Law Notes Intellectual Property Law Notes
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:
Must be a (i) sign (ii) capable of being represented clearly and precisely.
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.
As per Recital 13 New Trade Mark Directive 2015 (New TMD), this still requires the 7 Sieckmann criteria to be met.
Shapes
Verbal description of a shape mark: not clear and precise (Dyson ; Nestlé v Cadbury)
Smells
Unlikely to be clear and precise as no international classification of smells.
Verbal description of smell: not clear and precise (Sieckmann)
Sample of smell: not durable (Sieckmann)
Chemical formula: not intelligible (Sieckmann)
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)
Sound
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)
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.
Taste
No - not clear and precise (Levola Hengelo)
The mark must possess a distinctive character, i.e. indicate trade origin to the average consumer (Linde, Winward)
For shapes
Shape mark is only distinct if the shape departs significantly from the norms and customs of the relevant sector. (London Taxi)
For colours
Colours are devoid of distinctive character (so cannot be registered) except in exceptional circumstances (Libertel)
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.
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)
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.
A word mark which has a descriptive and non-descriptive element
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)
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)
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)
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)
Market share held by the mark
Whether the use of the mark has been for a long time + geographically widespread.
C has spent a lot of money/done extensive advertising using the mark
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.
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.
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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