Absolute Grounds New

A mark will not be registered if it is devoid of distinctive character

The concrete test.

Phillips v Remington

The mark is considered through the eyes of the of the consumer> Making an overall assessment of the mark and taking in to account the relavant circumstances does the person regard the sign as a trade mark ( as indicating origin)

The concrete test is applied the same regardless of the mark. The reason that some marks are more likely to lack distinctness than others is because the test is reliant on customer perceptionFor example, customers are less likely to percieve color scheme as indicating origin than a word or logo

the question to ask is, is the mark naturally capable of identifying the product as originating from a particular undertaking, thus distinguishing it from other undertakings, with no prior education for the public

(i.e - intel is inherently distinctive)

no it can acquire distinctive character

Windsurfing Chiemsee

(SLIM PIG)

Statements from chambers of commerce and industry

Longevity of use;

Intensity;

Market share;

Proportion of the relevant class of persons who identify goods and services as originating from that particular undertaking because of the mark;

Investment in promoting the mark;-

Geographical spread.

s1(1) is concerned with the potential of a sign to distinguish, when considered in abstract s1(3) is concerned with whether the sign ACTUALLY does so, either inherently or factually (per Phillip J in Philips Electronics v Remmington)

court said that even though a sign has the potential to function as a trademark under s1(1), it must still be assessed 'concretely' under s3(1)(b)

ECJ put this conundrum to rest by saying 'there is no class of marks having a distinctive chartector by nature or by the use made of them which is not capable of distinguishing goods or services within the meaning of Art.2 of the directive"

Phillips v Remmington

The concrete test is applied the same regardless of the mark. The reason that some marks are more likely to lack distinctness than others is because the test is reliant on customer perception

because they are usually seen as a simple property of things, consumers are not used to making assumptions based on color alone

Colour can in some circumstances distinguish the goods or services of one undertaking from those of other undertakings (but does not do this inherently)

Colour is probably not distinctive (from the viewpoint of the average consumer) without prior commercial use but colour can acquire distinctive character

When considering applications to register colours, need to take into account the public interest relating to unjustified monopolies on colour to the detriment of competitors as number of distinguishable colours is limited.(color depletion theory)

On the other hand: if the number of g/s is very restrictive and market is specific, colour can be registered.

A color is more likely to be distinctive where it is registered for a narrow class of goods for a narrow market

quote - "where the number of goods for which the mark is claimed is very restricted and the relevant market is very specific"

and

color is unlikely to be distinctive without prior commercial use

orange for industrial robots - no

a single color mark is only in exceptional circumstances, for a narrow range of goods and a well educated public

KWS SAAT AG v OHIM - pre libertel

> court allowed registration of a shade of orange in relation to technical and business consultancy services in the field of plant cultivation

-justified b/c very narrow scope of the sector to which the mark related

"because as a rule, color per say is not in current commercial practices used as a means of identification"

Heidelburger Bauchemie

ECJ held that a colour combination which isn't spatially delimited is not a registrable trade mark, because it is not sufficiently precise that competitors can see from the register exactly what is protected.

This type of mark would encompass too many possible combinations and interpretations.

Impossible to say that a consumer would be able to remember each one with certainty

. Arrangement of colours in a colour combination mark must be systematic, predetermined and uniform.

held that a grey-green color scheme on garden tools would be percieved by customers as relating to the finish of a product, as opposed to indicating its origin

because non distinctive marks are not seen as indicating origin - LINDE AG 2003

Not that difficult in respect of some signs - it doesnt require any creativity or imagination (ECJ IN SAT.2)

Courts have indicated that only a minimal degree of distinctive character suffices for the absolute ground not to apply - Henkel KGA v OHIM

It seems to be a fairly easy test to satisfy -

HOWEVER as mentioned before it will be more difficult in the case of non-standard marks as consumers tend to percieive non-standard marks as part of the product itself.

Considers the mark as a whole and makes an overall assessment because that is what a consumer would do.

Is the mark on its own capable of distinguishing without first educating the public thatit is a mark?

british sugar v James Robertsons

Registration of SURNAMES are traditionally viewed with caution unless accompanied with evidence of aquired distinctiveness

Nichols PLC v Registrar of Trademarks 2005

Oskas trade mark application

name nicholson for vending machines

authoroties may not use a general criteria such as predetermined rules about how common the name is - used to be like 500 times in phonebook

HOWEVER, commoness may play a part in the consumers perception of the origin of goods

Morgan for clothes

no t/m too common and frequantly used in clothing

relavent goods are important, in Oskas it was held that in the clothing industry consumers see names as indicative of source only where they are full

quite hard to register a shape

facts
the application was for a 3d shape of a dishwasher tablet in combination with an arrangement of colors

quote

Court said " only a t/m which departs significantly from the norm or customs of the sector and thereby fulfils its essential function as indicating origin, is not devoid of any distinctive charecter"

Test two limbs

1.is there a difference which departs significantly from the norm between the shape of the goods and the shape which is subject to the application?
(essentially an assessment of whether there is anything unusual about the shape such that the relavent consumer would remember it)

2. if so, is it indicative of course
(essentially, does the consumer think of the shape as being indicative of source rather than purely functional or decorative)

Held
the 3d shape of the dishwasher tablet in this instance was not registerable.

for all type of goods, consumer perception will vary from sector to sector

ST ALBRAY CHEESE

DEPARTED SIGNIFICANTLY FROM THE NORMS AND CUSTOMS

FAILED ON PART B - THE CONSUMER WOULD NOT VIEW THE SHAPE AS INDICATING ORIGIN

application for the shape of cheese, flowery

no other cheese shape is a trade mark
an average consumer surveying cheese in a supermarket would "be astonished to be told that one of the shapes is a trade mark"

There must be differences between the way the mark would normally be used and the the combination of elements which must be ready perceptible from those used typically by other traders of the goods in questionso the difference must be readily perceptible

attempted to register the shape and color of wethers original

appealed to court of justic

brown color and shape is not a significant departure from those commonly used in sweets

"the mark comprised a combination of typical features which are common of the goods in question - it is a variation of certain basic shapes commonly used in the confectionary sector"

public would not easily percieve the difference (corrollary to a)

FRISHPACK v OHIM - flat box for cheese was only a "slight and unremarkable variation of the typical shape"


and august stork

DaimlerChysler corp v Ohim

shape of grilles for their jeeps

the grille design was held to be "unusual" and "not alltogether commonplace"

the grilles have "become an essential park of the look of vehicles and a means of differentiating between existing models made by manufacturers"

a well educated public

held to be distinctive because public hadbeen educated that bottle shape indicated origin AND bottle was striking and easy to remember.

Consumers will readily recognize words which have no relation to the goods, such as NOXEMA for shaving cream, or APPLE for sound recordings, as indicating origin

Lloyd-Schumar
"reasonably observant and circumspect:

AVERAGE CONSUMERS LEVEL OF ATTENTION IS HIGHER WHERE GOODS ARE EXPENSIVE OR MORE EXCEPTIONAL USE

applicant argued that the relevent public was a subset of consumers with a higher level of attention than average

> product was top of the range high value music speakers

> court accepted this argument

Procter & Gamble - the average consumers level of attention to the shape of a washing up tablet is not very high

> failed to prove that consumers who pay little attention would perceive the shape as emanating from a specific source

distinguish from jeep

the assessment of whether a sign has a distinctive character requires an examination as to whether the sign without reference to actual use, would enable the targeted public to distinguish the marked goods from those of other undertakings when making a purchasing choice

A sign with no inherent distinctiveness may acquire it through continued use, so that it becomes ingrained in the mind of the purchasing public as being associated with commercial origin

the 3d shape of a coke bottle was registered in this way