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Trade Mark Case Law Notes

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Sieckmann Patent-und Markenamt Case C-273/00 ECR I-11737 [2003]

Libertel Group BV Benelux-Merkenbureau Case-C104/01 [2003] ECR I-3793, [2004] FSR 65



Nichols plc VERSUS Registrar of Trade Marks Case C404/02 [2004] ECR I-8499, [2005] 1WLR 1418


KEY RULE: A sign has to have the capability to convey information. To be registrable as a trade mark it must have the required clarity, precision, self-containment, durability and objectivity for the registrar and competitors to know what is covered. It has to be represented your mark graphically - this is very hard for smell marks FACTS OF THE CASE: The case involved a "methyl cinnamate" scent, described "as balsamically fruity with a slight hint of cinnamon". The ECJ ruled that (a) a chemical formula depicting this scent did not represent the odour of a substance, was not sufficiently intelligible, nor sufficiently clear and precise; (b) a written description was not sufficiently clear, precise and objective; and (c) a physical deposit of a sample of the scent did not constitute a graphic representation, and was not sufficiently stable or durable. NOTES: The case illustrates difficulties with the graphical representation of scent marks, as the ECJ held that these representations, whether individually or collectively, could not satisfy this requirement. Graphic representation is vital so that others can consult the register and determine easily if KEY RULE: Colours per se can serve as a badge of origin and be a trade mark if it has acquired distinctiveness and is accurately, precisely and durably described FACTS OF THE CASE: Libertel is a Dutch mobile phone producer who tried to register the mark with a description "orange" for telecoms products For a colour to be distinctive it was necessary to consider the standpoint of an average consumer. In most cases it was likely that a colour would not be sufficiently distinctive from the standpoint of the average consumer without prior commercial use. However, it was possible that a colour could acquire a distinctive character over time. Libertel failed to get their trade mark because it wasn't described sufficiently NOTES: CJEU said that a colour per se can constitute a sign. Colour representation may change over time but words describing colour (e.g. "orange") won't. Description must be 'clear, precise, self-contained, easily accessible, intelligible, durable and objective'. A pantone reference or equivalent would be required. Libertel's application lacked precision and durability Consumers not in habit of associating colour with a mark so acquiring distinctiveness through use is harder

KEY RULE Surnames can be registered in principle but they have to have acquired distinctiveness FACTS OF THE CASE: The Applicant had applied to register the surname "Nichols" for products including vending machines and food and drinks of the type sold in vending machines. The application was refused for food and drinks on the basis that the phonetic equivalent of Nichols "Nicholls" and the singular form Nichol were common names within the UK as a result of the number of times in which it appeared in the phone directory. Due to the size of the market for such food and drinks the mark was not capable of distinguishing the origin of the goods. However, given that the market for vending machines was much smaller and more specific the application was allowed to proceed in relation to this specification. The Applicant appealed to the High Court who referred various questions to the ECJ for a preliminary ruling under Art 234 EC. NOTES: CJEU made the point that in principle all names can be registered but they need to acquire distinctiveness. Hurdle not met in this case. REFERENCES: TMA94 S1 - registration of personal names; S3(b) - lack of distinctive character

Shield Mark B.V. Kist "Shield Mark Case" C-283/01



Coca Cola bottle saga

Societe des Produits Nestle SA Cadbury UK Limited
[2013] EWCA Civ 1174


KEY RULE: A sign must be able to convey information. A sound sign or tone color can be trade marked but must be precisely graphically represented, e.g. by musical notation or a sonogram, or any other method, e.g. a recording FACTS OF THE CASE: Shield Mark BV registered 14 sound trademarks at the Benelux trademark office for various services. Four of those trademarks consist of a musical stave with the first nine notes of the musical composition "Fur Elise". Some had "played by piano" added. Some were described by the notation, some list the notes i.e. "E, D#, E, D#, E, B, D, C, A". A sound trademark consisting of an onomatopoetic word the Dutch "Kukelekuuuuu" crow of a rooster was used for the computer software to signal the start of the program. CJEU confirmed that sounds can be trade marks as long as they can be represented graphically Held that a graphical representation in mere text form such as 'the first nine notes of "Fur Elise" or "the crow of a rooster" at the very least lack precision and clarity. The same applies for onomatopoeia, as it is not possible for the competent authorities and the public, to determine whether the protected sign is the onomatopoeia itself, as pronounced, or the actual sound or noise. Musical notes, however, in the form of a stave, fulfill the requirements. Thus only the sound signs registered by Shield Mark with a stave or other graphic representations meeting the requirements could be upheld as trademarks. NOTES: REFERENCES: TMA94 Sound Marks KEY RULE: Shape marks can be registered as a trade mark if it has acquired distinctiveness FACTS OF THE CASE: Coke bottle is obviously iconic and a large number of people will name the drink as coke simply by looking at the shape of the bottle An example of a 3D shape mark that has acquired distinctiveness NOTES: In the USA got first trade mark in 1960 (with Coca-cola name on it) and a second in 1977 without their name on it The representation must disclose the mark in a way which is "clear, precise, self-contained, easily accessible, durable and objective". Trade marks may protect particular shapes, but not design concepts. It is not therefore possible to represent a shape in words alone There is no distinction in law between different types of marks with regard to the test for distinctiveness but the average consumer may not as readily accept the appearance of the goods themselves as an indication of trade origin REFERENCES: TMA94 S3(1) - absolute grounds. Acquiring distinctive character

KEY RULE: To register a trade mark it must be capable of being represented precisely in graphical form. Use of a pantone reference is OK but saying that the colour covers a 'predominant part' of the packaging is imprecise FACTS OF THE CASE: Cadbury successfully trademarked the colour, known as Pantone 2685C, in 2004 to use on its chocolate bars and drinking chocolate. It has been using the colour since 1914 so has acquired distinctiveness Colour was described as "applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods" Nestle appealed the registration arguing the description was imprecise and lead to a number of signs not just one The Court of Appeal agreed with Nestle and held that the trademark application lacked "the required clarity, precision, self-containment, durability and objectivity to qualify for registration" despite the description following the Guidance notes at the time of application NOTES: Cadbury said that this ruling did not affect their long-held right to protect their distinctive colour purple from others seeking to pass off their products as Cadbury chocolate. Nestle
would be very brave to start using this colour even after this ruling Mattell lost appeal trying to protect all Scrabble tiles with one application at the same time as

Societe des Produits Nestle SA VERSUS UK Ltd Case C353/03, [2005] ECR I-6135, [2005] 3 CMLR 259

OHIM Wrigley Junior Co Doublemint Case Case C191/01, [2004] RPC 327, [2004] 1 WLR 1728




British Sugar Robertson Ltd Treat Case
[1996] RPC 281



KEY RULE: The distinctive character of a mark can be acquired in consequence of the use of that mark as part of or in conjunction with another registered trade mark FACTS OF THE CASE: Nestle had registered marks for both the slogan "Have a break...have a Kit Kat" and the name KIT KAT in the UK. They tried to register "Have a Break" on its own and the UK High Court refused stating that the expression "HAVE A BREAK" on its own was devoid of inherent distinctive character, and that registration could only occur subject to proof of distinctive character acquired through use. CJEU held that the distinctive character of a mark could be acquired in consequence of the use of that mark as part of, or in conjunction with, a registered trade mark. I.e that it was part of a longer trade marked phrase was not detrimental. NOTES:

REFERENCES: TMA94 S3 - Acquiring distinctiveness KEY RULE: Descriptive marks cannot be protected. If one possible meaning is descriptive that is enough to make the mark unregistrable even if there are other meanings which are not descriptive. FACTS OF THE CASE: OHIM originally rejected application for "DOUBLEMINT" as a trade mark saying that it was descriptive "Doublemint" is a combination of two English words which could be used to describe chewing gum and doesn't have any additional fanciful or imaginative elements Decision overturned by General court - the term was not the ordinary English way of describing the goods the mark and could be registered. CJEU disagreed - registration must be refused if one possible meaning of the mark designates a characteristic of the goods concerned NOTES: Followed the Chiemsee case logic REFERENCES: TMA94 S3(c) - descriptive marks

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