Trademarks

Establish how the mark is infringing the other?

(1) freeriding - the latter marks takes advantage of the reputation of the former mark (2) blurring - the use of the latter mark would be detrimental to the character of the former (3) tarnishment - prove that the use of the latter mark would be detrimental to the reputation of the earlier mark.

S. 3(2) - shapes

(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 the goods themselves, (b) the shape of goods which is necessary to obtain a technical result, or (c) the shape which gives substantial value to the goods. Even if you get over 1a, b, c and d, you can still fail to get the shape mark registered as a result of s.3(2).

S. 3(3a) - trademark not being registrable on grounds of public policy or morality

(3) A trade mark shall not be registered if it is- (a) contrary to public policy or to accepted principles of morality, or (b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).

S. 3(4) and 3(5) - Use prohibited by law/Specially protected emblems

(4) A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of Community law. (5) A trade mark shall not be registered in the cases specified, or referred to, in section 4 (specially protected emblems).

s. 11(3a and b) - meaning of earlier right

(a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his, or (b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his; and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by virtue of any rule of law (in particular, the law of passing off).

Hotel Cipriani SRL and others v Cipriani (Grosvenor Street) Ltd and others [2010] EWCA Civ 110 (s11 2(a))

- Company name can be "own name" for purposes of 11(2) - emphasised that the key to the use of one's own name being a defence is found in the requirement that such use be an honest commercial practice - over here it wasn't, as there was likelihood of confusion, resulting in unfair advantage

Proviso to s. 11(2) defences

... provided the use is in accordance with honest practices in industrial or commercial matters

s. 12 - exhaustion of trademarks

.Where the goods have been put on the market with the proprietor's consent. May cover a situation where the way in which the goods are being re-advertised are damaging to the reputation of the goods

Section 1(1) and 3(1a) Trademarks act (signs)

1(1) - TM = any sign capable of being represented graphically, capable of distinguishing goods or services of one undertaking from other undertakings 3(1a) - (1) The following shall not be registered - (a) signs which do not satisfy the requirements of section 1(1)

s. 11 (1) - defences

11(1) - A registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registered (but see section 47(6) (effect of declaration of invalidity of registration)).

s. 11(2) - defences

11(2) - A registered trade mark is not infringed by - (a) the use by a person of his own name or address. (b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or (c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts),

s. 11(3) - locality of the mark

A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality.

General Meaning of a Trademark

A trademark is a badge of origin. Tells you where your goods and services come from. Trademarks have to have distinctive character. A word doesn't have to mean anything or be a word, but it can be inherently distinctive

Specsavers International Healthcare Ltd and others v Asda Stores Ltd [2010] EWHC

ASDA chose to run advertising campaign for "spec-saving" opticians. Nobody thought ASDAs product were the same. But it came in evidence that the ASDA ad was trying to infringe on the trademark of Spec-savers. example of freeriding

s. 3(1d) - customary in current practices/languages of trade

All in effect about generic marks. You can't have it as a trademark, too unfair. Something as generic as the "Rusty Spoon' for a restaurant. "Escalator" of a brand of escalators, as it has become a colloquial term since the first time it was made.

Lloyd Schuhfabrik Meyer [1999] ECR I-3819 (similarity)

An average consumer is deemed to be reasonably informed, observant and circumspect, but rarely has the chance to make direct comparison between marks, but relies on the imperfect recollection he has in his mind

Sabel v. Puma [1997] ECR I-6191 (similar goods)

Assess by reference to the 'overall impressions created by the marks, bearing in mind their distinctive (telling where the goods come from) and dominant components"

Gillette Co v. LA Laboratories Ltd Oy [2005] ECR I-2337 (honest practices/intended purpose)

D made razor baldes that would fit a gilette razor. Court said use of trademark was necessary as information being tended for goods and services was necessary for the public to know.

L'Oreal SA & Ors v Bellure NV & Ors [2009] ECR I-5185

Bellure was selling smell-alikes. Perfectly lawful to do so. They did not market them under loreal nor did they use the marks. But they marketed the fragrance by comparing the smell to Ls perfume. L argued it was trademark infringement under 10(3), taking advantage of the reputation of the trademark. The image of the earlier mark and the characteristics of the goods and the marketing had made it easier for the latter mark and good. example of freeriding There was no confusion: the public knew that the look-alike perfumes were not the real thing and had no trade connection with L'Oréal but the "link" that was made enabled the defendants to charge higher prices and helped them to market their products. So need only show commercial advantage obtained by D through use of its mark - instead of detriment. -CoA reluctantly followed decision

Bongrain SA's Trade Mark Application [2004] EWCA Civ 190

CA held that just because a shape is unusual does not mean the public will automatically regard that shape as a trademark.

Harrison v. Teton Valley Trading Co Ltd [2004] I WLR 2577 (CoA)

COA said to determine bad faith, inquire as to what the applicant knew, and if a reasonable person would regard what the applicant knew as below the standards of acceptable commercial behaviour. Affirmed in Ajit Weekly Trade Mark [2006] RPC 633 (Appointed Person)

Absolute grounds of refusal

Contained within s. 1 and 3 of the Act

Adidas v. Fitnessworld Trading [2003] ECR I-2537

Existence of a link must be appreciated globally, taking into account all factors relevant to the circumstances of the case.

Bimbo SAv OHIM (8 May 2014) (BIMBO case) (composite marks)

ECJ confimed that if a component of a composite sign does not retain an independent distinctive role when added with the other components, the latter component creates an entirely different meaning.

Linde [2003] ECR I-3161 C-53-55/01 (disticntiveness)

ECJ said to have distinctive character a mark must serve to identify the goods and services in question, indicating they come from a particular undertaking, distinguishes from goods and services of other undertakings.

Gromax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367

English courts said it clearly covers dishonesty, but also "some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined". I.e. if other people in your sector think it's malpractice, then it probably is.

Proviso to s.3(1b and c)

Even if your mark is descriptive and has become generic, or it has become descriptive. If consumers have been educated to recognise it as only your trademark it has become an indication of trade origin and is hence a trademark.

Malaysia Dairy Industries Pte Ltd v Ankenaevnet (Case C-320/12)

court said the fact that a person making an application knows that the third party is using the mark overseas, and that is liable to cause confusion, is not sufficient to prove bad faith.

Windsurfing Chiemsee v. Attenberger [1999] ECR I-2779 (provisio test)

If a significant proportion of the relevant class of people for the goods and services have come to identify the good from a particular undertaking as a result of the mark, then it has acquired distinctiveness

3(2b) - overlap between patent law and trademarks.

If you could register a shape of a product, you can prevent others from using the same technical process with that product. The purpose of this sections is the prevent the extension of patent protection for 20 years.

Anheuser-Busch Inc v. Budejovicky Budvar NP [2004] ECR I-10989 (own name) (s.11(2) proviso)

It is a duty to act fairly in relation to the legitimate interests of the trademark proprietor. Three factors to consider when evaluating whether the use is "honest" - to what extent is the use of the (original) 3p name understood by the public such that it would indicate a link, should the (latter) person been aware that the link would have been made and whether the original trademark has a reputation to be protected

Och-Ziff Management Europe Ltd (2) OZ Management LP v OCH Capital LLP (initial confusion)

Justice Arnold held there had been only "initial interest confusion" (which he defined as confusion on the part of the public as to the trade origin of the goods or services arising from use of the sign prior to the point of purchase and, in particular, confusion arising from the use in advertising and promotional services). The Judge held that "initial interest confusion" was actionable under Article 9(1)(b); the confusion did not have to take place at the point of sale.

Societe des Produits Nestle SA v Cadbury UK Limited [2013] EWCA Civ 1174 (CoA) ("sign")

Mark was described as 'the colour purple (...) being the predominant colour of the visible surface of the packaged goods'. What does predominant mean? Unknown number of signs so does not comply with s.1.

Il Ponte Finanziaria SpA v. OHIM [2008] ETMR 242

Marks have to have a minimum level of similarity before you can succeed under a 5(2) or 10(2) case, those hurdles have to be met before pursuing likelihood of confusion.

S. 5(1) - where a tm should not be registered if it is identical to a previous trademark

Meaning of identical? LTJ Diffusion v Sadas case - court held there is identity where a sign reproduces without any modification or addition all the elements continuing the earlier mark. But also, if an average consumer when looking at the mark notes there are insignificant differences between the earlier and latter TMs, then they are still identical. Don't have to have exact wording in the specification of the goods either.

S.5 and s.10 relationship

Mirror of that is s.10 which deals with TM infringement. 5 deals with stopping the mark being registered, s.10 wants to get an injunction and damages. But language used is somewhat identical.

Lloyd Schuhfabrik Meyer [1999] ECR I-3819 (likelihood of confusion)

Other goods and services you may order over the telephone so the aural or phonetic similarity between marks becomes important

Gerolsteiner Brunnen GmbH & Co v. Putsch GmbH [2004] ECR I-691 (honest practices)

Owned TM Gerri - 3p used a sign that was similar and goods identical to indicate geographical origin, goods were similar, so might have been confusion. Claimant said - it is descriptive but also being used as a brand, so not purely descriptive. Court held, defence still available as - Question is always whether you are unfairly competing with the trademark owner

DataCard Corporation v Eagle Technologies [2011] EWHC 244 (Pat) (post purchase confusion)

Post-sale confusion can be relied upon in appropriate cases - you have to take into context the circumstances and use of the mark when pursuing an infringement action.

Philips v. Remington [2002] ECR I-5475 (Philips) (goods s.3 2b)

Remington argued the TM should not have been granted because the three headed rotary shaver was shaped the way it was to obtain a technical result. It looked that way to give Philips a better and closer shave for the customers. ECJ - if the essential shapes are attributable only to the technical result means that s. 3(2b) applies.

S.5 Trademarks Act - (relative grounds of refusal)

S.5(1) - identical mark covering identical goods for which you want to register that mark. S. 5(2) - The mark is either identical to the previous mark, but the goods are similar to the goods already registered. Where there is a likelihood of confusion. S.5(3) - where the registration of the latter mark for any good would be detrimental to the character of reputation of the mark. Difference under 5(2) is you have to prove a likelihood of confusion. With 5(3) you don't have to prove that.

Medion AG v. Thomson [2006] ETMR 164 (composite marks)

Similarity can sometimes occur where the dominant element of a composite mark is similar to another mark. A part which has an independent, distinctive role. The other components don't have to be negligible, but the greater the role they play, the less independent and distinctive the dominant mark is.

Marks & Spencer v Interflora

TMs have various functions. (1) origin function of a TM (2) investment function, (3) advertisement function, (4) communication function, (5) guarantee of quality function

L'Oreal SA & Ors v Bellure NV & Ors (18-6-09)

The CJ judgment decided that a trade mark owner can prevent use not only where the essential function (namely, the guarantee of origin) of the mark is jeopardised but also where any of the mark's other functions are affected, such as the guarantee of quality of the goods or services, and those of communication, investment or advertising.

Ruiz-Picasso v. OHIM [2006] ECR I-643 (likelihood of confusion)

The aural similarity was Picasso, and the latter mark was Picarro. Arugment was because the Picasso mark brought to mind the painter, there was a clear conceptual difference, so no infringement.

General Motors Corporation v. Yplon [1999] ECR I-5421

The earlier mark must have a reputation, the use of the latter mark would be without due cause and would be detrimental to the reputation of the earlier trademark. No need for likelihood of confusion

S. 3(1c) - descriptiveness, marks that tell you something about their goods and services or qualities.

The following shall not be registered - (c) trade marks which may exclusively serve, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services Biggest problem with 3(1c) is discerning what is elusive and what is descriptive

Adam Opel AG v. Autec AG [2007] ETMR 33

The requirements of trade mark infringement were met insofar as the affixing of the Opel-Blitz device on the defendant's toy car constituted use of a sign that was identical to the claimant's mark on identical goods (toys). However, as this use did not affect the main function of the mark (origin), nor did this use affect any other functions of the trade mark because the relevant consumer would not regard it as a reference to the trade origin of the toy car. Consequently, the Opel-Bliz mark would only be seen as a reproduction of a detail of the original car -> thus no unfair advantage or detriment either -> no infringement

Societe des Produits Nestle SA v Cadbury UK Ltd [2015] EUECJ (shape of a 4 fingered Kit-Kat)

What N tried to do was register the 4 finger bar without the embossed name, judge disagreed. Controversial decision. English courts don't like that something would have a monopoly over a 4 fingered chocolate bar. In essence you have to rely upon the shape to tell you where the goods come from. The consumer does not rely on it, then it is not capable of forming a trademark.

Dyson v. Registrar of Trade Marks [2003] RPC 821 ("sign")

Tried to register all conceivable shapes and colours of transparent collecting bins, held it must be limited to a particular sign.

S. 3(6) - where the application has been made in bad faith.

Where one will: - Rush to register a trademark which is already used by another party and has certain influences by improper means - Register a large quantity of trademarks but with no intention of actual use. - Obtain registration with deceptive means; - Copy, imitate or translate a well-known mark which is not registered in another place; or copy, imitate or translate a well-known mark which is registered in another place, which could easily cause confusion; Other kinds of activities of producing or selling counterfeit or infringing products by the applicant.

OHIM v Borco-Marken-Import Matthiesen (single letter)

Whether it is a single letter doesn't matter, the same test in Linde applies. Harder to overcome in instances with a single letter

Henkel v OHIM [2004] (shapes of goods and packaging)

With case of shapes of packaging of goods (e.g. coca cola bottles) the question is whether members of the public have to become accustomed/educated to see the shape as being a trademark through use of it, or inherently seen as a trademark

Applying for Trademarks

You file an application with the UK IPO, the UK trademarks registry examines the application, on absolute grounds. Concerned with the fact that the law says these things should not be registered as trademarks. S. 1 and 3 of the TMs Act. 2 months after publishing of app can the TM be disputed.

Infringement under 10(1)

You have to prove that one of the functions of the trademark is being affected, most commonly the function of origin. Someone has to use the mark in the course of trade without the consent of the earlier owner, the mark has to be identical, used in relation to the goods, and the goods have to be identical .

S. 5(4) and 10(4) - rule of law and infringing acts

a mark shall not be registered that it's use in the UK is prevented by rule of law, particularly passing off. (4b) you can prevent if you have some earlier right such as copyright or design right etc. looking at 10(4) gives things that can infringe a trademark - promoting goods, importing/exporting goods, using the sign on contracts or advertisements

Rousselon Freres et Cie v. Horwood Homewares Ltd [2008] RPC 30 (composite marks)

affirmed the Medion. Earlier mark was marked sabbatier. Later marks included "judge sabbatier" and "stellar sabbatier", and it was held that the word played a distinctive and independent role in the phrase that was similar to the former trademark.

Section 3(1b) Trademarks Act

concerned with absolute grounds of trademark registration. I.e. public policy. (1) The following shall not be registered - (b) trade marks which are devoid of any distinctive character i.e. Does the sign do the job of being a trademark, does it enable people to re-purchase their goods, knowing they can get the same goods from the company.

3(2c) - shape give substantial value to goods

concerned with the fact that designs have aesthetic value meaning that consumers want to buy the product hat have that shape. Prevent something that would instead be protected by registered design (which is only 25 years, in comparison with forever).

Céline Sàrl v. Céline SA [2007] ETMR 80

court was asked whether the use of a trademark used as a company name or shop name but not affixing it to any production Court said that if the use of the company name affects the function, if consumer think the goods have come from the earlier owners, then it affects the trademarks function.

Chocoladefabriken Lindt & Sprungli AG (11-6-09) (Lindt case, bad faith)

definition and meaning of bad faith. Have to take into consideration all factors of the case up till the point the application was filed. Subjective and objective test. Look at the applicants intention (subjective) and determine that by reference to objective circumstances of the case.

Interflora Inc & Anor v Marks & Spencer PLC & Anor [2014]

don't have to prove an exact percentage of consumers will be confused, but court said a majority of consumers might not be confused, but doesn't mean that there is no likelihood of confusion. An average consumer is not real but a legal construct.

OHIM v. Wm. Wrigley [2003] ECR I-12447 (Doublemint)

double-mint can be interpreted in many ways court said as long as one meaning is descriptive it fails under 3(1c). if the mark might in the future seen as designated characteristics of the goods or services, it may fail under 3(1c).

S. 5(2) and 10(2) - similar, likelihood of confusion

either the two marks have to be similar or identical, and because of this there has to be a likelihood of confusion (doesn't mean you have to prove confusion, but that it is possible to arise).

Ralf Sieckmann [2002] ECR I-11737 (Sieckmann) (Smells)

for a smell to be registered graphically, it must be: clear, precise, self contained, easily accessible, intelligible, durable and objective. Would that be satisfied by a chemical formula that describes the smell, or an odour sample? Court said no. Smell marks are out. Perfume companies hate this, as there can be knock-offs of fragrances. Scrabble failed on this count of failing to be represented graphically. Also came up in the Cadbury's case.

Proctor & Gamble v. OHIM [2001] ECR I-6251 (Baby-Dry)

for nappies - said you wouldn't use it as a phrase to describe a characteristic of nappies. If there is any perceptible difference, it is distinctive, not descriptive

Windsurfing Chiemsee v. Attenberger [1999] ECR I-2779 (geographic description)

geographic marks can be registered, as long as the public associates that mark with the trademark owner, and not with the geographic area. ask how well known is the location, what is it known for, is it likely in the future to be known for a particular good or service

Elizabeth Emanuel v Continental Shelf 128 Ltd [2006] ETMR 750

got into financial difficulties, had her name registered as a trademark. Business went bust and TM was an asset that could be sold to release cash to creditors of the company. If someone else is using the name other than the person, then it is deceptive was her argument. This failed, court essentially said, a name is a commercial asset that can be traded in like any other commodity and such a TM will not be revoked by reason of that particular feature alone - so long as the user creates no further deception.

Hauck GmbH & Co. KG v Stokke A/S & Ors (TRIPP TRAPP) (ss. 2c)

grounds would apply even where other characteristics give the product in question significant value. If there are aspects of the shape which give substantial value to the goods you would fail under 3(2c).

Bang & Olufsen v OHIM ("substantial value")

had produced an aesthetically pleasing speaker, got it registered. Got to the eu courts, said you cannot register. Reason the shape looks the way it does is because it looks nice, shape is giving substantial value to the goods.

Intel v. CPM UK Ltd [2008] ECR I-8823

how similar are the marks, goods involved, similar, how strong reputation is, distinctiveness. If an average consumer would recall to mind when they see the latter mark, then that is tantamount to the link

2a - shaped as a result of nature of goods

if the thing is shaped as a result of the goods, it cannot fulfil the trademark as all product will result in that shape.

Il Ponte Finanziaria SpA v. OHIM [2008] ETMR 242 (likelihood of confusion)

if there is a family of marks you can rely that there is a greater likelihood of confusion but there must be a sufficient amount of trademarks in that family, and those trademarks have to be used in the marketplace.

Arsenal Football Club v. Reed [2002] ECR I-10273

if trademark use occurs in the context of commercial activity with economic incentive, then you are using in the course of trade.

s. 11 (2b) - descriptiveness defence

if you are using something to describe characteristics of your goods, you wouldn't be able to use the trademarks. If you use descriptive terms to describe quality or characteristics of your goods, it is not trademark infringement

Google France v. Louis Vuitton Malletier (Google AdWords)

if you are using the mark in such a way that the advertising function of the trademark suffers, that is infringement under 10(1).

Libertel v. Benelux-Merkenbureau [2003] ECR I-3793 (Libertel) (Colours)

in theory a colour per se can be registered. Mere sample of a colour will not work as well. Need to use a designation of an internationally recognised system for colours. Colours are not inherently distinctive, would usually fail under 3(1b)

What is a sign?

include sounds (if you hear a sound, you can associate with a specific corporation. Can register a colour in theory as a trademark. Slogans can be considered trademarks.

Sabel v. Puma [1997] ECR I-6191 (likelihood of confusion)

likelihood of confusion must be appreciated globally. Mere association in the sense that the later mark brings the earlier mark to mind is not sufficient.

Scrabble case i.e. JW Spear and Son Limited & Ors v Zynga Inc [2013] EWCA Civ 1175 ("sign")

mark was described as a 3 dimensional colour tile, a letter of the roman alphabet and the number 10. Judge and court of appeal said that's not a sign, described an infinite number of permutation for which these signs could represent. Too many signs

Bayerische Motorenwerke AG v. Ronald Karel Deenik [1999] ECR I-905 (repairs - intended purpose)

mechanic specialised in repairing BMW cars. ECJ held he could use BMW to describe his specialty in car maintenance and services. Not allowed to use the mark that would create a commercial connection between the repairman and bmw. Had to be careful so that there is no link to the brand owner. As long as your use of the trademark is necessary and there is no connection to the brand owner it is fine.

Audi AG v OHIM, 21 January 2010 (slogans)

mere fact that you see a mark as a promotional asset does not mean it cannot be a trademark, does not mean it is devoid of distinctive character. If the slogan might have a number of meanings, if you have to think about what the slogan is trying to tell you, then it's probably registrable as a trademark. If it tells you something about the goods and services and just that, it will fail under 3(1b) unless you educate people to see it as a trademark.

Copad SA v Christian Dior & Ors (23-4-09) (exhaustion)

proprietory trademark may not oppose the use of the trademark by another, particularly if the way in which he is selling is customary in his sector, unless you can prove the person's making use of the trademark could seriously damage the reputation of the trademark

Canon v. MGM [1998] ECR I-5507 (likelihood of confusion)

public must wrongly believe that the goods come from the same or economically linked undertaking.

Canon v. MGM [1998] ECR I-5507 (similar goods)

relevant factors; including the nature of the goods and services, the end-users of the goods, the methods of use of the goods, intended purpose of the goods, whether they are in competition with one another or they are complementary

Das Prinzip Case OHIM v. Erpo Möbelwerk GmbH [2004] ECR I-10031 (slogans)

someone tried to register 'the principle of comfort'. If a slogan serves a promotional function, and if it is not manifestly for a trademark, it will be rejected. The promotional function serves to be more elusive in these cases

Ghazilian's Application [2002] RPC 628

someone tried to register the mark 'tiny penis' sign would cause justifiable outrage. If a mark is likely to undermine current religious or family or social values, then it cant be registered. Doesn't mean it cant be used though.

Levi Strauss v. Tesco [2001] ECR I-8691 (exhaustion)

the article examines the advantages and disadvantages of the European Union changing its current laws in this area, and recommends that the European Union eschew calls for adoption of an international exhaustion system and instead adopt the American "hybrid" system that includes the "common control exception" as its centerpiece.

Hauck GmbH & Co. KG v Stokke A/S & Ors (TRIPP TRAPP) (ss. 2a)

the ground for refusal will not apply if there is an element of decorativeness or imaginativeness that is not inherent in the general function of the goods.

Nichols Plc. V. Registrar of Trade Marks [2004] ECR I-8499 (surnames)

there is no special rules for assessing a surname. If a surname is very common, it wont be registered. You wont be able to distinguish between different people's businesses.

Philips v. Remington [2002] ECR I-5475 (Philips) (goods s.3 2a)

three headed rotary shaver. Were the goods actually electrical shavers generally? Courts held section is concerned where a designer of goods has no choice as to the shape the product can take. Question of "what are the goods as a practical business matter?"

Philips v. Remington [2002] ECR I-5475

three headed shaver. The distinctive character test is no different, but average consumers are not in the habit of making assumptions about where the product comes from when it comes to packaging. If the shape does not enable the relevant public to ascertain the goods then you wont get registration.

s. 5 (2c) - trademarks with an earlier reputation

trademark wont be registered if it is identical or similar to a trademark, and if the earlier trademark has a reputation in the UK and the use of the latter mark in would be detrimental to the reputed character of the earlier trademark or allow an unfair advantage to the new mark (freeriding)

Lego Juris A/S v OHIM (s. 3(2b))

tried to register brick as a TM. Cancelled subsequently, shape of a lego brick, and the characteristic perform a technical function. On that basis, could not as 3(2b) applies. Doesn't mean you cant register the word "LEGO".

Elli Lilly's Application ("the taste of artificial strawberry flavour") (Tastes)

tried to register taste of artificial strawberry as a trademark. Board said no, a verbal description of how it taste's is not a graphical representation as it is not clear and precise.

Shield Mark v. Joost Kist [2003] ECR I-14313 (Shield Mark) (Sounds)

tried to register the first nine notes of Beethoven's musical work, and crowing of the cockerel for advice and services for advice and services in the IP business. Merely describing the sound does not meet the Seekmann criteria. Have to have a musical score of the melody to meet the criteria.

Heidelberger Bauchemie [2004] ETMR 99 (Colour Combinations)

tried to register two colours, application sought to register when used in every conceivable form. ECJ said no, you have to systematically arrange the colours in a predetermined and uniform way so that anyone looking at it knows exactly what trademark they are looking at.

Clairin Case

wanted to use mark for gyms also as toilet cleaner, saw action for tarnishing reputation. example of tarnishing

Intel v. CPM UK Ltd [2008] ECR I-8823 (blurring)

where the earlier marks ability to be seen as identifying has been weakened by use of the other mark, there is detriment to the distinctive character of the earlier mark. Have to prove change of economic behaviour of the earlier good. example of blurring

s. 11 (2c)

where the use of the TM is to indicate the intended purpose of the product. Where you need to use someone's trademark to indicate a characteristic of your good