Trade marks: Absolute Grounds Flashcards
(42 cards)
What is the starting point for whether a TM is registrable
The assumption that a TM IS registrable unless there is a reason otherwisw
Who can contest a TM on absolute grounds
Anyone
What section tells you what a TM is and what does it say?
S1(1) TMA 1994: Any sign capable of being represented graphically which is capable of distinguishing good or services
Which case says that it is the same test for 1(1) as for 3(1)(a)
baby dry
3 cases which explain what a sign is
Philips v Remington: anything that conveys information
Sieckmann: Any message capable of perception (need not be visible)
Arsenal v Reid: Need not be visible at point of sale - end user as well as initial purchaser considered
What is the test for whether a sign is capable of being graphically represented
The Sieckmann seven:
- clear
- precise
- self contained
- intelligible
- durable
- easily accessible
- objective
4 cases where the mark failed the sieckmann 7 test
Taste of strawberry medicine; Eli Lilly
Smell of cinnamon: Sieckmann
Colour with no pantone reference: Libertel
Sound with no musical annotation: Shield Mark
What is the reason underlying the Sieckmann requirements
The registry needs to be precise: Heidelberger
Which sections of the act ;list what cannot be registered and how must it be interpreted
S3(1)(b)-(d). Each must be understood in light of its underlying policy (Biomild). Each has a different policy (Sat2)
What is the policy of 3(1)(b) - marks devoid if any distinctive character
To keep things that do not do the job of a TM off the register: Sat2
What is the test foe whether a mark is devoid of distinctive character
British Sugar: Whether it is inherently distinctive - can it fulfil its function without further education of the public
OR Nestle Waters: does it allow the consumer to make a choice
Through whose eyes is distinctive character judged
The relevant consumer in relation to the goods: Philips v Remington
Can surnames be TMs?
Yes - they are treated the same as any other mark (Nichols)
Can shapes be TMs (5 cases)
NOT if the public would require further education (Axion - cigar shaped chocolate)
NOT if devoid of distinctive character (Henkel - dishwasher tablet)
SEE ALSO Maglite - not sufficiently different from the shape of other torches
But YES if “inherently helpful in identifying a product or range” (Chrysler)
SEE ALSO B&O - speaker was distinctive because it departed from the norms of the trade.
Can slogans be TMs
Yes - they are treated like any other mark (Erpo - “The principle of comfort”)
See also Take a break - had acquired distinctiveness
Can composites be TMs
Yes - they should be judged as a whole (Sat2)
What is the underlying policy of s3(1)(c) - descriptive marks
To keep descriptive signs free for all traders: Windsurfing Chiemsee (STRICT application)
What is the test / guidance for whether a mark is desriptive
Wrigley: The more factual / objective the relationship between the mark and the product, the more likely it is to be refused.
Whose eyes is descriptiveness judged through
The relevant consumer: Philips v Remington
Example of a mark refused for descriptiveness
Zapf - newborn baby (doll)
For words with more than one potential meaning, it is sufficient for refusal that one meaning is descriptive
Doublemint
Neologisms can be descriptive
Biomild
Foreign words which aren’t common knowledge CAN be registered
Matrazen
Syntactically unusual juxtaposition of words can defeat descriptiveness
Baby Dry (unsafe since doublemint?)
