Law Notes Intellectual Property Law Notes
IP law notes fully updated for recent exams at Oxford and Cambridge. These notes cover all the LLB Intellectual Property law cases and so are perfect for anyone doing an LLB in the UK or a great supplement for those doing LLBs abroad, whether that be in Ireland, Hong Kong or Malaysia (University of London).
These were the best IP Law notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through dozens of LLB samples from outstanding law students with the highes...
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TRADE MARKS 1
Registrable Mark
To be validly registered, trademark must:
Fall within definition of a registrable mark
Not be excluded by any absolute grounds of refusal
Not be excluded by any relative grounds of refusal
To be registrable, sign must be:
Capable of graphic representation
Distinctive
Trade Marks Act 1994
Section 1
Trade mark may consist of any sign capable of being represented graphically.
This includes
personal names,
designs,
letters,
numerals,
the shape of goods or of their packaging,
Any sign must be capable of distinguishing the goods or services of one undertaking from those of another.
Definition is “very broad”
Also includes:
Sound marks
3D marks
Wrigley [1999]
However TM cannot be registered if it is merely a property of the product over which trade mark is sought.
Dyson [2007]
‘Graphic Representation’
A trademark:
Need not be capable of being perceived visually
But must represent the trade mark graphically
Sieckmann [2002]
Graphic representation usually by lines, images, letters or numbers
Sieckmann [2002]
Any graphic representation must be:
Clear; 2) precise; 3) self-contained; 4) easily accessible; 5) intelligible;
durable
i.e. so that it is perceived the same way every time it is seen
objective
i.e. so that it is perceived in the same way by everyone
Sieckmann [2002]
‘Intelligible’
mark is sufficiently intelligible where it does not require excessive efforts by public to understand it
Libertel [2003]
thus e.g. a chemical formula is not sufficiently intelligible
Sieckmann [2002]
No need for immediate intelligibility
suffices that intelligibility is ‘easy’
Shield [2003] (stave of music)
Shape
A verbal description of a shape does not suffice
e.g. “a chewy sweet on a stick”
Swizzels Matlow’s Trade Mark Application [1998]
Is necessary to have drawings or photographs
Smell
Smell is not adequately graphically represented by either:
a verbal description of smell,
a chemical formula
an odour sample
Sieckmann [2002]
nor a picture
Eden [2006] (confirming Sieckmann)
OHIM used to think description of a smell sufficed.
The Smell of Freshly Cut Grass [1999]
Taste
A verbal description of a taste does not suffice
The Taste of Artificial Strawberry Flavour [2004]
Colour
Colours can be registered.
Libertel [2003]
However as for graphic representation:
Colour sample does not suffice
fades over time: not durable
Verbal description of colour may suffice
but only if sufficiently clear and precise
this will not normally be case
Designation from an international colour code may suffice
i.e. as this is sufficiently clear and durable
Use of colour sample, verbal description and designation from an international colour code in combination may suffice.
Libertel [2003]
However even if colour is adequately graphically represented, will probably not be sufficiently distinguishing (see below)
Multiple Colours
Where C wishes to register multiple colours, to satisfy Sieckmann C must specify:
Proportion of product that will be taken up by each colour
Way in which colours will interrelate
Heidelberger Bauchemie [2004]
Soundmarks
Stave with notes on does suffice
Shield Mark [2003] (ECJ)
Verbal description of sounds (i.e. “onomatopoeic representation”) does not suffice
Shield Mark [2003]
Sonogram might suffice
possibility not ruled out in one case
Shield Mark [2003]
possibility expressly approved in later case
MGM Lion Corp [2004] (ECJ) (Suggested it might be appropriate way of representing roar of a lion)
however possibility expressly rejected in even later case
Edgar Rice Burroughs [2007] (OHIM) (Sonogram of Tarzan’s yelp not sufficient)
Sufficiently Distinguishing
Sign must be distinctive as indicator of commercial origin
And not of artistic origin
Danjaq [2009] (‘Dr No’)
Is not possible to have a mark that is ‘distinctive’, but not ‘capable of distinguishing’
wherever a mark is distinctive, always satisfies Art 2/section 1
and vice-versa
Philips v Remington [2002]
The three specific exclusions (Article 3(b)-(d)) are merely elaborations of basic requirement of capacity to distinguish
Philips v Remington [2002]
SERVICE MARKS
Is possible to register a service mark under TMA 1994.
This is a TM applicable in respect of the services of a company
i.e. the trade mark protects the goodwill attached to the provision of those services
as opposed to the goodwill attached to manufacturers/sellers of goods (as is usually the case)
E.g. financial services, professional services etc.
Retail Services
Has been held that it is possible to register trade mark in respect of “retail services”
i.e. where the service in question is the selling of goods by C
Praktiker Bau [2005]
For this to be case however, particular type of goods to which service relates must be specified
i.e. so as to prevent confusion
Praktiker Bau [2005]
Used to be thought this was not possible
i.e. as retailer sells goods, rather than providing services
Absolute Grounds for Refusal
Absolute grounds for refusal of registration set out in section 3/Article 3.
These are:
Does not satisfy section 1
Shape exclusions
Not distinctive
Devoid of distinctive character
Descriptive
Generic
Public policy and morality
Mark is prohibited by law
Application is made in bad faith
Does Not Satisfy Requirements of Section 1
I.e. no registration if trade mark is not a ‘sign’, or not capable of distinguishing.
Certain Shapes
Section 3(2)
Shape cannot be registered as trade mark if it:
Results from the nature of the goods themselves
Is necessary to obtain a technical result
Gives substantial value to the goods
Results from nature of goods
Where designer of product has no choice but to use the shape in question in order to make the relevant goods.
i.e. in principle such a shape should be available to all traders
Procter & Gamble [2000] (no registration of a soap bar)
Necessary to Obtain a Technical Result
For exclusion to apply, no need...
Buy the full version of these notes or essay plans and more in our Intellectual Property Law Notes.
IP law notes fully updated for recent exams at Oxford and Cambridge. These notes cover all the LLB Intellectual Property law cases and so are perfect for anyone doing an LLB in the UK or a great supplement for those doing LLBs abroad, whether that be in Ireland, Hong Kong or Malaysia (University of London).
These were the best IP Law notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through dozens of LLB samples from outstanding law students with the highes...
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