but instead has an imperfect recollection of marks. This means that the average consumer gets an ‘overall’ impression of a mark which focuses on the distinctive and dominant components.

Therefore, two marks that are not technically identical may be perceived as such by the average consumer suffering from imperfect recollection.

Question 56

Describe the meaning and the purpose of the “sign” requirement, as established in Dyson Ltd. v.
Registrar of Trade Marks, Case C-321/03.

Answer 56

This case concerned the attempted registration of a transparent bin or collection chamber for a vacuum cleaner, and gave two examples of such bins. The ECJ decided that, as the chamber could form a multitude of different shapes and configurations, it related to non-specific subject matter and thus did not meet the sign requirement.

Acquiring trade mark rights in a functional concept would give Dyson an unfair advantage in a useful property of a product, i.e. Dyson was trying to claim an idea rather than a sign.

Question 57

Are colour combinations registrable in the UK? Explain your answer.

Answer 57

In Heidelburger, the applicant tried to register a combination of colours where the description said that the colours may be arranged in any conceivable form. The court stated that such arbitrary combinations were not precise and could take any number of forms, thus violating the precision requirement of the Seickmann criteria.

Later, Red Bull attempted to register a combination of two colours where the description said the colours were in a juxtaposition with a ratio of approximately 50-50. The court again said that the description made the mark imprecise as the colours in this case could also be arranged in any number of ways. The court also said that, due to the intrinsic impreciseness of colours, a higher degree of precision is required in the description of the mark in order to fulfil the Seickmann criteria.

Question 58

Are interior designs of retail outlets registrable in the UK? Explain your answer.

Answer 58

As set out in Apple, the layout of a retail store is, at least in abstract, capable of distinguishing the products or services of one undertaking from those of another undertaking. For a registration for an interior design to be successful in concreto, the layout needs to depart significantly from the norm or customs of the economic sector concerned.

Question 59

Are advertising slogans registrable in the UK? Explain your answer.

Answer 59

Although the UK courts have tended to suggest that slogans lack distinctive character (such as to indicate origin), they have not imposed any special requirements for slogans.

Thus, the normal criteria applies to slogans, but (as indicated in Audi v OHIM) it helps if the slogan is in some way more distinctive, e.g. by being imaginative or creative.

Question 60

What is the public interest underlying the exclusion from registration of descriptive terms?

Answer 60

It ensures that descriptive terms can be freely used by all traders. Furthermore, descriptive signs do not fulfil the essential function of a trade mark, that is, to indicate its origin.

Question 61

What factors indicate, according to the case law of the CJEU, that a mark has been registered in bad
faith?
(x2)

Answer 61

As stated in Lindt v Hauswirth the relevant factors are:

(a) whether the applicant knows or must know whether a similar or identical sign is being used by a third party,
(b) the applicant’s intention to stop the third party from continuing to use the sign, and
(c) the degree of legal protection enjoyed by the third party’s and the applicant’s sign.

Question 62

Explain briefly the concept of dilution by tarnishment.

Answer 62

The concept of detriment to the repute of a trade mark, often referred to as degradation or tarnishment of the mark, describes the situation where - as it was put in the well-known Claeryn / Klarein decision of the Benelux Court of Justice - the goods for which the infringing sign is used appeal to the public’s senses in such a way that the trade mark’s power of attraction is affected.

Mark linked with goods of poor quality or antagonisms (e.g. sexual goods).

Or when earlier mark modified in derogatory way (e.g. Coca Cola -> Cocaine)

Question 63

Describe briefly the functions of trade marks that enjoy legal protection according to the case law of
the CJEU.

Answer 63

Origin function - allows consumers to know from which undertaking the goods/services came from. Allows consumers to know in advance the quality of the goods/services due to coming from a known undertaking.

Advertising function - a trade mark also serves to advertise the undertaking whose mark it is. Trade marks protect this by preventing the dilution of the mark by similar signs by different undertakings.

Investment function - the use of the mark by its proprietor “to acquire or preserve a reputation
capable of attracting consumers and retaining their loyalty” should be protected (Interflora case).

Question 64

Discuss briefly the importance of the decision of the CJEU in Ansul BV v Ajax Brandbeveiliging BV,
Case C-40/01.

Answer 64

This case set out what is required to show ‘genuine use’ of a trade mark:

The ECJ stated that use designed solely to preserve the rights under the mark is not genuine use.

The use requires real use in the market aimed at the public and not just internal use by the undertaking concerned.

It is necessary to take into account all relevant facts and circumstances in order to decide whether commercial exploitation of the mark was real.

The use does not need to be quantitatively significant to be considered genuine.

Use in relation to after sale services could be genuine even though the goods are not sold anymore.

Question 65

What are the criteria established in Ralf Sieckmann v DPMA, Case C-273/00, ECLI:EU:C:2002:748 for
assessing the representation requirement?

Answer 65

Easily Accessible, intelligible, durable, self-contained, clear, objective, precise. (eAIDS COP)

Question 66

Explain the public policy consideration underlying s. 3(1)(b) TMA 1994, which requires the refusal to
registration of marks that are devoid of distinctive character.

Answer 66

Enabling consumers to identify the origin of the goods so as to repeat or avoid previous purchases (essential function).

Question 67

What are the criteria for determining whether a sign is descriptive according to the decision of the CJEU in OHIM v Wrigley, Case C-191/01 P, ECLI:EU:C:2003:579 (DOUBLEMINT)?

Answer 67

The court decided that a sign is excluded from registration if at least one of its possible meanings designates a characteristic of the goods concerned.

The existence of another non-descriptive meaning is irrelevant.

Question 68

What are the criteria for assessing whether a geographical term is descriptive according to the decision of the CJEU in Windsurfing Chiemsee, Case C-108/97, ECLI:EU:C:1999:230?

Answer 68

The legal test is in assessing the need to keep the sign free for competitors to use in the future:
• are consumers familiar with the geographic term;
• are consumers familiar with the characteristics of the place designated with that name;
• are consumers familiar with the category of goods concerned?

Question 69

Explain briefly the type of evidence required for an applicant to establish distinctiveness acquired through use when applying to register a sign as a European Union Trade Mark.

Answer 69

Evidence must refer to the entire territory in relation to which the ground for refusal applies.

For verbal marks that territory is the territory where the term is understood.

For non-verbal marks the evidence of acquired distinctiveness must be adduced that relates to all Member States.

Question 70

Explain the concept of “global appreciation” as it applies to the assessment of confusingly similar uses.

Answer 70

All the relevant factors should be taken into account (global appreciation test as set out in Canon v MGM).

More similar marks, less similar g/s need to be to be confusing.
Less similar marks, more similar g/s need to be.

Question 71

When would a junior use affect the origin function of an earlier trade mark in the context of AdWords advertising?

Answer 71

Google France:

When the advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.

Question 72

When would a junior use affect the advertising function of an earlier trade mark?

Answer 72

When the later mark is used to divert customers away from plaintiff to other sellers. E.g. Argos case where the defendant was taking advantage of misdirected users to gain ad revenue.

Question 73

What is the legal test for ascertaining whether a junior use takes an unfair advantage of the repute of an earlier mark with a reputation?

Answer 73

Three stages to show unfair advantage as seen in L’Oreal v Bellure, and Intel Corp:

(i) identify the power of attraction, reputation and prestige of the earlier mark;
(ii) establish whether any advantage has been transferred to (or likely to transfer to) the earlier similar or identical mark (unlike blurring and tarnishment, where the reaction of the consumers of the reputed mark are central, here the focus is on the impact assessed from the perspective of the average consumer of the relevant goods or services);
(iii) establish that the advantage has been thereby secured has been unfairly taken.

Question 74

Under what circumstances would it be possible for a trade mark proprietor to maintain his registration if the sign he had actually been using differed in some respects from the sign actually registered?

Answer 74

As set out in Anheuser Busch v Budvar, use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered still constitutes use of the mark such that the proprietor may defend against revocation for non-use.