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Thursday, 26 July 2007

Signs and wonders from the UK-IPO

The folks at the UK-IPO have issued a shiny new PAN (7/07) on s.3(1)(a) examination practice, in the light of the ECJ’s Dyson ruling.

Says the PAN, there are three situations in which a thingy [there’s no technical term left for this – the IPKat is used to calling things which aren’t marks signs, but of course, these aren’t even signs] won’t be considered a sign:

1. where the subject of the application is a mere property of a thing

2. where the application is to protect an idea, rather than the fixed expression of the idea, e.g. a theme [the IPKat was convinced beforehand that the idea/expression dichotomy was a useful conceptual tool for trade mark lawyers – he’s glad the UK-IPO agrees]

3. applications to register extended moving imagery. These can’t be considered a single sign

The Notice goes on to state that the requirement that the thingy be a sign is separate from the graphic representation requirement, though there may be an overlap.

So far so good, however, the finds the last section a tad worrying. This deals with the ‘which is capable of distinguishing goods or services of one undertaking from those of other undertakings’ element of s.3(1)(a). It states that it covers applications which ‘no capacity to serve this primary distinguishing function’. The example of SOAP is quoted, and Jeryl Lynn is cited, with the explanation that ‘The ‘mark’ applied for is nothing more than the common name for the goods; such a ‘mark’ has no capacity to serve the essential function of a trade mark, no matter how much ‘use’ has been made of it’. The IPKat isn’t really sure about this. Hasn’t the ECJ told us that Art.3(1)(a) does nothing different from Art.3(1)(b) when it comes to distinctiveness? Also, the UK-IPO appears to be treating some marks as a priori unregistrable, which is contrary to the ECJ’s approach to basically every type of sign up until now.


Anonymous said...

I think what the ECJ said in the Philips case was that if your "mark/sign/thingy" was factually distinctive, then it could not be argued that a section 3(1)(a) nevertheless applied. This is different from saying that direct descriptions (and nothing more) of goods or services are effectively incapable under 3(1)(a).

Yes, its a very dangerous thing to say that certain "types" of marks are a priori unregistrable. On the other hand we also know that, absent an express public interest ground of objection, the ECJ are very adept at interpreting the existing grounds of objection to protect the public interest.

RDA said...

Ilanah is correct. The last paragraph of the PAN is contrary to ECJ jurisprudence, which establishes that Article 3(1)(a)/section 3(1)(a) only applies if the sign cannot function as a trade mark for any goods or services. By contrast Article 3(1)(b)/section 3(1)(b) applies if the sign cannot function as a trade mark for the specific goods or services in question. See POSTKANTOR.

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