European Trademark Law Absolute Grounds for Refusal I

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European Trademark LawAbsolute Grounds for
Refusal - I

• Alexander Tsoutsanis
• Visiting Professor from Leiden University
• Class 3 - Jan. 21st 2009

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• Basic points
• Specific grounds
• Alternative strategies
• Quiz

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Basic points

• All or nothing ( 7-2)
• ? sign x product x perception
• Possible to overcome lack of ? by intensive
  marketing ( 7-3)

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Specific grounds ( 7)

• (a) not a sign within 4
• (b) not distinctive
• (c) descriptive
• (d) generic

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(c) descriptive

• Scope ? only refusal if sign consists
  exclusively of descriptive elements
• Scope ? possible meaning sufficient (Doublemint)
• Scope ? no exact definition required, describing
  direct or concrete relationship between sign and
  goods is sufficient (Streamserve)

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• Common reference base required (but realistic in
  multicultural EU?)
• Synonyms irrelevant (Biomild / Postkantoor)
• Descriptive ? suggestive / allusive?
• Descriptive ? too vague

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word combinations

• Descriptiveness of combination must also be
  examined.
• Word combination must be more than the sum of its
  descriptive parts, because of unusual
  combination
• creating impression which is sufficiently far
  removed (Biomild), or
• has acquired its own meaning in everyday language
  (Postkantoor).

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(b) not distinctive

• ?
• Overlap with 7-1(c), but separate reasoning
  required
• Some distinctive character sufficient
• Only refusal if devoid of any distinctive
  character

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(d) generic

• Overlap with 7-1(b) (c)
• Often involves signs which were initially
  distinctive, becoming generic over time.
• Generic ? descriptive
• does not necessarily involve characteristics of
  the goods concerned.
• possible meaning is not sufficient, must have
  become customary in course of trade or language.

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Alternative strategies

• add visuals ? scope ?
• restrict goods ? scope ?
• intensify marketing ?
• do survey ?
• try national TM first ?
• opt for national conversion ?
• opt for less descriptive sign ? !

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Quiz
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• PAST PERFECT for music records ?

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• LIGHT SPACE for paint ?

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• ECOROCK
• for
• Drywall and Consultancy relating to sustainable
  building projects

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