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Trademarks 1 Cases

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TRADEMARKS 1 Registrable Subject Matter Dyson v Registrar of Trade Marks [2007] (ECJ) Dyson had made and sold bagless vaccum cleaners since 1993. Sought to register trademark of: "a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation" (image attached to application). High Court took view that illustrations were entirely descriptive of product. Then made a preliminary reference to ECJ on issue of distinctiveness; however ECJ ignored this question, and instead chose to answer question of whether subject matter of application was in fact capable of registration at all. Held:

1. Subject matter of case is not a particular type of transparent bin or collection chamber.

1. Rather it is all the conceivable shapes of such a bin or collection chamber.

2. Thus the sign sought to be registered is a mere property of product concerned

3. Hence does not constitute a 'sign' for purposes of Article 2. Justifications

4. Were someone to be given trademark relating to non-specific subject matter, would gain an unfair competitive advantage.

1. i.e. as they would be able to prevent competitors designing vacuum cleaners with any sort of transparent collection bin on its external surface, regardless of its shape.

2. This would be contrary to purpose of Article 2.

5. Thus on facts,

Graphic Representation Smell Sieckmann [2002] (ECJ) C sought to register trademark described as a 'balsamically fruity odour with a slight hint of cinnamon'. When making application, C also deposited its chemical breakdown and a sample of odour in a container to German Trade Mark office. Issue was whether an intangible sign may be registered. Held:

i) ii)

'Graphic Representation' 1) As per Article 2: Trade mark may consist of something not capable of being perceived visually but only provided it can be REPRESENTED GRAPHICALLY 2) This graphic representation must allow the sign to be represented visually (so that it can be precisely identified in trade mark registry. 3) This representation usually done via images, lines or characters 4) Any graphic representation must be:

1. clear,

2. precise,

3. self-contained,

4. easily accessible,

5. intelligible,

6. durable,

7. objective. 'Facts'

1. On facts, C had not given adequate graphic representation of odour it wished to register.

1. Neither a chemical formula, description of odour nor a sample of odour is sufficiently clear and precise to constitute a graphic representation

2. As these are not sufficiently precise. Eden [2006]
Company sought to register 'smell of ripe strawberries'. Used this verbal description, and an image of a strawberry. Held:

1. A picture is not sufficiently precise to constitute a 'sign'.

2. However is not impossible that in some circumstances, a smell may be adequately graphically represented by a description.

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