The Legal Eagle Study Notes
Trademark 1 of 3 -What if not registered? Then -8cm by 8cm box must fit in the tablet on one side has
Registrability and Absolute you are passing off your sign several different words or
Grounds Types of trademark Smells phrases”. This description is
L.O -TM are terriotorial. inadequate so many different
-Understand the Sieckmann v Deutssches permutations
Registration at the UK IPO Patent- und Markenamt
importance of TMs – only use TM in the UK Sounds
-Application for a smell, made
-Be familiar with the nature Wider protection from the Shield Mark BV v Joost Kist
three attempts at graphic
of a TM community trademark representation: -An application to register the
-Understand why TM (CTM) register at (OHIM) 1. Verbal description: sound of a cock crowing.
registration is necessary “balsamically fruity with a Held: It is not acceptable to
that covers the whole of
-Understand the provisions hint of cinnamon” describe sounds or to write
Europe. down the indication of the cry
for registration -International registration 2. Chemical formula:
-Know absolute grounds C6H5-CH = CHCOOCH3 of an animal sound writing
under the Madrid Protocol; “Cockle doodle doo.. woof
for refusal 3. Deposit of sample at
make a file in your home woof” OR a sonogram
What is a TM? national office –cannot
country. Governed by be accessed and a -You need actual musical
-Role of TM – denote source WIPO [not on course] notation/notes ♫♫♪. For
of origin. This has sample is not durable
Types of Registration consumer to understand
advantages to producers & Sieckmann Criteria
S1(1) – definition Element 3: Capable of
consumers. They invest in a The representation has to
S49 – collective marks used distinguishing
product and build up the be:
by guilds, trades, professional -Can the average consumer
brand, anyone else shouldn’t 1. Clear
associations i.e. CFA
be able to, retain premium 2. Precise of goods or services of a
S50 – certification marks
prices 3. Self-contained particular kind determine the
designate that a particular
-Benefits consumer; 4. Easily accessible brand from seeing or hearing
good/service of a certain
recognise and guarantee 5. Intelligible the sign
quality.
quality of product. 6. Durable -Some strong T.marks; these
-Governed by TMA 1994 Legal Definition
7. Objective are instantly distinctive; Some
–implemented following a -s1(1)TMA
Colours weak T.marks. Kelloggs vs
European directive in 1989. TM must satisfy:
Libertel Groep BV v Cornflakes
-Harmonisation within EU – -sign
Council Directive -capable of being represented
Benelux Merkenbureau -Cannot call in cornflakes
89/104/EEC graphically Dutch company wanted to because it is descriptive of a
-Important thing about -capable of distinguishing register the colour orange. product. Made up words are
harmonisation it introduced goods/services from one Problem lots of different distinctive and strong,
new concepts into UK Law trader to another shades of orange, can’t sent descriptive words are
e.g. Dilution – CLAERYN / colour sample not durable. weakest
Element 1: What is a
KLAREIN decision of the How to register colour? –send
sign? number in Registration Process
Benelux Court of Justice. Anything that can be Procedure set out in ss32-34
Claeryn Gin sold in nightclubs Tastes
apprehended by the senses: TMA
and Klarein. Problem is toilet Eli Lilly & Co’s CTM
-words Process:
cleaner will devalue the Application (2004) – register
-logos 1. -Make Application
brand. Landmark case artificial strawberry flavour
-Colours 2. -Examination by
because totally different applied to medicine. Refused
-letters registry
goods –can diminish not precise enough. Unlikely
-numbers
reputation of earlier brand that taste canbe registered as 3. -Publication
-shape of goods
Why Register? -smells
a TM 4. -Registration
-Gives you monopoly for Shapes Renewal every 10 years
Element 2: Capable of
mark for designated Swizzel’s Matlow’s 3D TM Application
goods/services graphic representation
application (1999) -s32(1) – Apply to Registry -
-Potentially indefinite duration - Understand nature and -Application by Matlows for -s32(2) – Requirements –
(can renew) scope of owners’ rights love hearts. Did not send a must contain name, address,
-Property right –can (Important so that 3rd drawing they just put a written representation of the mark,
sell/assign/mortgage- s2 parties able to look at description “a circular description of good based on
TMA most high value brand public register and find out compressed tablet bearing a relevant classes
in world Coca Cola what is out there) rose heart outline contained
Page 1 of 3
© 2021
Trademark 1 of 3 -What if not registered? Then -8cm by 8cm box must fit in the tablet on one side has
Registrability and Absolute you are passing off your sign several different words or
Grounds Types of trademark Smells phrases”. This description is
L.O -TM are terriotorial. inadequate so many different
-Understand the Sieckmann v Deutssches permutations
Registration at the UK IPO Patent- und Markenamt
importance of TMs – only use TM in the UK Sounds
-Application for a smell, made
-Be familiar with the nature Wider protection from the Shield Mark BV v Joost Kist
three attempts at graphic
of a TM community trademark representation: -An application to register the
-Understand why TM (CTM) register at (OHIM) 1. Verbal description: sound of a cock crowing.
registration is necessary “balsamically fruity with a Held: It is not acceptable to
that covers the whole of
-Understand the provisions hint of cinnamon” describe sounds or to write
Europe. down the indication of the cry
for registration -International registration 2. Chemical formula:
-Know absolute grounds C6H5-CH = CHCOOCH3 of an animal sound writing
under the Madrid Protocol; “Cockle doodle doo.. woof
for refusal 3. Deposit of sample at
make a file in your home woof” OR a sonogram
What is a TM? national office –cannot
country. Governed by be accessed and a -You need actual musical
-Role of TM – denote source WIPO [not on course] notation/notes ♫♫♪. For
of origin. This has sample is not durable
Types of Registration consumer to understand
advantages to producers & Sieckmann Criteria
S1(1) – definition Element 3: Capable of
consumers. They invest in a The representation has to
S49 – collective marks used distinguishing
product and build up the be:
by guilds, trades, professional -Can the average consumer
brand, anyone else shouldn’t 1. Clear
associations i.e. CFA
be able to, retain premium 2. Precise of goods or services of a
S50 – certification marks
prices 3. Self-contained particular kind determine the
designate that a particular
-Benefits consumer; 4. Easily accessible brand from seeing or hearing
good/service of a certain
recognise and guarantee 5. Intelligible the sign
quality.
quality of product. 6. Durable -Some strong T.marks; these
-Governed by TMA 1994 Legal Definition
7. Objective are instantly distinctive; Some
–implemented following a -s1(1)TMA
Colours weak T.marks. Kelloggs vs
European directive in 1989. TM must satisfy:
Libertel Groep BV v Cornflakes
-Harmonisation within EU – -sign
Council Directive -capable of being represented
Benelux Merkenbureau -Cannot call in cornflakes
89/104/EEC graphically Dutch company wanted to because it is descriptive of a
-Important thing about -capable of distinguishing register the colour orange. product. Made up words are
harmonisation it introduced goods/services from one Problem lots of different distinctive and strong,
new concepts into UK Law trader to another shades of orange, can’t sent descriptive words are
e.g. Dilution – CLAERYN / colour sample not durable. weakest
Element 1: What is a
KLAREIN decision of the How to register colour? –send
sign? number in Registration Process
Benelux Court of Justice. Anything that can be Procedure set out in ss32-34
Claeryn Gin sold in nightclubs Tastes
apprehended by the senses: TMA
and Klarein. Problem is toilet Eli Lilly & Co’s CTM
-words Process:
cleaner will devalue the Application (2004) – register
-logos 1. -Make Application
brand. Landmark case artificial strawberry flavour
-Colours 2. -Examination by
because totally different applied to medicine. Refused
-letters registry
goods –can diminish not precise enough. Unlikely
-numbers
reputation of earlier brand that taste canbe registered as 3. -Publication
-shape of goods
Why Register? -smells
a TM 4. -Registration
-Gives you monopoly for Shapes Renewal every 10 years
Element 2: Capable of
mark for designated Swizzel’s Matlow’s 3D TM Application
goods/services graphic representation
application (1999) -s32(1) – Apply to Registry -
-Potentially indefinite duration - Understand nature and -Application by Matlows for -s32(2) – Requirements –
(can renew) scope of owners’ rights love hearts. Did not send a must contain name, address,
-Property right –can (Important so that 3rd drawing they just put a written representation of the mark,
sell/assign/mortgage- s2 parties able to look at description “a circular description of good based on
TMA most high value brand public register and find out compressed tablet bearing a relevant classes
in world Coca Cola what is out there) rose heart outline contained
Page 1 of 3
© 2021
