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Trademarks Absolute Grounds For Refusal Notes

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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.

--------------------------------------------------------------------------------------------------------------------------------------------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.
--------------------------------------------------------------------------------------------------------------------------------------------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.

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