Trade Mark Law (UK) - Registration Criteria 2

Question 1

What does Section 3(1)(b) of the TMA 1994 address?

Answer 1

Trade marks devoid of distinctive character.

Question 2

Which case emphasised that a proposed mark must not serve only functional purposes?

Answer 2

Philips Electronics NV v Remington

Question 3

Can a descriptive phase acquire distinctiveness through use according to Section 3(1)(b)?

Answer 3

Yes, a descriptive phrase can acquire distinctiveness through use.

Question 4

What major change was introduced by the 2015 Trade Marks Directive?

Answer 4

Removal of the graphical representation requirement.

Question 5

Which decision ruled against the registration of the KitKat shape due to lack of distinctiveness?

Answer 5

Nestle v Cadbury [2016]

Question 6

A mark must inherently possess distinctiveness to be eligible for registration under Section 3(1)(b).

True or False

Answer 6

True

A mark must inherently possess distinctiveness to be eligible for registration under Section 3(1)(b).

Question 7

7. Descriptive signs under Section 3(1)(c) include marks that solely provide information about the quality or purpose of goods.

True or False

Answer 7

True

A mark cannot solely prove information about the quality or purpose of goods.

Question 8

The proviso for acquired distinctiveness ensures that all marks, regardless of the exclusions under Section 3, can be registered if proven distinctive through use.

True or False

Answer 8

False

The proviso for acquired distinctiveness does not apply to all exclusions under Section 3.

Question 9

10. A shape mark that adds substantial aesthetic value to a product is likely to be accepted under Section 3(2)

True or False

Answer 9

False

A shape mark that adds substantial aesthetic value to a product is likely to be refused under Section 3(2).

Question 10

Descriptive signs under Section 3(1)(c) include marks that solely provide information about the quality or purpose of goods. (True/False)

Answer 10

True

Descriptive signs under Section 3(1)(c) include marks that solely provide information about the quality or purpose of goods.

Question 11

What is meant by “distinctive character” in the context of trade mark registration criteria?

Answer 11

Distinctive character means a mark can distinguish the goods or services of one undertaking from those of others.

Question 12

What principles guide the refusal of descriptive marks under Section 3(1)(c)? Provide an example.

Answer 12

Descriptive marks are refused if they merely describe the goods/services. Example: “Baby-Dry” was accepted due to its unusual syntax.

Question 13

Explain the significance of the Apple Inc v DPMA case regarding store layouts as trade marks.

Answer 13

Apple Inc v DPMA highlighted that store layouts could be trade marks if they significantly depart from the norm.

Question 14

Describe how the KitKat case clarified the requirements for proving acquired distinctiveness.

Answer 14

The KitKat case clarified that acquired distinctiveness requires consumer recognition of the mark as an origin indicator.

Question 15

What rationale underpins the refusal to register customary trade marks under Section 3(1)(d)?

Answer 15

Customary trade marks are refused to keep common terms available for all traders, ensuring fair competition.

Question 16

What is the economic and legal significance of the proviso for acquired distinctiveness in promoting fair competition? Provide an example of how it might protect smaller businesses.

Answer 16

The proviso for acquired distinctiveness allows marks to gain protection through use, promoting fair competition by enabling smaller businesses to protect marks that have become distinctive over time.

For example, a local bakery could protect its unique bread shape if consumers recognise it as a brand indicator.