Trade Marks - Absolute Grounds Flashcards
(36 cards)
What three requirements for a trade mark are set out in section 1(1) TMA 1994 / Art 4 EUTMR?
- a sign
- capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of protection afforded to the proprietor
- capable of distinguishing goods or services of one undertaking from those of other undertakings.
In Nestle v Cadbury [2013] EWCA Civ 1174, why was ‘the colour purple … predominantly applied to the whole visible surface of the packaging of the goods’ not a ‘sign’?
(1) Because if the colour is only predominantly applied, the application covers other matter in combination with the colour.
(2) The result would not be an application to register “a sign”, in the accepted sense of a single sign conveying a message, but to register multiple signs with different permutations, presentations and appearances.
Under what conditions is a trade mark unregistrable under section 3(2) TMA?
Natural, functional or ornamental.
That is, if it consists exclusively of:
- The shape, or another characteristic, which results from the nature of the goods themselves, or
- The shape, or another characteristic, of goods which is necessary to obtain a technical result, or
- The shape, or another characteristic, which gives substantial value to the goods.
In Hauck v Stokke C-205/13, what were the three cases where the ‘nature of the goods’ exclusion applies?
(i) for natural products which have no substitute, such as the shape of a banana for bananas;
(ii) for regulated products, whose dimensions are prescribed by legal standards, such as a rugby ball;
(iii) for shapes with essential characteristics which are inherent to the generic function or functions of such goods.
In Philips v Remington C-299/99, what is the test to determine whether a shape is necessary to obtain a technical result?
(1) If the essential characteristics of the shape perform a technical function and (2) were chosen to fulfil that function.
In Hauck v Stokke C-205/13, what is the test to determine whether a shape gives substantial value to the goods?
(1) Whether the aesthetic value of the shape is sufficiently substantial, in its own right, (2) to determine to a large extent the commercial value of the product (3) and a consumer’s decision to purchase it.
In Hauck v Stokke C-205/13, which factors are to be considered when assessing whether the aesthetic value of a shape determines to a large extent the commercial value of a product and a consumer’s decision to purchase it?
C onsumer N ature A rtistic value D issimilarity in shape D ifference in price A dvertising
(i) the relevant consuming public’s perception of the shape of the product
(ii) the nature of the category of goods (is visual appeal usually important for that category?)
(iii) the artistic value of the shape in question
(iv) its dissimilarity from other shapes in common use on the market concerned
(v) a substantial price difference in relation to similar products
(vi) the development of a promotion strategy which focuses on accentuating the aesthetic characteristics of the product in question.
In Sieckmann C-273/00, what are the criteria to determine whether a trade mark can be adequately represented on the register?
C lear P recise S elf-contained E asily accessible I ntelligible D urable O bjective
If the representation is (1) clear, (2) precise, (3) self-contained, (4) easily accessible, (5) intelligible, (6) durable, and (7) objective.
In Libertel C-104/01, how can a colour be described in a way that satisfies the Sieckmann criteria?
The use of (1) a sample, (2) verbal description, and (3) international code, in combination.
In Heidelberger Bauchemie C-49/02, how can a combination of colours be described in a way that satisfies the Sieckmann criteria?
(1) If the application specifies that the colours would be systematically arranged (2) by associating the colours in a predefined and uniform way.
In Sieckmann C-273/00, why can a smell not be registered as a trade mark?
(1) A verbal description would not be sufficiently clear, precise or objective.
(2) A deposit would not be a graphical representation, and would not be sufficiently durable or stable.
(3) A chemical formula would not be sufficiently intelligible, clear, or precise.
In Shield Mark v Joost Kist C-283/01, how may a sound mark be described in a way that satisfies a Sieckmann criteria?
(1) By musical notation (intelligbility is not immediate intelligibility).
(2) (Not onomatopoeia.)
(3) (TM offices also accept an audio recording of the sound.)
In Philips v Remington C-299/99, how is the requirement in s1(1) TMA / Art.4 EUTMR that the trade mark be capable of distinguishing the goods of one undertaking from those of another to be evaluated?
(1) It is to be evaluated by the criteria of distinctiveness (ss3(1)(b)-(d) TMA / Art. 7(1)(b)-(d) EUTMR), (2) since all distinctive marks are also capable of distinguishing the goods of one undertaking from those of another.
In subsections 3(1)(b)-(d) TMA / Art. 7(1)(b)-(d) EUTMR, when can a trade mark not be registered?
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or services.
(d) trade marks which consist exclusively of signs or indictation which have become customary in the current language or in the bona fide and established practices of the trade.
In subsections 3(1)(b)-(d), when may a trade mark nevertheless be registered?
(1) If, before the date of application for registration, (2) it has acquired distinctive character (3) as a result of the use made of it.
Which principles underpin the assessment of distinctive character (ss. 3(1)(b) TMA / Art. 7(1)(b) EUTMR), as conveniently summarised by Arnold J in Nestle v Cadbury [2014] EWHC 16, [40]-[45]?
(1) Distinctive character must be assessed by reference to the goods or services and (2) the perception of the average consumer of those goods or services, deemed to be reasonably well-informed and reasonably observant and circumspect.
(3) The criteria for distinctive character are the same for all categories of trade marks, but the perception of the relevant public is not the same for different categories and it may therefore be more difficult to establish distinctive character for some categories (such as shapes, colours, personal names, advertising slogans and surface treatments).
In Cain Cellars T-304/05 and Evonik Industries T-499/09, which signs were held to be devoid of distinctive character?
(1) Cain Cellars: A device with a pentagon shape for wine would not be perceived as a mark.
(2) Evonik Industries: A purple rectangle with a convex side would be understood as ornamental or decorative rather than as conveying a trade mark message.
In OHIM v BORCO C-265/09P [2010] ECR I-08265, what was held regarding a priori objections for lack of distinctiveness?
(1) Even though the Court has recognised that there are certain categories of signs which are less likely prima facie to have distinctive character initially, (2) the Court, nevertheless, has not exempted the trade mark authorities from having to carry out an examination of their distinctive character based on the facts.
In Libertel C-104/01, what was observed regarding distinctiveness of colour marks?
(1) Distinctiveness without any prior use is inconceivable save in exceptional circumstances, (2) and particularly where the number of goods or services for which the mark is claimed is very restricted (3) and the relevant market very specific.
In Henkel v Deutsches Patent- und Markenamt C-218/01, what was held concerning the distinctiveness of shape marks?
(1) A simple departure from the norm or customs of the sector is not sufficient to make a shape distinctive. (2) However, a shape which significantly departs from the norm or customs of the sector (3) and thereby fulfils its essential original function is distinctive.
In Nestle Waters France v OHIM T-305/02, how could education of the public alter the conditions for the distinctiveness of a water bottle shape?
(1) Because traders had for several years sought in the shape of the packaging the means to differentiate their goods from the competition and to attract the public’s attention,
(2) the average consumer is capable of perceiving the shape of the packaging as an indication of their commercial origin,
(3) in so far as that shape has characteristics which are sufficient to hold his attention.
In Globo Comunicacao v EUIPO T-408/15, what was held concerning the distinctiveness of a ringtone?
(1) Because the mark consisted of a banal ringing sound, (2) it would go unnoticed and not be remembered by consumers, (3) thereby inhibiting its ability to indicate origin.
In Windsurfing Chiemsee v Attenberger, Joined Cases C-108/97 and C-109/97 [1999] ECR I-2779, what did the Court observe concerning the rationale for excluding descriptive marks in Art. 3(1)(c) TMD 1989 / s3(1)(c) TMA / Art. 7(1)(c) EUTMR?
(1) One of the aims of this exclusion is to protect the public interest (2) by keeping descriptive signs or indications free for use by all traders.
In Campina Melkunie v Benelux-Merkenbureau C-265/00, what did the Court observe concerning the descriptiveness of a mark composed of several elements?
(1) a mere combination of descriptive elements will not normally be registrable;
(2) there must be some ‘unusual variation, in particular to syntax or meaning’,
(3) which produces an impression on the consumer of something that is sufficiently far removed from the mere combination of the meanings of the elements, so that the resulting phrase is more than the sum of its parts.
(4) For example, “Baby Dry” is registrable because of the syntactically unusual juxtaposition. But “Bio-Mild” and “Doublemint” are not.
