(2) Absolute Grounds forRefusal of Registration

What critique did Ilanah Fhima, 'Consumer Value as the Key to Trade Mark Functionality' (2022) 85 Modern Law Review 661 offer on the functionality exclusion?

p. 663: the formalist distinction between the three different forms of functionality identified in the three sub-articles does not accurately reflect the core interest that functionality should be seeking to protect: what competitors need access to in order to compete, which in all three sub-articles is ultimately based on what consumers value p. 664: 'value' remains a vague term

What are the consequences of the expansion of the subject matter that can be afforded trademark protection?

-Competition: As even though robots may be able to distinguish between certain shades, that is not how human perceive it, and thus by taking it out of commons it may exhaust which colours exist ›Ex. Libertel (C-104/01) re registering pantone orange colour, court saying interest should remain available to all -Overlap: Ex. shapes really being patent law, concern that trademark law would be used to gain protection of matter which should really be dealt with in another IP regime, or a move throughout them to continue exclusivity -Subjectivity: Should we now also include the non-2D abstract forms of tastes and smells? Competitors need to be able to know what to avoid -Infringement can extend to similar signs: As based on confusion, if you're colour is on the register it also includes colours similar to it -Whether different types of subject matter require different rules Have legislative instruments and judicial interpretations dealt adequately with these issues?

(b) Non-distinctive trade marks: which are devoid of any distinctive character

-Distinctiveness can be inherent or acquired post-registration, as well as lost (the concept of 'genericide') ➤Acquired distinctiveness almost always required for colours: Libertel, [40] and [66] ›Test for AD: Used consistently and extensively by the company , and was associated with their services in the minds of consumers? -Likewise for shapes: Consumers are unlikely to perceive them as indicating trade origin ➤Consumers do not expect to eat trade marks: Bongrain's Application [2005] RPC (14) 306, [29] per Jacob LJ (floral shape of cheese) -A distinctive element can compensate for less distinctive elements: By taking attention away from less distinctive ›Consumer sees distinctive elements ›So ex. a figuratively designed mark saying "creamy" (inherently non-distinctive as descriptive) Tests for inherent distinctiveness (indicating origin) -Note: Same test applies to different marks, but applied slightly differently (so here said "shape" etc. but applicable to all, just in that case) ➤Where the shape departs significantly from the norm: Henkel v OHIM (C-457/01 P), [37]-[39] (shape of dishwasher tablets) ➤Factors for whether mark differs significantly from the norms and customs of the sector: The London Taxi Corporation Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729, [45] i. Determine what the sector is ii. Identify common norms and customs, if any, of that sector -In some sectors, ex. social media, it is the norm that sounds are origin indicating iii. Decide if significant departure ➤Sound must have certain resonance, enabling target consumer to perceive and regard it as a trade mark: Globo Comunicação e Participações S/A v EUIPO (T-408/15), [45] ›Here No: too simple, sounds like a ringtone and will generally go unnoticed -Distinctiveness can be thought of as a spectrum that moves from purely descriptive marks to invented words -Hence a range from SOAP (for soap) to KODAK (for film), US divisions are helpful (photo) -Distinctiveness must be judged by reference to the goods or services claimed from the the perspective of the 'average consumer' of those goods and services -Hence APPLE for fruit very different from APPLE for computers or sound recordings -Bently et al, 6th edition, pp. 992-994: "The primary function of [the inherent distinctiveness] exclusion is to exclude marks that do not even perform the 'distinguishing function' [indication of trade origin]." -Meaning: Distinctive character can act as a badge of origin -Test of Distinctive Character: i. 'Assess the sign, as applied for ii. with reference to the goods or services specified ➤All relevant facts and circumstances: AS v Deutsches Patent und Markenamt (C-541/18) (below!) ›Can include the customs in the economic sector concerned: Uses that are practically significant ›Unlikely uses are not relevant (given absence of actual or intended use) iii. from the perspective of well-informed, reasonably observant, and circumspect consumers for those categories of products.' -Underlying policy: Concerns consumer reaction, i.e. the sign functions as an indicator of origin ➤SAT.1 v OHIM (C-329/02 P) [2005] ETMR 20, below! ➤s. 1(1)(b) does not add to this distinctiveness element: Philips v Remington (C-299/99)

General Notes on (b)-(d)

-Each limb is distinct: Lack of distinctiveness is a meta explanation for all three limbs -Mark can fall into more than one ground -Each is assessed as the time of the application -All grounds are subject to proviso regarding acquired distinctiveness, relevant at 2 points: i. On Application: To secure registration of a sign that would otherwise be excluded by absolute grounds below ii. To protect a registration from an invalidity attack under s. 47 (never should have been registered): Post-registration acquired distinctiveness applied, assessed now -In assessing Acquired Distinctiveness, consider evidence overall: [49] -Test of Reliance and factors of Acquired Distinctiveness: [51]-[52] ➤Windsurfing Chiemsee (Joined Cases C-108 & C-109/97) ›Geographical names can be registered if they have acquired a new significance: Usually require long-standing and intensive use if name is well known ➤There must be consumer reliance on mark, recognition does not suffice: Nestlé v Cadbury [2012] ➤On reliance ('policy handbrake'): Unilever's Trade Mark Applications [2003] RPC 25, [33] ➤On distinction between 'recognition and association' and 'perception' that the goods originate from a particular undertaking: Nestlé v Cadbury [2017] EWCA Civ 358 ›[82]: Reliance is a behavioural consequence of perception -Just because shape is highly recognisable does not mean it is a badge or origin: ➤No Acquired Distinctiveness: The London Taxi Corporation Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729 ➤Birkenstock's TM Registration, 2019 WL 00427292

(c) Descriptive 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, the time of production of goods or of rendering of services, or other characteristics of goods or services

-Underlying policy: Concerns consumer response, the need to keep free, i.e. other traders need to use that sign ➤Windsurfing Chiemsee (Joined Cases C-108 & C-109/97) [1999] ETMR 585, [25]: '...Article 3(1)(c) therefore prevents such signs and indications from being reserved to one undertaking alone because they have been registered as trade marks' Test for Descriptiveness [31]: To determine whether a geographical name can be registered, assess whether the name 'designates a place which is currently associated in the mind of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future.' ➤Extended to other other possibly descriptive indications: Koninklijke KPN Nederland NV v Benelux-Merkenbureau (C-363/99) (Postkantoor) ›[56]: 'Determine whether the trademark currently represents, in the mind of the relevant class of persons, a description of the characteristics of the goods or services concerned or whether it is reasonable to assume that that might be the case in the future' ➤Restated in a more succinct way: Wrigley v OHIM (C-191/01 P) (Doublemint), [35] -A distinctive element can compensate for less distinctive elements: By taking attention away from less distinctive ›Consumer sees distinctive elements ›So ex. a figuratively designed mark saying "creamy" (inherently non-distinctive as descriptive) -Combination of non-distinctive, descriptive marks ➤Distinctive, 'Baby Dry' for nappies: Procter & Gamble v OHIM (C-383/99 P), 'syntactically unusual juxtaposition' ›"Differ from common parlance describing essential characteristics?" ➤Distinctive, 'SAT.2' for satellite television: SAT.1 v OHIM (C-329/02 P), Assess the combination as a whole ➤Non-distinctive, 'Biomild' for yoghurt: Campina Melkunie BV v BTMO (C-265/00), Existence of synonyms that designate the same characteristic (yoghurt is biological and mild) is irrelevant at [42] ➤Non-distinctive, 'Doublemint' for chewing gum: Wrigley v OHIM (C-191/01 P), Descriptive if 'capable of being used by other economic operators to designate a characteristic of their goods and services' at [35] -Recent UK Examples: ➤Distinctive, 'Jumpstar' for batteries, car batteries and allied battery: Data Marketing & Secretarial v S&S Enterprises [2014] EWHC 1499 (IPEC) ➤Distinctive, 'Footware' for computer hardware and software, telecommunication services and cloud-based services: Puma v Nike Innovate [2021] EWHC 1438 (Ch) -Approach to Foreign Words extended below! -Note: The distinction of underlying policy between (b) and (c) has fallen down for colours ➤The need to keep free is also relevant to para (b): Libertel, [60]

What was said in SAT.1 v OHIM (C-329/02 P) [2005] ETMR 20?

-[23]: Article 7(1)(b) of the regulation is thus intended to preclude registration of trade marks which are devoid of distinctive character which alone renders them capable of fulfilling that essential function [of enabling the consumer, without any possibility of confusion, to distinguish the product or service from others which have another origin]. -[25]: '...[It] is important to observe that each of the grounds for refusal to register listed in Article 7(1) of the regulation is independent of the others and requires separate examination. Moreover, it is appropriate to interpret those grounds for refusal in the light of the general interest which underlies each of them' -[36]: Secondly, the contested judgment relies on a criterion according to which trade marks which are capable of being commonly used, in trade, for the presentation of the goods or services in question may not be registered. That criterion is relevant in the context of Article 7(1)(c) of the regulation but it is not the yardstick against which Article 7(1)(b) thereof should be judged. By considering...that the later provisions pursued an aim which is in the public interest, which requires that the signs they refer to may be freely used by all, the Court of First Instance deviated from taking into account the public-interest criterion referred to in paragraphs 25 to 27 of the present judgment.

What was said in Wrigley v OHIM (C-191/01 P) (Doublemint)?

-[32]: a sign must be refused registration 'if at least one of its possible meanings designates a characteristic of the goods or services concerned.' -[35]: The test is not whether the mark is exclusively descriptive but whether it is 'capable of being used by other economic operators to designate a characteristic of their goods and services'

What is the approach to combination of non-distinctive (descriptive) foreign words as trademarks?

1. A consumer-focused approach: How would the average consumer would understand/read the foreign word mark? Matratzen Concord AG v Hukla Germany SA (C-421/04) -Here, German word for mattress in Spain -Would they have some understanding of the word, or is it purely alien and arbitrary? -If latter: More likely to be distinctive -If former: More likely to be descriptive, go to 2. -Note: Average consumer is not purely empirical, but underlined with policy reasoning -Ex: Caffe Nero v EUIPO, T-37/17 2.Translate and apply this translated meaning to whether descriptive or not! -This strict doctrine of foreign equivalents (only considering 2.) applies to Benelux application (Belgium, Luxembourg, The Netherlands): As said in their statute! -Such as 'postkantoor' for paper, advertising, insurance, postage stamps, construction, telecommunications: Koninklijke KPN Nederland NV v Benelux-Merkenbureau (C-363/99) (Postkantoor) Compare to: Australia: Cantarella Bros v Modena Trading [2014] HCA 7, Distinctive because priority given to consumer misunderstanding

What is the Justification for functionality exclusions?

1. Desire for channeling different IP right one IP regime: Getting shape marks when should be getting in the design system (wrong type of IP regime) -For aesthetic reasons 2. Fraud on the public: After design protection expiring moving on to trademark protection: Overlapping IP rights -Mark never moving into public domain 2. To Support Competition -This justification is the most compelling (Fhima, p. 663) -Especially since in trade mark can renew indefinitely (given it has use) -And there's limited supply: Concern that would run out of subject matter in the commons, that those who get mark would get good and everyone else shit -Ilanah Fhima, 'Consumer Value as the Key to Trade Mark Functionality' (2022) 85 Modern Law Review 661, page 661: 'Competitors are disadvantaged if they are unable to offer goods which include the characteristics that consumers seek and registration then restricts the consumer's choice of supplier for equivalents products. Thus, trade mark law denies protection for certain characteristics of goods in the interests of free competition.' -Beebe & Fromer, 'Are We Running Out of Trademarks? An Empirical Study of Trademark Depletion and Congestion' (2018) 131 Harvard LR 945

What is the structure of the TMA 1994? Structure of answering Problem Questions on Trade mark Applications ?

1. Is it a sign? Go through s. 1 TMA 1994 -Where unusual, apply Sieckmann criteria -For colours focus on Nestle v Cadbury cases, and if pantone then will satisfy all of Sieckmann 2. Refused by an Absolute ground? -First go through s. 3(1) TMA (a) Non-distinctive: Only very exotic marks (b) Descriptive (c) Generic -Subsection (1) has the exception of acquired distinctiveness (can overrule grounds for refusal) -Secondly go through functional grounds in s. 3(2) TMA (a) Inherent/Natural Functionality (b) Technical Functionality (c) Commercial/Aesthetic Functionality -Subsection (2) does not have the exception of acquired distinctiveness (cannot overrule functionality grounds)

In which way can the register be critiqued?

1. It doesn't fully reflect the scope of rights enjoyed by the proprietor: As the mark extends to similar marks 2. Legal help is needed in order to understand the scope of protection provided by the register Burrell & Handler, 'Making Sense of Trade Mark Law' [2003] IPQ 388

What happened in Hauck v Stokke (C-205/13)?

A Dutch court invalidated the mark because: -The shape of the mark (chair) was determined by the 'very nature of the product—a soft, comfortable, reliable children's chair': Invalid under first indent -The 'attractive appearance gave substantial value': Invalid under third indent -The first indent has important work to do -[27]: It 'may apply to a sign which consists exclusively of the shape of a product with one or more essential characteristics which are inherent to the generic function or functions of that product and which consumers may be looking for in the products of competitors' -[34]: The perception of the public may be relevant to determining the essential characteristics of the sign -[32]: This third indent is not just about aesthetic functionality but includes other characteristics -'as there is otherwise a risk that products which have essential functional characteristics as well as a significant aesthetic element will not be covered...' -As Dinwoodie has observed, this text is ambiguous. It could mean that an aesthetic shape can fit within the exclusion, even if it has non-aesthetic characteristics that add value, or it could mean that those other (valuable) non-aesthetic characteristics also fit within the exclusion's scope (G. Dinwoodie, 'Non-Traditional Marks in Europe: Conceptual Lessons from their Apparent Demise?' NYU Colloquium, 4 February 2019 at http://www.law.nyu.edu/sites/default/files/ upload_documents/Graeme%20Dinwoodie.pdf (last visited 7 June 2021) 20-22.) -However, this ambiguity was resolved by Gömböc where the court opted for the latter, wider reading of value -'...In that case, the right conferred by the trade mark on its proprietor would grant that proprietor a monopoly on the essential characteristics of such products, which would not allow the objective of that ground for refusal to be fully realised.' -[35]: Other relevant factors to when third exclusion applies, such as the nature of the category of goods concerned, the artistic value of the shape in question, its dissimilarity from other shapes in common use on the market concerned, a substantial price difference in relation to similar products, and the development of a promotion strategy which focuses on accentuating the aesthetic characteristics of the product in question -[36]: There may be several characteristics, each of which give substantial value ›[43]: No Mosaicking: Art. 3(1)(e) must be interpreted as meaning that the grounds for refusal of registration in the first and third indents may not be applied in combination -Meaning: a sign will only be denied registration where its shape or other characteristic is fully excluded by one ground Commentary -Ilanah Fhima, 'Consumer Value as the Key to Trade Mark Functionality' (2022) 85 Modern Law Review 661, p. 693: Thus, looking at price alone is unhelpful unless we can unpick what it is that is pushing the price up [technically or aesthetically superior, or brand name?] -On promotion strategy (advertising): The danger with this factor is that it effectively places the analysis of how valuable the characteristic is into the hands of the person who is trying to protect it as a trade mark rather than viewing value through the eyes of consumers. Would-be trade mark owners could, in time, learn not to overstate the value of the characteristic in their advertising

What was said in Procter & Gamble v OHIM (C-383/99 P) (Baby Dry)?

Decision -[40]: does the combination differ from common parlance used to describe the essential characteristics of the goods amongst the relevant class of consumers? -[43]-[44]: The mark BABY DRY is distinctive, it is unusual in that it doesn't "roll off the tongue"; would not be used in common parlance -It is syntactically unusual because the adjective comes after the noun -Because, although it alludes to function of the goods but that's not enough to make it descriptive given the 'syntactically unusual juxtaposition' of the words

What was said in Lego Juris v OHIM (C-48/09 P)?

Does fall within functionality exlusion! That the shape has some functional role is not enough to be caught by the exclusion -[51]: A mark will consist 'exclusively' of a shape which is necessary to obtain a technical result when 'all the essential characteristics of a shape perform a technical function, the presence of non-essential characteristics with no technical function being irrelevant' In other words: 1. Shape's essential characteristics? 2. Do these characteristics perform a technical function? -[72]: In contrast, the exclusion will not apply if the shape contains an important non-functional element -[71], [76]: Relevant factors for determining the essential characteristic include visual inspection, expert opinions or surveys, and possibly (though not definitively) public perception

What happened in Société Des Produits Nestlé SA v Cadbury UK Ltd [2022] EWHC 1671 (Ch)?

Facts -'362 mark - 'the colour purple (Pantone 685C) ... applied to the whole visible surface of the packaging of goods'. -'361 mark - 'the colour purple (Pantone 685C) ... applied to the packaging of goods'. -'822 mark - 'the colour purple (Pantone 685C)' -Nestle again opposes all three of these applications: Not signs! Decision -362 mark is OK because is applied to the whole visible surface of the packaging of goods -Hearing Officer says no limitation in mark 361 is problematic; Justice Mead agrees: Upholding previous decision -Likewise for mark 822: Multitude of form problem still applies, however, Justice Mead disagrees, so it is OK! -Because, this wording is the same as in Libertel -Justice Mead [38]: 'The Hearing Officer's decision effectively would mean that a colour per se mark could only validly be a sign if accompanied by a limitation to a single manner of use such as "the whole surface of the packaging". That is inconsistent with the CJEU's case law that a colour per se "without contours" can validly be a sign...' -'... the Decision would have the effect that no, or almost no, Libertel form mark would ever be valid. Although the ratio of the Court of Appeal in CoA 2013 did not strictly extend to Libertel form marks, in my view the Court had them well in mind, and against a backdrop of considered reasoning the judgments clearly imply that they could potentially comply with the requirements for a sign.' -Why does he say this? There is longstanding (20 years from Libertel) authority where CJEU says so! Outcome -Can be interpreted as qualifying the acceptance that single colours can be registered

What happened in Matratzen Concord AG v Hukla Germany SA (C-421/04)?

Facts -'Matratzen' as a mark for Spanish furniture -Germany wanting to stop as only means mattress (highly descriptive, impossible to get mark for) Decision -CJEU employed a consumer-focused approach -Looking at average consumer, in this case not enough consumer know in Spain would know what it meant -Not similar to Spanish word for mattress -And traders in the field do not have specific knowledge of the word -[24]: When assessing distinctiveness and descriptiveness, take into account 'the perception of the relevant parties' in the trade and/or 'average consumers of the said goods or services, reasonably well-informed and reasonably observant and circumspect, in the territory in respect of which registration is applied for...' -In Spain, the use of a foreign word (unless similar to the Spanish equivalent) is perceived as any fanciful arbitrary word -[25]: Possibility of distinctive nature varying throughout Member States: It is possible that, because of linguistic, cultural, social and economic differences between the Member States, a trade mark which is devoid of distinctive character or descriptive of the goods or services concerned in one Member State is not so in another Member State...'

What happened in Caffe Nero v EUIPO, T-37/17?

Facts -Application for mark on right to cover (i) tea, coffee, cocoa and herbal tea (Class 30); and (ii) Retail store services connected with coffee and tea (Class 35) Issue -Caffe Nero means black coffee in Italian -The approach taken by CJEU: 1. Apply Matratzen: Average consumer? -Probably wouldn't know 2. Strict Benelux approach of translation -Upon being translated, the mark is descriptive 3. Effect of combination with the distinctive writing? -Does become distinctive 4. Possibility of deceptiveness? -Tea, herbal tea and cocoa

What happened in AS v Deutsches Patent und Markenamt (C-541/18)?

Facts -Application to have phrase '#darferdas?' trademarked for inter alia, t-shirts Decision -Application rejected -This does not look very distinctive, just a statement! -Court recognises the importance of considering the consumer perception of the mark in determining distinctiveness: Might be evidence of mark already being used! -So, take 'all the relevant facts and circumstances' into account -This can include the customs in the economic sector concerned: •Uses that are practically significant are relevant •Uses that are unlikely are not relevant in the absence of evidence of actual or intended use

What happened in Birkenstock's TM Registration, 2019 WL 00427292?

Facts -Application to invalidate a sole device mark under TMA s. 47 -The bottom of the Birkenstock shoe -Birkenstock showed evidence: Sales involved mark, traders had pictures of the sole -Hearing officer: mark is invalid, not a badge of origin Decision -Appointed Person James Mellor QC dismisses the appeal -[42]: Accepts it 'can be difficult and expensive to produce evidence which is sufficient to meet the required standard, particularly when one is dealing with an unconventional sign like this Mark' -Normal to have pictures of sole when selling -Notes issues with surveys -Suggests the 'does the trader trust the sub-brand' test

What happened in Libertel (C-104/01)?

Facts -Application to register the colour orange per se (just the colour no limitations/statements regarding how or where the colour is applied) for telecommunications services Decision -[27]: '...a colour per se cannot be presumed to constitute a sign. Normally a colour is a simple property of things. Yet it may constitute a sign. That depends on the context in which the colour is used. ...' -As colour are not usually inherently distinctive Commentary -Doesn't this also cover a squillion permutations? -Since applies to words, logos etc. -Was the Court of Appeal in As Société Des Produits Nestlé SA v Cadbury UK Ltd [2022] EWHC 1671 (Ch) implicitly rejecting Libertel, saying that [38]: That is inconsistent with the CJEU's case law that a colour per se "without contours" can validly be a sign...'

What happened in Société Des Produits Nestlé SA v Cadbury UK Ltd [2012] EWHC 2637 (Ch); [2013] EWCA Civ 1174?

Facts -Application: "The colour purple (Pantone 2685C), as shown on the form of application, applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods." -Cadbury also filed evidence of acquired distinctiveness -Nestle opposed this: Mark is not a sign! Decision -Whole visible surface accepted -CA very concerned with the wording of "predominant colour applied to the whole visible surface" -Because, once saying "predominant colour" it indicates that there are other colours (other material!!) -And so is not an application for an unchanging single colour as in Libertel -[55]: In brief, the description of the mark as including not just the colour purple as a sign, but other signs, in which the colour purple predominates over other colours and other matter, means that the mark described is not "a sign." There is wrapped up in the verbal description of the mark an unknown number of signs. That does not satisfy the requirement of "a sign" within the meaning of Article 2, as interpreted in the rulings of the CJEU, nor does it satisfy the requirement of the graphic representation of "a sign", because the unknown number of signs means that the representation is not of "a sign." The mark applied for thus lacks the required clarity, precision, self-containment, durability and objectivity to qualify for registration Commentary -Note Société Des Produits Nestlé SA v Cadbury UK Ltd [2022] EWHC 1671 (Ch): Cadbury puts in several other marks!

What was said by the court in Eurocermex SA v OHIM (C-286/04)?

Facts -Attempt to register a mark comprising a bottle of beer (no corona label as on the right) with a slice of citrus fruit in its stem at the point of sale Decision -Application was rejected, upheld first instance -First instance (T-399/02) [32]: "with more particular reference to the structure of the mark applied for, which is distinguished by the fact that the slice of lemon is plugged in the neck of the bottle, it is difficult to imagine other ways of combining those elements in a single three-dimensional form...it represents the only way in which a drink can be decorated with a slice or a piece of lemon when the drink is consumed directly from the bottle" -There is no distinctiveness: The only way to drink directly from the bottle in this way is to put the citrus as such, as well as the fact that shape is a generic bottle shape -However, the picture with the corona label is on the register, because of the distinctiveness of the label Commentary -This may cause people to think the citrus wedge is also protected (as showed on the register), and so inadvertently creating protection for it although first instance specifically said it lacked distinctiveness

Happened in in Sieckmann (C-273/00)?

Facts -Attempt to register an odour: providing an odour sample, a chemical name and structural formula, and a description of the scent -German court rejects this, asking CJEU whether this can satisfy the (now old) requirement of a graphic representation on the register -Since the word "sign" doesn't actually exclude odours -Note: Sieckmann provided two graphic representations in the name of the formula and the written description Decision -[46]: The graphic representation "must enable the sign to be represented visually particularly by means of images, lines or characters, so that it can be precisely identified" -[47]: This interpretation "is required to allow for the sound operation of the trade mark registration system -In order to: 1. Define the mark (the subject matter) itself 2. To facilitate the administration of the mark for relevant authorities 3. Provide information for other traders (so they know what to avoid) -Sieckmann criteria [51]-[54], the graphic representation must be (to average consumer): i. clear ii. precise iii. self-contained iv. easily accessible v. intelligible vi. durable vii. objective -And applying here, none of these factors are met: So the odour cannot be registered, not because it is not a sign, but because it cannot be represented on the register -In other words: The chemical formula for a smell is not sufficiently intelligible or accessibly -Page 298: 'Remington suggest, though this is not at the forefront of their argument, that the shape is not a "sign" at all. What is a "sign"? Can the thing itself also be a "sign"? If one is not careful one is likely here to end up discussing metaphysical points - hardly the sort of thing appropriate for a law designed for men of commerce. I think a "sign" is anything which can convey information. I appreciate that this is extremely wide, but I can see no reason to limit the meaning of the word. The only qualification expressed in the Directive is that it be capable of being represented graphically. ...' Commentary -This is an example of registration affecting the contours of the law: Perhaps the smell was distinctive, but it physically cannot be represented on the register!

What was said in Heidelberger (C-49/02)?

Facts -Attempt to register the combination of blue and yellow Decision -CJEU notes issues with colours and combinations of colours constituting a sign but notes that a colour(s) can be capable of being a sign: [23] -The need for there to be a sign is, in particular, 'to prevent the abuse of trade mark law in order to obtain an unfair advantage': [24] Ways to deal with a problematic registration (can "knock it out"): 1. The graphic representation stage -The breadth of this registration, referring to the colours in 'every conceivable form', may be said to not meet the graphic representation requirement: [34]-[35] 2. The distinctiveness inquiry -Colours are not normally distinctive, although they may acquire distinctiveness: [38]-[39] 3. And there are other absolute grounds for refusal of registration -Even if a combination of colours satisfies the requirements of Art. 2, the mark must still satisfy other requirements, including those in Art. 3. This assessment must take account of the need to keep free: [41]

What happened in The London Taxi Corporation Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729?

Facts -C has rights to shape of UK taxi car - that D's shape would infringe the trademark (very early stages of production) Issues -One question: Were these marks inherently distinctive? Decision -Court of Appeal agrees with High Court: No! -LJ Floyd, test for determining whether a mark differs significantly from the norms and customs of the sector: i. determine what the sector is -Taxi cars! ii. identify common norms and customs, if any, of that sector -Wheels, sign that says "taxi" wtc. iii. decide whether the mark departs significantly from those norms and customs -No: Has four wheels, superstructure, sign etc. Trial judge [2016] EWHC 52 (Ch): Considered acquired distinctiveness by reference to taxi drivers and taxi hirers -Taxi drivers do not perceive cars as emanating from claimant because of the shape; and taxi hirers don't care about the manufacturer -Arnold J in trial held that the shapes did not have acquired distinctiveness -He also considered (obiter) that would have been invalid on basis that they consisted exclusively of the shape that gives substantial value to the goods (third indent), appliying Court of Justice guidance in Hauck: -The average consumer (a taxi driver) would 'recognise the shape as that of a London taxi' and place a value on it -Car body shapes have aesthetic qualities and many people preferred the rounded shape of the claimant's mark -The design was regarded as 'iconic' and a 'design classic' -The shape of the claimant's car was dissimilar to that of other cars -The manufacturer promoted its taxis as being 'iconic', and thus emphasised their appearance -The EWCA upheld the decision of the trial judge

What happened in Windsurfing Chiemsee (Joined Cases C-108 & C-109/97) [1999] ETMR 585?

Facts -C sells clothing, shoes, sporting goods under sign "Chiemsee": A geographical location in Germany -Does not have right to word alone, but does where it is along with other vice marks -C bringing infringement action Issues -Were the marks inherently distinctive? -And because it is geographical, can they be registered? Decision -[31]: To determine whether a geographical name can be registered, assess whether the name 'designates a place which is currently associated in the mind of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future' -Consumer perspective! On Acquired Distinctiveness: -[49]: Take an overall assessment of the evidence -[52]: Does 'the relevant class of persons, or at least a significant proportion thereof, identify goods as originating from a particular undertaking because of the trade mark'? -[51]: Not from the perspective of consumers, but the below factors: (a) market share (b) 'how intensive, geographically widespread and long-standing use of the mark has been'; (c) 'the amount invested by the undertaking in promoting the mark'; (d) 'the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking'; and -Very similar to ultimate test in [52] (e) statements from industry, trade and professional associations -Note: These are not hardline considerations, all type of evidence can be brought forward -The Court of Justice indicates that opinion polls may be used to assist the analysis, but it does not suggest that such polls are necessary -Indeed, you will see in much trade mark case law a general distrust of survey evidence -One reason is the concern that surveys are often poorly administered and contain leading questions -Another question is whether surveys yield legally useful results. Outcome -Extended to other possibly descriptive indications by Koninklijke KPN Nederland NV v Benelux-Merkenbureau (C-363/99) (Postkantoor)

What happened in Cantarella Bros v Modena Trading [2014] HCA 7?

Facts -Considers registration of ORO and CINQUE STELLE for coffee (right) Decision -The marks were 'inherently adapted to distinguish' (the Australian test) -Despite actually being descriptive, the court held them registrable and distinctive -They did this on the basis that consumers are likely to understand them as trademarks -As a small number of people in Australia were likely to know Italian Commentary -Burrell & Handler, Australian Trade Mark Law (2nd ed, 2016), pp. 116-117: this approach 'prioritises general consumer incomprehension as to the meaning of certain signs over the interests of competing traders who do understand such signs to be descriptive and would want to use them descriptively, but provides no clear [justification] as to why this is appropriate.'

What was said in Nestlé v Cadbury [2017] EWCA Civ 358?

Facts -Nestlé provided survey evidence (500 people) that at least half the people surveyed thought that the picture depicted a KitKat product (right) -Cadbury argued that this was merely functional, found also by the registrar -The rectangular 'slab' shape results from the nature of the bar of moulded chocolate (indent one), the presence, position and depth (and number of) of the grooves were necessary to receive a technical result (indent 3) Decision -Arnold J referred to CJEU on whether the grounds can be combined (mosaicked) and whether functionality exclusion can apply to manufacturing process -CJEU, [48]: No mosaicking; '[R]egistration may be refused only where at least one of those grounds is fully applicable to the sign at issue' -CJEU at [57]: Grounds for refusal in second indent does not refer to 'the manner in which the goods are manufactured' -CJEU concludes the KitKat is not functional, because argument was grounded in combination of indent 1 and 2: Not excluded by one limb! -So, on return to UK court, Cadbury conceded that the functionality objection was not made out -No Acquired Distinction -Registrar: there is recognition, but that is not enough; consumers must rely on that shape -Here, there was no reliance on the fact that consumers recognised that product as KitKat -And so despite the survey, there was no acquired distinctiveness on the shape -Noting that packaging is not opaque: Cannot see shape -Kitchin LJ: Specifically at [77]-[84] -Discusses the distinction between 'recognition and association' and 'perception' that the goods originate from a particular undertaking (including citing Jacob J in Unilever) Attempts to reconcile the CJEU and UK analysis -[80]: The perception test asks, in essence, whether the mark itself is seen as a badge of origin -[82]: Although the CJEU did not use the term 'reliance', 'perception by consumers that goods or services designated by the mark originate from a particular undertaking means they can rely upon the mark in making or confirming their transactional decisions. In this context, reliance is a behavioural consequence of perception.'

What happened in Philips v Remington (C-299/99)?

Facts -Philips says our shape mark of the three-headed shavers (PHILISHAVE) has been infringed -Remington attacks this mark and claims its invalidity Decision -[78]-[79], Justification for functionality exclusions: Need to keep free, concerns about competition, do not want to give proprietor monopoly on technical solutions (functional characteristics users are likely to seek in competing products) -[81]-[83]: Causative not mandatory notion of 'necessary to obtain a technical result' -Meaning: Does not matter if same technical result can be achieved through other shapes, that other shapes do same thing -Aldous J at 823 in CA Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC 809: 'The subsection is only concerned with shapes having 'substantial value'. That requires a conclusion as to whether the value is substantial, which in my view requires that a comparison has to be made between the shape sought to be registered and shapes of equivalent articles. It is only if the shape sought to be registered has, in relative terms, substantial value that it will be excluded from registration.' -Ilanah Fhima, 'Consumer Value as the Key to Trade Mark Functionality' (2022) 85 Modern Law Review 661, p. 691: While this definition is tautologous, its intention is clear: something beyond mere 'normal' value is required to trigger the exclusion. Outcome -A single sign can convey two meanings at the same time without contradiction -Here, even though the PHILISHAVE was indicative of origin, there was a need for competitor access to the shape, rendering it technically functional

What happened in Dyson (C-321/03)?

Facts -The mark applied for was: 'a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation'. -No attempt to limit the registration to any particular shape or any particular colour (only transparency) Decision The Court of Justice covers quite a lot of ideas in concluding that there is no sign: -[37]: the subject-matter of the application...is capable of taking on a multitude of different appearances and is thus not specific: Since no reference to shape -[38]: Given the exclusivity inherent in trade mark right, the holder of a trade mark relating to such a non-specific subject-matter would obtain an unfair competitive advantage... since it would be entitled to prevent its competitors from marketing vacuum cleaners having any kind of transparent collecting bin on their external surface, irrespective of its shape. -[39]: It follows that the subject-matter...in actual fact, a mere property of the product concerned and does not therefore constitute a "sign" within the meaning of Article 2M -This last point meaning that it does not do the essential function of indicating origin

What was said in Gömböc Kutató (C-237/19)?

Facts -[11]: 'a convex monostatic object made from homogeneous material, which has a single point of stable equilibrium and a single point of unstable equilibrium, that is to say, two points of equilibrium in total, the shape of which itself ensures that the object always returns to its position of balance' -Decorative product Decision -In applying indent (ii), the tribunal is not confined to the representation - it may investigate further •Similar reasoning: Yoshida (Joined Cases C-337/12 P to C-340/12 P) -Consumer perception may be relevant when identifying the essential characteristics in indent (ii), however, it is not relevant to assessing whether they perform a technical result -Compare indent (iii), where consumer response is relevant to both stages of the inquiry -[40]: The application of this ground is based on 'an objective analysis, intended to demonstrate that the shape in question, on account of its characteristics, has such a great influence on the attractiveness of the product that restricting the benefit of the shape to a single undertaking would distort the conditions of competition on the market concerned' -[19]The CJEU identified the value inherent in the Gömböc as its being 'the tangible symbol of a mathematic discovery'. -While this was not aesthetic value, the Court found it could nonetheless fall within substantial value exclusion -Saying at [46]; It should be borne in mind, in this regard, that the concept of a "shape which gives substantial value to the goods" is not limited to the shape of goods having an exclusively artistic or ornamental value. The question as to whether the shape gives substantial value to the goods may be examined on the basis of other relevant actors, including, inter alia, whether the shape is dissimilar from other shapes in common use on the market concerned -Also says that a cumulation of rights is permitted: Object can have multiple forms of IP protection! Commentary -Ilanah Fhima, 'Consumer Value as the Key to Trade Mark Functionality' (2022) 85 Modern Law Review 661, page 665: However, Gömböc went beyond sensory value, instead concluding that, given its mathematical value (as the only known mono-monostatic homogeneous object13), the sign's use should not be limited to a single operator. Thus it seems clear that the EU substantial value exclusion is not limited to aesthetic shapes -p. 672 This expansive, possibly open-ended approach to value, allows Article 4(1) (e) (iii) to move away from formalistic conceptions of value and instead to embrace the wide range of different types of value sought by consumers and identified in the marketing and design literature

What was said in Bang & Olufsen v OHIM (T-508/08)?

Included some indications that the exclusion could have potentially broad application to design-conscious products [75]-[77]: Where a product has a mixture of aesthetic and non-aesthetic characteristics that each bestow value, the presence of the non-aesthetic characteristics does not prevent the aesthetic characteristics from falling within the exclusion On Justification: -[65]: "... the immediate purpose in barring registration of merely functional shapes or shapes which give substantial value to the goods is to prevent the exclusive and permanent right which a trade mark confers from serving to extend the life of other rights which the legislature has sought to make subject to 'limited periods'. -[66]: Like the ground for refusal to register that applies to the shapes of goods which are necessary to obtain a technical result, the ground that concerns refusal to register signs consisting exclusively of shapes which give substantial value to the goods is to prevent the granting of a monopoly on those shapes Commentary (critique) of this Justification Ilanah Fhima, 'Consumer Value as the Key to Trade Mark Functionality' (2022) 85 Modern Law Review 661, p. 664: Ultimately though, a justification based on aesthetics is unconvincing. Oceans of ink have been spilt by philosophers and art theorists alike questioning: 'What is beauty?'5 Thus, it is difficult to base a legal test on such a contested, and ultimately subjective, concept. p. 665 Indeed, both copyright and design law, which protect the appearance of artefacts, largely eschew a test based on artistic merit.6 -Likewise, we have no difficulty protecting 'beautiful' two dimensional signs as picture marks -Additionally, the EFTA Court has dismissed the use of substantial value as a provision to ensure that works of art remain in the public domain, noting instead that the justification for the substantial value exclusion lies in protecting competition.7 -Aesthetic appeal also makes for a very narrow exclusion, which will not catch the grey area of characteristics which may not be beautiful and may not impact on how a product works at a technical level, but nonetheless add value to the product -Ex: TRIPP TRAPP chair in Hauck (not beautiful but simplicity of form enjoyed by consumers), likewise product in Gömböc (Its eye appeal is a matter of opinion, but looking at it does provoke a desire to pick it up and handle it) -Indeed, C. Buccafussco, 'Making Sense of Intellectual Property Law' (2012) 97 Cornell Law Review 501, 506 has argued that we should pay more attention to tactile and olfactory value when considering functionality. -p. 666: If we limit the exclusion to aesthetic value then we miss out on the opportunity to discuss which non-visual features competitors need to access to compete effectively -These include that consumers will tend to purchase objects that match those they already own, or will expect pink foods to have a strawberry flavour (US, J. Hughes, 'Cognitive and Aesthetic Functionality in Trademark Law' (2015) 36 Cardozo Law Review 1227, 1254-1255) -The US commentators (ex. Hugher) have also drawn attention to the perverse result of excluding the beautiful from protection; Those who labour to create beautiful objects are permanently excluded from trade mark protection while those who make more banal items can benefit from it

What was said in Unilever's Trade Mark Applications [2003] RPC 25?

Shape was of a dessert: Very popular! -Buying in a box, and so the shape is not being used as a origin of source -[32], [46] One concern: the 'sleight of hand' in relation to product shapes -Highly succesful trade of packaging with a very distinctive name on, which is functioning as the origin indicator -And then applications being made for product appearance, which can prevent other traders from using it, in instances where no one is being deceived! -Consequence: it 'must be proved that consumers regard the shape alone as a badge of trade origin in the sense that they would rely upon that shape alone as an indication of trade origin, particularly to buy the goods': [33]

Commentary on TMD 2015's addition of 'or another characteristic'?

What was the impetus for change? -The same or similar policy concerns might be implicated for other types of mark -Consider some examples from the US, which has a general functionality exclusion: ➤Re NV Organon (2005) 79 USPQ 2d 1639 (artificial orange flavour, for use in pharmaceuticals: Masking flavour should be available to others) ➤Vertex (2009) 89 USPQ 2d 1694 (loud, pulsing sound for security alarms) ➤Brunswick v British Seagull Ltd (1994) 35 F.3d 1527 (colour black for outboard motors, functional because reduced size of engines) Preferable to re-write s. 3(2)? -Think about the various reasons why we may wish to exclude a colour from registration: -Colour serves a utilitarian function, eg, reflects light or absorbs heat -Colour conveys a recognised meaning, eg, heat, danger or environmentalism -Colour is a naturally-occurring quality of the product. -There is a competitive need for the colour -Should all these examples result in the colour being non-registerable? If so, how do we exclude them?

What is a trademark?

s. 1 Trade Mark Act 1994 (1) In this Act "trade mark" means any sign which is capable— (a) of being represented on 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 the protection afforded to the proprietor, and -Commentary on register below! -Sieckmann criteria for non-traditional (b) of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging -This is a non-exhaustive list, and was expanded from 2D to include sound and colours, commentary below! -How far could the definition extend? ➤A sign is anything which can convey information: Philips v Remington and Sieckmann (C-273/00), [43]-[44] (page 298) ➤No sign because not specific and a mere property of the product (nature): Dyson (C-321/03) ➤No sign because "wrapped up" in a number of different signs: Société Des Produits Nestlé SA v Cadbury UK Ltd [2012] EWHC 2637 (Ch); [2013] EWCA Civ 1174 ›[55]: '...The mark applied for thus lacks the required clarity, precision, self-containment, durability and objectivity to qualify for registration' ➤No sign because lime slice non-distinctive, however inadvertently protecting: Eurocermex SA v OHIM (C-286/04), [32] ➤Can include a single colour: Nestlé v Cadbury [2022] EWHC 1671 (Ch) ➤3 ways of "knocking out" problematic registration: Heidelberger (C-49/02), [23] s. 3 Trade Marks Act 2015 (Not to be confused with s. 3 1994, of absolute grounds of refusal of registration) A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of their packaging of goods, or sounds, provided that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other undertakings.; and (b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor: Previously, the concept was of 'graphic representation', but now, the need for a graphic means of representation has been removed (meaning now sound files are accepted given they meet the Sieckmann criteria) -Sometimes referred to as sufficient or adequate representation -To understand the significance of this, we need to look at old caselaw ➤No for a chemical mark as an odour because fails requirements: Sieckmann (C-273/00) ›[51]-[54], Criteria: The representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective: As codified in TMD 2015 Recital 13 ›[46]: The graphic representation "must enable the sign to be represented visually particularly by means of images, lines or characters, so that it can be precisely identified" ›[47]: The CJEU said that this interpretation "is required to allow for the sound operation of the trade mark registration system" ➤Compare how criteria was applied in: Shield Mark (musical score is acceptable for a sound mark); MGM Lion Corp's Application (sound file, spectrogram sonogram accepted, even though required some training to decipher); Libertel (pantone colours scheme accepted) ›Interesting as why can we understand pantone and music, but not chemistry (meaning now, perfume cannot be registered)?

Which are the absolute grounds for refusal of registration?

s. 3 TMA 1994 (1) The following shall not be registered— (a) signs which do not satisfy the requirements of section 1(1), General Notes on (b)-(d), Below! Look at first! -All of acquired distinctiveness (b) Non-distinctive trade marks: which are devoid of any distinctive character -Only for exotic marks such as taste masking pharmaceuticals -Below (copy and paste above)! (c) Descriptive 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, the time of production of goods or of rendering of services, or other characteristics of goods or services -Ex: Creamy milk -Below (copy and paste above)! (d) Generic 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: Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it (2) Functional signs: A sign shall not be registered as a trade mark if it consists exclusively of— (a) Inherent or Natural: the shape[F1, or another characteristic,] which results from the nature of the goods themselves, -How a product works ➤A single sign can convey two meanings at the same time without contradiction: CA Philips Electronics NV v Remington Consumer Products Ltd [1998] RPC 283 ➤Likewise, G-star's jeans stitching remained aesthetically pleasing even after consumers learnt to associate this design element with a particular company: Benetton v G-Star International BV ➤No trademark for children's chair: Hauck v Stokke (C-205/13) ›[27]: Test ›[43]: No Mosaicking, grounds for refusal of registration cannot be applied in combination, in order to be prevent registration, it must be entirely knocked out by one limb! ›Note: The breadth of the CJEU's interpretation of the third indent may limit the practical effects of this rule by allowing more products to be excluded! (b) Technical: The shape[F1, or another characteristic,] of goods which is necessary to obtain a technical result, or ➤CJEU Philips v Remington (C-299/99) ›[78]-[79]: Justifications for functionality exclusion ›[81]-[83]: Irrelevant if same technical result can be achieved through other shapes (that other shapes do same thing" ➤"Some" functionality does not suffice: Lego Juris v OHIM (C-48/09 P) ›[51]: Two-limb test ›[71], [76]: Factors for essential characteristics ›[72]: The exclusion will not apply if the shape contains an important non-functional element ➤Consumer perception may be relevant for essential characteristics, but not for assessing technicality (as don't know): Gömböc Kutató (C-237/19) ➤Relates only to the manner in which the goods at issue function, not to manufactured: Nestle v Cadbury [2022] ›So, on return to UK court, Cadbury conceded that the functionality objection was not made out ➤Tribunal is not confined to the representation, can investigate further (cultural context relevant): Gömböc Kutató (C-237/19) and Yoshida (Joined Cases C-337/12 P to C-340/12 P) (c) Aesthetic or Commercial Value: The shape[F1, or another characteristic,] which gives substantial value to the goods -Seems to be what the consumer wants / attractive to them -May be expanded to include technical features (and everything else the consumer wants, ex. safety in Hauck) -Lessens the harshness of (undermines) the 'no mosaicking' rule, since will just argue indent (c), put perhaps not a bad thing! ➤No trademark, suggests indent is broader than aesthetics: Hauck v Stokke (C-205/13) (children's chair) ›[35]: Substantial value test (applicability of exclusion factors) ›[43]: No Mosaicking, grounds for refusal of registration cannot be applied in combination ➤Previous suggestion was broad applicability to design-conscious products: Bang & Olufsen v OHIM (T-508/08) ›[65], [66]: Justifications for aesthetic exclusion (same as for functionality) ➤Applying Hauck factors (look at!): The London Taxi Corporation Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729 ➤Look at factors for essential characteristics: Lego Juris v OHIM (C-48/09 P), [71], [76] ➤Consumer perception relevant for essential characteristics, and for assessing aesthetics/commercial function: Gömböc Kutató (C-237/19), [40] ➤Substantial means beyond mere 'normal' value: Aldous J at 823 in Court of Appeal case Philips Electronics NV v Remington Consumer Products Ltd [1999] RPC 809 General notes on the three Indents: -Much of the case law relates to shapes -Cannot be saved by Acquired Distinctiveness -Justification for functionality exclusions below! -Commentary on TMD 2015's addition of 'or another characteristic' -Critiqued by Ilanah Fhima, 'Consumer Value as the Key to Trade Mark Functionality' (2022) 85 Modern Law Review 661 (3) A trade mark shall not be registered if it is— (a) contrary to public policy or to accepted principles of morality, or (b) Deceptive marks: of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service) -Ex: Mark says 'coffee' but also applies to tea ➤Not: Pound Puppies [1988] RPC 530 (Board of Trade) (British consumers might think cost or weigh a pound, but actually rescued from a pound) ➤Can be the flip side of distinctiveness: Portakabin Ltd/Titan, R789/2001-3 (23 January 2002) (Titan means titanium in German, if used for non-metallic units consumers may think the units do contain metallic materials, but if used for metallic structures than fail because of descriptiveness) ➤Must be actual deceit or sufficiently serious risk: Elizabeth Emanuel v Continental Shelf (C-259/04) (C fashion designer sold business to T, seeks to oppose the registration of that mark by new business owner on the basis it may conceive consumers that she designed the clothes, no deception here, rather the trademark is to guarantee quality) (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 F2... [F3other than law relating to trade marks]. [F4(4A) A trade mark is not to be registered if its registration is prohibited by or under— (a) any enactment or rule of law, [F5or ] (c) any international agreement to which the United Kingdom F7... is a party, providing for the protection of designations of origin or geographical indications. (4B) A trade mark is not to be registered if its registration is prohibited by or under— (a) any [F8enactment or rule of law], or (b) any international agreement to which the [F9United Kingdom] is a party, providing for the protection of traditional terms for wine or traditional specialities guaranteed. (4C) A trade mark is not to be registered if it— (a) consists of, or reproduces in its essential elements, an earlier plant variety denomination registered as mentioned in subsection (4D), and (b) is in respect of plant varieties of the same or closely related species. (4D) Subsection (4C)(a) refers to registration in accordance with any— (a) enactment or rule of law, [F10or] (c) international agreement to which the United Kingdom F12... is a party, providing for the protection of plant variety rights.] (5) A trade mark shall not be registered in the cases specified, or referred to, in section 4 (specially protected emblems). (6) A trade mark shall not be registered if or to the extent that the application is made in bad faith Note: Other exclusions (ex. for immoral marks and registrations in bad faith) are outside the syllabus

Which are the relative grounds for refusal of registration?

s. 5 TMA 1994 (1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected. (2) A trade mark shall not be registered if because— (a) it is identical with an earlier trade mark and 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, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark (3) A trade mark which— (a) is identical with or similar to an earlier trade mark, and shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom F2... and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark [F3(3A) Subsection (3) applies irrespective of whether the goods and services for which the trade mark is to be registered are identical with, similar to or not similar to those for which the earlier trade mark is protected.] (4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented— (a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of [F4trade, where the condition in subsection (4A) is met,] [F5(aa) by virtue of F6... any enactment or rule of law, providing for protection of designations of origin or geographical indications, where the condition in subsection (4B) is met, or] (b) by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) [F7or (aa)] above, in particular by virtue of the law of copyright [F8or the law relating to industrial property rights]. A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an "earlier right" in relation to the trade mark. [F9(4A) The condition mentioned in subsection (4)(a) is that the rights to the unregistered trade mark or other sign were acquired prior to the date of application for registration of the trade mark or date of the priority claimed for that application. (4B) The condition mentioned in subsection 4(aa) is that— (a) an application for a designation of origin or a geographical indication has been submitted prior to the date of application for registration of the trade mark or the date of the priority claimed for that application, and (b) the designation of origin or (as the case may be) geographical indication is subsequently registered.] (5) Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration. [F10(6) Where an agent or representative ("R") of the proprietor of a trade mark applies, without the proprietor's consent, for the registration of the trade mark in R's own name, the application is to be refused unless R justifies that action.]