European Trademark Law Registration

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European Trademark LawRegistration
Registrability

• Alexander Tsoutsanis
• Visiting Professor from Leiden University
• Class 2 - Jan. 16th 2009

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• Registration
• Connectivity
• Requirements
• Taxonomy

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Registration

• Why ?
• Where?
• How ?
• How much ?
• What?

• The system
• The options
• The process
• The costs
• The possibilities

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system

• The registration system for trade marks
  constitutes an essential element of their
  protection, which contributes, in respect of both
  Community law and the different national laws, to
  legal certainty and sound administration
  (Sieckmann)
• First-to-file key, but sometimes first-user
  prevails.

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process
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Connectivity

• 1989 Madrid Protocol (Int. Registration)
• IR single TM application designating multiple
  jurisdictions.
• 2003/2004 full connectivity US and CTM

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options US clients

• Apply for CTM directly
• Apply for IR
• designate EU rely on earlier US TM as basic
  registration
• designate EU US at same time, by relying on
  other basic registration
• avoid CTM and only designate nat. TMs
• etc, etc.

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Requirements

• A Community trade mark may consist of any signs,
• capable of being represented graphically,
• particularly words, including personal names,
  designs, letters, numerals, the shape of goods or
  of their packaging,
• provided that such signs are capable of
  distinguishing the goods or services of one
  undertaking from those of other undertakings.

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1. Signs

• Non-exhaustive list of examples
• May also extend to signs which are not perceived
  visually (sounds e.g.)
• But must be specific

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Dyson

• () the subject-matter of an application for
  trade mark registration which relates to all the
  conceivable shapes of a transparent bin or
  collection chamber forming part of the external
  surface of a vacuum cleaner,
• is not a sign within the meaning of that
  provision and therefore is not capable of
  constituting a trade mark within the meaning
  thereof. The subject-matter of such an
  application, which in reality resides in a mere
  property of the product concerned, is capable of
  taking on a multitude of different appearances
  and is thus not specific.

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2. Graphical representation

• That graphic representation must enable the sign
  to be represented visually, particularly by means
  of images, lines or characters, so that it can be
  precisely identified.
• Such an interpretation is required to allow for
  the sound operation of the trade mark
  registration system.
• Representation must be clear, precise,
  self-contained, easily, accessible, intelligible,
  durable and objective (Sieckmann)

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3. Distinctiveness

• capable of distinguishing the goods or services
  of one undertaking from those of other
  undertakings ( 4)
• () marks must always be examined in relation to
  the goods or services in respect of which
  registration is applied for (Henkel)

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3. Distinctiveness

• FUN for cars
• FRESHHH for food
• ANEW ALTERNATIVE for soap
• NEW LOOK for var. goods

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Taxonomy

• Signs particularly words, including personal
  names, designs, letters, numerals, the shape of
  goods or of their packaging,

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common

• Word marks
• Device marks
• Combined word/device marks

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exotics

• Shape marks
• Color marks
• Sound marks