TM Subject Matter Flashcards
What are the requirements set out in Section 1(1) for a trademark?
- any sign
- capable of being represented in the register in a manner which enables […] the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and
- capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trademark may, in particular, consist of words, designs, letters, numerals, colours, sounds or the shape of goods or their packaging.
Can a shape be registered as a trademark in the UK? Explain your answer.
- Yes, TMA 94 section 1(1) states that a trademark may consist of the shape of goods or their packaging.
- However, shapes are excluded from registration if they fall into the following categories
- The shape is a result of the nature of the goods themselves
- The shape of goods which is necessary to obtain a technical result
- The shape which gives substantial value to the goods.
What is the public policy consideration underlying s.3(2) TMA 94 as a whole? (In relation to shapes).
- Public interest in preventing the monopolization of technical solutions or functional characteristics of products which a user is likely to seek in the products of competitors
- Preventing the exclusive and permanent rights which a trademark confers from serving to extend indefinitely the life of other rights which the EU legislature has sought to make subject to limited periods
What does “shapes which result from the nature of the goods themselves” mean?
Shapes with essential characteristics which are inherent to the generic function(s) of such goods.
Refusal of registration set out in that provision may apply to a sign which consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function(s) of that product and which consumers may be looking for in the products of competitors.
What is the public policy consideration behind the absolute refusal of “signs which consist exclusively of the shape, or another characteristic, of goods which are necessary to obtain a technical result”?
- 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 trademarks
- Avoid perpetual patents
Discuss very briefly the importance of the decision of the E.C.J. in Philips v. Remington?
- Philips had a trademark consisting of a graphic representation of the shape comprising three circular heads with rotating blades in the shape of an equilateral triangle.
- Remington began making and selling in the UK, similarly-shaped razors to that used by Philips
- Philips sued for TM infringement
- Remington counterclaimed for revocation by claiming that the shape was due to technical characteristics
Result
- A sign consisting exclusively of a product’s shape was unregistrable if it was established that the essential functional features of that shape were attributable only to the technical result.
- Additional embellishments did not make it registerable, and the existence of alternative ways of achieving the same technical result did not allow registration.
Describe briefly the importance of the decision of the CJEU in Hauck v Stokke, Case C-205/13, (Tripp Trapp chair).
- Stokke had a Benelux TM for its ‘Tripp Trapp’ children’s chair,
- The chair can be adjusted so that it continues to fit a child as they grow older.
- Hauck also sold children’s chairs which Stokke claimed infringed the Tripp Trapp chair - Hauck counterclaimed for invalidity
Result
- Nature of the goods - extends to signs which consist exclusively of the shape of a product with essential characteristic(s) which are inherent to the generic function(s) of that product and which consumers may be looking for in the products of competitors.
- Substantial value - could apply to the shape of products where, in addition to its aesthetic function, the shape also performs essential functions.
CJEU concluded that each of the ground should be applied independently of each other.
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?
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?
Can a colour be registered as a trademark in the UK? Explain your answer.
- Yes, TMA 94 section 1(1) states that a trademark may consist of colours. However, colours can only be registered on certain conditions.
- The colour(s) must enable those inspecting the register to determine the clear and precise subject matter of the protection afforded to the proprietor.
- Designating the colour(s) using a recognised international colour code system would allow the representation requirement to be met.
Discuss briefly the importance of the decision of the ECJ in Libertel Groep BV v Benelux Merkenbureau, Case C-104/01.
In Libertel Groep, the ECJ established that a colour per se could, in certain contexts, constitute a sign and that such a sign could be capable of distinguishing the goods or services of one undertaking from those of other undertakings, with the help of an internationally recognized colour code.
Are combinations of colours registrable as trademarks according to the ECJ? Explain your answer.
- Colour combinations are registerable provided they are systematically arranged by associating the colours concerned in a predetermined and uniform way.
- It must be perceived in a precise and uniform manner to fulfil its essential function of origin.
- In Heidelburger Bauchemie, it was held that a colour combination of two colours in every conceivable form is not registrable, because it is not sufficiently precise that competitors can see from the register exactly what is protected. This type of mark would encompass too many possible combinations and interpretations, and it was impossible to say that a consumer would be able to remember each one so as to repeat with certainty the experience of a purchase.
Are smells registrable in the UK? Explain your answer.
- Yes, in theory. However, any smell mark would need to be capable of being represented in a way that is clear, precise, easily accessible, intelligible, durable and objective.
- These criteria are not met by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.
- Therefore, in practice, getting a trademark for a smell may be hard.
Discuss very briefly the importance of the decision of the ECJ in Ralf Sieckmann v Deutsches Patent und Markenamt.
- Mr Sieckmann wanted to register an olfactory (smell) as a trademark in Germany
- He provided a chemical formula, a sample deposit, and a written description of this smell
- His application was rejected and when referred to the ECJ,
- The ECJ stated that in theory, smells are capable of graphical representation so long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.
- However, the representations provided by Sieckmann were not sufficient to meet the standards set
Are sounds registrable in the UK? Explain your answer.
- Yes, TMA 94 section 1(1) states that a trademark may consist of sounds. However, the representation of the sound must enable those inspecting the register to determine the clear and precise subject matter of the protection afforded to the proprietor.
- A stave divided into bars and showing classic musical notation which determines the pitch and duration of the sounds, may constitute a faithful representation of the melody.
- Under the law as amended a sound file also constitutes a representation.
Are interior designs of retail outlets registrable in the UK? Explain your answer.
- Yes - provided that it is capable of indicating commercial origin
- The layout of a retail store could potentially be capable of indicating commercial origin, by distinguishing the products or services of one undertaking from those of another, particularly if the depicted layout departs significantly from the norm or customs in the economic sector.
- Provided none of the grounds for refusing registration apply, a sign depicting the layout of the store of a goods manufacturer can be registered for services as well as goods, where those services do not form an integral part of the offer for sale of the goods
