Trade marks: Absolute Grounds Flashcards
What is the starting point for whether a TM is registrable
The assumption that a TM IS registrable unless there is a reason otherwisw
Who can contest a TM on absolute grounds
Anyone
What section tells you what a TM is and what does it say?
S1(1) TMA 1994: Any sign capable of being represented graphically which is capable of distinguishing good or services
Which case says that it is the same test for 1(1) as for 3(1)(a)
baby dry
3 cases which explain what a sign is
Philips v Remington: anything that conveys information
Sieckmann: Any message capable of perception (need not be visible)
Arsenal v Reid: Need not be visible at point of sale - end user as well as initial purchaser considered
What is the test for whether a sign is capable of being graphically represented
The Sieckmann seven:
- clear
- precise
- self contained
- intelligible
- durable
- easily accessible
- objective
4 cases where the mark failed the sieckmann 7 test
Taste of strawberry medicine; Eli Lilly
Smell of cinnamon: Sieckmann
Colour with no pantone reference: Libertel
Sound with no musical annotation: Shield Mark
What is the reason underlying the Sieckmann requirements
The registry needs to be precise: Heidelberger
Which sections of the act ;list what cannot be registered and how must it be interpreted
S3(1)(b)-(d). Each must be understood in light of its underlying policy (Biomild). Each has a different policy (Sat2)
What is the policy of 3(1)(b) - marks devoid if any distinctive character
To keep things that do not do the job of a TM off the register: Sat2
What is the test foe whether a mark is devoid of distinctive character
British Sugar: Whether it is inherently distinctive - can it fulfil its function without further education of the public
OR Nestle Waters: does it allow the consumer to make a choice
Through whose eyes is distinctive character judged
The relevant consumer in relation to the goods: Philips v Remington
Can surnames be TMs?
Yes - they are treated the same as any other mark (Nichols)
Can shapes be TMs (5 cases)
NOT if the public would require further education (Axion - cigar shaped chocolate)
NOT if devoid of distinctive character (Henkel - dishwasher tablet)
SEE ALSO Maglite - not sufficiently different from the shape of other torches
But YES if “inherently helpful in identifying a product or range” (Chrysler)
SEE ALSO B&O - speaker was distinctive because it departed from the norms of the trade.
Can slogans be TMs
Yes - they are treated like any other mark (Erpo - “The principle of comfort”)
See also Take a break - had acquired distinctiveness
Can composites be TMs
Yes - they should be judged as a whole (Sat2)
What is the underlying policy of s3(1)(c) - descriptive marks
To keep descriptive signs free for all traders: Windsurfing Chiemsee (STRICT application)
What is the test / guidance for whether a mark is desriptive
Wrigley: The more factual / objective the relationship between the mark and the product, the more likely it is to be refused.
Whose eyes is descriptiveness judged through
The relevant consumer: Philips v Remington
Example of a mark refused for descriptiveness
Zapf - newborn baby (doll)
For words with more than one potential meaning, it is sufficient for refusal that one meaning is descriptive
Doublemint
Neologisms can be descriptive
Biomild
Foreign words which aren’t common knowledge CAN be registered
Matrazen
Syntactically unusual juxtaposition of words can defeat descriptiveness
Baby Dry (unsafe since doublemint?)
Geographical descriptions are OK if obscure or fanciful
Windsurfing (see eg Cloppenberg)
What is the policy underlying s3(1)(d) - signs customary in the trade
Same as for (c) - to protect the interests of other traders: Merz & Krell
What is the test for whether a sign is descriptive in the trade
Clear evidence that the mark is used to the extent of being usual - the more specialist the trade, the less use is needed: Stash
2 examples of signs which were refused for being customary in the trade
Green for mint: Doublemint
Spambuster: Hormel foods (but failed b/c of cause of action estoppel)
What might save a mark which would otherwise be unregistrable on absolute grounds
Distinctiveness acquired through use (burden of proof is on the applicant)
What factors are taken into account when assessing acquired distinctiveness
Windsurfing Chiemsee: Market share, intensity, geographical extent, length of use, amount of investment, percentage consumer recognition
To have acquired distinctiveness, must have been used distinctively as a trade mark
Philips v Remington
Acquired distinctivenedss must be from use in the UK
800 flowers (websites must be aimed at UK)
What order should you address the exceptions to registration and which case said so
Linde:
FIRST apply s1(1) - Can it be a TM
NEXT: apply s3(2) - Is it excluded
THEN: apply s3(1)(b)-(d)
What is the underlying policy of s3(2) - shapes which cannot be registered
To ensure technical shapes are left free for other traders: Philips v Remington
Technical shapes are unregistrable even if there are other ways of chieving the same result
Philips v Remington
What is the test for whether a mark is contrary to morality
Would it cause outrage and significantly undermine religious or social values: Gazillian’s case
Case where the nature of the product / audience meant the mark was not contrary to morality
Screw you for sex toys
Through whose eyes is whether a mark is deceptive judged
The eyes of the average, reasonably well-informed, observant, circumspect consumer who is used to hype. Kenco the real coffee experts
Example of a deceptive mark
Orlwolla for non wool
Example of a mark which was not deceptive
Elizabeth Emmanuel - Mark is a guarantee of quality, not of the maker
Test for bad faith registration
Dishonesty or conduct of less than acceptable standards of commercial behaviour; China White
Where there is uncertainty as to entitlement, there is no bad faith
Gromax
