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ABSOLUTE GROUNDS OF REFUSAL Art 3(1)(b)-(d), s3(1)(b)-(d) PurposeEnsure that the register contains only signs that function as trade marks Filter applications on policy grounds
3 independent groundsShould be examined separately Concerned with the nature of the sign o Subject to the Art 3(3) proviso of acquiring distinctiveness through use Overlapping: A mark that fails Art 3(1)(c) for descriptiveness would fail Art 3(1)(b)
ApproachThe mark is examined in relation to goods or services o Cannot consider it in abstract or in general The viewpoint adopted is that of the average consumer o Reasonably well-informed, reasonably observant and reasonably circumspect o Attributes could differ based on categories of goods and services (e.g. high value items usually warrant more care)
ART 3(1)(C): DESCRIPTIVE MARKS - REQUIREMENT OF AVAILABILITY-
Consisting exclusively of signs or indications which may serve in trade to designate the kind, quality, intended purpose ... or other characteristics of goods or services Bentley and Shearman: 'protective function' o If one greengrocer given protection over word 'oranges', will limit ability of other greengrocers to convey information about their goods and services o In the public interest!
WINDSURFING CHIEMSEE PRODUKTIONS V ATTENBERGER  ECR I2779Chiemsee is the name of a Bavarian lake (in Germany) C was situated near the shores of the lake and sold sporting goods (manufactured elsewhere) that were labelled 'Chiemsee' C sued D (operating nearby) for using the same word but in different graphic form o D claimed it was a geographical term which couldn't be protected CJEU: Can't register a geographical name if associated with the goods o Purpose of Art 3(1)(c) is in the public interest, "that descriptive signs or indications ... may be freely used by all" o For geographical names (even if not designating a famous location), "it is in the public interest that they remain available" o The question is whether the geographical name "designates a place currently associated in the mind of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future"
Relevant factors: "degree of familiarity" with the name, "characteristics of the place designated" and the "category of goods" o The connection with the geographical location need not be where the goods are manufactured but could also be where they were "conceived and designed" IMPLICATION: Description may be of manufacturing origin or design origin IMPLICATION: The relevant time at which the sign is descriptive can be in the future oPROCTOR & GAMBLE V OHIM  ECR I-6251 - CONTROVERSIAL-
C sought to register 'Baby-Dry' for diapers, OHIM refused on grounds of descriptiveness and case went to CJEU CJEU: 'Baby-Dry' could be registered o Only purely descriptive signs cannot be registered o The test is whether the words are the same as those "used in the common parlance of the relevant class of consumers to designate the goods or services or their essential characteristics" o Here, the "syntactically unusual juxtaposition is not a familiar expression" so it is sufficiently distinctive ISSUE: This seems to be applying a more lenient test than Windsurfing and only looks at current associations with the goods (not future) NOTE: This is NOT the current approach
* OHIM V WRIGLEY JR  ECR I-12447 (DOUBLEMINT)-
C rejected D's application to register 'Doublemint' as a CTM for chewing gum CJEU: Applied a strict test, couldn't be registered o It is "not necessary that the signs and indications ... actually be in use at the time of the application", as long as they "could be used for such purposes" o A sign fails Art 3(1)(c) "if at least one of its possible meanings designates a characteristic of the goods or services concerned" o CFI applied a test of whether the mark is "exclusively descriptive", which is the WRONG test to apply NOTE: This appears to reaffirm the Windsurfing approach instead of Baby-Dry, and subsequent cases have adopted a similar approach
KONINKLIJKE V BENELUX-MERKENBUREAU  ECR I-1619 (POSTKANTOOR)Application to register 'Postkantoor' (Dutch word for post office) for a range of goods including stamps, paper and advice CJEU: Applied a strict test on descriptiveness o "The fact that a mark has been registered in one Member State in respect of certain goods and services cannot have any bearing on whether" it can be registered in a "second Member State in respect of similar goods or services" o Public interest requires descriptive signs to be freely available to allow other undertakings to describe the same characteristics of their goods o Applied the Windsurfing test
? "It is irrelevant whether there are other, more usual, signs or indications for designating the same characteristics"
A sign is descriptive even if it is not the "only way of designating" "A word must therefore be refused registration ... if at least one of its possible meanings designates a characteristic" of the goods
? Must protect other operators who might offer the same goods/services in the future o A combination of descriptive elements is also descriptive unless it is an unusual combination or has secondary meaning apart from the parts o The characteristics of the goods described can be "commercially essential or merely ancillary" o Trade marks cannot be registered for goods and services as long as they "do not possess a particular characteristic", would lead to legal uncertainty NOTE: UK has adopted a narrower view of what characteristics are described o Agencja Wydawnicza Technopol v OHIM  ETMR 34
? C sought to register CTM for '1000' in relation to brochures and periodicals
? OHIM rejected the application on grounds of descriptiveness
? CJEU: This mark was descriptive
? Not necessary that the sign "actually be in use at the time ...
in a way that is descriptive", as long as it could be
? Number of existing competitors interested in using the sign is irrelevant
? The characteristic being described should be a "property, easily recognisable by the relevant class of persons, of the goods"
? For a numeral sign to be rejected, "it must be reasonable to believe that, in the mind of the relevant class ... the quantity indicated by those numerals characterises the goods or services"?ART 3(1)(B): DEVOIDNESS OF DISTINCTIVE CHARACTERTrade marks which are "devoid of distinctive character"Rationale o Henkel KGaA v OHIM (2005): There is no public benefit in conferring legal protection on a trade mark that doesn't fulfil its function in indicating trade origin o SAT 1 (2004): The public interest is "indissociable from the essential function of a trade mark" which is to "guarantee the identity of the origin"
A trade mark's distinctiveness is assessed by reference to the goods or services listed in the application and to the perception of the relevant public. The relevant public consists of average consumers of the goods or services in question, who are reasonably well informed and reasonably observant and circumspect
LIBERTEL V BENELUX-MERKENBUREAU  ECR I-3793CJEU: Dealt with the issue of when a colour could be distinctive within Art 3(1)(b) "A colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking" unless in exceptional circumstances and restricted markets
-A colour can ACQUIRE distinctiveness by familiarising the public to use it to "identify the product concerned as originating from a particular undertaking" Whether the registration is for a "large number of goods of services, or for a specific product or services ... is relevant" in assessing distinctiveness and public interest o Distinctiveness: whether the relevant public perceives it as indicating origin o Public interest: in keeping the mark available for use by others The authority must "carry out an examination by reference to the actual situation", including actual use of the mark, to determine distinctiveness o Based on the specific goods/services and the relevant public's perception
SAT 1  ECR I-8317C applied to register 'SAT.2' as a CTM for services connected with broadcasting CJEU: Distinctiveness of a composite mark must be based on "an appraisal of the whole which they comprise" o "The mere fact that each of those elements, considered separately, is devoid of distinctive character does not mean that their combination cannot present a distinctive character" o Registration "is not subject to a finding of a specific level of linguistic or artistic creativity or imaginativeness"
? Need only "enable to relevant public to identify the origin" o OHIM was WRONG to find that SAT.2 lacked distinctiveness
NICHOLS  ECR I-8499C wanted to register 'Nichols' (common surname) as trade mark for vending machines, food and drink Registrar allowed application for vending machines but not food and drink CJEU: "The criteria for assessment of the distinctive character of trade marks constituted by a personal name are therefore the same as those applicable to the other categories" o The perception of the relevant public "is not necessarily the same for each of the categories"
HENKEL  ECR I-5089 o o o
C wanted to register CTM for shapes (and colors) of washing tablets OHIM held that it was devoid of distinctive character CJEU: Applied the significant departure test
? Distinctive character is assessed "by reference to the products or services" and "by reference to the perception of the relevant public"
? Test of "average consumers ... who are reasonably well informed and reasonably observant and circumspect"
? "Average consumers are not in the habit of making assumptions about the origin of products on the basis of their shape ... it could therefore prove more difficult to establish distinctiveness in relation to such a three-dimensional mark than in relation to a word or figurative mark"
? IMPLICATION: Different test for "non-conventional signs"
"Only a trade mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character" The significant departure test has been applied in subsequent cases o Bongrain's Application (2005): Even if the shape is a significant departure, it must still fulfil its essential function of indicating origin o August Storck KG (2006): Werther's Original shape didn't significantly depart o Mars v OHIM (2009): Bounty Bar shape didn't significantly depart o Bang & Olufsen (2007): Pencil shape of speakers did significantly depart
? Helped by the fact that the relevant public pays more attention to infrequent expensive purchases-
ART 3(1)(D): CUSTOMARY MARKSConsists exclusively of signs or indications which have become "customary in the current language or in the bona fide and established practices of the trade"
MERZ & KRELL  ECR I-6959 o o o
C sought to register 'Bravo' for writing instruments German Patents Court felt it had become customary because it was traditionally used in advertising for a variety of goods CJEU: This is not exactly the same as Art 3(1)(c) descriptiveness
? This covers any signs that have become customary in designating the goods or services, irrelevant that they are used in advertising
? National court must determine if the signs "have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services covered by that mark"
ACQUIRED DISTINCTIVENESS - DEPENDENT ON CUSTOMER RECOGNITION Art 3(3): The Art 3(1)(b)-(d) grounds for refusal don't apply if "before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character" i.e Acquired SECONDARY MEANING
WINDSURFING CHIEMSEE V ATTENBERGER  ECR I-2779-The acquired distinctive character "must serve to identify the product ... as originating from a particular undertaking, and thus to distinguish" it from others o This gives the mark "new significance" so it is no longer "purely descriptive" "Article 3(3) does not permit any differentiation as regards distinctiveness by reference to the perceived importance of keeping the geographical name available for use by other undertakings" o IMPLICATION: Acquired distinctiveness is not affected by the public interest in keeping certain marks available for use by others Identified possible factors to consider
o Market share o Intensive, widespread or long-standing use o Amount invested o Proportion of public who use it to identify trade origins o Expert evidence Ultimate test: "significant proportion of the relevant class of persons identify goods as originating from a particular undertaking because of the trade mark"
PHILIPS V REMINGTON  ECR I-5475Before D marketed its own 3-headed shaver, C was the only company with such a product CJEU: Must assess based on "specific and reliable data" if the test is fulfilled o Noted that Art 3(3) doesn't apply to shapes rejected under the shape exclusion (Art 3(1)(e) o The distinctive character "must be assessed in relation to the goods or services" being applied for o Applied Windsurfing: significant proportion of the relevant class uses it to identify origin of the goods
? Must apply the "presumed expectations of the average consumer" o Distinctiveness must be "a result of the use of the mark as a trade mark"
Procter & Gamble v OHIM  ECR I-5141CJEU: Test for distinctiveness refers to the products or services and perception of the relevant public o Applied the Henkel significant departure test for marks of shape and colour
? Average consumers not in the habit of assuming origin based on shape o "average consumer normally perceives a mark as a whole" o The "level of attention given by the average consumer to ... everyday consumer goods, is not high"
Nestle SA v Mars UK  ECR I-6135C sought to register 'Have a Break' as a trade mark o Consistently used as part of the slogan "Have a Break, Have a KitKat" Registrar refused registration, no acquired distinctiveness CJEU: No requirement that the mark must have been used separately o "the mark in respect of which registration is sought need not necessarily have been used independently" o Can be used "in conjunction with a registered trade mark" or as part of one
? As long as it results in the relevant class identifying origin
NOTE: NESTLE V CADBURY  EWHC 16-
Registration of shape of the KitKat bar, which is always used with the words KitKat Registrar felt there was no acquired distinctiveness o Differentiated recognition of the shape and reliance on it to indicate trade origin
? There was no reliance since the product was sold in opaque wrapper and the shape didn't feature in promotions Case currently referred to ECJ
Ruiz-Picasso v OHIM  ECR I-643
Issue about the mark 'Picasso' for cars CJEU: Just because 'Picasso was known in one context (art) doesn't mean that it is highly distinctive in another (vehicles) AG Colomer: When a prestigious name is used in a " completely different context
... the greater protection which must be given to marks with a highly distinctive character cannot automatically be claimed" o There is a "general interest in protecting the names of great artists, which represent a universal cultural heritage"
PUBLIC DOMAIN ISSUES-
The public interest in keeping marks free for others to use can clearly be overridden once acquired distinctiveness is shown Davis (2005): The CJEU and English Courts have not allowed for a trade mark commons o Argument in Baby-Dry: Registration of even minimally distinctive marks doesn't impede access to the public domain, since it is a defence to infringement if the mark is used descriptively
? ISSUE (Jacob J): Smaller defendants are likely to back off when sued by more powerful traders, even if in principle they have a defence o CJEU has indicated that it is for the "competent authorities" to act as gatekeepers by conducting a rigorous examination at registration o Rationale for allowing any mark with acquired distinctiveness to be registered
? Simple and consistent: looking at the essential function of trade marks
? Avoids confusion
? Importance of branding: Traders have invested in causing the mark to acquire distinctiveness through use, should be rewarded Folliard-Monguiral (2005): The "economic effort of the trademark applicant in making his mark de facto distinctive outweighs the interests protected by those articles", i.e. the public interest in leaving "descriptive, generic or nondistinctive" marks free for others to use
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