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(overcoming the assumption) Specific refusal/invalidity grounds Out of the ordinary trade marks Out of the ordinary trade marks – recent developments “A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, [colours], the shape of goods or of the packaging of goods, [or sounds]…” Out of the ordinary obstacles   Distinctiveness (overcoming the assumption) Adequate representation Specific refusal/invalidity grounds

Out of the ordinary trade marks Difficult to obtain in the UK (but it may get easier…) Easier to obtain as an EU TM / CTM (but only if inherently distinctive) Consider applying for national marks in key EU member states as well as a CTM, if relying on acquired distinctiveness (at least for now) Ensure your application is clear and precise (be careful with descriptions) Beware of the new distinctiveness/substantial value squeeze Carefully consider settling UK enforcement actions before trial (but this may change) Here’s why…  

Representation The existing requirement of “graphic representablity” is to be deleted for “more flexibility” and technological future proofing. The new test (Article 4 of the new Regulation) is …to be registerable a signs must be capable of: distinguishing the goods or services of one undertaking from those of other undertakings; and being represented on the Register of European trade marks (“the Register”), in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor Note also Recital (9): “… A sign should be …clear, precise, self-contained, easily accessible, intelligible, durable and objective”.  

“clear, precise, self-contained, intelligible, durable and objective?” Representation “clear, precise, self-contained, intelligible, durable and objective?” “Balsamically fruity with a slight hint of cinnamon” Olfactory mark: C6H5-CH = CHCOOCH3 The source of the new requirements = the Sieckmann judgment This application would still fail the new test

Representation “capable of being graphically represented?” JW Spear & Son Ltd & Ors v Zynga Inc [2013] EWCA Civ 1175 (04 October 2013) Société Des Produits Nestlé SA v Cadbury UK Ltd [2013] EWCA Civ 1174 (04 October 2013)     plus descriptions Would these still fail the new test?

“Distinctive (inherent or acquired)?” Distinctiveness “Distinctive (inherent or acquired)?”

Distinctiveness Inherent distinctiveness – a summary of the CJEU case law “Average consumers are not in the habit of making assumptions about the origin of products on the basis of their [colour/] shape or the shape of their packaging” “Only a shape mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character” “In the case of a colour per se, distinctiveness without any prior use is inconceivable save in exceptional circumstances.” NB: Cadbury relied on acquired distinctiveness.

Distinctiveness “Inherent distinctiveness” JLR v OHIM (Case T-629/14) - 25 November 2015 Not distinctive for vehicles for locomotion by land But distinctive for vehicles for locomotion by air and water (regarded as departing significantly from the norm and customs of that sector and note that was enough)

Distinctiveness Inherent distinctiveness - the UK only “extra” requirement? It is not correct that “just because a shape is unusual for the kind of goods concerned, the public will automatically take it as denoting trade origin, as being the badge of the maker”; Bongrain SA, Re Trade Mark Application [2004] EWCA Civ 1690 (17 December 2004) What “more” is needed for inherent distinctiveness? Inconsistent with General Court decisions like JLR? Not challenged in the UK until this year “at some point this question will have to be referred to the CJEU” – Arnold J (London Taxi Company)

Distinctiveness Acquired distinctiveness of CTMs / EUTMs Louis Vuitton Malletier v OHIM (T‑359/12) - 21 April 2015  The Coco-Cola Company v OHIM (T‑ 411/14) – 24 February 2016 Prior to Lindt & Sprüngli v OHIM (C‑98/11 P), in order to establish acquired distinctiveness for a shape/colour CTMs, proof was required for all (now 28) Member States. In Lindt it was accepted that “it would be unreasonable to require proof of such acquisition for each individual Member State”. However this softening is patchy. Acquired distinctiveness in the EU not proved in relation to these CTM applications, despite a lot of evidence across many Member States May appeal?.

Distinctiveness Acquired distinctiveness – give us a break! The question referred to the CJEU in Societe des Produits Nestle (C-215/14) Is it sufficient to prove that: at the relevant date a significant proportion of the relevant class of persons recognises the mark and associates it with the applicant's goods in the sense that if they were to consider who marketed goods bearing that mark [and that mark alone], they would identify the applicant; or at the relevant date a significant proportion of the relevant class of persons relies upon the mark (as opposed to any other trade marks which may also be present) as indicating the origin of the goods?

?? Distinctiveness Acquired distinctiveness CJEU’s answer (not A or B) “… the trade mark applicant must prove that the relevant class of persons perceive the goods or services designated exclusively by the mark applied for, as opposed to any other mark which might also be present, as originating from a particular company” ?? Nestle accepted the CJEU’s answer ruled out mere recognition/association. However it said the type or “reliance” required was established where ”because of” the mark alone, the average consumer perceives the goods as originating from a particular undertaking. But Nestle said what wasn’t required “was reliance in the sense that consumers had in the past gone out and made purchasing decisions on the basis of the mark alone”.

Distinctiveness Acquired distinctiveness The Judge disagreed, although he accepted that “at least half the people surveyed thought that the picture [of the mark] shown to them depicted a KIT KAT product”. But this was not enough as: there was no evidence that the shape of the product featured in promotions for the goods for many years prior to the application; the product was sold in an opaque wrapper which did not show the shape; no evidence consumers used shape post purchase to check that they had chosen the product from their intended trade source; and there was likely to have been a number of similarly shaped products produced by others on the market leading up to the relevant date. Nestle has said it will appeal

Distinctiveness The London Taxi Company TX1/TXII TM = distinctive (inherent or acquired)? No inherent distinctiveness “the mark would have been perceived by the average consumer of taxis as a merely a variation of the typical shape of a taxi…” “even if the shape was regarded as departing significantly from the norms and customs of the sector, it would not have been perceived as identifying the origin of the goods” (the UK Bongrain issue).

Distinctiveness The London Taxi Company’s 3D trade marks - acquired distinctiveness? The Court found: half of all licensed London taxis on the road (at the date of the counterclaim) were TX1/TXIIs taxis of this shape were sold for 9 years over 23,000 TX1/TXIIs were sold these taxis continued to be used for some 15 years after sale advertising spend was “far from negligible” these taxis “are well known, regarded with affection and identified with London”. But still found the mark to be “devoid of distinctive character” Watch this space…

Specific invalidity grounds 7. Absolute grounds for refusal     1. The following shall not be registered...         (e) signs which consist exclusively of:             (i) the shape, or another characteristic, which results from the nature of the goods themselves;             (ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result;             (iii) the shape, or another characteristic, which gives substantial value to the goods

Specific invalidity grounds Hauck GmbH & Co KG v Stokke A/S (C-205/13) – 18 September 2014 The shape of the ‘Tripp Trapp’ chair gives it aesthetic value but it also has other characteristics (safety, comfort and reliability) which give it functional value. The CJEU concluded: the “substantial value” grounds for refusal/invalidity “may apply to a sign which consists exclusively of the shape of a product with several characteristics each of which may give that product substantial value”

Specific invalidity grounds The relevant considerations for the “substantial value” grounds are: the nature of the category of goods concerned a substantial price difference in relation to similar products the artistic value of the shape in question the shape’s dissimilarity from other shapes in common use on the relevant market a promotion strategy which focuses on accentuating the aesthetic characteristics of the product Note the squeeze with distinctiveness if the last two are given too much emphasis as: “only a shape mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin is not devoid of any inherent distinctive character”; and lack of promotional efforts specifically emphasising shape often contribute to a “no acquired distinctive character” finding (e.g. Kitkat and London Taxi Company).

Specific invalidity grounds But what about these CTM recent registrations and similar? Don’t these shapes also give the goods substantial value?

Specific invalidity grounds Soon the shape specific absolute grounds for refusal/invalidity will apply to “other characteristics” of goods as well . What “other characteristics” will add substantial value: An unusual and comic clock tick? Luminous pink construction/work boots? An evocatively perfumed children’s modelling dough? Bitter cherry flavoured lipstick?

key contacts Declan Cushley Catherine Wiseman Partner Partner Browne Jacobson LLP Declan is the head of our commercial group, which includes the firm’s intellectual property team. He has a Masters degree in trade mark law, has published articles in Intellectual Property Review and European Intellectual Property Review and has spoken at LES and ITMA conferences on IP and licensing issues. Member of the Pangea Net executive committee and has also been instrumental in securing our work on the Bernard Madoff litigation. e: declan.cushley@brownejacobson.com t: +44 (0)20 7337 1042 m: +44 (0)7974 071690 Catherine Wiseman Partner Barker Brettell Catherine practises in a wide range of trade mark matters, specialising in advising on the freedom to use and the registrability of trade marks, and filing and prosecuting trade mark applications around the world, in particular UK, Community and International applications. Catherine has considerable expertise in conflict matters and in the negotiation of settlements, as well as in portfolio management and rationalisation. e: catherine.wiseman@barkerbrettell.co.uk t: +44 (0)121 456 0014 m: +44 (0)7971 672157

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