Summary
Summary Problem question for trade marks
Gives a detailed structure on how to answer problem questions
[Show more]
Connected book
Book Title:
Author(s):
- Edition:
- ISBN:
- Edition:
Seller
Follow
Content preview
TRADEMARKS Q2:Introduction:
The vast majority of trade marks are based on signs capable of being perceived, and
comprehensively represented, in a visual medium. This visual element plays a significant
role in enabling a consumer to differentiate products. In UK law prior to the amendments,
trade mark was considered as any sign capable of being represented graphically. However,
following the UK implementation of the EU Trade Mark Directive 2015/2436 (“EU TMD”),
the legal definition and the qualifying criteria have been amended to ensure greater
flexibility and openness, alongside recognition that non-conventional trade marks can be
represented by a range of different formats. This means that trade mark applications will no
longer have to present marks graphically. However, based on the analysis of EU and UK case
laws in accordance with the demanding statutory criteria, the extent of the amendments to
which Trade Mark Law has developed to enable registration of non-traditional marks, such
as smell, colour, taste, shapes and sound remain limited.
Amended definition
The amended criteria under S1 (1) Trade Marks Act 1994 (UK “TMA”) states that a trade
mark is a sign which is capable (a) of being represented in the register in a manner which
enables the registrar and other competent authorities and the public to determine the clear
and precise subject matter of the protection afforded to the proprietor, and (b) of
distinguishing goods or services of one undertaking from those of other undertakings. This
means that the previous definition that required “any sign capable of being represented
graphically” is no longer applied. The grounds for refusal are enshrined in sections 3(1)(b)
mark must not be devoid of distinctive character, (c) must not only describe the kind,
quality, purpose and value, (d) must not be customary within the field. Article 3 EU TMD and
Article 4 EU Trade Mark Regulations 2017 (“TMR”) mirror these definitions. However,
difficulties remain on registering non-conventional trade marks, such as smell.
Smell
The leading EU case on smell is Sieckmann, where the court explained that a smell mark
could be represented graphically through images or words. The court also set out seven
criteria that must be satisfied to register an olfactory mark (“smell”). The mark must be
clear, precise, self-contained, easily accessible, intelligible, durable and objective. The
description of a smell was “balsamically fruity with a slight hint of cinnamon” coupled with
the chemical formula. However, the court held that the description of the smell failed to
meet these seven criteria, as the chemical formula only identified the chemical substance
and no the smell of the substance. The UKIPO’s Trade Marks Manual refers to Sieckmann
and explains how to meet the distinctiveness requirement (S1 (1)(b) UK TMA). Particularly, a
scent may be a distinctive mark, if it is not an inherent of natural characteristic of the
goods/services, but rather is added by the applicant to identify their goods and is recognised
The benefits of buying summaries with Stuvia:
Guaranteed quality through customer reviews
Stuvia customers have reviewed more than 700,000 summaries. This how you know that you are buying the best documents.
Quick and easy check-out
You can quickly pay through credit card for the summaries. There is no membership needed.
Focus on what matters
Your fellow students write the study notes themselves, which is why the documents are always reliable and up-to-date. This ensures you quickly get to the core!
Frequently asked questions
What do I get when I buy this document?
You get a PDF, available immediately after your purchase. The purchased document is accessible anytime, anywhere and indefinitely through your profile.
Satisfaction guarantee: how does it work?
Our satisfaction guarantee ensures that you always find a study document that suits you well. You fill out a form, and our customer service team takes care of the rest.
Who am I buying these notes from?
Stuvia is a marketplace, so you are not buying this document from us, but from seller kunsulubaigabatova. Stuvia facilitates payment to the seller.
Will I be stuck with a subscription?
No, you only buy these notes for £8.69. You're not tied to anything after your purchase.
Can Stuvia be trusted?
4.6 stars on Google & Trustpilot (+1000 reviews)
64438 documents were sold in the last 30 days
Founded in 2010, the go-to place to buy revision notes and other study material for 14 years now