Grounds for refusal types of mark

1
Grounds for refusal (types of mark)

• Descriptive words
• Combinations of words
• Slogans
• Geographical indications
• Personal names
• Shape marks
• Foreign words

2
Descriptive words

• Marks consisting exclusively of descriptive signs
  or indications are not eligible for registration
  (C-363/99, POSTKANTOOR)
• Not necessary that the descriptive signs and
  indications composing the mark actually are in
  use (C-191/01, DOUBLE-MINT)
• Sufficient that those signs and indications could
  be used for such purposes (C-191/01, DOUBLE-MINT)
  
• Descriptive if at least one of the possible
  meanings designates a characteristic (C-191/01,
  DOUBLE-MINT)
• Not necessary that the signs or indications
  should be the only way of designating such a
  characteristic (C-363/99, POSTKANTOOR)

3
Descriptive words (2)

• The number of competitors who may have an
  interest in using the signs or indications is not
  decisive (C-363/99, POSTKANTOOR)
• Determination whether the mark is descriptive or
  whether it is reasonable to assume that that it
  might be descriptive in the future (C-363/99,
  POSTKANTOOR)
• Words mark should be refused registration whether
  either visually or aurally descriptive (C-363/99,
  POSTKANTOOR)
• Irrelevant whether the characteristics of the
  goods or services are commercially essential or
  merely ancillary (C-363/99, POSTKANTOOR cf.
  BABY-DRY)

4
Combinations

• A mere combination of descriptive elements
  remains descriptive (C-265/00, BIOMILD)
• A combination may not be descriptive // provided
  that it creates an impression which is
  sufficiently far removed from that produced by
  the simple combination (C-265/00, BIOMILD)
• This condition has to be satisfied as regards
  both the aural and the visual impression
  (C-265/00, BIOMILD)

5
Combinations (2)

• Must be a perceptible difference between the
  neologism and the mere sum of its parts
  (C-265/00, BIOMILD)
• That assumes that, because of the unusual nature
  of the combination in relation to the goods or
  services, the word creates an impression which is
  sufficiently far removed from that produced by
  the mere combination of meanings lent by the
  elements of which it is composed, with the result
  that the word is more than the sum of its parts
  (C-265/00, BIOMILD)

6
Slogans

• Unusual to make assumptions about origin on the
  basis of slogans (C-64/02, DAS PRINZIP)
• Difficulties in establishing distinctiveness of
  slogans do not justify specific criteria
  (C-64/02, DAS PRINZIP)
• Not appropriate to limit the scope of Article
  7(1)(b) of the Regulation to trade marks for
  which registration is refused on the basis of
  Article 7(1)(d), by reason of the fact that they
  are commonly used in business communications and,
  in particular, in advertising (C-64/02, DAS
  PRINZIP)

7
Slogans (2)

• Advertising slogans are not excluded by virtue of
  such use (C-64/02, DAS PRINZIP)

8
Geographical Indications

• Determination whether a geographical name
  designates a place which is currently associated
  with the category of goods concerned, or whether
  it is reasonable to assume that such an
  association may be established in the future
  (C-108/97, CHIEMSEE)
• Regard to whether the relevant sector of the
  public is familiar with the characteristics of
  the place and with the category of goods
  concerned (C-108/97, CHIEMSEE)
• Not ground for refusal of geographical names
  which are unknown to the relevant sector or of
  names which are not connected with the category
  of goods concerned (C-108/97, CHIEMSEE)

9
Personal Names

• Common names may distinguish goods and services
  (C-404/02, NICHOLS)
• Stricter general criteria may not not be applied
  to such marks
• predetermined number of persons with the same
  name
• number of undertakings providing similar products
  
• prevalence of the use of surnames in the relevant
  trade
• (C-404/02, NICHOLS)
• No account of advantage to the first applicant
  (C-404/02, NICHOLS)
• No impact of third parties right to use their
  name in the course of trade (C-404/02, NICHOLS)

10
Shape marks

• Same criteria for assessing the distinctive
  character of shape trade marks (C-299/99,
  Philips)
• May in practice be more difficult to establish
  distinctiveness in relation to a shape (C-53/01,
  Linde)
• Unusual to make assumptions about origin on the
  basis of shape of goods or packaging (C-218/01,
  Henkel)
• Standard shapes likely to be devoid of any
  distinctive character (C-218/01, Henkel)

11
Shape marks (2)

• Only a mark which departs significantly from the
  norm or customs of the sector has distinctive
  character (C-218/01, Henkel)
• A capricious addition is not necessary (C-299/99,
  Philips)
• A variant of a common shape of that type of
  product is not sufficient (C-136/02, MAG-LITE)
• The shape must be perceived as a trade mark
  without an analytical examination and without a
  particular attention (C-136/02, MAG-LITE)

12
Shape marks (3)

• Where the essential functional characteristics of
  the shape of a product are attributable solely to
  the technical result, Article 3(1)(e), second
  indent, precludes registration of a sign
  consisting of that shape, even if that technical
  result can be achieved by other shapes (C-299/99,
  Philips)
• When the packaging gives the product its shape,
  the packaging shall be considered as the product
  itself in relation to article 3.1 (e) (C-218/01,
  Henkel)
• When a three-dimensional mark consists of the
  packaging for a product sold in packaging, the
  shape can show the nature of the product
  (C-218/01, Henkel)

13
Foreign words

• Primary reference point for distinctiveness of a
  mark is the relevant consumer group (C-108/05,
  EUROPOLIS)
• Language, cultural, social and economic
  differences between member states mean that a
  mark can lack distinctive character in one member
  state but not another (C-421/04, MATRATZEN II)
• Consequently possible to register as national
  trade mark in one MS a word taken from another MS
  where it lacks distinctive character (C-421/04,
  MATRATZEN II)
• Art 28 30 EC Treaty do not prevent this
  (C-421/04, MATRATZEN II)