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Trademarks Notes

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1 Absolute grounds for refusal - s3
Does not satisfy s1(1)
definition of a trade mark s3(1)(a)
 Sign
 Capable of being represented clearly and precisely
Grounds which can be overcome by acquired distinctiveness - s3(1)(b)-(d)
 Mark devoid of any distinctive character s3(1)(b)
 Descriptive marks s3(1)(c)
 Customary or generic marks - s3(1)(d)
Shape exclusion - s3(2)
 Natural - s3(2)(a)
 Functional - s3(2)(b)
 Ornamental - s3(2)(c)
Other:
 Public policy - s3(3)
(a)
 Deceiving the public s3(3)(b)
 Bad faith - s3(6)

1 Does not satisfy s1(1) definition of a trade mark - s3(1)(a)
Must be a (i) sign (ii) capable of being represented clearly and precisely.

1.1 Is the mark a 'sign' or a 'concept'

When a mark is a 'concept' rather than a 'sign' and thus does not satisfy s1(1)

When multitude permutations can satisfy the mark.

Case examples

Dyson:
o Tried to register 'mark consists of a transparent bin on the surface of a vacuum cleaner'  multitude of permutations possible.

Nestlé v Cadbury:
o Tried to register this as a trade mark: 'the predominant colour purple applied to visible surface of the packaging'  multitude of permutations possible.

Spear & Mattel v Zynga:

attempt to register a scrabble tile design failed as there was a huge range of possible combinations of ivory-coloured tiles, roman numerals and letters of the alphabet.

1.2 Is the mark 'capable of being represented clearly and precisely'

1.2.1 When is the mark 'capable of being represented clearly and precisely'?

As per Recital 13 New Trade Mark Directive 2015 (New TMD), this still requires the 7
Sieckmann criteria to be met.

1.2.2 Applied to specific exotic marks

1. Shapes a. Verbal description of a shape mark: not clear and precise (Dyson ; Nestlé v Cadbury)

2. Smells

Unlikely to be clear and precise as no international classification of smells.

a. Verbal description of smell: not clear and precise (Sieckmann)
b. Sample of smell: not durable (Sieckmann)
c. Chemical formula: not intelligible (Sieckmann)

3. Colour


Yes: clear and precise if the Pantone number is included (Libertel)
Not for a verbal description of the colour without the pantone number (not clear and precise) (Libertel)
Not a sample of a colour as not durable (Libertel)

4. Sound a. Sound file: yes as is clear and precise + we don't have the requirement anymore for it to be a graphical representation in new TMD 2015 (which came into force in 2019)
b. Shield Mark:
o Verbal description (application said 'I want to register the crowing of a cock')
= not clear and precise.
o Onomatopoeia = not clear and precise.
o Series of notes (AB#CEFG..) = not clear and precise.
o Musical stave = yes clear and precise.

5. Taste

No - not clear and precise (Levola Hengelo) 2 Grounds that can be overcome by acquired distinctiveness s3(1)(b)-(d)

2.1 STEP 1: The grounds under s3(1)(b) to s3(1)(d)

1.1 Mark is devoid of any distinctive character - s3(1)(b)

2.1.1 General

The mark must possess a distinctive character, i.e. indicate trade origin to the average consumer (Linde, Winward)

2.1.2 Applied to different marks

1. For shapes

Shape mark is only distinct if the shape departs significantly from the norms and customs of the relevant sector. (London Taxi)

2. For colours

Colours are devoid of distinctive character (so cannot be registered) except in exceptional circumstances (Libertel)

3. For slogans
Compare these two cases

KitKat:
o Slogan trying to register: 'Have a break'
o Held: devoid of distinctive character.
o Why? would be understood by the average consumer to be a neutral invitation to consume a snack, rather than indicating trade origin

Audi AG:
o Slogan trying to register: 'Advancement through technology'
o Held: was distinct

Why? phrase had a number of meanings; could be said as being imaginative.

4. Personal names 

If the surname is common (e.g. 'Smith') then that indicates it is not distinct/not indicative of trade origin.
Combining forename + surname (like in 'Ted Baker') makes it more likely to be distinct/indicate trade origin (Oska)

2.2 Mark is descriptive - s3(1)(c)
s3(1)(c)
trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality,
quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,

If the mark is descriptive of the goods/services then falls under s3(1)(c) absolute ground for refusal.

2.2.1 Sub-rules
(a)

A word mark which has a descriptive and non-descriptive element

(b)

Lexical inventiveness

A mark which consists of two descriptive terms will be descriptive itself, unless it has a degree of lexical inventiveness:
o

Baby Dry: the word 'baby' and 'dry' each were descriptive of the good, diapers, but because of their lexical inventiveness, i.e. was not a familiar expression for describing nappies, it was not excluded. (syntactically unusual juxtaposition)

(c)

Dual meaning

(d)

Provided that at least one of its meanings is descriptive of his goods/services, then it falls within the s3(1)(c) (Doublemint)
Peripheral/ancillary characteristics count

If the mark is descriptive of a peripheral characteristic of a good (e.g. contains 'silver'
for a silver laptop) then that still means it falls within s3(1)(c) and is excluded
(Postkantoor)

1.1 STEP 2: But acquired distinctiveness? - s3(1)

Even if the mark falls under s3(1)(b)-(d), it will not be excluded it the mark has acquired distinctiveness (s3(1)), i.e. acquired secondary meaning/indicates trade origin to the average consumer.

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