This is an extract of our Trademarks document, which we sell as part of our Intellectual Property Law Notes collection written by the top tier of Cambridge And Oxilp And College Of Law students.
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Koninklijke Philips Electronics v Remington: essential function: badge of origin
Functions of Trade Marks:
o Quality function: incentive to maintain good quality
Advertising function: sales promotion or as instrument of commercial strategy
Investment function: preserve reputation attracting consumers/ retaining loyalty
Communication function: communicative instrument for brand/ marketing image. This encompasses above functions as well
Specsavers - protects the mark as it is registered. No need to look for goodwill - just bring to court the paper of certification
Registration of Trade Marks:
File an application with a representation of a mark
Application is examined
Successful application is published in IPO journal
Opposition by anybody who has problems with application, 3 months after publication of journal. Can oppose to:
o An identical mark (double identity cases)
o A mark that confuses the origin of a goods/ services to consumers because of their similarity
A later, similar mark that may dilute your business
If no opposition, mark is registered
Just because trademark registered, still needs to be maintained
Principle of specialty: marks cannot be claimed in abstract but only in respect to some goods or services. Have to be given under a class heading (45 classes) with some 11,000 types of goods and services under them.
Section 1, TMA 1994 defines Trademark as a:
o Any sign
Capable of being represented graphically or in a way that competent authorities and public to determine clear and precise subject matter
Capable of distinguishing goods or services of one undertaking from those of other undertakings
START by looking at last point: capability of distinguishing feature
Libertel Groep v Benelux Markenbureau -Found colours can carry meaning (flags,
emotions, team, public services), so while having little capacity to convey information about the commercial source, can still be capable of being distinguishing.
Ralf Sieckmann v Deutsches Patent - Smells can be distinguishing feature
Shiekd Mark v Joost Kist - Sounds can be distinguishing feature
Interactive Intelligence - word mark 'Deliberately Innovative' lacked distinctiveness
A sign - "a symbol for something else"
Libertel Groep - Colours can be signs
Dyson - sought to register the transparent bin or collection chamber forming part of the external surface of a vacuum cleaner. Can be dist. but not a sign. Instead it is a CONCEPT
Represented graphically or in a way that competent authorities or public can determine clear and precise subject matter
Purpose of requirement is to:
o Enable competent authorities to know what mark is so that they can rule on its protectability and allow for objections (reproduce in 8x8cm box in TM Journal)
o Enables courts to determine the scope of the right when assessing infringement.
o Enables mark itself to perform its functions (mainly communication) since it can be perceived by the consumers in a precise and uniform manner
! Post January 2019 will replace 'capable of graphically being represented' to
'sufficiently clear and precise'!
Sieckmann criteria - defines what graphic is, particularly by means of images, lines or characters. Representations must be:
Objective (by a reasonably observant person)
Sieckmann case dealt with smell marks of a chemical substance: balsamically fruity with a hint of cinnamon. Provided chemical formula, written description and sample of the smell. Chemical formula was found to be graphic but not a representation (does not tell what the smell is). Also indeterminable by the public. Found also to not be sufficiently intelligible. Was not clear
(needed more information) and was subjectively determined so each person could describe the smell differently. Odour sample was a representation but not graphic because not sufficiently stable or durable. Very high threshold to meet to show that smell should be trademarked.
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