Trademarks - absolute grounds PDF

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Trademarks – Absolute Grounds      

There are two broad grounds for refusing to register a mark - absolute grounds and relative grounds. The concept behind absolute grounds is that the proposed trademark is unregistrable either because it is considered inherently incapable of distinguishing goods, or it does not satisfy other policy reasons. While the third requirement in s1(1) is the capability to distinguish, the s3 criteria considers some signs not to have the innate or inherent capability to distinguish. S3 of the 1994 Act gives the absolute grounds for refusal, and its language is derived directly from Article 7 EU Trademark Regulation. (EUTMR). Section 3 of the TMA sets out 10 categories of signs which cannot be registered. However, signs in 3 of these categories are capable of registration if accompanied by proof of secondary (or acquired) meaning. The categories of marks which cannot be registered unless they show proof of a secondary (or acquired) meaning (i.e., acquired distinctive character as a result of use) are:  S3 (1)(a) - signs which do not satisfy the requirements of section 1(1)  S.3(1)(b) - Trademarks which are devoid of any distinctive character  S.3(1)(c) - Trademarks which consist exclusively of signs or indications which are descriptive of the goods or services themselves  S.3(1)(d) - Trademarks which consist exclusively of signs or indications which have become generic terms in general language or the specific market sector

Art. 7 EUTMR 

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The following shall not be registered: a) signs which do not conform to the requirements of Article 4 b) trademarks which are devoid of any distinctive character c) trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service d) trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade The types of marks that can fall into the above categories are words/signs/devices/shapes which are wholly descriptive of the product, e.g. “Soap powder” for soap powder or suggest a quality thereof, e.g. “Polar” for refrigerators, marks that are laudatory, e.g. “Best” or “Mega”, marks that only indicate a geographical origin, e.g. “Yorkshire Bitter”. According to s3(1)(a) of the TMA 1994, signs which do not satisfy the requirements of section 1(1) will not be registered. s1(1) refers to a sign, capable of clear and precise representation and capable of distinguishing goods and services. S3(1)(a) uses the phrase ‘sign’ whereas other subsections use ‘trademark’ so it has been questioned whether the different phrases has created a separate ground for refusal. Based on the decision of the Court Appeal in West (t/a EastEnders) v Fuller Smith & Turner Plc [2003], it could be concluded s3(1)(a) does not constitute a separate ground for refusal.

There is also support for this decision from the CJEU in Philips v Remington when it concluded that if a mark is factually distinctive there is no separate ground for separate objection that is incapable of distinguishing. Absolute Grounds for Refusal 

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S3(1)(b) - S3(1)(d) TMA 1994 provides absolute grounds for refusal of a mark. Under s3(1)(b), the Registrar will refuse to register a mark where it is felt that the mark does not have any distinctive character. In other words, a devoid of distinctiveness objection could be raised. Under s3(1)(c), the Registrar will not register marks that are simply descriptive. When marks only indicate the kind, quality, quantity, intended purpose, value, geographical origin, among other characteristics of goods or services, such will be taken as descriptive and will fall under descriptiveness objection. according to s3(1)(d), marks that have become customary or generic based on the usage cannot be registered. These grounds do overlap therefore their operation is cumulative. From case law, most objections have been based on “descriptiveness” of a mark. Evidence has also shown that petitioners have relied on wrong objections. Biomild [2005] - the Office for the Harmonisation of the Internal Market (now the European Union Intellectual Property Office) took the position that if a mark is descriptive, it can be concluded that is also devoid of character. If this is correct, this position will not be accurate if it is vice versa - Postkantoor [2004]

Marks devoid of any distinctive character - s3(1)(b) 

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Linde, Winward & Rado [2003] – the ECJ held a mark will be taken to have a distinctive character if “for all trademarks, that the mark is capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from other undertakings”. British Sugar Plc v James Robertson & Son Ltd [1996] - Laddie J considered that the phrase should be viewed in respect of a mark on its own, without any use, stating “is it the sort of word (or other sign) which cannot do the job of distinguishing without first educating the public that it is a trademark?” If it is, then it is devoid of any distinctive character. The consumer test – the court will focus on how the trademark would be perceived by the relevant public, which consist of average consumers of the goods and services in question. The levels of attentiveness needed by the average consumer differs from sector to sector, and everyday goods needing lesser attention than the more expensive goods. ‘it does not necessarily follow that a weaker distinctive character of a sign is sufficient where the relevant public is a specialist.’ And when it comes to marks in a foreign language, the characteristics of a British person is used, whether they are able to understand the meaning of the sign. In Matratzen Concord v Hukla Germany - the German word Matratzen meaning mattress, has been registered for mattresses in Spain. The overall impression that the mark makes will be taken into account, i.e. orally, conceptually, and visually. In most cases, single letters, numbers, grammatical signs, and simple geometric shapes will be treated as ‘devoid of distinctive character. The reason is that

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customers would not be able to assume that such signs indicated one particular source. Mag Instrument v OHIM [2005] - Mag Instrument Inc. requests the Court to set aside the judgment of the Court in Mag Instrument v OHIM (Torch shapes) [2002]. The OHIM (Office for the Harmonisation of the Internal Market, (now known as the European Union Intellectual Property Office) refused an application to register the shape of a torch as a trademark. The court held that where a threedimensional mark is constituted by the shape of the product for which registration is sought, the mere fact that that shape is a 'variant' of a common shape of that type of product is not sufficient to establish that the mark is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94. Only marks which are “significantly different from the norm or customs of the sector and thereby fulfils its essential function of indicating origin, is not devoid of any distinctive character for the purposes of that provision”. Pure colour or single colour or even colour combinations are likely to be treated as devoid of distinctive character. Libertel Groep BV v Benelux-Merkenbureau - Libertel applied to register the colour orange as a trademark for telecommunications goods and services. The application contained an orange colour rectangle together with the word orange. It was held that “a colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking.” Public Interest - The court observed the fact that the number of colours actually available is limited means that a small number of trademark registration of certain services or goods could exhaust the entire range of colours available. Such an extensive monopoly would be incompatible with a system of undistorted competition, in particular because it could have the effect of creating an unjustified competitive advantage for a single user.

Acquired a distinctive character as a result of use   

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The grounds for prohibition in s3 are qualified by a proviso which allows an inherently unregistrable sign to become registrable through use. This is an exception to the ground for refusal. The burden of proof is on the trademark applicant to show such acquired meaning and actual use must be shown. The guiding principles of trademark law are that (1) the mark should be idiosyncratic in order to perform its origin identifying function, and (2) that traders should not be able to trade on another’s goodwill or reputation as established in the mark. Acquired distinctiveness is usually more concerned with that second principle, since a mark which, though not distinctive in and of itself, has through years of use acquired such distinctiveness in the minds of the consuming public, should be protected as against others who then try to trade on that acquired goodwill. Windsurfing Chiemsee v Attenberger [1999] - dispute with regard to the geographical term Chiemsee (the name of a lake in Bavaria – and as such, prima facie, not capable of registration). The case established the tests to be satisfied to establish that a mark has acquired distinctiveness through use. According to the court, regard must be had to:  The Assessment of market share held by the mark,  The geographical widespread and duration of use  Amount invested in promoting the mark

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 Proportion of the relevant class of customers who could attribute the mark to the goods as being a product of the undertaking under consideration.  Statements from chamber of commerce and relevant industry, trade or professional association An overall assessment must be made of the evidence, weighing up the extent of use against the strength of the objection and any perception that the mark should be kept free for others to use descriptively. Distinctiveness can also be acquired if an otherwise descriptive mark has already been used as part of another mark - Société des Produits Nestlé SA v Mars UK Ltd [2006] - Nestlé applied to register “Have a Break”. The Trademarks Registry accepted Nestlé’s evidence that the mark had become distinctive, but Mars opposed the application. The Registry, and the High Court on appeal, held that a mark which is not used on its own could not acquire a distinctive character in order to be registered. Therefore, because "Have a Break" had been used predominantly as part of the longer slogan "Have a Break...Have a Kit Kat", it could not be registered. The Court of Appeal referred the question of law to the ECJ, which held that the mark in respect of which a registration is sought need not have been used independently. It is just necessary to show that whatever use has been made of it gives rise to a perception by the relevant public that the product or service it is used in relation to comes from a given undertaking. Distinctiveness must be established as at the date of filing of the application. Where the application is still pending, the applicant is required to prove that the mark has acquired distinctiveness before the date upon which the application for registration was filed.

S3(1)(c) - Descriptiveness 

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Article 7(1)(c) EUTMR - “trademarks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service; cannot be registered.” The aim of this requirement is to minimise the negative impact that the grant of TM may have on businesspersons in the same line of business with the applicant. If trade law should allow one trader to obtain property protection over description or generic mark, this would prevent other traders to be able to market their own product. For example, if words like “sugar” or “fruit” should be trademarked, other people in this type of business will be denied the opportunity to exploit the same word. Exclusively – for registration to be refused it must be shown that the mark consists exclusively of signs that characterise the goods and services. What this implies is that the mark as a whole must be descriptive. Besnier SA’s Trademark Application [2002] - the registration of “Day by Day” was refused since this term would naturally be used by other traders to denote the time of delivery or availability of their goods and services. The purpose of s3(1)c was to prevent registration of phrases/signs etc. that other traders would legitimately wish to use. Procter & Gamble Co. v OHIM [2001] - Proctor and Gamble applied to register “Baby-Dry” as a Community Trademark for nappies. The mark was initially refused on the basis that the mark consisted exclusively of words that were

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descriptive of the product, i.e. the main purpose of the goods was to keep a baby dry. However, appeal to the ECJ was successful. Whilst the court conceded that the mark undoubtedly alluded to the goods’ function and each of the words individually referred to the purpose of the goods they considered that the "… syntactically unusual juxtaposition is not a familiar expression in the English language, either for designating babies' nappies or for describing their essential characteristics" , i.e., you would not call a nappy a 'baby dry' and as such the term Baby Dry is not as a whole descriptive of nappies. The ECJ also found that what was important was the overall effect of the mark, not the components that make it up. In their own words Baby and Dry were a: "lexical invention bestowing distinctive power on the mark so formed". At the time of the Baby Dry case it was thought that this would open the floodgates as far as protecting descriptive words was concerned as it seemed to suggest that even descriptive marks could be registered provided that they have acquired a second meaning. However, the ECJ soon dispensed with these ideas with their decision in the case of Doublemint. OHIM v Wm. Wrigley Jr. Co. [2003] - Wrigley applied to register the mark “Doublemint” for chewing gum but their application was refused by the OHIM as according to the ECJs ruling the combination of the undoubtedly descriptive words 'Double' and 'Mint' fell within the provisions of article 7(1)(c) (mirrored by S3(1)(c) of the Trademark Act 1994). In the opinion of the ECJ the mark Doublemint consisted exclusively of a combination of descriptive words that served merely to designate the characteristics of "mint flavoured" or "mint-scented" products. They interpreted Article 7(1)(c) as precluding from registration any mark consisting exclusively of a sign or indication where "at least one of (the) possible meanings (of such sign or indication is to) designate a characteristic of the goods or services concerned”. Needless to say, this decision caused much confusion as it appeared to be at the other end of the spectrum in comparison to the decision in Baby Dry, despite the fact that it explicitly did not overrule the earlier case.

S3(1)d - “Marks which consist exclusively of signs or indications which have become generic”   

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This provision addresses marks which were distinctive in the past, but which have now lost their distinctiveness and have become generic by the time an applicant made a request for registration. The mark must have become customary (i) in the current language and (ii) in the bona fide and established practices of the trade. The question is here is not whether the mark is common but whether it is customary in the trade, that is, whether is being used by other traders in the relevant product or indeed, whether it is used by customers to refer to that product. Examples of such marks “Bed Sale” or “Bargains Galore”, ASPIRIN, LINOLEUM, YO-YO British Sugar Plc v James Robertson & Son Ltd [1996] - British Sugar sued James Robertson & Sons Ltd for registered trademark infringement. Robertson's counterclaimed for revocation of the registration. British Sugar's products are well-known to the public under their mark "Silver Spoon" which appears on a large range of their products in an oval device. Silver Spoon Treat syrups have about 50% of the ice cream topping sector of the market. Laddie J held that “Treat” for sauces and syrups probably fell within this objection.

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RFU and Nike v Cotton Traders [2002] – there was evidence of sales over many years of England rugby shirts bearing a red rose design and it was found that a CTM consisting of a similar rose device was invalid on the basis of art 7(1) (d)CMTR (equivalent to s3(1)(d) TMA 1994) as it had become customary in the trade to use the rose to associate shirts with the England rugby team.

Other Marks Incapable of Registration – s3(2) Apart from provisions of s3(1), there are specific provisions on other marks which are incapable of registration.  Previously, s3(2) of the TMA 1994 focused on shapes that could not be registered. For example, the former s3(2) had only provided for (i) the shape which results from the nature of the goods themselves, among others.  The 2015 reform amended the section so that it could cover signs which consist exclusively of other characteristics. For a clear picture, the amended s3(2) now reads: A sign shall not be registered as a trademark if it consists exclusively of: a) the shape or another characteristic which results from the nature of the goods themselves, b) the shape another characteristic of goods which is necessary to obtain a technical result, or c) the shape or another characteristic which gives substantial value to the goods.  This provision can also be found in Art 7(1)(e) of the EU Trademark Regulation.  The court had explained in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd that this amendment is underlined by the need ‘to prevent trademark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors. So, from this decision, it is clear that s3(2) does not seek to ensure that the perpetual monopoly granted by trademark is not abused by registration of items which should be covered by patents or designs but to allow freedom of choice.’  So, under this amendment, it is not just shape that would be excluded if it has these features, but any another characteristic. So, for example, a product characteristic such as colour, which may be chosen for its technical function, eg. radiating heat or increasing visibility would fall under this exclusion. So other nontraditional marks are also to be discussed within this exclusion. 

Other Absolute Grounds for Invalidation or Refusal of Registration  

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The Trademark also contains other grounds which are: (3) A trademark shall not be registered if it is: a) contrary to public policy or to accepted principles of morality, or b) of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service). (4) A trademark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of EU law and International agreement relating to trademark protection. (5) A trademark shall not be registered in the cases specified, or referred to, in section 4 (specially protected emblems). (6) A trademark shall not be registered if or to the extent that the application is made in ba...