Registrability & Use of Trade Marks
What was held in Societe des Produits Nestle SA v Cadbury UK Ltd [2015]?
'The trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company.'
What was held in British Sugar plc?
'Treat' designated the kind, quality and intended purpose of the product - it described characteristics of the product = not allowed.
What is are the absolute grounds for refusal under s 3(1) TMA 1994?
(1)- The following marks shall not be registered: (a) Signs which do not satisfy the requirements of sec 1(1). (b) Trade marks which are devoid of any distinctive character. (c) Trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide & established practices of the trade; Provided that a trade mark shall not be refused registration under (b), (c) and (d) if it has in fact acquired a distinctive character as a result of the use made of it.
Which cases are examples of the courts interpretation of s 3(2)?
- Phillips Electronics BV v Remington Consumer Products - Deutsche SiSi-Werke v OHIM [2006] - Bang & Olufsen v OHIM [2012]
What can the proprietor do with their trade mark?
1. Bring infringement proceedings - s 9 2. Assign their position to someone else - s 24 3. Licence a whole or part of their trade mark to someone else - s 28
How long are trade marks granted for upon registration?
10 years & are able to be renewed
What is meant by s 3(1)(b)?
A mark devoid of any distinctive character cannot convey the message that the goods are those of a particular trader.
What is s 3(4) (another ground of absolute refusal)?
A mark will not be registered if the use of it is forbidden by other laws. • Example the use of red crosses for any purpose other than the humanitarian work of the Red Cross and related organisations (by virtue of the Geneva Convention).
What is s 3(3) (another ground of absolute refusal)?
A mark will not be registered if: (a) It is contrary to public policy or accepted principles of morality. (b) If it would have the effect of deceiving the public.
What was held in Re Seahorse Trade Mark [1980]?
A proprietor had a trade mark seahorse in relation to marine engines, which was for little dingeys. This had a very low horse power level. Another applicant wanted to register a seahorse for bigger marine engines, to be used on large ships. Was this allowed? Did it cause confusion? Court held that the difference in terms of character of goods = there would be no confusion.
What is s 5(2) TMA 1994?
A trade mark shall not be registered if - (a) it is identical with an earlier trade mark & is to be registered for goods or services similar to those for which the earlier trade mark is protected, or (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected.
What is s 3(6) (another ground of absolute refusal)?
A trade mark shall not be registered if or to the extent that the application is made in bad faith.
What was held in Harrison v Teton Valley Trading Co Ltd [2004]?
A trade mark shall not be registered if the application is made in bad faith. •The court is required to consider the applicant's mental state and all the relevant circumstances of the particular case.
What is s 5(3) TMA 1994?
A trade mark which - (a) is identical with or similar to an earlier trade mark shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the UK (or, in the case of a EU trade mark or international trade mark (EC), in the EU) and the use of the later trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
What are two cases that illustrate the courts approach in s 3(1)(c)?
British Sugar Plc & Phillips Electornics (see above).
How do the courts decide whether or not to allow the exception under s 7?
By considering: - Extent of confusion on consumers - Honesty of parties - Length of use - Size of applicant's trade
What was held in Procter & Gamble Co v OHIM (the Baby-Dry case)[2001]?
Combination of the words was not merely descriptive - baby & dry. Whether this was not merely descriptive? But the law was that even if words on their own are descriptive, if you combine the words so that they have some kind of distinctive character = allowed registration.
What was held in Lindt v Sprungli [2009]?
Evidence of bad faith - applicant wanted to register a trade mark for their version of Easter bunnies. However, a number of companies had been using a similar shape. They attempted to register their trade mark of this shape. Court said this was made in bad faith, to try and secure monopoly over the shape of the Easter bunny.
Which cases are examples of how the courts have interpreted s 3(1)(b)?
Grundig Multimedia AG v OHIM [2015] British Sugar Plc v James Robertson & Sons [1996] Eurolamb Trade Mark [1997] Easistore Ltd's Trade Mark Application [2010] Philips Electronics BV v Remington Consumer Products Ltd [1998]
What was held in Grundig Multimedia AG v OHIM [2015]?
Grundig wanted to register the word 'Pianissimo' as an EU trade mark for electrical engines & the application failed, because one of the meanings of the Italian word pianissimo is 'extremely silent'. In relation to electrical engines that can for the relevant public, which includes Italian consumers, never mean electrical engines made by Grundig - you wouldn't be able to distinguish these goods from those of another.
What are two examples of cases that interpret s 3(6)?
Harrison v Teton Valley Trading Co Ltd [2004] Lindt v Sprungli [2009]
Under s 3(1)(d), what happens when common words are used for a trade mark registration?
Honestly, it depends (as always).
What did Advocate General Colomer state in Biomild Case [2004] & Postkantoor Case [2004] about the approach o the court when considering if a trade mark has passed s 3(1)(c)?
In examining whether a sign is suitable for registration as a trade mark, the trade mark office should not limit its analysis to the sign as it appears in the application, regard should be had to all other relevant circumstances. These include: (i) the acquisition of distinctive character through use, and (ii) the danger that the average consumer will be confused or misled.
What is meant by s 3(1)(a)?
It restates the principle that signs which are not distinctive as to commercial origin cannot be registered.
What does earlier mark include?
Pre-existing marks here go beyond just the ones registered in the UK. - Includes all UK marks, the EU trade mark, trade marks registered under the Madrid Protocol provisions, and applications with earlier priority dates. - Lapsed trade marks are also protected for a year.
What is s 3(5) (another ground of absolute refusal)?
Prevents the registration of specially protected emblems. Examples include royal arms, national flags and emblems, protected insignia etc = s 4!!!!!!!!
Which cases illustrate the courts approach to the use of common words?
Procter & Gamble Co v OHIM (the Baby-Dry case)[2001] OHIM v Wm Wrigley (Doublemint Case) [2004] W3 Ltd v Easygroup Ltd [2018]
What was held in Re Hack's Application [1940]?
Registration of black horse chocolate. It was shown that this type of chocolate & name had acquired some popularity. Another party wanted to do the same for laxatives. It was found that some laxatives are made with chocolate flavour, which could cause confusion , & evidence that in a shop you can have chocolates & laxatives placed closely = confusion.
What is meant by s 3(1)(d)?
Registration will be denied here if the sign or indication brings the goods or service to mind to the average consumer. - this means that that sign has become customary in the trade e.g. common place. The issue here is not about the sign being descriptive, it is about the sign being customary as a term for the goods or services.
Which schedule of the TMA 1994 provides detailed rules for applying for collective marks?
Schedule 1
What is s 3(2) (another ground for absolute refusal)?
Signs may not be registered if they consist exclusively of: (i) The shape, or another characteristic, which results from the nature of the goods themselves, (ii) The shape, or another characteristic, of goods which is necessary to obtain a technical result, or (iii) The shape, or another characteristic, which gives substantial value to the goods.
Which two cases are examples of the Proviso being interpreted?
Societe des Produits Nestle SA v Cadbury UK Ltd [2015] Windsurfing Chiemsee Produktions v Boots [1999]
What was held in Phillips Electronics BV v Remington Consumer Products Ltd [1998]?
Sought to register a shape mark for a three sided rotary shaped shaver. Whether this shape was something that would distinguish shavers manufactured by Phillips Electronic from anyone else? No. All it said was here is a three sided rotary shaver. It didn't even have a name or imprint of Phillips = not distinctive.
What was held in Deutsche SiSi-Werke v OHIM [2006]?
The Court of Justice noted that this ground for refusal must be interpreted in the light of the public interest underlying it. The aim is to prevent trade mark law granting an undertaking a monopoly on technical solutions or functional characteristics of a product.
What is the exception to s 3(1) (b)-(d)??
The Proviso - states that something that is descriptive, BUT because it has gained distinctiveness through use = able to register.
What is s 7 TMA 1994?
The Registrar can still register a trade mark even when there is already an earlier mark, or earlier right, in cases where there has been 'honest concurrent use' of the two marks.
What is meant by s 3(1)(c)?
The aim is to deny registration to descriptive marks that are likely not to be distinctive.
What was held in Windsurfing Chiemsee Produktions v Boots [1999]?
The company registered the trademark Chiemsee, this is actually a geographical location. It is the name of the largest lake in Germany. The Company was near the lake. But the trademark was for sports wear. A competitor complained that the trademark should not have been registered as it was merely descriptive of geographical location. FELL IN Proviso - as customers identified the goods with the trade mark as it became distinctive through use.
What are the requirements for the Proviso to become applicable?
The distinctive character that can be obtained through use must serve to identify the product as originating from a particular undertaking and thus distinguish that product from goods of another undertaking.
What was held in Phillips Electronics?
The public understood the shape mark as a picture of the goods and not a trade mark = not allowed.
What was held in Bang & Olufsen v OHIM [2012]?
The shape of a peculiar design of loudspeaker added substantial value to the product (because of the strange shape of the goods) and registration was denied under s 3(2)(iii).
What was held in Phillips Electronics regarding s 3(2)?
The three-headed rotary shaver failed all three subsections of s 3(2). s 3(2)(i) failed because the shape of the trade mark was a result of the nature of the goods themselves (three-headed rotary shaver). s 3(2)(ii) failed because the shape of the trade mark was used to obtain a technical result. s 3(2)(iii) failed because a piece of the machinery in the mark gave substantial value to the goods.
What was held in W3 Ltd v Easygroup Ltd [2018]?
The word 'Easy' merely conveyed the message that the services were easy to purchase or use - The word Easy was not allowed because this just described the type of service that was to be provided.
What was held in British Sugar Plc v James Robertson & Sons [1996]?
The word treat was to be registered. It doesn't tie the good to its origin - no distinguishing.
What is meant by relative grounds for refusal?
This refers to marks which cannot be registered not on account of their inherent problems, but because of pre-existing presence in the market of similar or identical marks on similar or identical goods or services.
What was held in Eurolamb Trade Mark [1997]?
Wanted to register Eurolamb as a short form for European Lamb. Court held no as if you saw the word you would have not thought EuroLamb would come from Eurolamp Ltd, it could have come from any European country.
What was held in Easistore Ltd's Trade Mark Application [2010]?
Weren't allowed CREATESPACE as a mark for use in relation to the provision of storage space because it was not distinctive enough.
What was held in OHIM v Wm Wrigley (Doublemint Case) [2004]?
Wrigley wanted to register Doublemint as a trade mark = not allowed. Because according to the court Doublemint was descriptive, it described the mint in the chewing gum = not distinctive.
What are the absolute grounds for refusal of registration of a trade mark?
s 3(1) TMA 1994 s 3(2) TMA 1994 s 3(3) TMA 1994 s 3(4) TMA 1994 s 3(5) TMA 1994 s 3(6) TMA 1994
Which section covers the renewal & time granted of trade marks?
s 42 TMA 1994
Which section covers collective marks?
s 49 TMA 1994
Which sections are the relative grounds for refusal?
s 5 (1) TMA 1994 S 5 (2) TMA 1994 S 5 (3) TMA 1994
What is s 5(2) classified as & when can you register a trade mark under this?
s 5(2) = qualified. Trade marks are unregistrable if the mark causes confusion on the part of the public - if not = registrable.
What is the exception to relative grounds of refusal?
s 7 TMA 1994.
What is s 5(1) TMA 1994?
•No trade mark can be registered if it is identical to an earlier mark and is used on identical goods or services.
What two cases are examples of s 5(2)?
•Re Seahorse Trade Mark [1980] •Re Hack's Application [1940]
What are collective marks?
•This is a mark which is described as such when it is applied for and is capable of distinguishing the goods and services of members of the association which is the proprietor of the mark from those of other undertakings. •Usually, the proprietor would be a trade association, but a legal person governed by public law can also be the proprietor.
