Trade Marks - Absolute Grounds Flashcards
TMA 1994 S3(2)
A sign shall not be registered as a trade mark if it consists exclusively of
(a) the shape which results from the nature of the goods themselves,
(b) the shape of goods which is necessary to obtain a technical result, or
(c) the shape which gives substantial value to the goods.
Audi v OHIM
- Slogans cannot be excluded under s3(1)(b) just because they convey an objective message
- originality and resonance making a slogan easier to remember are not determinative but can point to slogan being distinctive
OHIM v Erpo Mobelwerk
- No additional criteria or derogations for slogan trade marks when assessing distinctiveness under s3(1)(b)
- However, it may be harder to establish distinctiveness in relation to slogans
- A mark can be both a promotional formula and indicator of origin (and hence perform essential function)
TMA 1994 S1(1)
- A “trade mark” means:
- any sign
- capable of being represented graphically
- capable of distinguishing goods or services of one undertaking from those of other undertakings
- May in particular consist of words, designs, letters, numeral or the shape of goods or their packaging
Henkel KGaA v OHIM
[Dishwasher tablet case]
- Criteria for distinctiveness is the same for shapes but average consumers not in habit of assessing origin based on shape so distinctiveness harder to establish
- Only shape departing significantly from the norm will fulfil essential function and hence not be devoid of distinctive character (TMA 1994 s3(2)(b))
- Similar conclusion reached in Mag Instrument
Future development of shape exceptions
- Under new TMD, the shape exceptions apply to other characteristics too
Philips v Remington
- Relates to signs which consist exclusively of shape necessary to technical result under TMA 1994 S3(2)(b)
- Shapes not excluded merely because it has functional characteristics as policy reason is to prevent trade marks from being used to prevent competitors from freely offering products incorporating such technical solutions in competition with the proprietor of the trade mark
- It does not matter if there are other shapes available that achieve the same result
- Where essential functional characteristics of shapes are attributable solely to technical result, this precludes registration even if other shapes can achieve that
Public policy underlying s. 3(2) TMA 1994
- Public interest in preventing monopolization of functional characteristics of products which a user is likely to seek in the product of competitors
- Prevent exclusive and permanent right of trade marks serving extend indefinitely the life of other time limited rights
Koninklijke KPN Nederland and Benelux-Merkenburea
in relation to
descriptive terms exclusion (TMA 1994 s3(1)(c)
[Postkantoor case]
- If trade mark for which registration is sought currently represents, in the mind of the relevant class of persons, a description of the characteristics of the goods or services concerned or whether it is reasonable to assume that that might be the case in the future, then registration should be refused
- It is irrelevant whether there are other more usual signs/indications for denoting these characteristics
- Whether number of competitors interested in using the sign is also irrelevant
Red Bull v EUIPO
- Red Bull attempted to claim protection in two marks for:
- combination of blue and silver in proportions of approximately 50%-50%
- these two colours applied in equal proportion and juxtaposed to each other
- Red Bull attempted to argue that ‘juxtaposition’ was not an arbitrary combination (which had been said to be disallowed in Heidelberge),
- the court rejected this argument, there were still a large number of different forms
- Red Bull attempted to argue that written description requirement for colour combination marks was not in the law,
- the court rejected this argument as they said the graphic representation did not enable the subject matter of the protection to be defined
- Red Bull atempted to argue written description requirement violated principle of equal treatment between different types of marks:
- court rejected this saying discrimination can arise only through the application of different rules to comparable situations or application of same rule to different situtatoins
- higher precision of written description is required because of intrinsically less precise nature of colour per se marks so different treatment is justified in this case
Glaxo v Sandoz
- Glaxo attempt to register a mark for inhalors consisting of colour dark purple applied to a significant proportion of an inhaler and colour light purple applied to the remainder, used this description alongside a picture of the inhaler
- Found not to be trade mark-able as:
- written description allowed for limitless possibilities
- the description and picture were not congruent, and neither should take precedence
- so representation did not meet Sieckmann criteria
Benetton Group v G-Star International
- Interpretation of s3(2)(c) - TMA1994
- Shape of product that gives substantial value to goods still cannot be registered where, prior to registration, it acquired attractiveness as a distinctive sign following advertising campaigns presenting these specific characteristics
SAT.1 Satelliten Fernsehen GmbH v OHIM
‘SAT.2’ case
- Each ground under TMA s3(1) is separate and requires separate examination
- Combination can have distinctive character even if all elements alone lack it
- Policy of terms for designating characteristics being free to use is relevant to S3(1)(c) but not to S3(1)(b)
Libertel v Benelux
in relation to
Colour Distinctiveness
- Colour and TMA 1994 s3(2)(b)
- Colour per se is not usually capable of distinguishing goods/services of undertaking
- Distinctiveness of colour without prior use is inconceivable without exceptional circumstances, which are:
- mark is claimed for very restricted set of products/services
- the relevant market is very specific
- Colour may however acquire distinctiveness
- General interest of keeping colours free should be taken into account
Nestle v Cadbury
(Kitkat)
Technical result exclusion only applies to how the goods function and not to how they’re manufactured.
Background:
Shape in question was easier to manufacture and it was questioned whether this would be a technical result