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Law Notes Intellectual Property Law Notes

Trademark Absolute And Relative Grounds Of Refusal Notes

Updated Trademark Absolute And Relative Grounds Of Refusal 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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Absolute Grounds of Refusal

Art 3(1)(b)-(d), s3(1)(b)-(d)

Purpose

  • Ensure that the register contains only signs that function as trade marks

  • Filter applications on policy grounds

3 independent grounds

  • Should be examined separately

  • Concerned with the nature of the sign

    • 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)

Approach

  • The mark is examined in relation to goods or services

    • Cannot consider it in abstract or in general

  • The viewpoint adopted is that of the average consumer

    • Reasonably well-informed, reasonably observant and reasonably circumspect

    • 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’

    • If one greengrocer given protection over word ‘oranges’, will limit ability of other greengrocers to convey information about their goods and services

    • In the public interest!

Windsurfing Chiemsee Produktions v Attenberger [1999] ECR I-2779

  • Chiemsee 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

    • D claimed it was a geographical term which couldn’t be protected

  • CJEU: Can’t register a geographical name if associated with the goods

    • Purpose of Art 3(1)(c) is in the public interest, “that descriptive signs or indications … may be freely used by all

    • For geographical names (even if not designating a famous location), “it is in the public interest that they remain available

    • 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”

    • 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

Proctor & Gamble v OHIM [2002] 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

    • Only purely descriptive signs cannot be registered

    • 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

    • 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 [2003] 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

    • 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”

    • A sign fails Art 3(1)(c) “if at least one of its possible meanings designates a characteristic of the goods or services concerned”

    • 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 [2004] 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

    • “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”

    • Public interest requires descriptive signs to be freely available to allow other undertakings to describe the same characteristics of their goods

    • 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

    • A combination of descriptive elements is also descriptive unless it is an unusual combination or has secondary meaning apart from the parts

    • The characteristics of the goods described can be “commercially essential or merely ancillary

    • 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

    • Agencja Wydawnicza Technopol v OHIM [2011] 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...

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