Dyson: the Advocate General speaks

Advocate General Leger gave his Opinion yesterday in European Court of Justice Case C‑321/03, Dyson Ltd v Registrar of Trade Marks, a reference for a preliminary ruling on a point of trade mark law from the High Court for England and Wales.

Since 1993 Dyson has made and sold its Dual Cyclone vacuum cleaner, a bagless cleaner in which the dirt and dust is collected in a transparent plastic container forming part of the machine. In 1996 it applied to register as a UK trade mark a "transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation", for vacuum cleaners etc in Class 9, as depicted in the two illustrations here. In 2002 the Hearing Officer rejected that application on the ground that the sign was devoid of distinctive character; he also said that the transparent collection chamber ultimately served to designate the kind and the intended purpose of the product in question, which was an absolute ground for refusal of registration.

Dyson appealed to the High Court's Chancery Division, which stayed the proceedings until it could receive inspiration from the ECJ in anawering the following questions:
"1. In a situation where an applicant has used a sign (which is not a shape) which consists of a feature which has a function and which forms part of the appearance of a new kind of article, and the applicant has, until the date of application, had a de facto monopoly in such articles, is it sufficient, in order for the sign to have acquired a distinctive character within the meaning of Article 3(3) of Directive 89/104, that a significant proportion of the relevant public has by the date of application for registration come to associate the relevant goods bearing the sign with the applicant and no other manufacturer?

2. If that is not sufficient, what else is needed in order for the sign to have acquired a distinctive character and, in particular, is it necessary for the person who has used the sign to have promoted it as a trade mark?".
The Advocate General has recommended the ECJ to rule as follows:
"(1) A visible functional feature of a product which is capable of taking on a multitude of appearances does not fulfil the necessary conditions to constitute a trade mark within the meaning of Article 2 of ... Council Directive 89/104 ... since it does not constitute a sign capable of being represented graphically and capable of distinguishing goods and services of one undertaking from those of other undertakings.

(2) In any event, Article 3(1)(e), second indent, of ... Council Directive 89/104 precludes the registration as a trade mark of a visible functional feature of a product".
In his Opinion the Advocate General reviews not just the technicalities of trade mark registrability but the policy that underwrites trade mark law and other IP law in the European Union:
"96. It is essential that trade mark law is not diverted from its function in order to obtain an unfair competitive advantage. As the referring court rightly points out, ‘it is not the function of a trade mark to create a monopoly in new developments in technology’.

97. ... {t}rade mark rights are ‘an essential element in the system of undistorted competition which the Treaty seeks to establish and maintain’. Through its action, the Community legislature has succeeded in safeguarding this system by ensuring that trade marks are able to fulfil their essential function. ... [T]hat function is to guarantee the identity of the origin of the marked product to the consumer by enabling him to distinguish the product from others which have another origin.

98. So that that function can be ensured, Article 5(1)(a) .... reserves for the trade mark proprietor the exclusive right to use the distinctive sign and protects him against competitors wishing to take advantage of the status and reputation of the trade mark by selling products illegally bearing that trade mark.

99. However, unlike the protection granted by other intellectual and industrial property rights, the protection conferred by trade mark rights can be for an unlimited duration subject to genuine use and the payment of renewal fees for registration.

100. It is therefore to be feared that some people will seek, through trade mark rights, not to protect a distinctive sign, but to protect industrial creations or innovations, which are covered by other intellectual property rights and whose term of protection is generally limited in time.

101. Thus, in the present case, whilst Dyson may legitimately be rewarded for its research and innovation work and claim to enjoy exclusive rights to exploit its invention, I consider that such protection may be granted, in the case of a technological innovation, only through the grant of a patent and not through a trade mark".
The IPKat doesn't see how the Advocate General could have reached any other decision, given the corpus of precedent built up by the European Court of Justice - though he has a sneaking sympathy with Dyson, many of whose customers did, de facto, regard bagless cleaners with transparent bins as emanating from Dyson by virtue of that fact. Merpel adds, after years of people calling their vacuum cleaners "hoovers", it was strange to hear them making generic use of "dysons" too.

How cyclone cleaners work here
Damage done by cyclones here
Vacuum cleaners for cats and dogs here
DYSON: THE ADVOCATE GENERAL SPEAKS DYSON: THE ADVOCATE GENERAL SPEAKS Reviewed by Jeremy on Friday, September 15, 2006 Rating: 5

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