Trademarks

Front 1

What are the 3 criteria which must be fulfilled for a mark to be registerable?

Back 1

1) it must be a sign;
2) it must be capable of being represented graphically; and
3) it must be capable of distinguishing.

Front 2

In which case did the shape of trousers give substantial value to the goods and thus make the mark unregisterable?

Back 2

Bennetton v G -Star [2008]

Front 3

Where does the burden of proof lie in relation to the registration of trademarks?

Back 3

With the claimant wishing to dispute the registration. They must show that the mark fails to fulfill one of the three criteria, otherwise there is a presumption that the mark is registerable.

Front 4

Are smells, sounds, colours and shapes capable of registration?

Back 4

Yes, they may be regarded as signs, however they still have to fulfill the other 2 criteria.

Front 5

Which case sets out the requirements for a smell, sound or colour to be represented graphically?

Back 5

Sieckmann (2002) ECJ

Front 6

What are the 7 Sieckmann factors?

Back 6

The graphic representation must be:
1)clear
2)precise
3)self-contained
4)easily accessible
5)intelligible
6)durable
7)objective

Front 7

In which case was a colour not able to be represented graphically because it was 'no easily-accessible' and placed too high a burden on third parties?

Back 7

Ty nant

Front 8

Which case stated that the 'roaring lion' mark would have been capable of registration if it was represented graphically?

Back 8

MGM lion application (2003)

Front 9

Which case stated that a colour could potentially be registered as a TM if it could be represented graphically and was capable of distinguishing?

Back 9

Libertel v Benelux (2003)

Front 10

Which section states that 'functional' shapes cannot be registered as TMs?

Back 10

Section 3(2) Trade Mark Act 1994

Front 11

What is the 3 step test for determining if a shape cannot be registered?

Back 11

1)if the shape results from the nature of the goods themselves;
2) if the shape is necessary to obtain a technical result; or
3) if the shape gives substantial value to the goods

Front 12

In which case was 'a chewy sweet on a stick for non-medicated confectionery' insufficient for graphic representation?

Back 12

Re Swizzels Matlow [1998]

Front 13

In which case did a written description of how a dutch cock crows fail to meet the requirement of graphic representation because it would not be universally understood?

Back 13

Shield Mark v Joost Kist (2003)

Front 14

What are the two ways in which a mark can be 'capable of distinguishing?'

Back 14

1) the mark may have inherent distinctiveness; or
2)the mark may become distinctive through use

Front 15

What is stated in Philips v Remington on the requirement of 'capable of distinguishing?'

Back 15

It is a preliminary requirement which must first be established before the question of whether the mark is 'devoid of distinctive character' under the absolute grounds of refusal- section 3(1) TMA 1994