Trademarks Short Answers Flashcards
What does S1(1) of the TMA 1994 state?
1 Trade marks
(1) In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
a trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, or the shape of goods or their packaging.
What were the facts of Dyson Ltd. v. Registrar of Trade Marks, Case C-321/03, 14.9.2006, [2007]?
Dyson Ltd. v. Registrar of Trade Marks, Case C-321/03, 14.9.2006, [2007]
FACTS: Dyson attempted to register a trade mark, the subject-matter of which was the concept of having a transparent collection bin for a vacuum cleaner, irrespective of the bin shape.
ECJ: “to be capable of constituting a trade mark for the purposes of Article 2 of the Directive, the subject-matter of any application must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.”
“if that [first] condition is not to be deprived of all substance, it cannot be accepted that the subject-matter of any trade mark application necessarily constitutes a sign within the meaning of Article 2 of the Directive.”
“The purpose of that requirement is in particular to prevent the abuse of trade mark law in order to obtain an unfair competitive advantage (Heidelberger Bauchemie, paragraph 24)”
“Given the exclusivity inherent in trade mark right, the holder of a trade mark relating to such a non-specific subject-matter would obtain an unfair competitive advantage, contrary to the purpose pursued by Article 2 of the Directive, since it would be entitled to prevent its competitors from marketing vacuum cleaners having any kind of transparent collecting bin on their external surface, irrespective of its shape.”
“Accordingly, […] Article 2 of the Directive is to be interpreted as meaning that the subject-matter of an application for trade mark registration, such as that lodged in the main proceedings, which relates to all the conceivable shapes of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner, is not a ‘sign’ within the meaning of that provision and therefore is not capable of constituting a trade mark within the meaning thereof.”
What are the facts of Ralf Sieckmann v. Deutsches Patent und Markenamt [2003]?
Ralf Sieckmann v. Deutsches Patent und Markenamt [2003]
FACTS: This case concerned an application for registration of a smell using:
(i) a verbal description of the smell;
(ii) its chemical breakdown
(iii) a sample in a container
(iv) a list of locations of laboratories where a sample could be obtained
ECJ: “… a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines, or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable, and objective.”
Alone or in combination, i-iv are not sufficiently clear or precise to constitute an adequate graphic representation.
What were the fact of Shield Mark BV v. Joost Kist, Case C-283/01 [2003]
Shield Mark BV v. Joost Kist, Case C-283/01 [2003]
FACTS: Court considered the application of the graphic representation requirement to sounds. The case concerned two marks 1) nine notes of a melody, and 2) the crowing of a cock, represented onomatopoeically, as well as a verbal description.
ECJ: Accessibility and intelligibility need not be immediate, only ‘easy’ so a musical score would suffice. However, mere verbal descriptions would not suffice as it lacks clarity and precision. Also, onomatopoeic representation will not suffice as perceptions of such are subjective.
What were the facts of MGM Lion and Tarzan
MGM Lion and Tarzan
The board of Appeal at OHIM has indicated (orbiter) that spectrogram may suffice (MGM Lion), but has later contradicted this holding the spectrogram to be neither self-contained nor easily accessible (Tarzan).
European Commission, Proposal for a directive of the European Parliament and of the Council to Approximate the Laws of the Member States Relating to Trade Marks (2013)
Following the Max Planck Study on the functioning of the Community trade mark, the European Commission concluded that the requirement that a sign must be capable of being represented graphically is out of date, and proposes to abandon the ‘graphic’ requirement so as to allow sound files, but retain the Seickmann requirements that the mark be represented in a manner that enables the competent authorities and the public to determine the precise subject matter of the protection.
What were the facts of Libertel Groep BV v. Benelux-Merkenbureau (C-104/01) [2004] FSR 4
Libertel Groep BV v. Benelux-Merkenbureau (C-104/01) [2004] FSR 4
What were the facts of Heidelberger Bauchemie GmbH (C-49/02) [2004] ETMR 99 (ECJ)?
Heidelberger Bauchemie GmbH (C-49/02) [2004] ETMR 99 (ECJ)
This case concerned an application to register blue and yellow without specifying how they were arranged, indicating the colours would be used ‘every conceivable form.’
This was not acceptable. A graphic representation would only be clear and precise if ‘the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way.’
Applying these principles, the court of appeal has held that the Trade Marks Registry should have rejected Cadbury’s application for the colour purple ‘being the predominant colour’ of packaging, as this introduced a multitude of possibilities.
What were the facts of Swizzels Matlow’s Application?
Swizzels Matlow’s Application
A verbal description of a shape will rarely be satisfactory as it will not convey the precise appearance of the sign.
What were the facts of Société de Produits Nestlé SA v. Unilever Plc [2002]
Société de Produits Nestlé SA v. Unilever Plc [2002]
“There is a bit of sleight of hand going on here and in other cases of this sort. The trick works like this. The manufacturer sells and advertises his product widely and under a well-known trade mark. After some while the product appearance becomes well-known. He then says the appearance alone will serve as a trade mark, even though he himself never relied on the appearance alone to designate origin and would not dare to do so. He then gets registration of the shape alone. Now he is in a position to stop other parties, using their own word trade marks, from selling the product, even though no-one is deceived or misled.
I do not think that is what the European trade mark system is for. It is a system about trade marks, badges of trade origin. For that reason I think that in the case of marks consisting of product shapes it is not enough to prove the public recognises them as the product of a particular manufacturer. It must be proved that consumers regard the shape alone as a badge of trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods. If that cannot be proved, then the shape is not properly a trade mark, it does not have a “distinctive character” for the purposes of trade mark law.”
What does S2 of the TMA 1994 recite?
2 Registered trade marks
(1) A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act.
(2) No proceedings lie to prevent or recover damages for the infringement of an unregistered trade mark as such; but nothing in this Act affects the law relating to passing off.
Briefly discuss the decision of the ECJ in Dyson Ltd. v. Registrar of Trade Marks (Case C-321/03)
Dyson attempted to register a trade mark, the subject-matter of which was the concept of having a transparent collection bin for a vacuum cleaner, irrespective of the bin shape.
“to be capable of constituting a trade mark for the purposes of Article 2 of the Directive, the subject-matter of any application must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings.”
“if that [first] condition is not to be deprived of all substance, it cannot be accepted that the subject-matter of any trade mark application necessarily constitutes a sign within the meaning of Article 2 of the Directive.”
“The purpose of that requirement is in particular to prevent the abuse of trade mark law in order to obtain an unfair competitive advantage (Heidelberger Bauchemie, paragraph 24)”
“Given the exclusivity inherent in trade mark right, the holder of a trade mark relating to such a non-specific subject-matter would obtain an unfair competitive advantage, contrary to the purpose pursued by Article 2 of the Directive, since it would be entitled to prevent its competitors from marketing vacuum cleaners having any kind of transparent collecting bin on their external surface, irrespective of its shape.”
“Accordingly, […] Article 2 of the Directive is to be interpreted as meaning that the subject-matter of an application for trade mark registration, such as that lodged in the main proceedings, which relates to all the conceivable shapes of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner, is not a ‘sign’ within the meaning of that provision and therefore is not capable of constituting a trade mark within the meaning thereof.”
Are shapes registerable as trade marks in the UK? Explain your answer.
Yes. The ‘shape of goods or their packaging’ is given as an example of what a trade mark may consist of in section 1(1) of the Act. However, a verbal description of a shape will rarely be satisfactory as it will not convey the precise appearance of the sign (Swizzles). Also, section 3(2) of the act provides that a sign shall not be registered 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. These exclusions are generally understood as being for the purpose of competition. These points have been elaborated on in Philips v Remmington, LEGO v OHIM, and Hauck Stokke.
Are sounds registerable as trade marks in the UK? Explain your answer.
To be capable of constituting a trade mark within the meaning of S. 1(1) of the Act, the subject-matter of any application must satisfy three conditions. Firstly, it must be a sign. Secondly, that sign must be capable of being represented graphically. Thirdly, that sign must be capable of distinguishing goods or services of one undertaking from those of another undertakings. (Dyson)
A trade mark may consist of a sign which in itself is not capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines, or characters, and that the representation is clear, precise, self contained, easily accessible, intelligible, durable, and objective (Sieckmann)
Accessibility need not be immediate, only ‘easy’. So, a musical score would meet the above criteria. However, mere verbal descriptions of a sound would not suffice as they would lack clarity and precision. Also, onomatopoeic representation will not suffice as perceptions of such are subjective. (Shield)
The board of Appeal at OHIM has indicated (orbiter) that spectrogram may suffice (MGM Lion), but has later contradicted this holding the spectrogram to be neither self-contained nor easily accessible (Tarzan).
Are scents registerable as trade marks in the UK? Explain your answer.
To be capable of constituting a trade mark within the meaning of S. (1)1 of the Act, the subject-matter of any application must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. (Dyson)
A trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines, or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable, and objective. (Sieckman)
The possibility of graphically representing a smell has not been ruled out. However, the Sieckmann case rule out registration of a smell using:
(i) a verbal description of the smell; (not clear, precise, or objective)
(ii) its chemical breakdown; (not intelligible, clear, or precise)
(iii) a sample in a container and a list of locations of laboratories where a sample could be obtained; (sample not graphic, nor durable)
Are colours registerable as trade marks in the UK? Explain your answer.
Yes, in some circumstances.
To be capable of constituting a trade mark within the meaning of S. (1)1 of the Act, the subject-matter of any application must satisfy three conditions. First, it must be a sign. Secondly, that sign must be capable of be capable of being represented graphically. Thirdly, the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. (Dyson)
A trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines, or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable, and objective. (Sieckman)
A colour may constitute a sign. In some cases (consider durability), a sample of a colour, combined with a description in words of that colour may constitute a graphic representation. Alternatively, the designation of a colour using an internationally recognised identification code may be considered to constitute a graphic representation. A colour per se may be capable of distinguishing the goods or services of one undertaking from those of other undertakings. Therefore, a colour per se is capable of constituting a trade mark. (Libertel)
However, in libertel, it was also noted that due to the limited number of colours available, there is a strong public interest in favour of keeping colours free. In addition, ‘distinctiveness without any prior use is inconceivable save in exceptional circumstances, and particularly where the number of goods or services for which the mark is claimed is very restricted and the relevant market very specific.’
A graphic representation would only be clear and precise if ‘the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way. (Heidelberger) Accordingly, the range of goods or services may need to be narrow.
For instance, green on vehicle body and yellow on wheels has been successfully registered (John Deere)
