(Lack of) Distinctive Character

Question 1

Name 2 cases where the representation was found not to be a sign

Answer 1

Dyson

Scrabble tile

Question 2

Where are the Sieckmann criteria now listed?

Answer 2

Recital 10

Question 3

Explain the rules around representation of music

Answer 3

Transcription and sound files OK; spectogram not OK (Shield Mark)

Question 4

Can colours be represented on the register

Answer 4

Yes, but need to show acquired distinctiveness (Libertel)

Question 5

Name the authorities for:

(1) specific arrangement of colours being OK
(2) ‘predominantly’ a colour not being OK

Answer 5

(1) Heidelburger

(2) Nestle v Cadbury

Question 6

What lead authority on descriptive names is now a bit dubious?

Answer 6

Babydry

Question 7

What if a sign has several meanings, and one of them alone is descriptive?

Answer 7

That alone can be a bar to registration - Doublemint

Question 8

What’s the threshold for registration of a descriptive word?

Answer 8

Postkantoor - it must have become more than the sum of its parts

Question 9

What about if a figurative mark is descriptive but with light stylisation?

Answer 9

NOPE - not good enough! Starbucks.

Question 10

How does one demonstrate acquired distinctiveness?

Answer 10

WINDSURFING:

1. A significant portion
2. Of the relevant class of consumers
3. Identifies the goods/services
4. As coming from the relevant undertaking

Question 11

What are the factors taken into consideration when deciding Windsurfing acquired distinctiveness?

Answer 11

1. Market share
2. Advertising spend
3. Duration
4. Consumer survey evidence
5. Industry awards
6. Consumer / competitor recognition

Question 12

Can a phrase acquire distinctive character even if it’s only ever been used with a registered TM?

Answer 12

Yes - Nestle v Mars

Question 13

What happens if a personal name is descriptive?

Answer 13

The same usual criteria apply - Nichols