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.