Trademarks- Absolute Grounds for Refusal

A proposed mark will be deemed to lack distinctiveness if:

(1) If consumers are unlikely to perceive the proposed trade mark as conveying any information .Examples where this situation might apply:

The Three General Negative Exclusions and their Proviso Under section 3

(1) The Exclusion of Proposed Marks that are Devoid of Distinctive Character: section 3(1) (b)

• In Postkantoor, the CJEU ruled that a competent authority must refuse registration to a proposed mark if it determines that :

(A) The proposed mark represents - in the minds of average consumers - a description of the characteristics of the goods or services concerned. Or that it is reasonable to assume that the proposed mark might come to do so in the future (B)That the following factors are irrelevant to a refusal of registration under paragraph (c) - and presumably paragraph (d) as well: 1- The fact that there might be "other, more usual, signs or indications for designating the same characteristics" of the relevant goods or services 2- The Fact that the number of competitors with an interest in using the sign or indication at issue is small or large

Bongrain's Application [2004] EWCA Civ 1690

(a shape for cheese) Jacob LJ said that the average consumer "would be astonished to be told that one of the shapes was a trade mark. Consumers do not expect to eat trade marks..."

3- The proposed mark must not be registered if it consists exclusively of customary terms in relation to the products for which the proposed mark is to be registered 3(1) (d)

(in jasem's opnion another word for being descriptive)

2- With reference to the perception of the "average consumers of the goods or services in question, who are reasonably well informed and circumspect". See the Appointed Person's comments on the nature of the average consumer in the Linkin Park case at [38]

////Average consumer well informed reasonale person/////

///// (2) & (3) The Exclusion of Proposed Marks which Consist exclusively of Descriptive or Customary Signs or the like: section 3(1)(c) & (d)

//cases OHIM v Wrigley [2004] RPC 327 (CJEU) (re "Doublemint" for chewing gum) Koninklijke KPN v Benelux Merkenbureau (CJEU) (re "Postkantoor") Campina melkuine v Beneleux Merkenbureau [2004] ETMR 821 (CJEU) Telefon & Buch (C-326/01) [2005] ETMR 637 Deutsche SiSi-Werke (C-173/04) [2006] ETMR 486 Celltech (C-273/05) [2007] ETMR 843 Alvito's CTM Application [2008] ETMR 472 (OHIM Board of Appeal) Eurohypo v OHIM (C-304/06) [2008] ETMR 912 LG Electronics Inc's TM Application [2010] WL 2131417 (AP)

Additional negative exclusions:

1- Negative exclusions affecting proposed marks that consist of the shape of products - 3(2) [part of the course] 2- Negative exclusions reflecting various public policies - 3(3) - 3(5) (not part of the course) 3- A negative exclusion directed at the motivation of the applicant whereby the application may be rejected if found to be made improperly - or in "bad faith" - and in effect to be abusing the system - 3(6) (not part of the course)

The CJEU has indicated that the following may be taken into account when determining if a proposed mark has already acquired distinctive character through use:

1- The market share held by the mark. 2- How intensive geographically widespread and long-standing use of the mark has been. 3- The amount invested by the undertaking in promoting the mark. 4- The proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking. 5- Statements from chambers of commerce and industry or other trade and professional associations.

How de we assess descriptiveness: The criteria used by the CJEU to assess the descriptiveness of a proposed mark.

1- With reference to all goods or services for which the mark is to be registered for, since a sign may have a descriptive in relation to certain goods or services but could lack it for other. 2- With reference to the perception of the "average consumers of the goods or services in question, who are reasonably well informed and circumspect". 3- With reference to "all the relevant facts and circumstances", and all "the characteristics peculiar to the mark for which registration is sought". See Postkantoor at [33]-[35] 4- With reference to the date of application. In other words proposed trade mark MUST be distinctive at the application date. See Linkin Park. 5- With reference to the interests of other traders in using certain terms or signs in order to convey descriptive (or other non-origin) information which may be essential for them to be able to compete effectively with the applicant. ^^^would it be unfair to give that term... Assess the 3 exclusions above, and then look at the proviso...acquired disctinctiveness

Oberbank and Santander, case [2014]

A German Bank had used particular shade of red as corporate colour for decades and registered it as TM in 2007. Competing banks (who also used red) brought invalidity proceedings but the German bank argued that the colour red acquired distinctiveness through use. In response to a referral from the German Federal Patent Court, the Court of Justice of the European Union (CJEU) confirmed that abstract, contourless colour trade marks must be treated no differently than other non-distinctive marks as regards their registrability and acquired distinctiveness through use. In particular, European Union Member States may not, under their national laws, assess acquired distinctiveness through use of such marks based solely on a fixed percentage of consumer recognition, but must instead base their assessment on all relevant factors and circumstances. The companies use the tort of passing off to protect while they are educating, so there is still protection. The proviso only applies to 3 (1) b , c, and d !!! disstinct, descrip, annd custom bar...

Educate the consumer- Orange phone company example...

A proposed mark may acquire a distinctive character through being used as a trade mark. Here, if the applicant can show that consumers have come to regard his proposed mark as an indicator of a specific trade origin, then this will be sufficient to override the barriers to registration in 3(1) (b),(c) and (d). In other words, the proposed mark's acquired meaning as a trade mark has therefore acquired a distinctive character AND has overridden its descriptive or customary meaning. The acquired distinctive character of 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.

Letters/ numerals

AD2000 [1997] RPC 168 (AP) Xe TM [2000] RPC 405 (AP) However, you must remember that the key question is the likely perception of the sign by the relevant average consumer: even a simple two digit number may in the circumstances satisfy this ground. See Red plc v WHG (International) [2011] EWHC 62

4- With reference to the date of application. In other words proposed trade mark MUST be distinctive at the application date. See Linkin Park.

AT THE TIME OF REGISTRATION IS VERY IMPORTANT.

How de we assess distinctiveness: The criteria used by the CJEU to assess the distinctiveness of a proposed mark.

According to the CJEU a proposed mark's distinctive character must be assessed:

Slogans

Audi v OHIM (C-398/08) [2010] ETMR 375 "Vorsprung durch Technik" OHIM v Erpo (Case C-64/02) [2005] ETMR 731 Nestle v Mars (C-353/03) [2005] ETMR 1128. Smart Technologies v OHIM (C-311/11) [2012] ETMR 917 Scranage's Application [2008] ETMR 693 (AP) (Here, please note the difficulty that attempts to register advertising slogans as trade marks have encountered with this requirement because of the problems they face of being descriptive and/or with being not distinctive)

• However, a combination of descriptive elements may be not descriptive if it introduces some unusual variation, in particular as to syntax or meaning. In other words the combination must be unusual so that there is a perceptible difference between the neologism and the sum of its parts. Contrast this with Procter & Gamble v OHIM [2002] Ch 82 (CJEU) ("Baby-Dry" for diapers) In Baby Dry the CJEU ruled that a proposed mark should be registered if it consisted of an unusual configuration of descriptive words because relevant consumers would recognise such a configuration as origin-specific and distinctive. See Also the Court of Appeal's judgment in the ESB case: West (David) v. Fullers [2003] EWCA Civ 48. In that case, the court held that the fact that the proposed mark had an "indirect descriptive connotation" did not mean that it should be refused registration since this could be overcome if the consumer needed "some mental activity" to discern the descriptive reference in the proposed mark may be sufficient to overcome this ground as well as making the mark distinctive. Although this case was influenced by the CJEU's apparent blurring of the difference between grounds (b) and (c) in the Baby-Dry judgment, these points are still relevant.

Baby dry was allowed, because it was a semantic invention, there was an indiirect connotation to the goods and services --this judgemet is one of its kind, they appeared to lower the descriptive bar and it was never followed again. Apart from West v fuller case in COA- descriptive trademark will be allowed if they create something unusual, Although this threshold has been lifted up again.

Words, which include: Descriptive words &Laudatory Words

British Sugar v James Robertson [1996] RPC 281 (HC) Procter & Gamble v. OHIM (C-383/99) [2002] ETMR 22 ("Baby-Dry for nappies") West (David) v. Fullers [2003] EWCA Civ 48 ("ESB" for beer) Do any of these give trade origin specific information if the answer is yes it is distinctive, if not not a trademark.

///Why might a proposed mark lack any distinctive character?

But even conventional marks may have a problem. In the case of a proposed word marks the acceptability for registration is likely to turn on whether the word (or word combination) has alternative significance of some kind in relation to the relevant goods or services.

Please note that under these three grounds, a proposed mark must be assessed at the application date and must be judged in relation to the category (or categories) of goods or services for which it is to be registered.

But even if the proposed mark fall foul of one or more of the above mentioned three negative grounds, it could be still registered if it has acquired, before the date of application for registration, a distinctive character as a result of the use made of it. In other words, even if the proposed mark was caught by one of the general negative exclusions it will be allowed registration as long as the owner of the mark proves that the consumers recognise the mark as an indicator of trade origin and not as having any other meaning or significance.) 3 (1) = proviso, and 3 (2)- all in exam!!

The Proviso to Section 3(1): The Proposed Mark has acquired Distinctive Character through Use as a Trade Mark

Cases: Windsurfing Chiemsee [2000] Ch 523 (CJEU) Philips Electronics v Remington [2002] ETMR 81 (CJEU) Dyson v TMR [2003] EWHC 1062 Nestle v Mars [2005] ETMR 1128 (CJEU) (re 'Have a Break') Bovemij Verzekeringen (C-108/05) [2007] ETMR 444 (re "Europolis") Vibe Technologies (16/06/2008) (AP) Nestle v Cadbury [2012] EWHC 2637 (Ch)

Relevant consumers must not be likely to perceive the proposed mark as something else (e.g. a decorative feature) or as giving other information (e.g. indicating the generic nature or some other characteristic of a product) or what could be called "non-origin specific information"

David West v Fullers [2003] EWCA Civ 48 ("ESB" for beer) Nestle v Mars [2003] EWCA Civ 1072 ("Have a Break" for confectionery) Bongrain's Application [2004] EWCA Civ 1690 (a shape for cheese)

What is a descriptive or a customary sign?

Descriptive signs Trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service.

To sum up the proviso

Even if the proposed mark fall foul of one or more of the above mentioned three negative grounds, it could be still registered if it has acquired, before the date of application for registration, a distinctive character as a result of the use made of it. In other words, even if the proposed mark was caught by one of the general negative exclusions it will be allowed registration as long as the owner of the mark proves that the consumers recognise the mark as an indicator of trade origin and not as having any other meaning or significance.)

Also note, that in the case of a CTM, the applicant must show that the proposed mark has acquired a distinctive character within the language group (or groups) to which the refusal of registration relates (Europolis)

However, What is the justification for allowing trade marks that would otherwise be excluded under paragraphs (b), (c) and (d) to be registered if they have acquired a distinctive character through use, noting that if the proposed trade mark fails the first hurddle - i.e. IT IS NOT A "SIGN" "CAPABLE OF GRAPHIC REPRESENTATION"- it cannot be helped by the proviso. See the Cadbury and Scrabble cases, above:

Colours

In the case of colours (or colour combinations) per se, the CJEU has held that the examination must also take account of the public interest in not unduly restricting the availability of colours for other traders who market goods or services of the same type as those in respect of which registration is sought. See Libertel at [54]-[56] and Heidelberger at [41]. The public interest reasoning would apply to other proposed trade marks such as shapes, patterns and surface finishes. In practice, many if not most proposed marks of this kind are unlikely to satisfy this ground unless and until they have become distinctive through use (the proviso to section 3), which we will consider later in the lecture.

What do we mean by "distinctive Character"?

It must be capable of performing the essential function oif the trademark of indicating the trade origin of your goods and services.... "... a mark has distinctive character when it is capable of distinguishing the goods or services of one undertaking from those of other undertakings." (Nestle at [22]) "For a mark to possess distinctive character within the meaning of [para. (b)] it must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from products of other undertakings." (Linde at [40])

The overlap with the section 3(1)(b)

It was at first not clear whether paragraphs (c) and (d) merely reinforce section 3(1)(b) or specify an additional negative exclusion. The CJEU has not been consistent on this point. However, in its most recent judgments, the CJEU has indicated that these sections do reflect a distinct public interest in keeping certain signs and indications such as descriptive and customary terms available for use by all traders. Therefore, they must be treated as independent grounds for refusal and examined separately. See Deutsche SiSi-Werke at [60]-[63]. A proposed mark may therefore, in theory at least, be refused registration under (c) or (d) even if it is found not to be devoid of any distinctive character under (b) since the focus under these 2 grounds is on the interests of other traders in using certain terms or signs in order to convey descriptive (or other non-trade origin) information about their products and thus to be able to compete effectively with the applicant. In other words, the rationale for these grounds is different. See Telefon & Buch at [27].

Foreign Words

Matratzen Concord v Hukla [2006] ETMR 585(CJEU) Tonalite Henne TM [2001] RPC 36 (AP) Note the suggested reforms of these types of trade marks

Personal names/Surnames

Mister Long TM [1998] RPC 401 (AP) Nichols plc v Reg.TM [2005] ETMR 213 (CJEU) Oska's TM Application [2005] RPC 525 (AP) Hotel Cipriani v. Cipriani [2008] EWHC 3032

Shapes/packaging

Philips v Remington [2002] ETMR 955 (CJEU) (the 3-headed rotary shaver as a TM) [tells the consumer - this is a 3 headed shaver rather than Phillips'...CA said - consumer would simply think it was there to do a job]

To sum up, a proposed mark is distinctive if it is successful in giving the marked products bearing it an identity that the average consumer will recognise as commercially exclusive to a certain trader.

Relevant consumers must be likely to perceive the proposed mark as signifying the "trade origin" of the relevant products and enabling to distinguish the products of one trader from another. In other words the trade marks must be capable of performing the essential function of a trade mark as explained in lecture 1.

The overlap between 3(1)(c) and 3(1)(d).

The CJEU confirmed that paragraph (d) extends the ambit of paragraph (c) to include words and other signs that have customary significance in the relevant trade or business. See Merz v Krell [2002] ETMR 231 (CJEU) However, The CJEU has also held that paragraphs (c) and (d) perform the distinct "public interest" function of keeping signs that indicate the characteristics of goods or services freely available for use by all traders. In other words, "to minimise the negative impact that the grant of trade marks may have upon traders working in the same or related fields" (Bently and Sherman). This has been called the requirement of availability

Shapes/packaging

The main problem with shapes is that the average consumer does not, in general terms, tend to perceive the shape of goods and packaging as badge of origin/indicators of trade origin and as a result "the vast majority of such applications are refused"

Famous Names/ Celebrity Names etc

The public may simply see the application of the name as indicating memorabilia rather than indicating the source of the goods. Could also fall foul of 3(1)(c) Elvis Presley TMs [1999] RPC 567 (CA) Jane Austen TM [2000] RPC 879 Diana, Princess of Wales TM [2001] ETMR 25 (TMR) Linkin Park's Application [2006] ETMR 1017 (AP)

To sum up:

The rationale for this ground is ensures that a trade mark can perform its intended essential function in enabling consumers to identify and thus distinguish products on the basis of trade origin. If a registered trade mark cannot perform its essential function, then it cannot generate the economic benefits that it is supposed to generate. Gaining exclusive rights over the proposed mark that lack a distinctive character would not help the applicant to compete on the basis of the quality of their products or to generate goodwill for them. On the contrary a monopoly over a non distinctive trade mark is more likely to distort competition by giving the applicant an unfair advantage. So, novelty, creativity and imagination on the part of the applicant in devising and/or selecting a trade mark are not requirements of distinctive character and therefore should not affect the assessment of the distinctiveness of the proposed mark. Please see OHIM v Erpo [2005] ETMR 731 at [31]-[32]

These absolute grounds are set under Section 3 of the TMA 1994 and Article 3 of the TM Directive

The various "absolute grounds" for refusing registration to a proposed mark are concerned with inherent deficiencies or problems with the proposed mark in relation to any of the products specified in their registration application They perform a different function from the "relative grounds" for refusal, which apply where the proposed mark is identical or similar to an earlier trade mark or infringes rights that a third party has already acquired. In other words, the "relative grounds" reflect and reinforce the grounds of infringement under section 10 of the TMA 1994 and Article 5 of the TM Directive ( The relative grounds will not be discussed in this course).

When does a proposed mark get caught by paragraphs (c) and/or (d)?

This issue is normally raised in the case of NEOLOGISMS

///Why might a proposed mark lack any distinctive character?

This may well be a problem for non-conventional marks since these trade marks are mostly seen as characteristics associated with the product rather than indications of origin

For our analysis, the Section 3 of 1994 TMA will be presented as follows:

Three general negative exclusions, under section 3 (1)(b), (c) & (d) that focus on how relevant consumers are likely to perceive the proposed mark when used on the goods or services for which it is to be registered:

Customary sign

Trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade. ((descripttive term known within the industry, but probably not to the consumer) E.g. USP- unique selling point (there is a massive overlap between descriptive and customary terms in jasem's opinion) --in the exam the question will probably be of a descriptive term

Cases

Windsurfing Chiemsee [2000] Ch 523 (CJEU) Linde (C-53/01 - C-55/01) [2003] ETMR 963 Libertel v Benelux-Merkenbureau [2004] Ch 83 Koninklijke KPN v Benelux Merkenbureau (CJEU) (re "Postkantoor") Heidelberger Bauchemie [2004] ETMR 1289(CJEU) Deutsche SiSi-Werke (C-173/04) [2006] ETMR 486 Nestle v. Mars (C-353/03) [2005] ETMR 1128 ("Have a Break") O2's Trade Mark Application [2011] RPC 629 (AP) Linkin Park's Application [2006] ETMR 1017 (AP) Scranage's Application [2008] ETMR 693 (AP) Vibe Technologies [2009] ETMR 199 (AP)

Names of places

Windsurfing Chiemsee [2000] Ch 523 (CJEU)- a well-known lake in Bavaria Nordic Sauna's TM [2002] ETMR 210 (AP)

Words or combination of words that are made-up, meaningless, arbitrary or suggestive in relation to the relevant goods or services are more likely to succeed.

Words combination of words that are descriptive, laudatory or customary in relation to the relevant goods or services are likely to have difficulty. Note the difficulty that attempts to register advertising slogans as trade marks have encountered with this requirement

In a nutshell

Words or combination of words that are made-up, meaningless, arbitrary in relation to the relevant goods or services are more likely to succeed Words or combination of words that are descriptive, laudatory or customary in relation to the relevant goods or services are likely to have difficulty

Colours per se (i.e. not confined within a logo or device)

[Note the American case of Louboutin v Yves Saint Laurent INC XYZ 10 which re-confirmed the supreme court decision in Qualitex Co. v. Jacobson Products Co. (93-1577), 514 U.S. 159 (1995). In these 2 cases it was held that a single colour can be a valid trade mark "where the colour has attained 'secondary meaning' and therefore identifies and distinguishes a particular brand and thus indicates its 'source"].

Another way of approaching this exercise is to consider the likely intention of a consumer who expresses a request for the relevant product using the proposed mark: was the request "origin-specific" or "origin-neutral" (i.e. brand specific or brand neutral)?

brand neutral)? Baby-Dry (Case C-383/99) [2002] Ch 82 (CJEU) Cycling Is ... TM Applications [2002] RPC 37 (AP)