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Law Notes Intellectual Property Law Notes

Trade Marks 1 Notes

Updated Trade Marks 1 Notes

Intellectual Property Law Notes

Intellectual Property Law

Approximately 1014 pages

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:

  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

    To be registrable, sign must be:

  1. Capable of graphic representation

  2. 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:

  1. Need not be capable of being perceived visually

  2. 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:

  1. Clear; 2) precise; 3) self-contained; 4) easily accessible; 5) intelligible;

  1. durable

  • i.e. so that it is perceived the same way every time it is seen

  1. 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)

  1. 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

  2. Smell

    Smell is not adequately graphically represented by either:

  1. a verbal description of smell,

  2. a chemical formula

  3. an odour sample

    Sieckmann [2002]

  4. nor a picture

    Eden [2006] (confirming Sieckmann)

    OHIM used to think description of a smell sufficed.

    The Smell of Freshly Cut Grass [1999]

  1. Taste

    A verbal description of a taste does not suffice

    The Taste of Artificial Strawberry Flavour [2004]

  2. Colour

    Colours can be registered.

    Libertel [2003]

    However as for graphic representation:

  1. Colour sample does not suffice

    fades over time: not durable

  2. Verbal description of colour may suffice

    but only if sufficiently clear and precise

    this will not normally be case

  3. Designation from an international colour code may suffice

    i.e. as this is sufficiently clear and durable

  4. 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:

  1. Proportion of product that will be taken up by each colour

  2. Way in which colours will interrelate

  • Heidelberger Bauchemie [2004]

  1. Soundmarks

  1. Stave with notes on does suffice

    Shield Mark [2003] (ECJ)

  2. Verbal description of sounds (i.e. “onomatopoeic representation”) does not suffice

    Shield Mark [2003]

  3. 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)

    1. 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:

  1. Does not satisfy section 1

  2. Shape exclusions

  3. Not distinctive

  • Devoid of distinctive character

  • Descriptive

  • Generic

  1. Public policy and morality

  2. Mark is prohibited by law

  3. Application is made in bad faith

    1. Does Not Satisfy Requirements of Section 1

      I.e. no registration if trade mark is not a ‘sign’, or not capable of distinguishing.

    2. Certain Shapes

Section 3(2)

Shape cannot be registered as trade mark if it:

  1. Results from the nature of the goods themselves

  2. Is necessary to obtain a technical result

  3. 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...

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