Trademarks- Additional/ relative grounds for refusal

Section 3(2): Shapes as Trade Marks

Cases: Philips Electronics v Remington (No. 1) [1998] ETMR 124 (Jacob J) and [1999] RPC 809 (CA) Philips Electronics v Remington (C-299/99) [2002] ETMR 955 Philips Electronics v Remington (No. 2)[2004] EWHC 2327 and [2006] EWCA Civ 16. Dyson v Reg. TM [2003] EWHC 1062 Automobili Lamborghini CTM Applic'n [2005] ETMR 542 (OHIM) Benetton v G-Star (C-371/06) (2008) ETMR 104 Lego Juris v. Mega Brands (C-48/09) [2010] ETMR 1121 Societe des Produits Nestle SA v Cadbury UK Ltd (the "Kit Kat case") [2014] EWHC 16 - reference by HC to CJEU. Nestle sought to register the shape of the Kit Kat 4-finger chocolate bar as TM

Thus, this section with its three parts intends to prevent the protection conferred by the trade mark from being extended beyond signs which serve to distinguish a product or a service from those offered by competitors and into sign that should be protected by other forms of Intellectual property Right. See Lego Juris at [46].

Even if a shape satisfies the conditions set out in this section, it may still be refused registration under section 3(1) for lacking any distinctive character. (Obstacle two). There may also be difficulty in producing a satisfactory graphic representation of the proposed mark ( Obstacle one)

To Sum Up

One should be aware of the possible overlap between this section and the protection it is providing to shapes with other IP rights that could be better suited for protecting shapes. Noting that unlike other IP rights, TM rights can last indefinitely! "While in extending trade mark protection to the shape of goods, trade mark law took account of the realities of consumer buying habits, it also gave rise to a problem: that trade mark rights would operate to limit competition in ways which were contrary to the public interest" (Bently and Sherman). This is also of great importance because the precise scope of much of s3(2) remains unclear See Charles Gielen, "Substantial Value Rule; How it came into Being and Why it Should be Abolished" (2014) EIPR 164- (in particular the final two "summing up" paragraphs)

Additional Negative Grounds /Restrictions on the Registration Under Section 3

Only interested in s, 3 (2) the additioonal hurdle for shapes trademark-shapes have tto jump through this 4th hurdle...MUST BE CONSIDERED IN THE EXAM Defintion + absolute grounds + s. 3 (2)

(b) The shape of goods which is necessary to obtain a technical result Philips Electronics v Remington [2006] EWCA Civ 16 Automobili Lamborghini CTM Applic'n [2005] ETMR 542 (OHIM) Lego Juris v Mega Brands [2010] ETMR 1121

The purpose of this exclusion is to "preclude the registration of shapes whose essential characteristics perform a technical function. Otherwise this would limit the possibility of competitors supplying a product incorporating such a function or at least limit their freedom of choice in regard to the technical solution they wish to adopt in order to incorporate such a function in their product." Philips at [79]. Lego Juris at [45]-[46].

(a) The shape which results from the nature of goods themselves Philips Electronics v Remington (No. 1) he wantss you to read this [1998] ETMR 124 (Jacob J) and [1999] RPC 809 (CA)

The purpose of this exclusion is to prevent traders monopolising shapes of particular goods. The "goods" under this sub-section refer to any goods for which the proposed trade mark is to be registered. This purpose was explained Aldous LJ in Philips ( No.1): "This subsection intended to exclude from registration basic shapes that should be available for use by the public at large. It is difficult to envisage such shapes, except those that are produced in nature such as bananas" Please note that this exclusion is triggered if the wording applies to any of the goods falling within the class for which the trade mark is registered. For example, registration of a picture of a banana in respect of "fruit" would be just as objectionable as registration of that word would be in respect of "bananas".

Section 3(2): "A sign shall not be registered as a trade mark if it consists exclusively of - (a)the shape which results from the nature of goods themselves (e.g. Banana shape) (basic shapes in the public domain), or (b)the shape of goods which is necessary to obtain a technical result, C.) or the shape which gives substantial value to the goods. See also Article 3.1(e) of the TM Directive and Article 7.1(e) of the CTM Regulations.

The rationale behind this section was explained by the CJEU by stating that: "The rationale of the grounds for refusal of registration laid down in Article 3.1(e) of the Directive is to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors". See Philips (CJEU) at [78] & Lego Juris (CJEU) at [43].

(c) The shape which gives substantial value to the goods

The shape is not funcitonal, but the only reaosn you buy is for the shape Is the shape nice enough, is it the reaosn they buy? Then cannot register.

General points:

These additional grounds, which are set out in sections 3(2) -3(6) of the Trade Marks Act 1994, implement provisions in Articles 3.1 and 3.2 of the Directive. A proposed mark must be assessed at the time of the application and it must be done in relation to the goods or services designated in the application and by reference to the "average consumer" of these goods or services. Each of these grounds must be addressed separately and on the basis of its particular rationale. Proposed marks that are not barred under any of the following grounds may be barred pursuant to one or more of the grounds considered in Part I and vice versa. However, unlike the grounds in paragraphs (b)-(d), the proviso does not apply to these grounds: if one of these grounds applies, the proposed mark must be refused registration even if the applicant can show that it has acquired a distinctive character through use.