Trade Marks

Any sign capable of graphical representation…& capable of distinguishing goods/services of one undertaking from those of another

Philips Electronics v Remington - a sign is 'anything which conveys information'

words, words written in a particular way, graphical symbols, shape of goods or packaging, colours or combinations of it

Capable of graphical representation - Do not have to be visual messages

For unusual types of mark - must be clear, precise, self-contained, easily intelligible, durable and objective

smell of ripe strawberries was not a valid graphic representation of trademark.

artificial strawberry flavor in pharmaceutical products ✕ graphic representation

color orange as a trade mark for telecommunications

Colour combinations could potentially be registrable if represented graphically by use of internationally recognized method of identification such as the Pantone system

Philips v Remington - Could the sign can help a consumer to choose between competing products?

Marks devoid of distinctive characte - Test: Does a reasonably attentive consumer regard the sign as a ™, taking into a/c all the relevant circumstances? (a ™ should function as an indication of origin)

Marks devoid of distinctive characte - Product appearance - dishwasher tablets - consumer do not see combined color and shape as indicating the origin of goods

Descriptive Signs - application will be refused if at least one of the possible meanings of the mark describes the goods

Descriptive Signs - Geographical names barred

Customary in trade - application to register light green for confectionery was refused as the mark was widely used by other sweet manufacturers

contrary to public policy, bad faith

marks which are caught by paras (b), (c) & (d) can still be registered where applicant can show acquired distinctiveness [if after use (before application date), the relevant customers regard it as indicating origin] - Windsurfing Chiemsee : Q of fact

✕ register if it is identical to an earlier mark and is in respect of the identical goods & services

No need to prove confusion (assumed present for cases of total identity) - Hölterhoff

Test : the two marks must be the same in all respects in the eyes of a well-informed, reasonably observant and circumspect consumer

✕ register if identical / similar to an earlier registered mark and is to be registered for goods / services identical with or similar to those which the earlier trade mark is protected

Confusion test -

1. Similarity of marks based on overall impression given by the marks bearing in mind their distinctive components

2. Similarity of goods as per Canon v MGM - ECJ: all relevant factors must be taken into a/c, including the nature of the goods, the end users the method of use, and whether the goods are in competition or are complementary.

3. Global Appreciation test: CODAS Trade Mark -likelihood of conclusion judged through eyes of average consumer by reference to overall impressions created by the marks. A lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods and vice versa. There is a greater likelihood of confusion where the earlier ™ has a highly distinctive character

where the earlier ™ has a reputation in the MS concerned and where the use of the later ™ without due course would take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier ™.

Other prior rights -

s.5(4)(a) - owner of unregistered mark - show proof that passing-off action will succeed

s.5(4)(b) - owner of copyright/design - conflict of IP rights