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IP > TM - Registration > Flashcards

TM - Registration Flashcards

1
Q

What are the main stages to registration? (4)

A
  1. examination - must meet reg. requirements
  2. publication / observation / opposition - third parties
  3. amendments - unless they substantially affect identity of mark
  4. registration
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2
Q

What are the three main routes for registration?

A
  1. Europe - domestic / EU / International application
  2. Domestic - UK trade mark regitry
  3. EU - application for EUIPO
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3
Q

What must you do in order to file an international application?

A

Must file an application in a country party to the Madrid Agreement / Madrid Protocol - you must select the countries in which you intend for the TM to apply

the UK is not party to the Madrid Agreement.

If you are a UK citizen, you cannot apply to countries that are only party to the Madrid Agreement.

However, you can apply to countries that a party to the Madrid Protocol

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4
Q

Which piece of legislation concerns absolute grounds for refusal?

A

s3(1) TMA 1994

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5
Q

What are the main rules found in s3(1) TMA? (3)

A

To qualify for registration, TM sign must:

  1. Qualify as a sign under TMA
  2. Be distinctive in relation to products / services
  3. Fulfil requirements of graphical representation
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6
Q

Which piece of legislation defines “sign”?

A

s1(1) TMA

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7
Q

According to s1(1) TMA, what may a mark include? (7)

A 
words 
design
numeral 
colour 
shape
sound
smell
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8
Q

What cases state that a colour can be seen as a sign?

A

Libertel Case - is possible for a colour to be a sign

Heidelberger Bauchemie 2004 - must be seen as a sign

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9
Q

What would not be seen as a sign?

A

in some cases, a colour - Heidelberger Bauchemie

a mark that is a property of the product - Dyson v Registrar of TMs 2007

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10
Q

What are the facts of Dyson v Registrar for Trademarks 2007?

A

transparent bins in a vacuum cleaner held to be a property of the product, not a sign

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11
Q

What must be analysed when determining the absolute grounds of refusal for shape marks? (2)

A
  1. overall impression of the mark

2. individual components of the mark

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12
Q

Which piece of legislation concerns shape marks?

A

s3(2) TMA

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13
Q

What are the rules of s3(2)?

A

TMs not registerable where:

a. shape results from the nature of the product
b. shape necessary to obtain a technical result
c. shape marks give substantial value to goods

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14
Q

What does “shape” include? Case?

A

includes packaging that hold products with no shape of their own

Henkel case

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15
Q

Facts of Henkel case

A

shape marks include packaging with no shape of their own

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16
Q

which cases concern the nature of the goods themselves? (2)

A

Philips v Remington

Hauck v Stock

17
Q

Facts of Philips v Remington

A

case concerned a 3 headed rotary shaver

held that this was not a nature of the good itself because other shapes were possible for the same product

18
Q

Facts of Stauck v Hauck

A

concerned shape of folding “tripp trapp” chair

the essential characteristics of the chair were inherent to sitting down - therefore shape arises from nature of the good itself and not registerable

19
Q

Which case concerns “necessary to obtain technical result” provision?

A

Lego Case

20
Q

What are the facts of the lego case?

A

held that if each respective element to the shape were absent, and for that reason the objective of the shape is not fulfilled, the shape mark HAS a technical function

e,g, in this case, the lego brick had studs on top, a hollow base and smooth edges - without these elements, it could not be used to build - therefore HAS A FUNCTION AND CANNOT BE REGISTERED

21
Q

How would you determine whether a good has substantial value?

A

compare to other goods in the market

22
Q

What are the main cases concerning substantial value?

A

Stock v Hauck - aesthetic appeal necessary, but practical objects can also apply

Band & Olufsen v OHIM

23
Q

Facts of Bang & Olufsen v OHIM?

A

aesthetic of shape must be substantial to determine commercial value and consumers decision to purchase it

shape mark was a speaker with striking pencil shape - slender & timeless look was held to be an important selling point

24
Q

From what perspective is distinctiveness looked at?

A

perspective of the average consumer

25
Q

What case concerns distinctiveness test for shape marks? What rule is established?

A

Henkel case

  1. is there anything unusual or unoque about the shape to capture the consumers notice?
  2. if this is the case, does it indicate source of origin?
26
Q

What are the three kinds of descriptive marks (distinctiveness)?

A
  1. descriptive of kind
  2. descriptive of quality
  3. descriptive of geographical origin
27
Q

What case concerns descriptive geographical origin? What are the facts?

A

Windsurfing Chiemsee v Walter Huber

Ds T shirts were descriptive of Chiemsee, which is a lake in Germany

Held that where the mark is descriptive of geographical origin, and this is in the minds of the people associated with the goods in question, this is not distinctive

28
Q

What cases concern descriptive of quality? What are the facts?

A

BABY-DRY Case

baby dry is not descriptive of nappies, because the particular grammatical order of baby and dry would not be used by the average consumer

Biomild case

The word mark Biomild was held to be descriptive of quality because it referred to biological, mild yoghurt

29
Q

Which cases concern acquired distinctiveness? What are the rules? (2)

A

Bovemij v Verzekeringen 2006

a generic mark can acquire distinctiveness, but it must have acquired it in a significant proportion of the territory

Windsurfing Chiemsee

things to consider when determining acquired distinctiveness:

a. market share held by the mark
b. how intense, geographically widespread, and long standing the mark is
c. amount invested in promoting the mark

30
Q

Which cases concern graphical representation?

A

Sieckmann case 2002

the scrabble case - JW Spear & Son v Zynga

Libertel

31
Q

What rule is established in Sieckmann? 7

A

to fulfil graphical representation, sign must be:

  1. clear
  2. precise
  3. self contained
  4. easily accessible
  5. intelligible
  6. durable
  7. objective
32
Q

What rule is established in the scrabble case?

A

verbal description of a shape mark insufficient to fulfil graphical representation

33
Q

What rule is established in the Libertal case, concerning graphical represesntation?

A

A colour mark can fulfil graphical representation requirement if it correlates to an international identification code

IP (6 decks)

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