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Trademarks Subject Matter Notes

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1. Subject Matter - Is it a registrable mark?
Test: A sign must comply with the definition of a TM in s.1(1)/Article 4 CTMR.

!! S.3(1)(a): Failure to comply with any requirement means the sign will not be registered as absolute refusal ground.
!! S.47: If a mark is incorrectly registered, the registration may be declared invalid.
--------------------------------------------------------------------------------------------------------------------------------------------(i) What is a 'sign'?
No statutory definition. No limit a priori on what constitutes a sign - very broad. Positive approach taken. Starting point: S.1(1) non-exhaustive list: 'words (including personal names), designs, letters, numerals or the shape of goods or their packaging.'Wm. Wrigley/Light Green [1999]; 'to be interpreted as a very broad, 'open' and general term encompassing all conceivable types of marks (including, for example, sound marks and three-dimensional marks)' (para 17).Ralf Sieckman [2002]; ECJ held the concept of a 'sign' is not limited to visually perceptible matter. Both sounds and smells fall within this category.

Limitations:

1. Application must be specific. Registration of a mere, unspecific property of a product would provide an unfair advantage to the trader who registered it:

- Dyson [2007]; Facts: Attempt to register idea of a transparent collection chamber on a vacuum cleaner in 'all conceivable forms'. Decision: Too vague. ECJ held this was a mere property of the product, and the protection of anything so unspecific (i.e. no colour was even mentioned) would provide any unfair advantage to the trader because he would be able to prevent other manufacturers from selling vacuum cleaners with transparent collection bins. Sign must be capable of conveying origin. Criticism: + Bently: Not clear when a TM gives 'unfair advantage' nor what this has to do with whether the subject matter is a 'sign'. Maybe the real objection in both bases is that the application is applying for a category of signs, and the TM system requires individual apps.

2. An applicant for a colour mark must establish that the colour in question is seen as a 'sign', to prevent unfair advantage, and not simply a property or characteristic of a thing:Heidelberger Bauchemie [2004];

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