absolute grounds for refusal Flashcards
second criteria for registration
the sign must not be caught by any of the absolute grounds for refusal pf registration- sc3 TMA or Art 3 TMD
what are absolute grounds
concerned with inherent deficiencies or problems with the mark in relation to the products specified in their registration application (when not being specific with how this mark is going to be used and where)
- the proposed mark must not be registered if it is devoid of any distinctive character- sc3(1)(b)
- the proposed mark must not be registered if it consists exclusively of descriptive terms in relation to the products for which the proposed mark is to be registered- sc3(1)(c)
- the proposed mark must not be registered if it consists exclusively of customary terms in relation to the products for which the propsed mak is to be registered- sc3(1)(d)
- the proposed mark must not be registered if it is devoid of any distinctive character- sc3(1)(b)
-defintion of distinctive character from cadbury case- “it is capable of distinguishing the goods or servoces of one undertaking from those of other undertakings”
-supported by Linde case
-basically- the TM must be capable of perfroming the essential function (trade origin)
-key question- can the trade mark distinguish the goods/services of the applicant from other traders
(more problematic with unconventionalmarks, espcially shapes)
(can be problematic for convenatila marks, such as works that have alternative signficance to other goods)
why might a proposed mark lack distinctive character?
- if consumers are unlikley to perceive the proposed TM as conveying any information
-mostly problematic with shapes
-phillips v remington 2002-3 headed shaver, lacked distinctiveness as consumer would simply think it was there to do job not a TM of origin
-Nestle SA v Cadbury UK ltd 2016- failed to TM kitKat shape as was not distinctive enough for consumers to associate it with the chocolate wafer
-Lindt and sprungli v OHIM 2012- chocolate rabbit with a red ribbon cannot be registered as a TM since the TM has no distinct character
-Apple Inc v DPMA 2014- apple tried to TM layout of stores, could be a TM provided that it distinguised apples services from those of other undertakings - if consumers perceive the sign as giving them some information but with information is non-origin specific information (e.g dyson clear vaccum bag)
-often apply to colour marks
-CJEU held that the examination must take account of the public interest in not unduly restricting the availability of colours for other traders who market gooods of the sane type (prevents monopolising)
-libertel case and Heidelberger case
-public interest reasoning can ve applied shapes, patterns and surface finishes..
-procter and gamble v OHIM 2002- tried to TM the phrase ‘Baby-Dry’ for nappies, descriptive but not on the trade origin
-British Sugar v james robertson 1996- tried to register ‘treat’ for sugary desserts and sauces, descriptive but not trade origin
famous names/celebrities:
-elvis presley TMS 1999- registering him name but hes dead, so wouldnt know it doesnt come from him and where it comes from
-Linkin Parks Application 2006- registere TM for name, failed originally as would be difficult for competitors to use the name, also when using their name they wont be the trade origin but rather a feature of the product (just the subject matter of the product)
slogans:
-Audi v OHIM 2010- vorsprung durch tecknik
-nestle v mars 2005- have a break
without the branding behind them these slogans are not origin specific
assessment of distinctiveness
distinctive character must be assessed
1. with reference to the goods or services for which the mark is to be registered
2.with reference to the perception of the ‘average consumers of the goods or services in question, who are reasonably well informed and circumspect’
3. everything relevant will be considered
4. must be distinctive at the time of application
2.the proposed mark must not be registered if it consists exclusively of descriptive terms in relation to the products for which the proposed mark is to be registered- sc3(1)(c)
- the proposed mark must not be registered if it consists exclusively of customary terms in relation to the products for which the propsed mak is to be registered- sc3(1)(d)
if something is descriptive it is also likely customary
descriptive signs-
-non origin specific and is of a descriptive nature, designate the kind, quality, intended prupose, value, geographical origin, or the time of production, or other characteristics
customary signs-
-sings which have become customary in the current language and established practises of the trade
-not really a difference as both perfrom the distinct public interest function of keeping descriptive signs available for use by all traders- Merz v Krell 2002
when do proposed marks get caught out by customary or descriptive terms
-normally in cases of neologisms (e.g cold-blooded, brunch, smog)
(can include derived words such as submarine from sub and sea)
-Doublemint case- refused TM for doublemint as too descritive and would have a number of connotations, held that a mark comprising descirptive words should be refused if at least one of its possible meanings designates a characteristic of the goods or services concerned
-Postkantoor test for getting caught out by this ground if-
a- the proposed mark represents- the in the minds of average consumers- a decription of the characteristics of the goods or services concerned, or it is reasonable to assume that the proposed mark migt come to do so in the future
b- the fact that there might be “other more usual, signs or indications for designating the same characteristics” of the relevant goods or services is irrelevant to a refusal of rgistration (other more decriptive words they could have used but didnt)
c- the size of competitors wanting to use the sign is irrelevant
when do proposed marks get caught out by customary or descriptive terms
continued
campina- for neologisms produced by combing components which are descriptive-
a- it is not enough that each of the word components is descriptive, the words itslef as a whole must be found to be so
b-it is not necessary that the descriptive term is in use. enough that it could be used for such a purpose in future
c- a combination of descriptive elements remains decsriptive under sc3(c) even if the combination produced a neologisms
assessing descriptiveness
- with reference to all the goods and services it is to be registered with
- the average consumers perception who are reasonably well informed and circumspect
- with reference to all factors
- date of appliation
- interests of other traders in using certain terms or signs to convey descriptive information which may be essential for them to be able to compete effectively with the applicant (not monopolising)
proviso to sc3(1)
the proposed mark has acquired distinctive character through use as a TM
-if A can show that consumers have come to regard his proposed mark as an indicator of a specific trade origin this can orverride the barriers sc3(1)(b)(c)
(can be used for every mark apart from shapes)
assessment-
-CJEU a number of factors may be taken into account when determining if a proposed mark has already acquired distinctive character-
-market share held by the mark (big share even if not distinctive and is descriptive will likely satisfy trade origin)
-how geographically widespread usage/ long standing
-proportion of the relevant class of persons who because of the mark, identify goods as originating from a particualr undrtaking
-amount invested by undertaking in promoting the mark
-statements from chambers of commerce and industry of other trade and proffesional associations
-nestle SA v cadbury 2016- kitkat shape, association has to be because of the trade mark, nothing else, failed due to shape
-london taxi coporation v frazer-nash 2016
specific exclusions for shapes
need to satisfy this and then the absolute grounds
-negative exclusions affecting marks that consist of the shape of products- sc3(2)
-phillips- the rationale of the grounds for refusal of registration is to preent monopolys on products
the legislation:
-sc3(2) a sign shall not be registered as a TM if it consists exclusively of-
a- the shape which results from the nature of goods themselves
b- the shape of goods whichs is necessary to obtain a technical result, or the shape which gives substantial value to the goods
sc4(1)(e) of the 2015 TMD replaced article 3(1)(e) TMD- extended to the shape or ‘other characteristic’
a- the shape which results from the nature of goods themselves
-prevents monoplies
-goods- any goods for which the proposed trade mark is to be registered (e.g apples for apples)
-phlips case- “intended to exclude from registration basic shapes that should be available for use by the public. It is difficult to envisave such shapes, excpet those that are produced in nature such as bananas”
b- necessary to obtain a technical result
philips- allowing this “would limit the possibility of comeptitors supplying a product incorporating such a function or at least limit their freedom of choice”
(prevents monoplies on technical functions)
c-gives substantial value
-christian Louboutin SAS v Van Haren Schoenen 2016- Benelux trade origin emphasised the need for the value conferred by the shape to have substantial value, the shape itself should be responsible for its additional value
-said theres a need to asses whether the value is substanial, by comparing the shape sought to be registered and shapes of equivalent articles
-it is only if the shape being registered added substanial value that it will be excluded from registration
-this cases had to determine whether the colour of an object could be considered part of it shape
-found-the restriction could be wide reaching because of the vagueness of the ‘another characteristic’ extension
-a shape does not consist of a colour as the cintour of the shoes is intended to show the positioning of the colour on the register (not considered in the another characteristic extension)
