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Introduction to Trade Mark Law

Autor:   •  October 2, 2018  •  6,729 Words (27 Pages)  •  560 Views

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27.It would be difficult at this level to attempt any general characterisation of the senses in order to confirm that sight is the most developed. The ability of the human eye to perceive colours is just as limited as the ability of the sense of smell to perceive odours. Moreover, a description of a colour can be just as inaccurate and difficult as that of an odour.

29.In any case, I believe that the abstract ability of a sign, capable of perception by the sense of smell, to fulfil an identification function is completely beyond question. …

30.This ability of signs capable of perception by the sense of smell to fulfil the distinguishing function of trade marks is not just of a theoretical nature. Some legal systems have permitted olfactory trade marks, that of the United States being the first. On 19 September 1990 a trade mark was registered for sewing thread and embroidery thread, consisting of a fragrance of fresh flowers reminiscent of mimosa’. However, two qualifications must be made on the subject of that trade mark. Firstly, the trade mark consists not so much of the odour as the scented product, regardless of its fragrance.

32In the legal order of the European Union, the Office for Harmonisation in the Internal Market has allowed the registration of the ‘smell of freshly-cut grass’ as a trade mark for tennis balls. This seems to be a ‘pearl in the desert’, however, an individual decision which is unlikely to be repeated.

In the United Kingdom the United Kingdom Trade Mark Registry has allowed two olfactory marks: the fragrance of roses, applied to tyres (trade mark No 2001416), and the smell of bitter beer applied to flights for darts (trade mark No 2000234). Despite this, the practice in relation to this kind of trade mark is currently changing, as the United Kingdom Government stated in its written observations. For example, by decision of 16 June 2000 confirmed on appeal by judgment of 19 December 2000, the Trade Marks Registry refused to register a mark consisting of the smell, aroma or essence of cinnamon for articles of furniture and parts and fittings thereof (trade mark No 2000169).

35.Under the provisions of Article 2 of the First Directive, it is not sufficient for signs to be ‘capable of distinguishing the goods or services of one undertaking from those of other undertakings’ in order to constitute a trade mark; in addition, they must be capable of being ‘represented graphically’.

36. This requirement is imposed for reasons of legal certainty. A registered trade mark grants to the owner a monopoly, an exclusive right to use the signs which comprise it. By inspecting the register of trade marks, it must be possible to know, to the full extent of the public nature of registers, the nature and scope of the signs, references and symbols registered as a trade mark, which is why a graphical representation is required. If an undertaking reserves certain signs and references for itself in order to distinguish its goods and services from those of other undertakings, the symbols so claimed must be known very precisely so that other people may be properly guided. For reasons of legal certainty, the requirement of graphical representation is thus linked with the identification function, the primary and essential function of trade marks.

37.Graphical representation entails describing something by means of symbols that can be drawn. Consequently, the capability of a sign of being ‘rendered on paper’ and thus perceived visually must exist in addition to its intrinsic identification capability. Since the purpose is to differentiate, the representation must be effected in a comprehensible manner, since comprehension is a precondition of discernment.

38In other words, graphical representation per se is not enough: it must meet two criteria. Firstly, it must be complete, clear and precise, so that the object of the right of exclusivity is immediately clear. Secondly, it must be intelligible to those persons having an interest in inspecting the register, in other words other manufacturers and consumers. Distinctive character and graphical representability are two properties having the same common purpose of enabling the products on the market to be selected by potential buyers on the basis of their origin. Signs comprising a trade mark are represented graphically in order to protect and publicise their appropriation by an undertaking, which has reserved the signs for itself with the aim of individualising the goods or services it offers.

45. [...] Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically.

46. 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.

48. First, the function of the graphic representability requirement is, in particular, to define the mark itself in order to determine the precise subject of the protection afforded by the registered mark to its proprietor.

49. Next, the entry of the mark in a public register has the aim of making it accessible to the competent authorities and the public, particularly to economic operators.

55. Article 2 of the Directive must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

69. As regards a chemical formula, as the United Kingdom Government has rightly noted, few people would recognise in such a formula the odour in question. Such a formula is not sufficiently intelligible. In addition, as that Government and the Commission stated, a chemical formula does not represent the odour of a substance, but the substance as such, and nor is it sufficiently clear and precise. It is therefore not a representation for the purposes of Article 2 of the Directive.

70. In respect of the description of an odour, although it is graphic, it is not sufficiently clear, precise and objective.

71. As to the deposit of an odour sample, it does not constitute a graphic representation for the purposes of Article 2 of the Directive. Moreover, an odour sample is not sufficiently stable or durable.

What is a sign? Colour could be a sign, but is not always so

Libertel Groep

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