Trade Marks - Absolute Grounds

Question 1

What three requirements for a trade mark are set out in section 1(1) TMA 1994 / Art 4 EUTMR?

Answer 1

1. a sign
2. capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of protection afforded to the proprietor
3. capable of distinguishing goods or services of one undertaking from those of other undertakings.

Question 2

In Nestle v Cadbury [2013] EWCA Civ 1174, why was ‘the colour purple … predominantly applied to the whole visible surface of the packaging of the goods’ not a ‘sign’?

Answer 2

(1) Because if the colour is only predominantly applied, the application covers other matter in combination with the colour.
(2) The result would not be an application to register “a sign”, in the accepted sense of a single sign conveying a message, but to register multiple signs with different permutations, presentations and appearances.

Question 3

Under what conditions is a trade mark unregistrable under section 3(2) TMA?

Answer 3

Natural, functional or ornamental.

That is, if it consists exclusively of:

1. The shape, or another characteristic, which results from the nature of the goods themselves, or
2. The shape, or another characteristic, of goods which is necessary to obtain a technical result, or
3. The shape, or another characteristic, which gives substantial value to the goods.

Question 4

In Hauck v Stokke C-205/13, what were the three cases where the ‘nature of the goods’ exclusion applies?

Answer 4

(i) for natural products which have no substitute, such as the shape of a banana for bananas;
(ii) for regulated products, whose dimensions are prescribed by legal standards, such as a rugby ball;
(iii) for shapes with essential characteristics which are inherent to the generic function or functions of such goods.

Question 5

In Philips v Remington C-299/99, what is the test to determine whether a shape is necessary to obtain a technical result?

Answer 5

(1) If the essential characteristics of the shape perform a technical function and (2) were chosen to fulfil that function.

Question 6

In Hauck v Stokke C-205/13, what is the test to determine whether a shape gives substantial value to the goods?

Answer 6

(1) Whether the aesthetic value of the shape is sufficiently substantial, in its own right, (2) to determine to a large extent the commercial value of the product (3) and a consumer’s decision to purchase it.

Question 7

In Hauck v Stokke C-205/13, which factors are to be considered when assessing whether the aesthetic value of a shape determines to a large extent the commercial value of a product and a consumer’s decision to purchase it?

Answer 7

C onsumer
N ature
A rtistic value
D issimilarity in shape
D ifference in price
A dvertising

(i) the relevant consuming public’s perception of the shape of the product
(ii) the nature of the category of goods (is visual appeal usually important for that category?)
(iii) the artistic value of the shape in question
(iv) its dissimilarity from other shapes in common use on the market concerned
(v) a substantial price difference in relation to similar products
(vi) the development of a promotion strategy which focuses on accentuating the aesthetic characteristics of the product in question.

Question 8

In Sieckmann C-273/00, what are the criteria to determine whether a trade mark can be adequately represented on the register?

Answer 8

C lear
P recise
S elf-contained
E asily accessible
I  ntelligible
D urable
O bjective

If the representation is (1) clear, (2) precise, (3) self-contained, (4) easily accessible, (5) intelligible, (6) durable, and (7) objective.

Question 9

In Libertel C-104/01, how can a colour be described in a way that satisfies the Sieckmann criteria?

Answer 9

The use of (1) a sample, (2) verbal description, and (3) international code, in combination.

Question 10

In Heidelberger Bauchemie C-49/02, how can a combination of colours be described in a way that satisfies the Sieckmann criteria?

Answer 10

(1) If the application specifies that the colours would be systematically arranged (2) by associating the colours in a predefined and uniform way.

Question 11

In Sieckmann C-273/00, why can a smell not be registered as a trade mark?

Answer 11

(1) A verbal description would not be sufficiently clear, precise or objective.
(2) A deposit would not be a graphical representation, and would not be sufficiently durable or stable.
(3) A chemical formula would not be sufficiently intelligible, clear, or precise.

Question 12

In Shield Mark v Joost Kist C-283/01, how may a sound mark be described in a way that satisfies a Sieckmann criteria?

Answer 12

(1) By musical notation (intelligbility is not immediate intelligibility).
(2) (Not onomatopoeia.)
(3) (TM offices also accept an audio recording of the sound.)

Question 13

In Philips v Remington C-299/99, how is the requirement in s1(1) TMA / Art.4 EUTMR that the trade mark be capable of distinguishing the goods of one undertaking from those of another to be evaluated?

Answer 13

(1) It is to be evaluated by the criteria of distinctiveness (ss3(1)(b)-(d) TMA / Art. 7(1)(b)-(d) EUTMR), (2) since all distinctive marks are also capable of distinguishing the goods of one undertaking from those of another.

Question 14

In subsections 3(1)(b)-(d) TMA / Art. 7(1)(b)-(d) EUTMR, when can a trade mark not be registered?

Answer 14

(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services.
(d) trade marks which consist exclusively of signs or indictation which have become customary in the current language or in the bona fide and established practices of the trade.

Question 15

In subsections 3(1)(b)-(d), when may a trade mark nevertheless be registered?

Answer 15

(1) If, before the date of application for registration, (2) it has acquired distinctive character (3) as a result of the use made of it.

Question 16

Which principles underpin the assessment of distinctive character (ss. 3(1)(b) TMA / Art. 7(1)(b) EUTMR), as conveniently summarised by Arnold J in Nestle v Cadbury [2014] EWHC 16, [40]-[45]?

Answer 16

(1) Distinctive character must be assessed by reference to the goods or services and (2) the perception of the average consumer of those goods or services, deemed to be reasonably well-informed and reasonably observant and circumspect.
(3) The criteria for distinctive character are the same for all categories of trade marks, but the perception of the relevant public is not the same for different categories and it may therefore be more difficult to establish distinctive character for some categories (such as shapes, colours, personal names, advertising slogans and surface treatments).

Question 17

In Cain Cellars T-304/05 and Evonik Industries T-499/09, which signs were held to be devoid of distinctive character?

Answer 17

(1) Cain Cellars: A device with a pentagon shape for wine would not be perceived as a mark.
(2) Evonik Industries: A purple rectangle with a convex side would be understood as ornamental or decorative rather than as conveying a trade mark message.

Question 18

In OHIM v BORCO C-265/09P [2010] ECR I-08265, what was held regarding a priori objections for lack of distinctiveness?

Answer 18

(1) Even though the Court has recognised that there are certain categories of signs which are less likely prima facie to have distinctive character initially, (2) the Court, nevertheless, has not exempted the trade mark authorities from having to carry out an examination of their distinctive character based on the facts.

Question 19

In Libertel C-104/01, what was observed regarding distinctiveness of colour marks?

Answer 19

(1) Distinctiveness without any prior use is inconceivable save in exceptional circumstances, (2) and particularly where the number of goods or services for which the mark is claimed is very restricted (3) and the relevant market very specific.

Question 20

In Henkel v Deutsches Patent- und Markenamt C-218/01, what was held concerning the distinctiveness of shape marks?

Answer 20

(1) A simple departure from the norm or customs of the sector is not sufficient to make a shape distinctive. (2) However, a shape which significantly departs from the norm or customs of the sector (3) and thereby fulfils its essential original function is distinctive.

Question 21

In Nestle Waters France v OHIM T-305/02, how could education of the public alter the conditions for the distinctiveness of a water bottle shape?

Answer 21

(1) Because traders had for several years sought in the shape of the packaging the means to differentiate their goods from the competition and to attract the public’s attention,
(2) the average consumer is capable of perceiving the shape of the packaging as an indication of their commercial origin,
(3) in so far as that shape has characteristics which are sufficient to hold his attention.

Question 22

In Globo Comunicacao v EUIPO T-408/15, what was held concerning the distinctiveness of a ringtone?

Answer 22

(1) Because the mark consisted of a banal ringing sound, (2) it would go unnoticed and not be remembered by consumers, (3) thereby inhibiting its ability to indicate origin.

Question 23

In Windsurfing Chiemsee v Attenberger, Joined Cases C-108/97 and C-109/97 [1999] ECR I-2779, what did the Court observe concerning the rationale for excluding descriptive marks in Art. 3(1)(c) TMD 1989 / s3(1)(c) TMA / Art. 7(1)(c) EUTMR?

Answer 23

(1) One of the aims of this exclusion is to protect the public interest (2) by keeping descriptive signs or indications free for use by all traders.

Question 24

In Campina Melkunie v Benelux-Merkenbureau C-265/00, what did the Court observe concerning the descriptiveness of a mark composed of several elements?

Answer 24

(1) a mere combination of descriptive elements will not normally be registrable;
(2) there must be some ‘unusual variation, in particular to syntax or meaning’,
(3) which produces an impression on the consumer of something that is sufficiently far removed from the mere combination of the meanings of the elements, so that the resulting phrase is more than the sum of its parts.

(4) For example, “Baby Dry” is registrable because of the syntactically unusual juxtaposition. But “Bio-Mild” and “Doublemint” are not.

Question 25

In Windsurfing Chiemsee v Attenberger, Joined Cases C-108/97 and C-109/97 [1999] ECR I-2779, what did the Court observe concerning the exclusion of signs or indications that may serve, in trade, to designate characteristics of the goods or service?

Answer 25

That the tribunal should ask not only (1) whether there was an association in the consumer’s mind between the sign and the goods in question, but also
(2) whether it is reasonable to assume that such an association may be established in the future.

Question 26

In s3(1)(c) TMA / Art. 7(1)(c) EUTMR, which characteristics of goods or services make a trademark descriptive?

Answer 26

K  ind, quality, quantity
I   ntended purpose
V alue
G eographical origin
O ther characteristics
T  ime of production

(1) the kind, quality, quantity, (2) intended purpose, (3) value, (4) geographical origin, (5) time of production of goods or time of rendering of service, (6) or any other characteristic.

Question 27

In Deutsche Krankenversicherung v OHIM T-359/99 [2001] ECR II-1645, what did the General Court hold for a sign to be descriptive?

Answer 27

For a sign to be descriptive, (1) the association between the sign and the goods and services must be sufficiently specific and direct (2) to show that the consumer would identify those goods and services immediately.

(3) (In the present case, the association between the word mark ‘EuroHealth’ and financial services was not specific and direct enough.)

Question 28

In KPN Nederland v Benelux Merkenbureau C-363/99 [2004] ECR I-1619, what did the Court hold regarding whether the sign or indication had to designate an essential characteristic of the goods or services?

Answer 28

A sign is descriptive if it is capable of being used to designate the characteristics of goods or services, even if the characteristic in question is of peripheral significance to the goods in question.

Question 29

In Nestle v Cadbury C-215/14 [2015] ETMR 50, what did the Court hold regarding the strength of the association between a mark and a particular trader necessary for acquired distinctiveness?

Answer 29

(1) The mark is distinctive if consumers perceive the goods or services designated exclusively by the mark, (2) as opposed to any other mark which might also be present, as originating from a particular company.
(3) A sign can reach this standard whilst in the company of other trade marks on the same product, but the sign is ultimately expected to be capable of signalling origin on its own.

Question 30

In Philips v Remington, [1998] RPC 283, what did Jacob J (High Court) state concerning the acquired meaning of a mark?

Answer 30

That unless the word, when used for the goods concerned, has in practice displaced its ordinary meaning, it will not properly denote the trader’s goods and none other.

Question 31

For EU marks that lack distinctiveness in particular countries, what evidence of acquired distinctiveness needs to be submitted?

Answer 31

In all the countries concerned, that a significant proportion of the consuming public would understand the mark as indicating source.

Question 32

For EU marks that lack distinctiveness across the entire EU, what evidence of acquired distinctiveness needs to be submitted?

Answer 32

Need evidence of acquired distinctiveness across some Member States, with extrapolation to other Member States permitted where

(i) the market is homogenous in the sense that market conditions and consumer habits are comparable
(ii) at least some evidence of the use of the mark is submitted.

Question 33

In Sky v Skykick, what were the main findings of the AG?

Answer 33

(1) That an over-broad description of goods or services could be against the public policy.
(2) An applicant who applies for a mark without commercial logic, can constitute bad faith.

Question 34

What do subsections 3(3)-(6) of the TMA relate to?

Answer 34

s3(3)(a) - Public policy and morality
s3(3)(b) - Likely to deceive the public
s3(4)  - Prohibited by law (e.g. geographical indications)
s3(5) - Specially protected emblems
s3(6) - Bad faith

Question 35

In Wrigley (Doublemint) C-191/01P [2003] ECR I-1619, what did the Court hold regarding the descriptiveness of marks which have multiple meanings?

Answer 35

A sign is excluded from registration if at least one of its possible meanings designates a characteristic of the goods concerned.

Question 36

In Linde, Winward and Rado, Joined Cases C-53/01, C-54/01, and C-55/01 [2003] ECR I-3161, what is the meaning of ‘distinctive character’?

Answer 36

The trade mark must be capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from other undertakings.