Trade Mark Case Law - Intellectual Property Law

Libertel Group BV VERSUS Benelux-Merkenbureau

Case-C104/01 [2003] ECR I-3793, [2004] FSR 65

Trademarks

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 they have freedom of operate

REFERENCES: TMA94 S1 (description)

Trademarks

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

Coca Cola bottle saga

Trademarks

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 "Für 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 "Für 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