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Law Notes Intellectual Property Law Notes

Trademarks Absolute Grounds For Refusal Notes

Updated Trademarks Absolute Grounds For 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).

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2. Absolute Grounds for Refusal

Cover inherent objections to a sign’s distinctiveness, and various public interest objections, including bad faith. Signs which do not comply may not be registered, or, if registered are liable to be declared invalid.

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S.3(1)(a) Signs which do not conform to the requirements of a trade mark (see above)

Signs which do not fall within the definition of a trade mark just discussed (for instance because they are not capable of graphic representation, or are not ‘capable of distinguishing’) may not be registered.

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S.3(1)(b) Trade marks which are devoid of any distinctive character (most general): These products cannot be distinguished from other items. Guarantee of origin is not satisfied.

Case law development:

  • Joined Cases Linde AG, Winward Industries, Rado Uhren AG [2003]; To exclude marks which are not ‘capable of identifying the product as originating from a particular undertaking and thus distinguishing it from other undertakings’.

  • Eurocermex v. OHIM [2005];

Test: To assess whether a TM has any distinctive character, consider the overall impression given by it. However, it may be useful, in the course of the overall assessment, to examine each of its components.

  • Koninklijke [2004]; A TM’s distinctiveness is assessed by reference to the goods or services listed in the application and the perception of the relevant public. The relevant public consists of average consumers of the goods or services in question, who are reasonably well informed and reasonably observant and circumspect.

  • SAT.1 2004]; An element of public interest is that other traders, offering the same type of goods or services, should not be unduly restricted.

  • Eurohypo AG [2008]; The level of distinctiveness required is not challenging: mark must be ‘devoid’ of distinctive character. No requirement that the sign should exhibit any particular level of linguistic or artistic creativity. But the trade mark must enable the relevant public to identify the origin of the goods or services protected by it, and to distinguish them from those of other undertakings.

Examples which are devoid of ‘distinctive character’

  • Volkswagen AG (Silhouette of a Car) [2008];

Facts: ‘The trademark illustrates the silhouette of a motor vehicle appearing in the dark through the use of an illuminated white dotted line and other areas of the vehicle that are also luminous.’

Decision: BoA held, ‘The appellant rather invokes an abstract idea, namely the notion of a car silhouette seen at night. Just as copyright or design protection, trade mark protection does not have the protection of abstract ideas as its purpose. Protection of a trade mark can only be granted for the representation of the mark as actually filed and to the extent that it discloses distinctive features.’

  • X Technology Swiss v. OHIM (2010); Orange toes for socks not distinctive. The relevant consumer here was ‘just buying socks’. These colours were not an indication of origin, they were decorative.

  • Lindt; Lindt bunnies shape and the red bell were not distinctive.

Part of a mark:

If the mark is a compound mark, the whole of the mark must be assessed for distinctiveness (the overall impression). The mere fact that each element, considered separately, is devoid of distinctive character does not mean their combination cannot present a distinctive character.

  • Cargo Partner v. OHIM [2005];

Facts: Co. wanted to register the name ‘Cargo Partner’ for the transport, packaging and storage of goods.

Decision: Held ‘cargo’ and ‘partner’ were generic words. There was nothing in the sign as a whole to indicate that it had a meaning other than that of presenting a partner offering services of transport, packaging and storage of goods. Even where these two words are put together this cannot be a TM because the overall impression is devoid. Can look at elements leading to an overall assessment.

Vs.

  • SAT.1 SatellitenFernsehen GmbH v. OHIM [2004]; SAT.2, for services connected with satellite broadcasting. Not devoid of distinctive character when considered as a whole. Overall impression was considered just over the line.

  • The Smiley Company v. OHIM (2009);

Facts: Co. wanted to TM half of the smiley face for their emoticons business.

Decision: Held no. CFI pointed out that just because a whole mark is distinctive, it does not mean that an extract from it (part of the sign) is likewise distinctive.

*NB. All signs (every single type) are to subject to the same tests for the purpose of assessing their distinctiveness: Linde AG, Winward Industries, Rado Uhren AG [2003]

But still helpful to look at the way different types of signs are handled in practice: test functions differently depending on the type of sign.

*Letters, numbers, geometric shapes?

  • Numeral 7 [2000]; A plain numeral alone, without any unusual or fanciful feature, is devoid of distinctive character. It ‘belongs in the public domain and forms part of the store of signs available to all traders’.

  • Cargo Partner v. OHIM [2005]; Simple designs such as circles or squares are generally considered to be devoid of distinctive character.

  • BORCO-Marken-Import Matthiesen GmbH [2010];

Facts: App. to register Greek letter alpha (lower case, no graphic modifications) for certain alcoholic beverages.

Decision: Alpha could not be presumed to be devoid. However, there had to be a concrete indication that alpha meant ‘quality’ to the public.

Significance: Test same for all categories of marks. Even though certain categories may be prima facie less likely to be distinctive, must still assess whether, given the facts, the sign is capable of distinguishing the goods or services.

*Colours?

General approach: Though it may constitute a sign,...

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