Publications
European IP Bulletin, Issue 4, August/September -
Trade Mark
Trade Mark
14. ECJ Rules Colours Per Se Are Registrable In Limited Circumstances
In Libertel Groep BV v Benelux-Merkenbureau Case C-104/01 the European Court of Justice held that colours per se, which are not applied for by reference to a specific surface, can be registered as trade marks, but only in limited circumstances.
Libertel applied to the Benelux Trade Mark Office for a trade mark for telecommunication-related goods and services. In the space on the application form for describing the trade mark, Libertel had placed an orange rectangle and the word “orange”, but had not referred to any colour code. The Office refused the application, saying that without proof of acquired distinctive character, the colour was devoid of distinctive character. Libertel appealed this decision and eventually the case reached the Hoge Raad der Nederlands, which referred various questions about the distinctiveness of colours to the ECJ.
1. Registrability of colours under Article 2 of Directive 89/104
The ECJ felt it could not decide the Hoge Raad’s questions on distinctiveness under Article 3 without considering whether colours are capable of constituting a trade mark under Article 2.
The Court confirmed that the joint declaration made by Council of the European Union and the Commission (OHIM OJ No 5/96 p. 607) in which they stated that Article 2 did not exclude colours from registration, was not binding, leaving the ECJ to decide the issue.
The Court identified three requirements under Article 2. The colour must be: (i) a sign; (ii) capable of graphic representation and (iii) capable of distinguishing the goods or services of one undertaking from those of other undertakings.
Colour is normally a simple property of things but, depending on the context in which it is used, may constitute a sign.
A graphic representation must represent the sign visually and must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. A colour sample e.g. on a piece of paper is not durable and so does not satisfy Article 2, although there may be some media that enable a colour to be reproduced in a permanent form. A verbal description of a colour is graphic, as it is made up of words which are made up of letters, but, depending of the facts, it may not meet all the other graphic representation requirements. However, if a colour sample together with a verbal description is unsatisfactory, this may, depending on the facts, be remedied by adding a reference to an internationally recognised colour code. Colours are also capable of distinguishing and thus may be registrable under Article 2 because they can, in principle, convey specific information about the origin of the goods or services for which they are used, although they seldom do so.
2. The need to keep colours free for other traders to use
In assessing the distinctiveness of a colour, regard should be had to the need for other traders to make use of the colour in the interests of free competition. Although this is a general principle in the assessment of distinctiveness in trade mark law, it is particularly important for colours because there are a limited number of colours available, meaning that a small number of registrations for certain goods or services could exhaust the entire range of colours available, which would have anti-competitive repercussions. Additionally, the greater the number of goods or services for which a colour is applied for, the more likely the registration is to come into conflict with other traders’ interests. The interests of other traders must be considered during the registration stage, and not be left to be considered when they are raised as a defence to infringement actions because the EU trade mark system is one of review prior to registration, and not a posteriori review.
3. Can a colour be distinctive within the meaning of Articles 3(1)(b) and 3(3)?
A trade mark is distinctive if it distinguishes the goods or services on which it is used from those of other undertakings, having regard to whether it is used in the trade as a badge of origin and the perception of the public. Although the public are used to seeing word and figurative marks as denoting origin, consumers are not accustomed to seeing colours as indicating origin because they are not used to identify origin in current commercial practice. Therefore, colours per se are not distinctive except in exceptional circumstances e.g. where colour is only claimed for a very restricted number of goods in a very specific market. However, colours can acquire distinctiveness after the normal process of familiarisation with the relevant public has taken place. In assessing the acquired or inherent distinctiveness of colours, the competent authority must carry out its assessment by reference to the actual situation in the case (and not in the abstract), taking into account all of the circumstances and any use that has been made of the mark.
15. ECJ Rules Sounds Are Registrable
Shield Mark BV v Joost Kist, Case C-283/01, Opinion of the Advocate General
Sounds are registrable as long as their representation is “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. In the AG’s opinion, this is clearly fulfilled if a sound is represented on a score but generally not if it is represented by onomatopoeia or a nominative succession of musical notes. The determination of registerability vests in the national court.
Two months ago, Advocate General Colomer delivered his opinion in the Shield Mark case. The Dutch Supreme Court asked two questions as regards the registrability of sounds as trade marks in a preliminary ruling procedure: can a sound fulfil the requirements of trade mark registrability, and if so in which form must the registration be made?
Facts
Shield Mark registered the first few notes of “For Elise”, the famous piano piece by Beethoven, and the sound of a cockerel’s crow to distinguish some of its products. It is suing Mr Kist in Holland for trade mark infringement since the latter has used these two signs for similar products.
The mark constituted by the piano piece is represented by the nine notes on score. The registration also includes verbal marks describing the sound mark in such terms: “consisting in the nine first notes of For Elise”. Another mark is represented in a nominative succession of notes: “E, D sharp, E” etc. The cockerel’s crow mark is registered under the denomination “Kukelekuuuuu” with the following mention: “sound mark constituted by an onomatopoeia imitating a cockerel's crow”.
Opinion of AG Colomer
The AG first comments that the legal concept of a mark covers two requirements: capability to differentiate and capability of being represented graphically.
As sounds are capable of distinguishing goods or services, they can in principle be admitted as marks. Since Article 2 of the Trade Mark Directive has not excluded sounds, Member States are not allowed to exclude sounds from trade mark registrability, as long as the two above conditions are fulfilled. The AG notes that no Member States expressly excludes sounds from trade mark registrability. Even if some Member States do not mention it expressly in their legislation, administrative practice has long admitted such registrations.
As regards the graphical representation of acoustic signs, the AG relies on the line of reasoning he developed in his opinion in the Sieckmann case, which concerns the registrability of smells ([2003] ETMR 37). The representation must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.
He compares music and sounds with language. Language is oral and writing is its graphical representation. National courts need to decide for themselves whether the “drawing” of an acoustic sign satisfies the objectives of the Community lawmaker when he legislated on the requirement of graphical representation. However, the AG believes the graphical representation on a score is clear, precise, complete, durable, objective and easily accessible. The fact that it is not intelligible to all persons is not problematic since it is sufficient that musicians can read it. On the contrary, the written description of a sound lacks precision and clarity. Nonetheless the AG leaves the door open: there may be sounds which are capable of being represented graphically and meet the test set out above and it will be for national judges to determine this in each case.
The AG makes an interesting digression at the end of his opinion. He states that he resents the possibility that through a trade mark, an individual can secure a monopoly on natural signs. He equally resents the fact that a registrant can appropriate indefinitely a creation, which has now fallen in the public domain and belongs to the cultural common heritage, to distinguish his/her products or services while the author’s heirs cannot benefit anymore from the exclusivity copyright affords.
In conclusion, while smells are clearly not registrable, sounds are as long as their representation is “clear, precise, self-contained, easily accessible, intelligible, durable and objective”. In the AG’s opinion, this is clearly fulfilled if a sound is represented on score but generally not if it is represented by onomatopoeia or a nominative succession of musical notes.
16. Doublemint Refused By Advocate General
OHIM v Wrigley Jr Co., C-191/01, Opinion of the Advocate General
In OHIM v Wrigley Jr Co., C-191/01, Opinion of the Advocate General, after an application for a CTM for the mark “doublemint” was refused by OHIM, but then allowed by the CFZ, OHIM appealed to the ECJ. The Advocate General has now issued his opinions suggesting the application should be dismissed.
Wrigley applied for the registration of the word ‘Doublemint’ as a CTM. It was refused on the grounds that it consists of two words that may serve in trade to designate the characteristic of the good, Art. 7(1)(c) of the CTMR. Although the Office First Board of Appeal dismissed Wrigley’s appeal against the examiners the Court of First Instance held that the word ‘Doublemint’ was not exclusively descriptive as it comprises numerous meanings, depriving it of any descriptive function for the purposes of Art. 7(1)(c) CTMR. The term could not be refused registration, OHIM has brought an appeal against that decision.
The AG addresses what he perceives as two flaws in the appeal judgement:
(i) A trade mark may not be registered if it “consists exclusively of signs or indications which may serve, in trade, to designate characteristics of the goods or service concerned”, Art. 7(1)(c). Considering this, the CFI held that ‘Doublemint’ could not be characterised as exclusively descriptive, and the mark therefore fell outside Art. 7(1)(c).
“Exclusively” in that provision qualifies the verb “consist”, therefore referring to the elements composing the mark and not to their capacity to designate characteristics. Thus, for a registration to be precluded under Article 7(1)(c), all the elements must have such a descriptive capacity; but it is not necessary that they can have no other, non-descriptive, meaning. In other words, if all components of a mark are descriptive, the mark will not necessarily be saved by alternative, non-descriptive meanings.
(ii) Considering the association between double and mint, the CFI held that it has several meaning, making “Doublemint” ambiguous and suggestive, and not capable of assuming a descriptive function.
This view assumes that any multiplicity of possible semantic combinations automatically makes it impossible for any term to designate a characteristic of the product. This interpretation of Art. 7(1)(c) appears wrong, as a general proposition, to the AG. The number of semantic combinations referred to by the CFI is limited in this case, and none of them is obscure as a chewing gum characteristic.
Considering Baby-Dry, Wrigley argued that the combination “Doublemint” is elliptical and resists intuitive grammatical analysis. However, the AG believes “Doublemint” does not use the same inversion as “Baby-Dry”, and it is not structurally or syntactically unusual to place the qualifier “double” before the characteristic “mint”. “Baby-Dry” introduced unusual syntactical features that significantly add to the lexical terms used in its composition, “Doublemint” does not.
Consequently, the Advocate General believes that OHIM’s appeal should be upheld, and the ruling of the CFI overturned.
17. Registrar’s Objections Upheld
Dyson Ltd v Registrar of Trade Marks, [2003] EWHC 1062 (Ch)
Dyson appealed to the High Court against the decision of the hearing officer in an ex parte hearing not to grant a trade mark on grounds of acquired distinctiveness against an examiner’s objection under ss.3(1)(a)-(c) and s.3(2)(b) of the Trade Marks Act 1994.
In 1993, Dyson Ltd began manufacturing the Dual Cyclone, a bagless vacuum cleaner where the dirt is collected in a chamber that is made of clear plastic, thus allowing the user to see the vacuumed dirt. On 10th December 1996, Notetry Ltd (owned by James Dyson) applied for trade marks in respect of class 9 that were assigned to Dyson on the 5th February 2002. All applications sought to represent the transparent bin of the vacuum cleaner; only two of them were kept. They were then objected to under ss.3(1)(a)-(c) and s.3(2)(b). On 23rd July 2002, in an ex parte hearing, the applications were refused, as there was held to be no grounds of acquired distinctiveness.
A first issue of the case was whether the appeal should be conducted as a re-hearing or a review of the ex-parte hearing before the registrar. The appellants pointed out that in most appeals from decisions of the Registrar in ex parte proceedings to determine registrability under s.3, the general practice is to conduct the appeal on a re-hearing basis. It was also stressed that a hearing officer is not an independent tribunal, and Art. 6 of the European Convention for the Protection of Human Rights & Fundamental Freedoms provides that everyone is entitled to a fair hearing by an independent and impartial tribunal. Thus it would be unjust not to conduct a re-hearing. However, under CPR r 52.11(1), an appeal is supposed to be limited to a review of a lower court unless the court considers the contrary. A re-hearing should be exercised in rare cases. Considering the facts of the case, it appeared unnecessary to conduct the appeal on a re-hearing basis. It was held that Art.6 does not compel the Court to a re-hearing, and the decision is left to the Court.
At issue was the provision that under ss.3(1)(a)-(c) of the Trade Marks Act 1994 consideration for inherent distinctiveness would require demonstration of the fact that the clear bin also conveys an indication of a single origin to the average consumer, considering all vacuum cleaners that use this feature. Dyson failed to establish that the clear bin was simply not descriptive of the machine being bagless. It is not the function of a trade mark to create a monopoly in new developments in technology. The objection by the registrar was therefore upheld.
The court also considered the issue of acquired distinctiveness that was raised during the ex parte hearing. The difficulty with this issue was defining what is required during the monopoly period, beyond association of the product with the actual manufacturer, to achieve trade mark status. It was envisaged in Philips v Remington that even without actual promotion of the sign as a trade mark, a de facto monopoly that leads to the recognition of the goods as those of a single origin could produce the necessary degree of distinctiveness. What is required to cross that threshold is unclear, and Patten J referred this issue to the ECJ for clarification.
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