Trade mark registration

Trade mark registration

1. Filing the application

   • 1) The statement or specification of the goods or services: must define the goods and services for which protection is sought
     • CIPA v Registrar of Trade Marks (IP Translator): ECJ indicated that the specification must be 'formulated with sufficient clarity and precision to unable the relevant competent authorities and economic operators to be able to determine, on that basis alone, the extent of protection sought or conferred.
     • Mister Long Trade Mark: broadly defined statements might have to be limited during the process of registration to avoid objection to validity of mark
     • Postkantoor: national registries may not accept marks 'subject to the condition that they do not possess a particular characteristic'. PENGUIN for books (other than books about penguins). Distinction between CHARACTERISTICS (some specific quality or feature that can be present or not without altering th nature, function or purpose of the goods and SUBCATEGORIES (ref to nature, purpose or function of the goods)
     • Croom's Trade Mark Application: clothing excluding 'haute couture' impermissible, refers to style or quality but 'children's shoes' would be allowed because identifies features of size (nature, purpose, function)
   • 2) Classification
     • S34 of Trade Marks Act 1994: goods + services shall be classified for the purpose of registration according to a prescribed system of classification; 34 classes of goods and 11 classes of services
     • CIPA's application (IP Translator): CIPA applied to register IP translator for various services, using general terms of the heading of Class 41 of Nice Classification. Held that use of class headings to be used in formulating specification was permissible, provided that the effect was to define the goods or services clearly and precisely (some class headings do not meet the criteria, like goods of common metal not included in other classes). AP has suggested that a process must be adopted that enables registrants to clarify what was intended one way or other
   • 3) Representation of the sign
     • Representation must be adequate
     • Need for representative registration + graphic representation rather than depositing a sample
     • Three functions
       • 1) Property function: define the scope of the trade mark owner's rights and delineate with a degree of precision exactly what sign is protected
       • 2) Information function: enable publicity to be given to the fact that an applicant is seeking registration, publicity being provided by publication in the Trade Marks Journal (so that 3rd parties wanting to register can find it)
       • 3) Administrative function: make bureaucratic dealing with sign (i.e. classification + comparison with other signs) more manageable
     • Ralf Sieckmann: a graphic representation is one that utilizes images, lines or characters. MUST BE CLEAR, PRECISE, SELF-CONTAINED, EASILY ACCESSIBLE, INTELLIGIBLE, DURABLE AND OBJECTIVE (Sieckmann criteria)
     • Libertel: AG Léger said that representation was sufficiently accessible + intelligible if it did not require excessive efforts to be taken for the public to understand it
     • Shield: accessibility + intelligibility does not require 'immediate' intelligibility but only that intelligibility should be 'easy' (a music score would suffice as representation of a sound)
     • Word marks and figurative marks
     • The liberalisation of marks after TMA 1994
       • 1) Shape and appearance of products
         • Verbal description of shape or packaging will rarely be satisfactory because not precise enough, design drawings or photographs needed
         • JW Spear & Son Ltd, Mattel Inc v Zynga Inc: 'three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a numeral in the range of 1 to 10' was said to lack clarity, precision and objectivity
       • 2) Colours
         • LibertelGroep BV v Benelux-Merkenbureau: ECJ considered the extent to which TMs comprising a single colour could be registered. Applicant sought to register the colour orange for telephone books in Class 9. ECJ accepted that single colours could be represented graphically, but assessment required, were 7 Sieckmann requirements met? Mere sample of colour would not satisfy Sieckmann, exact colour on paper could not be protected from effects of passing of time. Verbal description no good. Designation using internationally recognised identification code might constitute graphic representation. Combination of sample, verbal description, international code might satisfy Sieckmann.
         • Heidelberger Bauchemie: graphic representation of two colours; app to register blue and yellow for various goods including adhesives, solvents, paints. ECJ held that for sign of two or more colours designated in the abstract and without contours would be sufficiently clear + precise only if app specified that the colours would be systematically arranged by associating the colours concerned in a predetermined and uniform way. App did not satisfy requirement of Art 2 of TM Directive.
         • Société des Produits Nestlé SA v Cadbury UK: TMR should have rejected Cadbury's application for 'the colour purple applied to the whole visible surface, or being the predominant colour applied to the whole visible surface, of the packaging of the goods'. Not capable of graphical representation in a manner that satisfied Sieckmann.
         • UK IPO, Graphical Representation: app might succeed if it specifies colours + their distribution on the product in relation to each other (here: colour blue, representing 50% of surface area, runs horizontally above colour red, forming a striped whole)
         • Mars Inc/Purple and white: description and reproduction must correspond
       • 3) Smells
         • Vennootschhap Onder Firma Senta/The smell of freshly cut grass: OHIM held that a verbal description of a smell was sufficient
         • Ralf Sieckmann: ECJ overturned Vennootschapp => smell will not be adequately graphically represented by verbal description because not 'sufficiently clear, precise and objective'. S had sought to register smell of cinnamon as TM in Germany. Chemical formula + sample => sample not graphic representation + not durable or stable; chemical formula not sufficiently intelligible, clear and precise
         • Eden SARL v OHIM: Court has not ruled out possibility of there ever being acceptable graphic rep of smell but unlikely that there will be many national or Community marks granted for smells
       • 4) Sounds
         • Shield Mark BC v Joost Kist: app of the GR requirement to sounds; two marks: first 9 notes of Fur Elise (musical notation incl instructions to be played on piano) + the crowing of a cock (onomatopoeic rep 'kukelekuuu' + verbal description 'the crowing of a cock'). Would requirements for GR of a sound be met by note bar, description in words, voice picture or sonogram, sound carrier, digital recording or combination of these? ECJ held that score with everything on it would satisfy Sieckmann (even if not everyone can read music because intelligibility does not need to be immediate. Mere verbal description lacked clarity + precision. Onomatopoeic rep lacked consistency with sound + perceptions are subjective or culturally determined => cock-a-doodle-doo)
         • MGM Lion Corporation: spectograms or sonograms OK even if average person would need training to read them
         • Edgar Rice Burroughs, Inc. Case: overturned MGM Lion, sound spectrogram of Tarzan's yell not sufficient graphic rep; spectrogram not self-contained or easily accessible => more faithful to Sieckmann
         • Reform: European Commission said that graphic representability is outdated. Wants to abandon 'graphic' requirement to allow for use of sound files but to keep Sieckmann
       • 5) Tastes
         • Eli Lilly/The artificial taste of strawberry flavour: art flavour of strawberry in relation to pharmaceuticals. Rejected on ground that mere verbal description not sufficiently precise + taste not distinctive. Verbal description not acceptable as GR of gustatory sign
   • 4) Bona fide intention to use: mark is being used or bona fide intention to use the mark
   • 5) Series of marks: a number of trade marks that resemble each other as to their material particulars and differ only as to matters of a non-distinctive character not substantially affecting the identity of the trademark.