Trademark Registration

Trademark Registration
- 1994: Office for Harmonization in the Internal Market (OHIM) – EUIPO
- EUIPO Guidelines for Trademark Examination
- Be careful that you are referencing the correct version of this document
- EU Trademark Regulations

- Absolute grounds for refusal:

 Must be distinctive
 Must not be descriptive or a geographical location
 Must not result from nature of goods themselves/give a technical
result
 Must not be against morality or public policy
 Must not be of such a nature as to deceive the public, for instance
as to the nature, quality or geographical origin of the goods or
service.
 Must not be made in bad faith

1. Distinctive - Case Law

 - “Grey-green colour scheme on garden equipment”

2. Must not be descriptive

- “Overly descriptive”
- The trade mark must not consist exclusively of signs or indications that
are used in the trade for the goods or services in question to designate
either their:
 kind, for example "light", for low tar cigarettes;
 quality, for example "premium“;
 quantity, for example numbers, whether in words or digits, will
often describe quantity;
 intended purpose, for example "kitchen" or "bathroom" for
cleaning agents;
 value, for example "cheapest"

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 3. Must not be a geographical location
- “Geographical location”
- The trade mark must not consist exclusively of signs or indications that
are used in the trade for the goods or services in question to designate
either their:
 geographical origin, namely the place, whether locality, region or
country where the goods are produced or the service is provided
or where the relevant public would expect that this would be the
case; *** unless it gains distinction from its use and is more than
simply descriptive
o C-108-9/07 Windsurfing Chiemsee [1999] ETMR 585
 or the time of production of the goods, for example a particular
year for wine or "fresh each day" for vegetables;
 the time of rendering of the service, for example "24 hour
banking";
 or other characteristics of the goods or services, such as "lead
free" for petrol.

4. Must not result from nature of goods themselves/give a technical

result
- “Necessary to achieve a technical result”
- A sign shall not be registered as a trade mark if it consists
exclusively of
 the shape, or another characteristic, which results from the nature
of the goods themselves;
 the shape, or another characteristic, of goods which is necessary
to obtain a technical result;

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  the shape, or another characteristic, which gives substantial value
to the goods;

5. Must not be against morality or public policy

- “Against public policy, or accepted principles of morality”
- Broadly worded regulation requiring judicious use
- Subjective values to be evaluated objectively by the examiner
- Excludes registration of blasphemous, racist, discriminatory or insulting
words or phrases as marks -- but only if that meaning is clearly conveyed
by the mark applied for in an unambiguous manner
- Balance rights of the applicant against rights of the “not to encounter
disturbing, abusive, insulting and even threatening trade marks”
- Standard: a reasonable consumer with average sensitivity and tolerance
thresholds
- “Must be interpreted not only with reference to the circumstances
common to all Member States but by taking into account ‘the particular
circumstances of individual Member States which are likely to influence
the perception of the relevant public within those States’
- Does not exclude material which is in bad taste, or pursue “the
protection of individuals’ feelings.”
- Protects only from material which would “be perceived by the relevant
public, or at least a significant part of it, as going directly against the
fundamental moral values and standards of society.”
- Does not exclude marks “only likely to offend a small minority of
exceptionally puritanical citizens”, does not allow marks because a
“minority ... find even gross obscenity acceptable”.

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 - Mark application must be assessed by reference to the standards and
values of ordinary citizens who fall between those two extremes
- Can use national practice, national legislation as “factual evidence”
when assessing the potential reception of the mark by the relevant
demographic in the relevant jurisdiction

Case Law
- Re Ghazilian’s Trade Mark Application [2001] RPC 654 – Tiny PeniS
- PAKI Logistics GmbH v OHIM Case T-526/09 – PAKI
- Basic Trade Mark SA’s Trade Mark Application (Jesus) [2005] RPC 611
- Jesus
- Woodman v French Connection UK Ltd (2005) – FCUK
- UK Trade Marks Registry, 20 Nov 2002 - standupifyouhatemanu.com

6. Must not be made in bad faith

- “Must not be made in bad faith”
- “conduct which departs from accepted principles of ethical behaviour or
honest commercial and business practices”
 Advocate General Sharpston in 2009 case; C-529/07
- Factors to consider:
 Similarity of the applicant’s mark to others
 Knowledge of the similarity (can be presumed)
 Speculative or manipulative filings
 Reputation harnessing
 No intent to use