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Trade Marks 1 Notes

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TRADE MARKS 1 Registrable Mark

i) ii)

1. To be validly registered, trademark must: 1) Fall within definition of a registrable mark 2) Not be excluded by any absolute grounds of refusal 3) Not be excluded by any relative grounds of refusal

1. To be registrable, sign must be: Capable of graphic representation Distinctive Trade Marks Act 1994 Section 1

2. Trade mark may consist of any sign capable of being represented graphically.

3. This includes

1. personal names,

2. designs,

3. letters,

4. numerals,

5. the shape of goods or of their packaging,

4. Any sign must be capable of distinguishing the goods or services of one undertaking from those of another.

1. Definition is "very broad"

1. Also includes:

1. Sound marks

2. 3D marks

2. Wrigley [1999]

1. However TM cannot be registered if it is merely a property of the product over which trade mark is sought.

1. Dyson [2007]

1. i) ii)

'Graphic Representation'

5. A trademark: Need not be capable of being perceived visually But must represent the trade mark graphically
- Sieckmann [2002]

6. Graphic representation usually by lines, images, letters or numbers

1. Sieckmann [2002]

7. Any graphic representation must be: 1) Clear; 2) precise; 3) self-contained; 4) easily accessible; 5) intelligible; 6) durable
- i.e. so that it is perceived the same way every time it is seen 7) objective
- i.e. so that it is perceived in the same way by everyone


Sieckmann [2002]

1. 'Intelligible'

1. mark is sufficiently intelligible where it does not require excessive efforts by public to understand it

1. Libertel [2003]

2. thus e.g. a chemical formula is not sufficiently intelligible

1. Sieckmann [2002]

3. No need for immediate intelligibility

1. suffices that intelligibility is 'easy'

2. Shield [2003] (stave of music) i)


1. A verbal description of a shape does not suffice

1. e.g. "a chewy sweet on a stick"

2. Swizzels Matlow's Trade Mark Application [1998]

2. Is necessary to have drawings or photographs



1. Smell is not adequately graphically represented by either: i) a verbal description of smell, ii) a chemical formula iii) an odour sample

1. Sieckmann [2002]
iv) nor a picture

2. Eden [2006] (confirming Sieckmann)

2. OHIM used to think description of a smell sufficed.

1. The Smell of Freshly Cut Grass [1999]
iii) Taste

2. A verbal description of a taste does not suffice

1. The Taste of Artificial Strawberry Flavour [2004]
iv) Colour

1. Colours can be registered.

1. Libertel [2003]

2. However as for graphic representation: i) Colour sample does not suffice

1. fades over time: not durable ii) Verbal description of colour may suffice

2. but only if sufficiently clear and precise

3. this will not normally be case iii) Designation from an international colour code may suffice

4. i.e. as this is sufficiently clear and durable iv) Use of colour sample, verbal description and designation from an international colour code in combination may suffice.

2. Libertel [2003]

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