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Subject-matter of Registered Trade Marks

Subject Matter Of Registered Trade Marks

Introduction

A wide variety of signs – much more than was the case under the 1938 Act – can be registered as trade marks. Indeed, so great is the range of trade marks that can be, or even have been, registered, that the supply could even be in danger of drying up – the twin problems of foreclosure and depletion. It becomes increasingly difficult to find a trade mark that a new business can use, because others have already registered so many.

Definition

Section 1(1) defines for the purposes of the Act what a trade mark is1:

... any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

Compare this with Article 2 of the Directive: the words are similar, but the provisions are not identical.

The requirements set out in the definition have been described as minimum requirements2 and are abstract in that the definition is not specific about goods or services (Case C-363/99, Koninklijke KPN Nederland NV v Benelux Merkenbureau (POSTKANTOOR)3).

According to section 1(2), references to trade marks in the Act are to be construed as including references to collective marks and certification marks. These special types of trade marks are dealt with in sections 49 and 50 respectively, and below, .

The word ‘sign’ is a deliberately neutral expression, which Jacob J described as ‘anything which can convey information’ in Philips Electronics NV v Remington Consumer Products Ltd4, the Phillishave case. The same judge also told us, in British Sugar plc v James Robertson and Sons Ltd5, that a word is ‘plainly included within the meaning of sign’. A trade mark may comprise any message capable of being perceived by the senses, provided it is has the potential to distinguish goods or services: Case C-237/00, Sieckmann v Deutsches Patent- und Markenamt 6. Trade marks need not be visual: Case C-283/01, Shield Mark BV v Jopp Kist7

It is important to be conscious of where the Act uses the word ‘sign’ and where it refers to a mark or a trade mark.

Types of trade marks

The wide range of signs that may be trade marks can conveniently be divided into conventional trade marks and what are often referred to as exotic ones, although this expression is not found in any legislation (perhaps it should be). The exotic marks are, generally, those that only became registrable as a result of the 1994 Act and the changes wrought by the Directive.

Conventional trade marks: the non-exhaustive list

Section 1(1) goes on to state what a trade mark may comprise. It mentions specifically:

  • Words, including personal names (for example, Walkers for crisps, Ford for motor vehicles);

  • Designs (for example, the red triangle symbol used by Bass, which formed part of the first UK registered trade mark);

  • Letters (although in a recent decision the Registry considered that the mark P.R.E.P.A.R.E. was not a string of letters but in its ordinary signification a word);

  • Numerals (for example 323 for motor cars, 747 for aeroplanes, 99 for ice-cream cornets);

  • The shape of goods and their packaging (for example, the Coca-Cola bottle, the Mini motor car). In the Philishave case, Jacob J held that a representation of the configuration of a three-headed electric shaver did not serve a distinctive purpose: it denoted primarily function. The European Court of Justice did not differ from this view when the case was referred to them.

The list is not intended to be exhaustive. Indeed, it is deliberately left open: AG Colomer in Shield Mark8. This allows in exotic trade marks, but also slightly less exotic subject-matter: slogans.

Provided they function as trade marks, slogans may be registered, and have been for some time: in HAVE A BREAK TM9 the slogan was merely used to advertise the applicant’s Kit Kat chocolate biscuits, whereas in I CAN’T BELIEVE IT’S YOGHURT TM10 the slogan was the only mark applied to the goods, so the consumer would recognise it as an indication of origin. Practice under the 1994 Act is more liberal than formerly: Microsoft has, for example, registered the slogan WHERE DO YOU WANT TO GO TODAY? More recently, though, the Court of Justice has shifted the focus to the question of distinctiveness: see below, para Error: Reference source not found.

More about shapes

The shape of goods and their packaging was not registrable under the 1938 Act: COCA COLA TM11, where Lord Templeman denounced ‘another attempt to expand on the boundaries of intellectual property and to convert a protective law into a source of monopoly.’ Section 3(2) provides that they will still not be registrable if they consist exclusively of a shape which results from the nature of the goods themselves, or is necessary to obtain a technical result, or adds substantial value to the goods.

In Case C-299/99, Koningklijke Philips Electronics NV v Remington Consumer Products Ltd (referred by the High Court) the Court of Justice held that there is no category of marks which is denied registration because they are devoid of distinctive character but which is not unregistrable because of one of the other absolute grounds.

The High Court had decided Philips’ registration of a trade mark consisting of a graphical representation of the configuration and shape of the triple shaver head of the Philishave electric shaver which it had been making since 1966, was invalid. The mark had been registered in 1985.

The court considered that the mark was incapable of distinguishing Philips’ goods from those of others and that it was devoid of distinctive character. It consisted exclusively of a sign that served to designate the intended purpose of the goods and which gave substantial value to the goods, which left few grounds for invalidity that did not apply. Even if the mark had been valid (the judge went on) it would not have been infringed by Remington, which was merely using the mark in a descriptive way to denote three-headed shavers.

On appeal, the Court of Appeal referred the matter to the Court of Justice for a preliminary opinion. The Court of Justice found that a trade mark must have a distinctive character, which can be because it distinguishes goods on the basis of origin. To do so, the mark must enable the public to conclude that the goods or service bearing it originate from the proprietor. The shape of an article in itself may suffice: nothing in the directive requires the addition of some non-functional material to enable it to distinguish the article to which it is applied from others.

If a mark is refused registration because it is a shape within the prohibited, functional, classes of shapes, it cannot be saved by use. Such a shape trade mark can never become distinctive through use. The shape of a product will be unregistrable as a trade mark if the essential functional features of that shape are attributable only to the technical result. The fact that other shapes can achieve the same technical result – so there is no monopoly over the technical effect – makes no difference to this outcome.

In Joined Cases C-53/01, C-54/01 and C-55/01, Linde and others,12 the Court of Justice applied the same restrictions to three-dimensional marks as apply generally to trade marks. The marks in question were the shapes of a works vehicle, a torch and a watch. The Bundesgerichthof referred two questions to the Court, asking:

  1. When assessing the distinctiveness of a three-dimensional shape of goods mark for the purposes of Article 3.1(b) of the Directive, should a more stringent test be applied that that used for other types of trade marks?

  2. Is Article 3.1(c) relevant to shape-marks? If so, should regard be had to the general interest of the trade in preserving availability of the shape of the product, so that registration is in principle excluded? If not, should regard be had to the interests of the trade in preserving availability of the shape of the product, for the purposes of interpreting Article 3.1(e)?

The Court answered that the distinctiveness test in Article 3.1(b), that the mark be capable of distinguishing the product from those of other businesses, applies equally to all marks, shapes and others. Article 3.1(e) , the exclusion of certain functional and other shapes, was a ‘preliminary obstacle’ that such marks had to surmount, but the other tests applied to shape marks too.

The grounds for refusing registration must be interpreted in the light of the relevant public interest underlying each of them: Windsurfing Chiemsee Producktions und Vertriebes GmbH v Boots und Segelzubehor Walter Huber and another. The exclusion of descriptive signs protected the public interest in allowing them to be used freely by all. The exclusion of certain shapes was to prevent a trade mark owner from using the right to obtain a monopoly over a technical solution or functional characteristic of a product.

Exotic trade marks

Sounds and smells (olfactory trade marks)

Sounds and smells are registrable provided that they can achieve the necessary degree of distinctiveness, can be described unambiguously, and can function as a trade mark. For example, Sumitomo Heavy Industries have ‘a floral fragrance, reminiscent of the smell of roses’ registered for car tyres (no 2001416). Chanel No 5 is the subject of another olfactory trade mark.

Colours

Gestures

The Derbyshire Building Society registered a gesture involving tapping the side of one’s nose twice with the right forefinger, but this no longer appears on the register.

Get up or trade dress

The combination of distinctive (and perhaps non-distinctive) elements that constitutes a brand’s identity is not, despite the efforts of the brand owners, capable of protection in its own right.

The statutory requirements

Before considering the categories of signs that may now be registrable, we ought to consider the twin requirements that must be satisfied before a sign may be registered as a trade mark: it must be capable of graphical representation and also capable of distinguishing one undertaking’s goods or services from those of others.

Representations

The requirement that a mark be capable of graphical representation is mainly bureaucratic, and usually poses no problem. The representation of the mark must fit into the 8cm square box provided for it on the application form. For some of the more exotic kinds of marks, the applicant will have to decide how to represent them graphically. Ultimately, the purpose will be to convince the Registrar and the Courts that the mark and its representation comply with the requirements of section 1.

The requirement received detailed scrutiny from the Court of Justice in Sieckmann13, though (as is common with decisions of that court) it tells us what will not be acceptable but not what is:

  1. In those circumstances, Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically.
  2. That graphic representation must enable the sign to be represented visually, particularly by means of images, lines or characters, so that it can be precisely identified.
  3. Such an interpretation is required to allow for the sound operation of the trade mark registration system.
  4. First, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor.
  5. Next, the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators.
  6. On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of registration applications and to the publication and maintenance of an appropriate and precise register of trade marks.
  7. On the other hand, economic operators must, with clarity and precision, be able to find out about registrations or applications for registration made by their current or potential competitors and thus to receive relevant information about the rights of third parties.
  8. If the users of that register are to be able to determine the precise nature of a mark on the basis of its registration, its graphic representation in the register must be self-contained, easily accessible and intelligible.
  9. Furthermore, in order to fulfil its role as a registered trade mark a sign must always be perceived unambiguously and in the same way so that the mark is guaranteed as an indication of origin. In the light of the duration of a mark's registration and the fact that, as the Directive provides, it can be renewed for varying periods, the representation must be durable.
  10. Finally, the object of the representation is specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign. Consequently, the means of graphic representation must be unequivocal and objective.
  11. In the light of the foregoing observations, the answer to the first question must be that Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it canbe represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

The requirement that they can be represented graphically may pose problems, though musical notation will suffice for tunes (such as Direct Line’s ‘bugle call’ jingle). A description in words (e.g. ‘the barking of a dog’) was thought sufficient for other sounds, but the Court of Justice rejected this idea in Shield Mark. Likewise, a spectogram showing the composition of the sound in terms of frequency is also unacceptable.

Fragrances are also difficult to represent graphically, though the degree of precision with which a smell must be defined will presumably vary according to the goods involved: ‘a fragrance reminiscent of roses’ does the job for car tyres. The smell of new-mown grass also serves the purpose for tennis balls and the smell of beer for darts flights, but much narrower and more specific wording would be required for perfume. In John Lewis of Hungerford words did not suffice for a smell trade mark, and in Ty Nant the refractive index of the colour of the glass bottle was ‘not sufficiently ascertainable.’

As for shapes, a diagram or photograph will usually be required: in Swizzels Matlow the description ‘chewy sweet on a stick’ was not sufficient.

Libertel.

Capable of distinguishing

The very essence of a trade mark is that it serves to enable the consumer to tell who the goods have come from. The concept of an indication of origin has become extended, as the ownership of the brands that attract consumers become less relevant to the customer. The qualities associated with a brand are increasingly independent of the identity of the registered proprietor.

In addition, the brand’s message may be communicated in new and sometimes indirect ways. Character merchandising, sponsorship and endorsement all serve to attach the reputation of the brand to a product or service, without any suggestion that the brand owner is the source of the goods. Only in exceptional circumstances will this alone make a trade mark registrable: it is more likely to sound in infringement, as in Case C-XXX/XX, Arsenal FC v Reid14 where the Advocate General argued that the defendant’s expressly unofficial merchandise nevertheless infringes the club’s trade marks.

However, it is important to note that it is a capacity to distinguish rather than actual distinctiveness that is needed. A trade mark that is devoid of distinctive character – irremediably non-distinctive – will never be registrable: a potentially distinctive mark may be registered, though there may be related problems to be overcome.

Capable of distinguishing v devoid of distinctive character

The English courts have tried hard to reconcile the requirement for a mark to be capable of distinguishing and the absolute ground for refusal of registration where a mark is devoid of distinctive character. (In fact the Directive and the Act both have the word ‘any’ before ‘distinctive’, but that is so illogical and ungrammatical it is best, in the interests of style, to ignore it.) In Phillips, though, the Court of Justice held that if a mark has distinctive character it is capable of distinguishing, and asked whether the mark could enable customers to identify a single source for the goods or services.

All types of trade marks, however exotic, are to be considered in the same way – no additional elements are required in particular cases. In Shield Mark (AG’s opinion at para 20) and Viking (at 23-24) the question is formulated as, does the sign have the potential to act as a trade mark? The category of marks must have that potential, and whether a particular mark is actually capable of distinguishing is an issue to be decided as an absolute ground for refusal. It follows, therefore, that the threshold set by section 1 (and Article 2) is a low one.

The emergence of exotic trade marks in the period since the 1994 Act came into operation has created some difficulties in the application of these requirements.

Sounds and smells

As we have seen, olfactory trade marks can be registered – in principle. But in Case C-237/00, Sieckmann v Deutsches Patent- und Markenamt the Court of Justice doubted that it was possible to represent an olfactory trade mark graphically with sufficient precision to make it properly registrable.

[Criteria]

Shield Mark concerned music. Libertel was an application to register the colour orange, and the Court of Justice insisted that the colour be defined in some objective manner by reference to an accepted system such as Pantone (a proprietary system, and a registered trade mark itself).

UK practice has followed suit, notwithstanding Sumitom’s registration. In John Lewis of Hungerford, registration was refused on the grounds that words describing the smell were insufficient. In Ty Nant, specifiying the refractive index of the coloured glass was not ‘ascertainable’.

Colours

In Smith Kline & French’s Application15 the House of Lords accepted that colours applied to goods (there, in combination) could function as a trade mark when they had acquired a secondary meaning and indicated that the goods were the product of one particular company. On the other hand, in John Wyeth and Bro Ltd’s Application (1988) 233 the pills were differently coloured to indicate their strength, not their origin. A series of striped toothpaste cases (Unilever’s Application (1980), Re Unilever plc’s Application (1984), and Unilever Ltd’s Trade Mark (Striped Toothpaste No 2) (1987)) failed to get a well known feature of SIGNAL toothpaste onto the register, the stripes neither having been chosen as indications of origin nor functioning as such. BP have registered a trade mark the main component of which is Pantone 348C, and Barclays Bank a shade of turquoise. Heinz have registered a not dissimilar shade of turquoise for tins of baked beans.

In Case C-104/01, Libertel Groep BV v Benelux-Merkenbureau the Court of Justice upheld a colour trade mark, accepting that it could have the required distinctive character. The application was for the colour orange: the application form showed an orange-coloured rectangle and the mark was described simply as ‘orange’. The Benelux trade marks office refused registration on the grounds that, in the absence of evidence of use, the mark was devoid of distinctive character.

The Court indicated that a colour could constitute a sign, depending on the context in which it was used. A sample of a colour and a description in words could constitute a graphical representation, and if it was not precise enough it could be supplemented by adding a colour designation from a recognised identification code (as BP have done in their registration, mentioned in the main work). However, it would be exceptional for such a mark to be distinctive without prior use.

As for distinctiveness, the court held that a colour may have a distinctive character within the meaning of Article 3(1)(b) of the Directive provided it was represented graphically in a way that is clear, precise, self-contained, equally accessible, intelligible, durable and objective.

The breadth of the range of goods or services for which registration is sought would be relevant. Together with all the other circumstances this is relevant in assessing distinctiveness and also whether registration would deprive other traders who offer the same goods or services of a colour they might legitimately wish to use. As the Court of Justice has observed (see above, Error: Reference source not found), the average consumer pays only fleeting attention to the shape and colour of trade marks even where the goods concerned are expensive. OHIM had correctly disregarded factors such as the price of the goods in deciding whether the mark was distinctive.

Some particular issues

Surnames

In the matter of Nichols PLC (2002) concerned applications to register the name NICHOLS as a trade mark for drinks vending machines and consumables (tea, coffee, milk powders) to go in them and also related services. Registration for vending machines in class 9 was allowed without proof of distinctiveness, as there were few businesses in that market, but the High Court referred the following questions to the Court of Justice on the other class applications:

  • Whether a common surname should be regarded as ‘devoid of distinctive character’ unless and until the applicant proves that it has acquired a distinctive character.

  • Whether registration of a common name as a trade mark should be on a first come, first served basis.

  • Whether the defences to an infringement action should be borne in mind when considering whether or not to grant a registration.

The judge held that there was an inevitable conflict between the public interest and the interests of applicants. Registration should not harm the public because third parties are allowed to use the mark descriptively and to challenge registered marks if they are not used. In practice, however, powerful owners would assert their rights against smaller traders who would be inclined to back off because it would be cheaper, more certain and simpler to do so even if they had a good defence. This, the judge thought, was a consideration that should be borne in mind when allowing registrations with wide and unsupported specifications.

Alphanumeric phone numbers

In 800-Flowers TM (2001) the High Court considered the registrability of an alphanumeric telephone number, 800-FLOWERS, and concluded that it was not capable of distinguishing the applicant’s business from those of others. Moreover, its use would be deceptive as the applicant did not own the telephone number.

There is no property right in a telephone number and telephone companies can divest the owner of a number without cause, although they cannot do so easily. Such numbers are granted on a first-come, first-served basis, similar to domain names.

In the present case, 1-800 Flowers Inc. applied to register as a service mark 800-FLOWERS under the Trade Marks Act 1938. In the United States, it used the phone number 1-800 FLOWERS. In the UK, however, the equivalent (non-identical) telephone number was registered by Phonenames Limited, which then proceeded to oppose the application arguing that the mark was not capable of distinguishing, would be likely to deceive or cause confusion, and finally that it could not be used by the applicant. In the High Court, Jacob J upheld all three grounds. The mark referred directly to the character of the services to be provided under it, and therefore lacked the capacity to distinguish. The telephone number corresponding to 0800 FLOWERS belonged to the opponent, so the use of the mark was bound to cause confusion and to be deceptive. The fact that this was caused by an external factor, namely the ownership of the telephone number, made no difference. Finally, the applicant clearly had no intention of using the mark applied for but rather a variation on it. Moreover, its intention to use the mark was conditional upon it obtaining the appropriate UK telephone number, and a conditional intention to use the mark would not suffice.

The applicant’s argument that its use of 1-800 FLOWERS on its website amounted to use everywhere, no matter where the owner of the website was based, was also rejected by the court. The fact that websites can be accessed anywhere does not mean that trade mark law should regard them as being used anywhere. The court would have to take account of all the circumstances, the intention of the website owner, and what the visitor would understand on seeing the site. By extension from this principle, the UK courts would be unlikely to find infringement where a trade mark is used on a website unless it is aimed at UK Internet users.

Although this is a 1938 Act case, the 1994 Act prevents the registration of a mark which lacks distinctiveness or which would deceive the public.

Ordinary words

In Premier Luggage and Bags Limited v The Premier Co (UK) Ltd and Vinod Lachman Mahtani16, the Court of Appeal considered the validity of the trade mark PREMIER. The appellant, the Premier Co., imported and sold Christmas decorations and gardening tools, while the respondent imported and sold luggage under its registered PREMIER trade mark. The respondent decided to extend its brand into the luggage field, and unsurprisingly was sued.

At first instance, the court held that the mark was validly registered and had acquired a distinctive character through use. The defendant appealed, and the Court of Appeal held that although the name could be used in an adjectival sense, it was also capable of becoming distinctive of origin by use in relation to particular goods or services. It was up to the appellants to show that at the time of registration the name had not acquired that distinctiveness. The test was whether the average consumer would appreciate that the mark PREMIER was used not in a laudatory sense but as a distinctive sign. The Court of Appeal upheld the first instance court in finding that the average consumer would indeed perceive it as a brand name.

Money or Money’s Worth

There is no longer a requirement (as there was in the old Act) that the goods or services be provided for money or money’s worth. Does this let in marks for retail services? Section 10(4) provides for the first time that use of a trade mark (which may constitute infringement) includes selling goods or supplying services under a sign which is a registered trade mark. This is however not the same thing as saying that marks may be registrable for retail services.

Collective marks and certification marks

According to section 1(2), references to trade marks in the Act are to be construed as including references to collective marks and certification marks. These special types of trade marks are dealt with in sections 49 and 50 respectively. They are not very common, and they differ fundamentally from ordinary trade marks in that the owner is not the person who uses them.

The easiest way to explain what these are is probably to give an example of each. Perhaps the best-known certification trade mark is the ‘Woolmark’, UK registration number 859955 and several others, operated by the International Wool Secretariat (and registered in the name of IWS Nominees Ltd). As for a collective mark, the seal of the Chartered Institute of Patent Agents was registered as a collective trade mark under number 2001387 in 1994, as soon as possible after the Act came into force.

Collective marks

Collective marks are marks that distinguish the goods or services of the members of the association that is the proprietor of the mark. They were new to UK law in the 1994 Act, despite having been available in continental European countries’ trade mark systems for years. Article 15 of the Directive required their introduction. Section 49 deals with collective trade marks, and there are detailed provisions in schedule 1 to the Act.

Collective marks may be, and frequently are, used with other trade marks. In addition to the collective mark, the trader will operate under its own trade mark which identifies its goods or services.

Since collective marks do not distinguish the goods or services of the proprietor from those of others, a modified definition of such a mark is required. Paragraph 2 of schedule 1 provides that a collective mark distinguishes the goods or services of members of the association from those of other undertakings.

Collective marks designating the geographical origin of the goods or services may also be registered. This is, of course, a significant departure from the normal rule of trade marks, although geographical names can often be registered17: but given the peculiar function of a collective mark, it is appropriate.

The proprietor of a collective mark may not prohibit the use of geographical signs or indications ‘in accordance with honest practices in industrial or commercial matters’. A manufacturer cannot be prevented from saying that his goods are made in a particular place just because that place happens to be a registered collective trade mark.

Certification marks

Certification marks are dealt with by section 50 and by Schedule 2. The provisions of the 1938 Act are left unchanged, except in two respects:

(a) Certification marks for services will now be registrable, as well as for goods; and

(b) Following Article 15(2) of the Directive, certification marks that indicate the geographical origin of the goods or services will be registrable.

The purpose of a certification mark is to indicate that the goods or services on which it is used comply with certain objective standards that the proprietor has set. These may relate to:

  • Origin;

  • Material;

  • Mode of manufacture; or

  • Quality.

The terms governing the use of the mark must be set out in regulations, which must be approved prior to registration of the mark. Responsibility for this lies with the Trade Marks Registry.

In debates on the legislation, the government gave the example of an association of cheese makers, which may allow its members to put a certification mark on their goods to indicate that they were produced by traditional methods. The wool industry uses the well-known ‘Woolmark’, registered in the name of the International Wool Secretariat, to identify its products. And there is no reason why a manufacturer, for example of vaccines used in fish farming, may not register a certification mark which indicates that certain fish have been treated with its products.

Like collective marks, certification marks may be used with other trade marks. The producer of goods or supplier of a service may indicate the origin of the goods or service as well as their compliance with the relevant standards.

Paragraph 2 of schedule 2 modifies the notion of what a trade mark may comprise for the purposes of these provisions. It must serve to distinguish goods or services which are certified from goods or services that are not.

1See, generally, Illuminating European Trade Marks? (A Brown) (2004) 1:1 SCRIPT-ed 46 (2004).

2AG Colomer in Case C-404/02, Nicholls plc v Registrar of Trade Marks, [2004] ECR I-8499, para 32.

3[2004] ECR I-1619.

4[1998] RPC 283, 298, upheld by the Court of Appeal in [1999] RPC 809.

5[1996] RPC 281, 305.

6[2002] ECR I-11737.

7[2003] ECR I-14313.

8Note 7, at para 22.

9[1993] RPC 217.

10[1992] RPC 533.

11[1986] RPC 421.

12[2003] ECR I-3161.

13Note 6, paras 45-55.

14

15(1976) RPC 511.

16

17 Under the previous, 1938, Act geographical names were virtually unregistrable.

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