[TM] Absolute Grounds

Question 1

What are some reasons for absolute grounds? [7]

Answer 1

“s3 TMA

• s1(1) not met ““clear and precise + sign””
• lack of distinctive character
• descriptive G/S
• customary in trade
• shape/charateristic that: a. nature of goods b. technicla result c. substantial value
• contrary to public policy/morality
• prohibted by law/bad faith/protected emblems”

Question 2

“How to tell if something is a ““sign”” (as per 1(1))

is mere property/characteristic a sign?”

Answer 2

“Mere property ≠ sign.

Heidelberger: must not be property/characteristic of goods. (eg: [Dyson] bin not a sign, just a concept)
Nestle v Cadbury: ““predominant purple”” = vague + implied other colours
• Mattel v Zynga: mere property ≠ sign. Too wide”

Question 3

What is a distinctive character?

Answer 3

“Needs a MINIMAL degree of distinction (consumers an tell where it comes from + make repeat purchase)

Question 4

Can a colour have distinctive character?

Answer 4

“usually no.

[KWS Saat v OHIM] Allowed only in exceptional circumstances.
• [Libertel] Simple coloura unlikely distinctive (part of good) + public interest in keeping colours free”

Question 5

Can a shape have distinctive character?

Answer 5

“Shapes usually cannot, but also bc usually not disctinctive

• [Maglite] Consider other shapes in national market
• [Toblerone] Acquired disctinctiveness

Question 6

Can a names + Signatures have distinctive character?

Answer 6

“traditionally not distinctive

• [Nichols] use general knowledge. no general criteria of commoness + unfair for first registrant
• [Oska]: single surname devoid usually. First + Last more likely
[Elvis]: names as part of product + buy it. dont treat is as a trademark. ‘ehh’”

Question 7

Can a slogan have distinctive character?

Answer 7

“usually no.

Question 8

Can descriptive marks be distinctive?

Answer 8

• [Doublemint]: if at least one meaning designate characteristic. Can word be used by competitiors to describe the product? Prevent monopoly

Question 9

Can customary marks be distinctive?

Answer 9

“nope, public should be able to use. Consider relevant consumer

• Alcon v OHIM: ‘BSS’ consider relevant consumer (specific)
RFU v Cotton Traders”

Question 10

Can shapes be distinctive?

Answer 10

“Not if:
a. nature of goods (Hauck v Stokke: inherent to generic function, what consumers look for = not TM)

b. technical result (Philips v Remington: razor = close effective shave. traders should be free to use any solution they can. if technical function = not TM)
c. Substantial value (Bang & Olufsen v OHIM = design important to consumer (target) = should be rejected bc substantive value)”

Question 11

What morally dubious marks can be rejected?

Answer 11

“if target consumer would be offended = no

so long as not inciting behaviour or not insulting”

Question 12

If someone sells their business and they use their name on products, is this deceptive?

Question 13

“What is considered bad faith?

Answer 13

“[red bull v sunmark]

1. assess it based upon application date (not after)
2. presumtion of good faith
3. dishonesty + unacceptable commercial behaviour
4. purpose of legislation= prevent abuse of TM system (opposed to self interest)
5. ascertain intentions: genuine intention to use TM?”