Trade Marks

Trade Marks

19.1 Functions and Purposes of Trade Marks

• A trade mark serves as an indicator of the trade origin of goods or services from a specific supplier.
• The Trade Marks Act 1994 (TMA 1994) is the primary legislative framework in the United Kingdom.
• Harmonization of trade mark laws has occurred across Europe and through international conventions like the Singapore Trade Mark Law Treaty and TRIPs.
• Main functions of a registered trade mark:
  • Indicate the trade origin of goods or services.
  • Signal the quality of a product associated with a supplier.
  • Represent the value of a brand image.
  • Act as a commercially exploitable piece of property.

19.2 Advantages and Consequences of Registration

• Advantages:
  • Unlimited Protection: Potentially unlimited duration.
  • Exclusive Right: Exclusive right to use the mark in trade.

19.2.1 Duration

• Initial registration: 10 years, renewable for subsequent 10-year periods.
• Validity maintained with continued use and ability to distinguish goods/services.
• Example: The Bass red triangle trade mark for beer has been in use for over 130 years.

19.2.2 Exclusive Rights

• Section 9(1) of the TMA 1994 grants exclusive rights to the trade mark proprietor.
• Infringement occurs when the trade mark is used without consent.

19.2.3 Other Reasons to Register

• Easier to sue for infringement than in a passing-off action.
• Presumption of validity.
• No need to prove reputation.
• Trade mark can be registered before use.
• Public record of trade marks warns others off from using similar marks.
• Risk of someone else registering the mark if rights are built up through use alone.
• A mark can be struck off for non-use (e.g., in the UK, after five years).
• In the US, registration does not extinguish the rights of a prior user to continue use indefinitely, but it will prevent geographic or product expansion, referred to as the common law right of the first user.

19.3 The Registration System, Its Problems, and Recent Changes

• UK Trade Mark Registry historically applied three tests:
  • Capability of being a trade mark.
  • Compliance with absolute grounds for refusal under s 3 of the TMA 1994 (including passing off).
  • Compliance with relative grounds for refusal under s 5 of the TMA 1994.
• Advantage: strong presumption of validity for registered trade marks.
• Problem: different practice from most of Europe regarding searching for prior registrations.
• UK Registry now relies on objections from adversely affected parties.
• Anyone can apply to register a trade mark in the UK, regardless of ownership, if they intend to use it.
• Formalities are detailed on the Intellectual Property Office (IPO) website.
• Trade marks are registered in relation to specific goods or services, categorized into 45 classes (Nice Classification).
• Marks can be registered in multiple classes.
• Figurative elements of marks are classified according to the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks.

19.4 Can the Trade Mark Meet the Statutory Definition?

• Two issues:
  • Can the sign be represented on the register?
  • Can it distinguish the goods/services of the applicant?

19.4.1 Capable of Being Represented in the Register

• The mark must be capable of being represented in a clear and precise manner (TMA 1994, s 1(1)).
• Replaced the previous requirement of being ‘capable of being represented graphically’.
• Wider definition allows for registration of sounds and smells.
• Sounds can now be submitted as computer-recorded files.
• Smells previously struggled for registration unless represented by a chemical formula; the new definition's impact is unclear.

19.4.2 Capable of Distinguishing

• Commonplace signs/words often lack distinctive quality.
• Overlap between limitations of s 1(1) and absolute bars to registration in s 3.
• The mark as a whole needs to be distinctive.
• Imaginative combinations of commonplace elements can achieve registration.
• Example: ‘Finish’ title with the red ‘powerball’ device for dishwasher products.
• The word mark ‘Deliberately Innovative’ was found to lack any distinctive character.

19.5 Absolute Grounds for Refusal

• Laid down in s 3 of the TMA 1994.

Common Grounds (s 3(1))

• Signs that do not satisfy s 1(1) requirements.
• Trade marks devoid of distinctive character.
• Marks exclusively designating kind, quality, quantity, purpose, value, origin, time, or characteristics.
• Marks that have become customary in the language or trade.
• Proviso: a mark can be registered if it has acquired distinctiveness through use.

Other Absolute Grounds

• Designations of origin.
• Geographical indications.
• Traditional terms for wine.
• Traditional specialties guaranteed.
• Plant varieties.

Distinctiveness

• A made-up name (e.g., ‘Kodak’ or ‘Exxon’) is undoubtedly distinctive.
• Beware of phonetic spellings of ordinary words.
• Problems:
  • Names of individuals/businesses.
  • Aspects of goods/services.
  • Geographical origins.
• Shape marks (s 3(2)).
• Public policy objections (s 3(3)).

19.5.1 Use of Names as Trade Marks

• Anyone can use their own name/address fairly and honestly (s 11(2) of the TMA 1994).
• Common names may not distinguish goods/services (s 3(1)(b)).
• Unusual names less likely to create distinctiveness problems.
• Prior registered marks using the same name can be problematic.
• Simple rule of thumb based on the London telephone directory was deemed arbitrary.
• Individual assessment needed, considering scope of use, range of products, and customer group.
• Even common names can acquire distinctiveness through use.

19.5.2 Aspects of the Goods or Services Themselves within s 3(1)(c)

• Protects against unfair monopolization of descriptive signs.
• Applies to marks consisting exclusively of common terms.
• Example: ‘friction management solutions’ was refused as being too descriptive.
• Combination of descriptive aspect with distinctive features is usually acceptable.
• Signs only describing the type of good cannot be registered alone (e.g., orange juice, cornflakes).
• ‘Tastee-Freez’ for ice cream and ‘Weldmesh’ for reinforcing mesh were too descriptive.
• ‘Twiglets’ is registered for snack-type biscuits by being suggestive rather than descriptive.
• Words of quality/value are unregistrable alone.
• Registrations exist for variations on ‘exel’, ‘excell’, ‘XL’, etc.
• Confectionery marks (‘Mars’, ‘Galaxy’, ‘Smarties’, ‘Quality Street’) do not directly suggest the nature of the good.
• ‘Hyper Glue’ and ‘Hypaglue’ were upheld, as ‘hyper’ was not synonymous with ‘super’.
• Intended purpose beyond mere descriptiveness: ‘Walkman’ and ‘Workmate’ are successful examples.

19.5.3 Marks Suggesting Geographical Origin

• Geographical names are generally unacceptable as trade marks.
• The ECJ refused to allow the name Chiemsee to be registered as it should be available for traders in Chiemsee.
• Deceptive if the geographical name does not indicate the origin of the goods.
• Totally fanciful names may succeed (e.g., ‘Sahara’ for ice cream).
• Objections on deceptiveness cannot be overcome by use.
• More relaxed attitude may be taken towards geographical marks in Community trade mark applications, particularly for small locations.
• Problem can be cured by ensuring the mark is not exclusively geographical (e.g., ‘Grants of St James’s’).
• Collective marks registered under s 49 of and Sch 1 to the TMA 1994 may contain geographical indications, distinguishing goods/services by members of a trade association.
• Certification marks registered under s 50 of and Sch 2 to the TMA 1994 show descriptive characteristics (e.g., ‘Woolmark’, ‘Stilton’).
• ‘Protected designations of origin’ (PDO) and ‘protected geographical indications’ (PGI) exist at the EU level.
• World Intellectual Property Organization ‘appellations of origin’ exist at the international level.
• Article 7 bis of the Paris Convention requires signatories to protect collective marks belonging to associations.
• Designations of origin and geographical indications were added as absolute grounds upon implementation of the Trade Marks Directive.

19.5.4 Shape Marks or Those Involving Characteristics of the Goods (s 3(2))

• Cannot register marks exclusively consisting of:
  • Shape/characteristics resulting from the goods themselves.
  • Shape/characteristics necessary to achieve a technical result.
  • Shape/characteristics giving substantial value to the goods.
• The mark must be distinctive, eye-catching, and memorable, associating with a particular trade source.
• Unlimited duration contrasts with limited protection for other designs.
• Overlaps between the excluded cases in s 3(2).
• The s 3(1) provision for distinctiveness acquired by use does not apply to shape marks excluded by s 3(2).

19.5.4.1 The Shape of the Goods Themselves

• The Court of Appeal refused to register the shape of Philishave razor heads.
• The ECJ held that a shape determined by technical function is not registrable.
• Dyson attempted protection for conceivable shapes of a vacuum cleaner, but it was seen as a feature with function and variable appearance.
• ECJ found infinitely variable shape could not be graphically represented to constitute a trade mark.
• It was arguable that Vienetta ice cream's shape resulted from its nature, rendering it unregistrable.
• Insufficient evidence showed public recognition of Vienetta's shape as a badge of origin.
• The Court of Appeal confirmed refusal to register the shape of a ‘Polo’ mint without the word ‘Polo’ embossed on it.
• Local registrations in various countries for KitKat four-finger shape were valid.

19.5.4.2 The Shape of the Goods Which Is Necessary to Achieve a Technical Result

• The 3-rotor configuration gave technical superiority to the shaver in the Philips case.
• Exclusion not limited to shapes being the only way to achieve the result.
• A pistol shape as a trade mark for ‘femme fatale’ scent might be registrable if not technically necessary.

19.5.4.3 The Shape Which Gives Substantial Value to the Goods

• A shape making goods substantially more valuable without patent/design protection might be aimed at here.
• Pistol-grip shapes and intensely valued spout shapes might be caught here.
• The Court held in Benetton Group SpA v G-Star International BV that a jeans manufacturer should not have been given registration of two shape marks for jeans where the public recognition was based upon extensive advertising of the interesting shapes.

19.5.4.4 Other Characteristics of the Goods

• Directive 2015/2436 added ‘or another characteristic’ to each subsection of s 3(2) of the TMA 1994.
• Smells of perfumes might not be registrable under the revised section, as the smell adds value to them.

19.5.5 Public Interest Objections (s 3(3)) and Bad Faith Applications (s 3(6))

• An application will not succeed if the trade mark is contrary to public policy or morality (s 3(3)(a)), is likely to deceive (s 3(3)(b)) or is made in bad faith (s 3(6)).

19.5.5.1 Likely to Deceive

• Example: ‘Orlwoola’ deceptive if clothes not entirely wool; ‘Instant dip’ refused for cleaning materials not in dip form.
• Registration for use in particular colors may limit objections.

19.5.5.2 Bad Faith Applications

• Strike off in Byford v Oliver and Another for ‘Saxon’ name registrations by former band members who did not own the name and goodwill.
• The court held that the claimant in Jules Rimet Cup Ltd v Football Association Ltd had acted, both subjectively and objectively, in bad faith, in seeking to register the ‘World Cup Willie’ logo and words as trade marks.
• Appeal failed in Zakritoe Aktsionernoe Obchtechestvo Torgovy Dom Potomkov Postavechtchika Dvora Ego Imperatorskago Velitschestva PA Smirnova v Diageo North America Inc, as no deception about the origin of ‘Smirnoff ’ vodka.

19.5.5.3 Public Policy or Morality

• Refusal to register ‘Tiny Penis’ as a trade mark for clothing.
• Attempt to invalidate FCUK registration on public policy failed; objectionable third-party use did not affect validity.

19.6 Evidence of Use to Overcome Absolute Grounds

• Lack of distinctiveness can be overcome by publicly recognized use.
• Applicants can show reputation by providing evidence of advertising spend, turnover, and length of use.
• Minimum of five years’ use is informally preferred.
• Color registration, like Heinz tins of baked beans, is possible based on use.
• Combination of colors preferred over a single shade.
• BP’s trade mark registration of a single color, Pantone 348C, was valid.
• The ECJ held that in order to be capable of being registered as a trade mark, a colour had to be defined by reference to an international identification system.

19.7 Relative Grounds for Refusing an Application

19.7.1 What Does 'Relative Grounds' Mean?

• Conflicts with existing registered trade marks.
• Section 5 of TMA 1994 lays down the relative grounds for refusal.
• Most common grounds:
  • Identical mark and goods/services.
  • Identical mark/similar goods/services with likelihood of confusion.
  • Similar mark/identical or similar goods/services with likelihood of confusion.
  • Identical/similar mark with reputation taking unfair advantage or detrimental to the earlier mark.
• Finding whether a trade mark will run foul of an existing registration requires a trade mark search.
• Results of a trade mark search are never completely up to date.

Finding Identical or Similar Pre-existing Registrations

• Identical goods (s 5(1)).
• Identical or similar goods (s 5(2) and (3)).