Trademarks - REFUSAL OF REGISTRATION

Trademark will be REFUSED REGISTRATION on:
1. ABSOLUTE GROUNDS (S.3 Trademarks Act 1994) - where there are INHERENT CHARACTERISTICS of the mark
2. RELATIVE GROUNDS (S.5 Trademarks Act 1994) - where its TOO SIMILAR to an existing mark.
ABSOLUTE GROUNDS
1. S.3 (1)(A) Trademarks Act 1994 - Dont Satisfy S.1 Trademarks Act 1994
2. s.3 (1)(B) Trademarks Act 1994 - Devoid of Distinctive Character
  1. It requires consideration of the mark on its own, saying WOULD THE PUBLIC KNOW THAT THE MARK OR SIGN IS A TM?
    1. Nestle v OHIM - DOES THE TM HELP THE CONSUMER MAKE A REPEAT PURCHASE IF THEY LIKED THE GOODS?
      1. Test in Phillips v Remington - Does the CONSUMER REGARD the SIGN as a TM, taking in all the RELEVANT CIRCUMSTANCES, in which the consumer can come to an OVERALL ASSESSMENT of the MARK?
        Caterham 7 - attempt to TM number "7" was turned down on grounds of lacking character, if it was a combination of numbers, might've been registrable
        AD2000 TM - attempt to register year number failed.
        JOOP! v OHIM - Attempt to register "!" failed
        Nestle v Mars - Attempt to register 'Have a Break' - Held - not distinctive, but 'Have a Break' has had prolonged advertising, so potentially be distinctive through use
  2. PROVISO to S.3 TA 1994 that even if the mark is lacking character, it can become distinctive over time/use
3. S.3(1)(C) Trademark Act 1994 - Descriptive Goods/Service
  1. Descriptive marks that INDICATE QUALITY, QUANTITY, INTENDED PURPOSE, VALUE and GEOGRAPHICAL NAMES are LACKING DISTINCTIVE CHARACTER
    1. GEOGRAPHICAL NAMES - Windsurfing Chiemsee - this case held that Geographical names on its face are unregistrable, they are descriptive for public policy reasons (kept available for all to use). HOWEVER, if the consumer associates the TM with the TM owner and not the geographical name, it can be registrable. Factors - market share, geographical extent, duration of use and size of investment made be undertaking promoting it.
      1. Procter & Gamble v OHIM (BABY-DRY case) - OHIM refused to register "BABY-DRY" as a TM for diapers because it was too descriptive. The combination of "BABY" and "DRY" was not familiar with english expression in respect of diapers, it was not registrable at first instance. HOWEVER, the ECJ allowed the TM because it was "SYNTACTICAL UNUSUAL JUXTAPOSITION" that was uncommon in English language" therefore TM was distinctive. - REGISTRATION ALLOWED
        DOUBLEMINT case - Application by Wrigleys to register "DOUBLEMINT". ECJ stated to look at "whether the word at issue was capable of being used by other economic operators to designate a characteristic of their good/service?. ECJ Held - "DOUBLE" and "MINT" was a tangible reference to mint flavour therefore 'READILY PERCEIVED' and flavour was a prominent feature of product - REGISTRATION REFUSED
        AG proposed an assessment - 1. Relationship between mark and product (if a general descriptionof particular trade - refused), 2. How immediately is the message conveyed (if conveys characteristics of food/service - refused), 3. Significance of characteristics in relation to product in consumers mind.
REFUSAL OF SHAPE MARKS (S.3(2) Trademarks Act 1994
1. Results from NATURE OF THE GOODS (S.(3)(A) TA 1994) - I.E. Basic shape of a tyre or shape of rugby ball.
2. Necessary to OBTAIN A TECHNICAL RESULT (S.3(2)(B) TA 1994
  1. Phillips v Remington - attempt to TM the heads (patent should be sought)
    1. Lego v Mega Brands - attempt to register individual lego bricks
      1. Nestle v Cadbury - attempt to register Kit-Kat 4 finger biscuit
3. GIVES SUBSTANTIAL VALUE TO GOODS (S.3(2)(C) TA 1994
  1. Bang & Olufsen v OHIM - attempt to protect design (design protection should be sought)
ABSOLUTE GROUNDS (S.3(3) Trademarks Act 1994
1. A mark WILL NOT be registered if it is contrary to PUBLIC POLICY or ACCEPTED PRINCIPLES OF MORALITY (S.3(3)(A) TA 1994)
2. A mark WILL NOT be registered if its DECEPTIVE (I.e misrepresenting the nature of products) (s.3(3)(B) TA 1994)
3. A mark WILL NOT be registered if ILLEGAL (s.3(4) TA 1994) - I.e. hallmarks, red cross
4. A mark WILL NOT be registered if made in BAD FAITH (s.3(6) TA 1994) - Lindt v Hauswirth - Lindt sued for TM infringement but Hauswirth counterclaimed alleging registration was made in BAD FAITH. Held - Hauswirth counterclaim failed,
RELATIVE GROUNDS
1. INDENTICAL MARKS ON IDENTICAL GOODS - (S.5(1) TA 1994) - NO NEED TO PROVE CONFUSION
  1. "Contains difference so insignificant that the may go unnoticed by an average consumer" - LTJ Diffusion v Sadas
2. IDENTICAL MARKS ON SIMILAR GOODS AND LIKELIHOOD OF CONFUSION - (S.5(2) TA 1994)
  1. Similarity - "THE GLOBAL APPRECIATION" approach (Sabel v Puma) - taking into account the visual, aural and conceptual similarities of the marks. GREATER LIKELIHOOD of CONFUSION where the earlier TM is highly distinctive.
3. SIMILAR MARK ON IDENTICAL OR SIMILAR GOODS AND LIKELIHOOD OF CONFUSION - (S.5(2)(B) TA 1994)
4. IDENTICAL OR SIMILAR MARK (ON ANY GOODS) AND USER TAKES UNFAIR ADVANTAGE, OR IS DETRIMENTAL TO THE DISTINCTIVE CHARACTER OR REPUTE OF THE MARK - (S.5(3) TA 1994)
  1. General Motors v Yplon - GM was the proprietor of of TM "CHEVY" for vehicles, which objected to Yplon registering the mark "CHEVY" for detergents and cleaning materials. Held - marks must have acquired reputation with a SUBSTANTIAL PART of the PUBLIC on the product in question

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Trademarks - REFUSAL OF REGISTRATION

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	Created by Samantha Yuk over 9 years ago