This website uses cookies to ensure you get the best experience on our website. Learn more

Law Notes Intellectual Property Law Notes

Trademarks Notes

Updated Trademarks 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...

The following is a more accessible plain text extract of the PDF sample above, taken from our Intellectual Property Law Notes. Due to the challenges of extracting text from PDFs, it will have odd formatting:

Absolute grounds for refusal - s3

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.

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:

    • Tried to register ‘mark consists of a transparent bin on the surface of a vacuum cleaner’ multitude of permutations possible.

  • Nestlé v Cadbury:

    • 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.

Is the mark ‘capable of being represented clearly and precisely’

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.

Applied to specific exotic marks

  1. Shapes

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

  1. Smells

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

  1. Verbal description of smell: not clear and precise (Sieckmann)

  2. Sample of smell: not durable (Sieckmann)

  3. Chemical formula: not intelligible (Sieckmann)

  1. 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)

  1. Sound

  1. 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)

  2. Shield Mark:

    • Verbal description (application said ‘I want to register the crowing of a cock’) = not clear and precise.

    • Onomatopoeia = not clear and precise.

    • Series of notes (AB#CEFG..) = not clear and precise.

    • Musical stave = yes clear and precise.

  1. Taste

  • No - not clear and precise (Levola Hengelo)

Grounds that can be overcome by acquired distinctiveness - s3(1)(b)-(d)

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

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

General

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

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)

  1. For colours

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

  1. For slogans

Compare these two cases

  • KitKat:

    • Slogan trying to register: ‘Have a break’

    • Held: devoid of distinctive character.

    • Why? would be understood by the average consumer to be a neutral invitation to consume a snack, rather than indicating trade origin

  • Audi AG:

    • Slogan trying to register: ‘Advancement through technology’

    • Held: was distinct

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

  1. 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)

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.

Sub-rules

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

  2. Lexical inventiveness

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

    • 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)

  1. Dual meaning

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

  1. 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)

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.

  • Windsurfing factors to consider to determine whether has acquired distinctiveness (i.e. secondary meaning)

  1. Market share held by the mark

  2. Whether the use of the mark has been for a long time + geographically widespread.

  3. C has spent a lot of money/done extensive advertising using the mark

Shape exclusions - s3(2) (+ colour, surface design, sounds, smells)

Under s3(2) TMA, a sign shall not be registered if it consists exclusively of the shape (or another characteristic)

(a) which results from the nature of the goods;

(b) which is necessary to obtain a technical result; or

(c) which gives substantial value to the goods.

Effect of new TMD 2015

  • Following New Trade Mark Directive 2015, (came into force 2019) s3(2) applies to shapes or ‘another characteristic’, i.e. colour, surface design (e.g. pattern mark on surface), sound, smell.

Natural shape exclusion - s3(2)(a)

Under s3(2) TMA, a sign shall not be registered if it consists exclusively of the shape (or...

Buy the full version of these notes or essay plans and more in our Intellectual Property Law Notes.

More Intellectual Property Law Samples