Shock generic use of electrical goods trade mark

Today the European Court of Justice is hearing arguments in Case C-321/03 Dyson Ltd v Registrar of Trade Marks. The questions referred to the ECJ by the Chancery Division of the High Court for England and Wales are:

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?

Left: an upright vacuum cleaner manufactured under the Hoover brand

The IPKat is horrified to read that the ECJ's Diary entry for today describes the case as relating to a "mark comprising a functional feature (transparent plastic cylinder) forming part of a hoover" (emphasis added by a scandalised IPKat). Is not HOOVER a registered trade mark in respect of vacuum cleaners - among other goods? Merpel adds, if the genericity of the word "hoover" is ever litigated in Europe in proceedings that reach the European Court of Justice, will that court take judicial notice of its own generic use of the word?

Hoover Company here
Wikipedia defines hoover as (i) generic term and (ii) something that should not be mentioned on family websites here, but as (iii) a trade mark here
More on J. Edgar Hoover, Howard Hoover and the Hoover Dam
SHOCK HORROR, GENERIC USE SCANDAL! SHOCK HORROR, GENERIC USE SCANDAL! Reviewed by Jeremy on Tuesday, April 25, 2006 Rating: 5

1 comment:

  1. It amused me to read that definition 2 is caveated thus:

    "Verification for this usage is being sought"


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