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53 Cards in this Set
- Front
- Back
What is the absolute ground for refusal under section 3(1)(b) |
A mark will not be registered if it is devoid of distinctive character |
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How is distinctive character assessed for s1(3)(b) |
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) |
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S3(3)(1)(B) applied the same, regardless of what mark it is? If that is the case, then why are some marks more likely to lack distinctness than others? |
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 |
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When is a sign INHERENTLY distinctive? |
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 |
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If a mark is not inherently distinctive is it automatically devoid of distinctive character? |
no it can acquire distinctive character |
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what are the relavent factors in assessing whether a mark has acquired a 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. |
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what is the relationship between 'capable of distinguishing' in s.1(1) and 'devoid of distinction' in s3(1)(b) |
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) |
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Following from above, what does the ECJ in postkantoor say about s1(1) and s3(1)(b) |
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) |
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If a mark is found to be valid under 3(1)(b), are there any circumstances in which it wil be incapable of distinguishing under 1(1) |
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 |
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Is S3(3)(1)(B) applied the same, regardless of what mark it is? If that is the case, then why are some marks more likely to lack distinctness than others? |
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 |
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Why are colors hard to register? |
because they are usually seen as a simple property of things, consumers are not used to making assumptions based on color alone |
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what was said in libertel? |
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. |
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what is the main principles coming from libertel? |
A color is more likely to be distinctive where it is registered for a narrow class of goods for a narrow market |
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what were the goods in libertel |
orange dyed seeds
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what were the goods in Kuka Roboter were they held to be distinctive |
orange for industrial robots - no |
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what did the court add to the libertel principle in kuka roboter |
a single color mark is only in exceptional circumstances, for a narrow range of goods and a well educated public |
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what case is an example of a very narrow class of goods? |
KWS SAAT AG v OHIM - pre libertel -justified b/c very narrow scope of the sector to which the mark related |
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what is the quote in libtertel |
"because as a rule, color per say is not in current commercial practices used as a means of identification" |
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What is the law surrounding distinctiveness of color combinations? (4 points) |
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. |
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Viking v Ohim |
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 |
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why does a mark have to be distinctive? |
because non distinctive marks are not seen as indicating origin - LINDE AG 2003 |
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WHAT HAS THE COURT SAID ABOUT THE DIFFICULYTY OF ACHIEIVING DISTINCTIVENESS FOR THESE PURPOSES? |
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. |
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ARE THE MARKS ASSESED AS A WHOLE, FOR THE PURPOSES OF DISTINCTIVENESS |
Considers the mark as a whole and makes an overall assessment because that is what a consumer would do. |
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What did British Sugar say in relation to what Capable of distinguishing means? |
Is the mark on its own capable of distinguishing without first educating the public thatit is a mark? british sugar v James Robertsons |
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Names |
Registration of SURNAMES are traditionally viewed with caution unless accompanied with evidence of aquired distinctiveness |
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what are the two cases regarding the registration of names |
Nichols PLC v Registrar of Trademarks 2005 |
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what was attempted to be registered in Nichols v Registrar of Trade marks |
name nicholson for vending machines |
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what is the principle arising out of nichols v registrar of trade marks |
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 |
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what was attempted to be registered in OSKAS trade mark application? |
Morgan for clothes |
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what was the decision |
no t/m too common and frequantly used in clothing |
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what is the principle in Oskas |
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 |
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what is the position regarding Shpaes |
quite hard to register a shape |
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Henkel v Ohim |
facts
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? |
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note on consumer perception |
for all type of goods, consumer perception will vary from sector to sector |
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Bongrains trade mark reason for failing |
ST ALBRAY CHEESE |
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facts of bongrain |
application for the shape of cheese, flowery |
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what was the reason for failiure in bongrain |
no other cheese shape is a trade mark |
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What did Auguest Storck add to the test on shapes and 3d marks? |
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 |
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what were the facts of auguest storck |
attempted to register the shape and color of wethers original |
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reasoning behind auguest stork + quote |
brown color and shape is not a significant departure from those commonly used in sweets |
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what is a case to show that the departure from the norms must be significant |
FRISHPACK v OHIM - flat box for cheese was only a "slight and unremarkable variation of the typical shape" |
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what is a case where the shape did pass the henkel test? |
DaimlerChysler corp v Ohim |
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what did they try to register in Daimler Chrysler |
shape of grilles for their jeeps |
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how did the court apply the henkel test |
the grille design was held to be "unusual" and "not alltogether commonplace" |
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what was the element present in Daimler that was not there is Bongrains |
a well educated public |
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why was the bottle shape in Nestle Waters france permitted registration |
held to be distinctive because public hadbeen educated that bottle shape indicated origin AND bottle was striking and easy to remember. |
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word marks - what helps a word mark for the purposes of registration (distinctiveness) |
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 |
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The relavent public |
Lloyd-Schumar |
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Bang & Olufsen v Ohim - level of attention |
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 |
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Case where the consumer level of attention was low |
Procter & Gamble - the average consumers level of attention to the shape of a washing up tablet is not very high |
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What is Bergquist and Curleys definition of inherent distinctiveness |
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 |
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what was Berguist and Curleys definition of acquired distinctiveness |
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 |
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a famous example of a shape with acquired distincitivness |
the 3d shape of a coke bottle was registered in this way |