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15 Cards in this Set
- Front
- Back
What are the 3 criteria which must be fulfilled for a mark to be registerable?
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1) it must be a sign;
2) it must be capable of being represented graphically; and 3) it must be capable of distinguishing. |
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In which case did the shape of trousers give substantial value to the goods and thus make the mark unregisterable?
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Bennetton v G -Star [2008]
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Where does the burden of proof lie in relation to the registration of trademarks?
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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.
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Are smells, sounds, colours and shapes capable of registration?
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Yes, they may be regarded as signs, however they still have to fulfill the other 2 criteria.
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Which case sets out the requirements for a smell, sound or colour to be represented graphically?
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Sieckmann (2002) ECJ
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What are the 7 Sieckmann factors?
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The graphic representation must be:
1)clear 2)precise 3)self-contained 4)easily accessible 5)intelligible 6)durable 7)objective |
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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?
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Ty nant
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Which case stated that the 'roaring lion' mark would have been capable of registration if it was represented graphically?
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MGM lion application (2003)
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Which case stated that a colour could potentially be registered as a TM if it could be represented graphically and was capable of distinguishing?
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Libertel v Benelux (2003)
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Which section states that 'functional' shapes cannot be registered as TMs?
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Section 3(2) Trade Mark Act 1994
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What is the 3 step test for determining if a shape cannot be registered?
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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 |
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In which case was 'a chewy sweet on a stick for non-medicated confectionery' insufficient for graphic representation?
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Re Swizzels Matlow [1998]
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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?
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Shield Mark v Joost Kist (2003)
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What are the two ways in which a mark can be 'capable of distinguishing?'
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1) the mark may have inherent distinctiveness; or
2)the mark may become distinctive through use |
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What is stated in Philips v Remington on the requirement of 'capable of distinguishing?'
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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
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