Trade Mark Registration

Question 1

Vuitton v My Other Bag

Answer 1

Outcome in this case would have been different in the EU as there is no recognition for the concept of parody

Question 2

Phillips

Answer 2

CJEU - pro-competitive grounds limit the possibility (absolute grounds) to register signs that are exclusively: shapes resulting from the nature of the goods themselves, shapes necessary to obtain a technical result, shapes that give substantial value to the goods (Tripp Trapp case)

Question 3

Sieckmann

Answer 3

Criteria for graphic representation: clear, precise, self-contained, easily accessible, intelligent, durable, objective. Rationale: define scope of property sought, allow third parties to know what sign registration is sought, allow competent office to determine whether sign can be registered.

Question 4

Shield

Answer 4

CJEU said musical notation was okay, but onomatopoeic representation and verbal description was not okay. No immediate intelligibility required.

Question 5

Libertel

Answer 5

CJEU held colours could be registered due to internationally recognised identification codes

Question 6

Cadbury

Answer 6

Application for colour was rejected where it was to be the “predominant” colour on packaging, as it allowed the possibility of other colours also being used. This would lead to a wide range of potential marks which would give Cadburys a competitive advantage.

Question 7

IP Translator case

Answer 7

The goods and services for which the protection of a trade mark is sought must be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.