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IP > Trade marks: Absolute Grounds > Flashcards

Trade marks: Absolute Grounds Flashcards

1
Q

What is the starting point for whether a TM is registrable

A

The assumption that a TM IS registrable unless there is a reason otherwisw

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2
Q

Who can contest a TM on absolute grounds

A

Anyone

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3
Q

What section tells you what a TM is and what does it say?

A

S1(1) TMA 1994: Any sign capable of being represented graphically which is capable of distinguishing good or services

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4
Q

Which case says that it is the same test for 1(1) as for 3(1)(a)

A

baby dry

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5
Q

3 cases which explain what a sign is

A

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

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6
Q

What is the test for whether a sign is capable of being graphically represented

A

The Sieckmann seven:

  1. clear
  2. precise
  3. self contained
  4. intelligible
  5. durable
  6. easily accessible
  7. objective
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7
Q

4 cases where the mark failed the sieckmann 7 test

A

Taste of strawberry medicine; Eli Lilly
Smell of cinnamon: Sieckmann
Colour with no pantone reference: Libertel
Sound with no musical annotation: Shield Mark

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8
Q

What is the reason underlying the Sieckmann requirements

A

The registry needs to be precise: Heidelberger

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9
Q

Which sections of the act ;list what cannot be registered and how must it be interpreted

A

S3(1)(b)-(d). Each must be understood in light of its underlying policy (Biomild). Each has a different policy (Sat2)

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10
Q

What is the policy of 3(1)(b) - marks devoid if any distinctive character

A

To keep things that do not do the job of a TM off the register: Sat2

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11
Q

What is the test foe whether a mark is devoid of distinctive character

A

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

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12
Q

Through whose eyes is distinctive character judged

A

The relevant consumer in relation to the goods: Philips v Remington

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13
Q

Can surnames be TMs?

A

Yes - they are treated the same as any other mark (Nichols)

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14
Q

Can shapes be TMs (5 cases)

A

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.

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15
Q

Can slogans be TMs

A

Yes - they are treated like any other mark (Erpo - “The principle of comfort”)
See also Take a break - had acquired distinctiveness

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16
Q

Can composites be TMs

A

Yes - they should be judged as a whole (Sat2)

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17
Q

What is the underlying policy of s3(1)(c) - descriptive marks

A

To keep descriptive signs free for all traders: Windsurfing Chiemsee (STRICT application)

18
Q

What is the test / guidance for whether a mark is desriptive

A

Wrigley: The more factual / objective the relationship between the mark and the product, the more likely it is to be refused.

19
Q

Whose eyes is descriptiveness judged through

A

The relevant consumer: Philips v Remington

20
Q

Example of a mark refused for descriptiveness

A

Zapf - newborn baby (doll)

21
Q

For words with more than one potential meaning, it is sufficient for refusal that one meaning is descriptive

A

Doublemint

22
Q

Neologisms can be descriptive

A

Biomild

23
Q

Foreign words which aren’t common knowledge CAN be registered

A

Matrazen

24
Q

Syntactically unusual juxtaposition of words can defeat descriptiveness

A

Baby Dry (unsafe since doublemint?)

25
Q

Geographical descriptions are OK if obscure or fanciful

A

Windsurfing (see eg Cloppenberg)

26
Q

What is the policy underlying s3(1)(d) - signs customary in the trade

A

Same as for (c) - to protect the interests of other traders: Merz & Krell

27
Q

What is the test for whether a sign is descriptive in the trade

A

Clear evidence that the mark is used to the extent of being usual - the more specialist the trade, the less use is needed: Stash

28
Q

2 examples of signs which were refused for being customary in the trade

A

Green for mint: Doublemint

Spambuster: Hormel foods (but failed b/c of cause of action estoppel)

29
Q

What might save a mark which would otherwise be unregistrable on absolute grounds

A

Distinctiveness acquired through use (burden of proof is on the applicant)

30
Q

What factors are taken into account when assessing acquired distinctiveness

A

Windsurfing Chiemsee: Market share, intensity, geographical extent, length of use, amount of investment, percentage consumer recognition

31
Q

To have acquired distinctiveness, must have been used distinctively as a trade mark

A

Philips v Remington

32
Q

Acquired distinctivenedss must be from use in the UK

A

800 flowers (websites must be aimed at UK)

33
Q

What order should you address the exceptions to registration and which case said so

A

Linde:
FIRST apply s1(1) - Can it be a TM
NEXT: apply s3(2) - Is it excluded
THEN: apply s3(1)(b)-(d)

34
Q

What is the underlying policy of s3(2) - shapes which cannot be registered

A

To ensure technical shapes are left free for other traders: Philips v Remington

35
Q

Technical shapes are unregistrable even if there are other ways of chieving the same result

A

Philips v Remington

36
Q

What is the test for whether a mark is contrary to morality

A

Would it cause outrage and significantly undermine religious or social values: Gazillian’s case

37
Q

Case where the nature of the product / audience meant the mark was not contrary to morality

A

Screw you for sex toys

38
Q

Through whose eyes is whether a mark is deceptive judged

A

The eyes of the average, reasonably well-informed, observant, circumspect consumer who is used to hype. Kenco the real coffee experts

39
Q

Example of a deceptive mark

A

Orlwolla for non wool

40
Q

Example of a mark which was not deceptive

A

Elizabeth Emmanuel - Mark is a guarantee of quality, not of the maker

41
Q

Test for bad faith registration

A

Dishonesty or conduct of less than acceptable standards of commercial behaviour; China White

42
Q

Where there is uncertainty as to entitlement, there is no bad faith

A

Gromax

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