Trade Marks - absolute and relative grounds for refusal of registration

Question 1

Metro Goldwyn Meyer

Answer 1

Sonograms can be accepted as TMs in conjunction with mP3 file

Question 2

Eurocermex v OHIM

Answer 2

Corona attempted registration of shape of bottle with lime wedge - lack of distinctive character, no function as badge of origin.

Question 3

Lego v OHIM

Answer 3

Shape necessary to obtain technical result, no TM

Question 4

Proctor and Gamble v OHIM

Answer 4

Pampers baby dry - description of purpose of goods, no distinctive character

Question 5

Lindt v OHIM

Answer 5

Distinctiveness must exist across EU or at least part of it, no distinctive character, also bad faith, wanted to register TM for anti-competitive reasons

Question 6

House of Donuts

Answer 6

Considered distinctiveness of “donuts” across EU

Question 7

Ferregamo shoes

Answer 7

Trademark sought for metal part of shoe, was sufficiently distinctive

Question 8

KitKat Case

Answer 8

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

Question 9

The Screw You TM Application

Answer 9

Application to register “screw you” for a variety of classes as an EU TM, rejection of argument that Screw You = fuck you, evidence of use in Eastenders. Accepted in part - allowed registration for some classes (such as condoms, sex toys and alcoholic beverages)

Question 10

Swedish Patent and Registration Office decision

Answer 10

Mark depicting a hand giving the middle finger could not be registered as a TM as it was contrary to principles of morality.

Question 11

Mettel v Zynga

Answer 11

Mettel sued for infringement and passing off on the basis that “scramble with friends” was infringing their TM for scrabble. No minimum threshold of similarity which must be reached before the court can find likelihood of confusion.

Question 12

Sabel v Puma

Answer 12

Global appreciation test - average consumer who has perceived signs and has imperfect recollection. Visual, aural and conceptual similarities. Attention paid to dominant components, eg words. The more distinctive the earlier mark, the more likely that similarity will be found.

Question 13

Betty Boop case

Answer 13

Trademark was for work mark Betty Boop. Successful claim against use of public domain artwork on clothing, despite words not featuring.

Question 14

British Sugar v Robertson

Answer 14

Sweet syrup is not similar to sweet spread

Question 15

Balmoral Trade Mark case

Answer 15

Whiskey is similar to wine

Question 16

Datacard v Eagle

Answer 16

After purchase confusion is sufficient to establish trademark infringement, especially where, for example, it leads to repurchase.

Question 17

EFTA Court Decision

Answer 17

Not per se contrary to public policy/morality to allow registration of public domain work as TM. Refusals on this ground can only be made where registration is regarded as a genuine and serious threat to certain fundamental values or where the need to safeguard the public domain, itself, is considered a fundamental interest of society.