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s.1 - Definition of TM
Any sign capable of graphical representation…& capable of distinguishing goods/services of one undertaking from those of another
Philips Electronics v Remington - a sign is 'anything which conveys information'
words, words written in a particular way, graphical symbols, shape of goods or packaging, colours or combinations of it
Shield Mark v Joost Kist
Capable of graphical representation - Do not have to be visual messages
For unusual types of mark - must be clear, precise, self-contained, easily intelligible, durable and objective
Eden SARL v OHIM
smell of ripe strawberries was not a valid graphic representation of trademark.
artificial strawberry flavor in pharmaceutical products ✕ graphic representation
color orange as a trade mark for telecommunications
Colour combinations could potentially be registrable if represented graphically by use of internationally recognized method of identification such as the Pantone system
'capable of distinguishing'
Philips v Remington - Could the sign can help a consumer to choose between competing products?
Philips v Remington - s.3(1)(b)
Marks devoid of distinctive characte - Test: Does a reasonably attentive consumer regard the sign as a ™, taking into a/c all the relevant circumstances? (a ™ should function as an indication of origin)
Procter & Gamble
Marks devoid of distinctive characte - Product appearance - dishwasher tablets - consumer do not see combined color and shape as indicating the origin of goods
Wm Wrigley (Doublemint) - s.3(1)(c)
Descriptive Signs - application will be refused if at least one of the possible meanings of the mark describes the goods
Descriptive Signs - Geographical names barred
Wm Wrigley (Light Green) - s.3(1)(d)
Customary in trade - application to register light green for confectionery was refused as the mark was widely used by other sweet manufacturers
Absolutely prohibited marks - s.3(3)(a) & s.3(6)
contrary to public policy, bad faith
Proviso under s.3(1)
marks which are caught by paras (b), (c) & (d) can still be registered where applicant can show acquired distinctiveness [if after use (before application date), the relevant customers regard it as indicating origin] - Windsurfing Chiemsee : Q of fact
✕ register if it is identical to an earlier mark and is in respect of the identical goods & services
No need to prove confusion (assumed present for cases of total identity) - Hölterhoff
Diffusion v Sadas Vertbaudet -s.5(1)
Test : the two marks must be the same in all respects in the eyes of a well-informed, reasonably observant and circumspect consumer
✕ register if identical / similar to an earlier registered mark and is to be registered for goods / services identical with or similar to those which the earlier trade mark is protected
Sabel v Puma
Confusion test -
1. Similarity of marks based on overall impression given by the marks bearing in mind their distinctive components
2. Similarity of goods as per Canon v MGM - ECJ: all relevant factors must be taken into a/c, including the nature of the goods, the end users the method of use, and whether the goods are in competition or are complementary.
3. Global Appreciation test: CODAS Trade Mark -likelihood of conclusion judged through eyes of average consumer by reference to overall impressions created by the marks. A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and vice versa. There is a greater likelihood of confusion where the earlier ™ has a highly distinctive character
where the earlier ™ has a reputation in the MS concerned and where the use of the later ™ without due course would take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier ™.
Other prior rights -
s.5(4)(a) - owner of unregistered mark - show proof that passing-off action will succeed
s.5(4)(b) - owner of copyright/design - conflict of IP rights
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