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Summary Trademark law - Commercial Law and Intellectual Property
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3. TRADEMARKSIntellectual Property Office (IPO) administers all registers of IPRs in the UK inc. Trademarks (™)
(do not have authority of court decisions)
Key statute
Trade Marks Act 1994 (TMA 1994)
EU Trade Mark Directive (Directive 2015/2436) – Implemented by UK via the Trade Mark
Regulations 2018 (in force from 14 Jan 2019)
BADGE OF ORIGIN
Function = indicating the trade origin of goods and services i.e. who makes/supplies them
Makes it possible for customers to tell goods/services apart from different traders
Obtaining and exercising ™ rights can help traders preserve their goodwill + protect against
misappropriation from other traders
Consumer protection – allows customers to discriminate between traders they wish to give
custom to and traders they want to avoid – mere side-effect
DISTINCTIVENESS
Paramount concept
™ Only works as a badge of origin for a particular trader if public can readily tell it apart
from other marks used by traders – distinguishes from competitors
MONOPOLY RIGHT
™ Cannot indicate origin or be distinctive if numerous traders use it – once registered,
rights are monopolistic
o 3rd party liable for infringing even if by coincidence without evidence of copying
Strongest right (more than exclusive right) so scope of monopoly must be clearly defined
and criteria to register are strict
ELEMENTS OF A ™
1. A representation of the mark itself; and
2. A specification of the goods and services in relation to which the owner has
exclusive rights to use the mark
Both elements must be specified in app. to register ™ - technically possible for Trader A
and Trader B to register identical ™ but supply different goods/services
Goods/services placed into different classes to make searching the register easier
PUBLIC PERCEPTION
Public represented the average consumer for the type of goods/services relevant to case
o AC = ‘Reasonably well informed and reasonably observant and circumspect’
STAGE 1: STATUTORY DEFINITION (s.1(1) TMA 1994)
, 1. A SIGN
Anything that can be apprehended by the senses (i.e. seen, heard, smelt etc) = easy hurdle
May ‘consist of words, designs, letters, numerals, colours, sounds or shape of goods or
their packaging’ – non exhaustive list
(a) CAPABLE OF BEING REPRESENTED ON THE REGISTER IN A CLEAR AND PRECISE
MANNER
‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’
Necessary so 3rd parties can consult the register and understand the exact scope of ™
owner’s rights
(b) CAPABLE OF DISTINGUISHING GOODS/SERVICES OF ONE UNDERTAKING FROM
ANOTHER
Not a requirement of distinctiveness – this is found in s.3 (Koninklijke Philips v
Remington)
Satisfied either inherently or as a result of the use to which a sign has been put
STAGE 2: ABSOLUTE GROUNDS FOR REFUSAL TO REGISTER (s.3 TMA 1994)
Application assessed for problems inherent to the mark itself that would bar registration
Is the mark actually distinct for the goods/services it relates to?
s.3(1)(a) – COMPLIANCE WITH s.1
Sign that does not fall within the statutory definition cannot be registered – not clear/precise
s.3(1)(b) – MARK DEVOID OF DISTINCTIVE CHARACTER
More striking/fanciful the mark, less likely to fall at this hurdle
Signs that prima facie fall foul:
o 100 – round numbers often used as product/model numbers
o ‘THE ONES YOU WANT TO DO BUSINESS WITH’ – slogan could apply to any
undertaking in the field
o Laudatory marks – no more than an expression of praise
o Colours – merely decorative, not badge of origin e.g. blue/yellow IKEA
o Conventional visual images – e.g. cow for dairy products – must be ‘fanciful’ e.g.
laughing cow
Made up words e.g. PRITT = inherently distinctive – only possible meaning is that brand
s.3(1)(c) DESCRIPTIVE MARKS
If mark consists exclusively of sign indicating/describing types of good/service or their
characteristics e.g. purpose or trade origin = NOT registrable
o E.g. Doublemint chewing gum – portmanteau word jams two together = unregistrable
o E.g. Froot Loops cereal – 2 words describing characteristic – novelty spelling doesn’t
override descriptive meaning
An assessment of the whole mark in exactly the form applied for
s.3(1)(d) MARKS CUSTOMARY IN THE LANGUAGE/PRACTICES OF THE TRADE
Question of fact – requires evidence from the trade – not unique enough
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