1. 1
Intellectual Property Coursework January 2015
The law in relation to Trade Marks began its development in the 13th
century, following on
from maker’s marks left on items such as gold and silver1
. First introduced into UK law around
1875, the first trade mark registered belonged to Bass Brewery and protected their use of a red
triangle as a pictorial mark. This mark is still considered valid today2
. The current governing
legislation in the United Kingdom regarding trade marks and their registration is the Trade
Mark Act 19943
. The 1994 act serves to implement EC Directive No. 89/104/EEC4
which
sought to establish a uniformity throughout the Union. Applications in the UK are made to the
Trade Mark Registry which is part of the UK’s Patent Office (UKPO)5
, whilst applications can
be made to the Office for Harmonisation in the Internal Market (OHIM) for Community Trade
Marks (CTMs) which offer protection throughout all EU member states6
, as enacted by Article
2 of EC No. 40/947
. Following the Nice Agreement 19578
, goods can be categorised into 34
different classes whilst services can be divided into 89
with it being hypothetically possible to
register a mark in all 42 classes.
The statutory definition of a trade mark can be found in s.1(1) of the Trade Mark Act 199410
and is described as a sign capable of distinguishing the goods and services of one from another
which is graphically representable. Whilst there is no definition of a ‘sign’ contained in the
legislation, it is commonly accepted that anything which is capable of conveying information
will generally suffice11
. S.1(1) contains a ‘non-exhaustive’12
list of examples comprised of
pictorial marks such as writing, often referred to as conventional marks13
. It has been shown
through case law that other signs may be registered as well. Known as non-conventional marks,
these include 3d shapes, colours and sensory signs such as sound14
.
The next step is establishing that the mark is capable of distinguishing the applicant’s goods
and services. Any mark that is capable of differentiating will satisfy s.1(1)15
. It appears that
goods can be distinctive by nature or nurture, with some marks able to gain distinguishing
features through their use in advertising campaigns16
. Howell and Bainbridge cite the ‘have a
1
“Trade Mark Law in UK Has Been Thoroughly Revitalized”, http://www.lawteacher.net/business-
law/essays/trade-mark-law-in-uk-has-been-thoroughly-revitalized-business-law-essay.php 20/11/2014
2
Celia Lury, ‘Brands: The Logos of the Global Economy’ (Routledge, London 2004) 83
3
Trade Mark Act 1994
4
Council Directive No. 89/104/EEC
5
Mark Van Hoorebeek, ‘Nutshells: Intellectual Property Law 3rd
Edition’ (Sweet and Maxwell, London 2009)
47
6
(N 5) 47
7
Council Regulation (EC) No. 40/94 Article 2
8
Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the
Registration of Marks (1957)
9
(N 5) 49
10
(N 3) S.1(1)
11
Philips Electronics NV v Remington Consumer Products Ltd. [1998]. R.P.C. 283
12
(N 5) 49
13
(N 5) 49
14
(N 5) 49-50
15
(N 5) 50
16
AD2000 trade mark (1997) RPC 168

2. 2
break’ slogan used by KitKat as an example17
. The signs ability to distinguish must be judged
on the design as a whole, not independent components18
.
The ability for the sign to be represented graphically is often cited as the biggest hurdle in
registering a non-conventional mark19
. As stated by the Advocate General in Libertel20
, a
successful graphic representation must be ‘easily accessible’ and ‘intelligible’21
, meaning it is
not too difficult for the public to follow it22
. The leading authority on graphic representation is
the case of Sieckmann (2002)23
. Sieckmann held that the representation must be clear, self-
contained, durable, objective and precise24
. This is believed to be for the protection of the clear
and precise nature of the register throughout Europe25
.
Regardless of whether an application features a conventional or non-conventional mark, it will
still be susceptible to both absolute and relative grounds for refusal. The absolute grounds for
refusal of registration can be found in s.3 and s.4 of the Trade Mark Act 199426
and draw
directly from Article 3 of the Trade Mark Directive27
. S.3(1)(a) provides the ground of refusing
registration to all marks which fail to meet the criteria from section 1. As noted in Philips
(1999)28
, this is not a very high standard and is intended to filter out signs that are not able to
function as a trade mark.
S.3(1)(b) refuses registration for any mark which is devoid of distinctive characteristics. This
section, despite the legal principle being equally applied to conventional and non-conventional
marks29
, has proven to take more of a toll on the latter30
. Whether or a not a sign is considered
distinctive is to be judged on the mark as a whole, not individual elements31
. As previously
discussed, distinctiveness has been shown to be acquirable by two means; either naturally, as
a result of the design, or via nurture, through the use of the mark prior to registration such as
in advertising. It is more common for applicants with non-conventional marks to have to prove
that a degree of association between the mark and the product has already been formed32
, as
with the ‘Have a break’ slogan33
. The reason for this being a more common problem for non-
conventional marks is due to the ability to convey information. A written name or drawn logo
will instantly transmit more information about the origin of the product to the observer than a
colour or shape34
. Whilst it has been shown that the same legal standard for distinctiveness will
17
David Bainbridge and Claire Howell, ‘Intellectual Property Law 4th
Edition’ (Pearson, Harlow 2015) 123
18
SAT.1 SatellitenFernsehen GmbH v Office for Harmonisation in the Internal Market (2004) C-329/02
19
(N 5) 50
20
Libertel Groep BV v Benelux-Merkenbureau (2004) C-104/01
21
(N 20)
22
(N 5) 50
23
Ralf Sieckmann v Deutsches Patent- und Markenamt (2002) c-273/00
24
(N 23)
25
Vasheharan Kanesarajah, ‘The Taste of Ripe Strawberries: Representing Non-Visual Trademarks’ http://ip-
science.thomsonreuters.com/m/pdfs/klnl/2008-03/taste.pdf 22/11/2014
26
(N 3)
27
Council Directive No. 2008/95/EC
28
(N 11)
29
Mag Instrument v OHIM [2004] ECR I‑9165
30
(N 16)
31
(N 18)
32
(N 16)
33
(N 17) 123
34
Janice Denoncourt, ‘Intellectual Property Law 2nd
Edition’ (Routledge, Oxford 2010) 119

3. 3
be applied throughout35
, the ECJ have been shown to take a more pragmatic approach in
viewing the mark’s distinctiveness in the context of its field of use, finding that signs which
are prima facie not that distinctive but depart far enough from the given normal standard in
their sector may still be acceptable36
.
S.3(1) also contains subsections (c) and (d). Subsection (c) denies registrations that are purely
descriptive37
, containing a list of what constitutes an exclusively descriptive mark including
indicators as to the kind, quality or quantity of the good on offer38
. This could be the word
‘personal’ to describe a PC39
or ‘454’ in relation to dairy products such as butter with it being
a reference to weight40
. Subsection (d) prevents ‘exclusively generic’ marks which are either
customary in the current language or have a general use in that particular trade41
. This was seen
in Jeryl Lynn (1999)42
where the sign ‘Jeryl Lynn’ was rejected as its use in this field was
common and customary43
. Also contained in s.3(1) is a proviso which allows any mark caught
out by subsections (b),(c), or (d) to still be acceptable provided they can be shown to have
accumulated a distinctive enough nature before the registration process44
. An example of this
is ‘Lismore’ in relation to glassware products from Waterfood Wedgwood (1998)45
which,
despite being the name of a style of glass cut which should have seen it barred by s.3(1)(d),
was found to have already gained a distinctive nature towards the applicant. Registration was
allowed.
Further absolute grounds include sections 3(3)(a) and (b)46
which prevent registration of marks
that are contrary to public morality and policy or which are likely to deceive the public. When
deciding if a mark is offensive, it must be viewed in context of its trading environment47
. An
example of this was the use of ‘Tiny Penis’ written on clothes in Ghazilian (2001)48
which was
held likely to cause offence out of context on display in public places despite not being overtly
offensive in itself. For this section it is sought that the offence caused amounts to more than
mere distaste, either causing a high amount of outrage in a small community or a relatively low
but significant amount in a larger community49
. It’s also been shown to be a balancing act
between defending public decency whilst respecting the Human Rights Act’s50
freedom of
expression51
. Marks likely to deceive the public must be intentionally misleading but more than
‘mere advertising puffs’52
.
35
(N 29)
36
(N 29)
37
(N 3) S.3(1)(c)
38
(N 3) S.3(1)(c)
39
(N 17) 123
40
Matthew Ward, ‘Intellectual Property and the Law’ (Straightforward Publishing, Essex 2011) 50
41
(N 3) S.3(1)(d)
42
JERYL LYNN Trade Mark [1999] FSR 491
43
(N 42)
44
(N 3) S.3(1) Proviso
45
Waterford Wedgwood plc and Anr. v. David Nagli Ltd and Anr. [1998] FSR 92
46
(N 3)
47
Ghazilian's Trade Mark Application [2001] RPC 654
48
(N 47)
49
(N 47)
50
Human Rights Act 1998 S.12
51
Basic Trademark SA's Trade Mark Application [2005] RPC 25
52
Kraft Jacob Suchard's TM Application [2001] ETMR 54

4. 4
Marks that fail to comply with other statutes, such as regulation 2081/9253
governing
designation of the origin of goods in the EU and the Trade Descriptions Act 196854
, are
prohibited under s.3(4)55
. S.3(6)56
seeks to prevent registration in bad faith. ‘Bad faith’ can be
interpreted several ways with the most common being ‘ghost applications’. This is where a
mark will be registered for the sole reason of protecting another mark, such as registering
‘Nerit’ to protect ‘Merit’57
. This section also prevents registration in more classes than it is
intended to be used in58
, which could be viewed as an extension of the bona fide intention
requirement from s.32.(3)59
. Additional restrictions can be found in s.460
which prohibit marks
associated or contain elements that are associated with marks of the crown61
or the Olympic
symbol62
without consent.
In addition to these absolute grounds, there are also relative grounds for refusal contained
within s.563
which prevents registrations that conflict with an existing trade mark. S.5(1) is
arguably the narrowest of these grounds as it prohibits application with identical marks for
identical goods and services. Sadas (2003)64
held this to mean either reproducing the earlier
mark with no modifications or being identical except for insignificant differences which would
go unnoticed by general consumers65
. S.5(2)(a) again deals with identical marks but only
applies to goods and services that are ‘similar’. Identical in this section is held to be the same
as for s.5(1)66
.
S.5(2)(b) prohibits similar marks with similar or identical products. The key here appears to be
identifying the potential for a ‘globally appreciated confusion’67
between the marks in question.
In identifying if any possible confusion exists it is important to consider the original marks
recognition68
, the possible association between the two marks69
and the similarity between the
marks and goods and services to the public70
. It is assumed that the public would have an
‘imperfect recollection’ of the signs as they wouldn’t usually be viewed side by side71
.
Similarity of the sign is judged as a whole and based on all factors including visual and phonetic
likeness72
. The similarity of the products will be based on factors such as their nature, pricing
53
Council Regulation (EEC) No. 2081/92
54
Trade Descriptions Act 1968
55
(N 3) S.3(4)
56
(N 3) S.3(6)
57
Imperial Group v. Philip Morris [1982] FSR 72
58
Roadtech Computer Systems Ltd v Unison Software (UK) Ltd [1996] FSR 805
59
(N 3) S.32(3)
60
(N 3) S.4
61
(N 3) S.4(1)-(4)
62
(N 3) S.4(5)
63
(N 3) S.5
64
LTJ Diffusion v SA SADAS [2003] ECR I-2700
65
(N 64)
66
(N 5) 60
67
(N 5) 61
68
(N 5) 61
69
Sabel BV v. Puma AG (1998) (Case C-251/95) RPC 199
70
(N 69)
71
Lloyd Schuhfabrik. Meyer & Co. GmbH v. Klijsen Handel B.V. [2000] FSR 77
72
(N 69)

5. 5
and target market73
. It is important to note that this must be decided on the likelihood of
confusion; likelihood of association is not sufficient74
.
S.5(3) prevents registrations that conflict with existing marks of significant reputation. This
requires that the earlier mark is one of repute and that the new mark would take advantage of
this or could be detrimental to the original’s reputation75
. This originally applied to goods and
services that were dissimilar but has since been broadened by EU judgments to include similar
types76
. When deciding if the registered mark has a reputation, its exposure to the public will
be assessed taking into consideration the opinion of the target community and the owner’s
duration of use and share of the market77
. Taking advantage, or having a detrimental effect, is
key here as merely reminding the public of the original is not enough78
. This section’s priority
is not to prevent registrations but rather protect existing ones79
. S.5(4)80
stops registration of
marks with would conflict with existing rights, preventing the likes of passing off and design
or copyright breeches81
.
3d shapes as a mark are unique in comparison to other non-conventional signs as it appears to
be the only one directly referenced by the statute. S.3(2)(a), (b) and (c)82
impose absolute
grounds for refusal which specifically regard inherent, functional or valuable shapes. Drawing
from Article 3(1)(e) of the Trade Mark Directive83
, these subsections impose restrictions and
show that shapes, as a sign, were in contemplation during the drafting and implementation of
the legislation. This brought with it a large change to the UK law as prior to the 1994 act shapes
were not considered valid for registration84
. Subsection (a) prevents registration of shapes with
features stemming from the nature of the goods themselves. It’s not clear how strictly this is to
be interpreted, with debate arising following Nestle v Unilever (2002)85
as to whether it applies
on a narrow scale to the specific goods in question or on a wider scale to the type of goods as
a whole. Hoorebeek claims that whilst this issue will still need EU clarification, he believes
that is more than likely they will favour the wider interpretation in order to better preserve
competitor’s rights86
. S.3(2)(b) imposes restrictions on 3d shapes where essential
characteristics of the shape are attributed to a specific function87
. This has been expanded on
to include shapes which are not necessarily the only means of achieving the technical result,
but give this product an advantage over its competitors88
. Subsection (c) inhibits the registration
of anything considered a ‘valuable’ shape. This has been explained as a shape which serves to
add value to the product, with eye appeal and functional effectiveness being accepted as ‘value’
73
Canon Kabushiki Kaisha v. Metro-Goldwyn-Meyer Inc [1998] ECR-I-5507
74
Wagamama Ltd v. City Centre Restaurants PLC [1995] FSR 713
75
Adidas Salomon AG v Fitnessworld Trading Ltd. [2004] ETMR 10
76
(N 75)
77
General Motors Corp v Yplon SA (Case C-375/97) [1999] All ER (EC) 865
78
Oasis Stores Ltd's Trade Mark Application [1998] RPC 631
79
(N 5) 62
80
(N 3) S.5(4)
81
(N 5) 62
82
(N 3)
83
(N 27)
84
Coca-Cola Trade Marks [1986] RPC 421
85
Societe de Produits Nestle SA v Unilever plc [2002] EWHC 2709
86
(N 5) 57
87
Phillips (2002)
88
Proctor & Gamble Ltd's Trade Mark Applications [1999] RPC 673

6. 6
according to Justice Jacobs in Phillips (1998)89
. It has been argued that the UK registry takes
too much of a stringent approach to this section, as in Dualit’s application (1999) were a ‘classic
design’ toaster was rejected due to it appearing more attractive. As a result from of this, this
area in particular is still in need of clarification from the European courts90
.
Sieckmann itself dealt with the representation of an olfactory sign, namely the scent of ‘methyl
cinnamate’. Prior to this case, scents were trademarked with written descriptions such as ‘The
scent of freshly-cut grass’91
and ‘The scent of raspberries’92
which were held as sufficient
graphical representation. However, Sieckmann found that not only was a written description
inadequate, it was still not enough when joined with a scent sample and a written chemical
formula. Subsequent cases such as Eden SARL (2005)93
, which rejected ‘the scent of ripe
strawberries’ as a CTM due its apparent lack of precision94
, have left the question of whether
scent marks are still capable of being registered. Given that all current graphical forms of
representation for this area have been deemed unacceptable, scent marks may have to await the
arrival of an official scale such as the Pantone scale as used for colours before they can be
accurately represented enough to be registered95
.
Another type of non-visual mark that has faced a great deal of trouble in registration are
gustatory marks, frequently concerning artificial flavours introduced to various items. The
issue again appears to be finding an acceptable way of graphically representing tastes, with
written descriptions being rejected by the ECJ such as the taste of strawberries applied to
medical substances in Eli Lilly96
. Whilst there has been no explicit statement that a flavour
cannot be accepted as a sign97
, it appears that there is virtually no way of graphically
representing the sensation beyond the invalid written description. This appears to be the case
outside of the European Union too, with Anne and Jerome Gilson claiming to be unable to
locate any successful examples in the United States98
which share similar regulations to those
found in the EU and UK99
. Whilst there does exist a pre-2002 example of liquorice flavouring
applied to paper goods100
, it is very unlikely that this would survive any challenges to its
validity or that another example of a taste mark will have success following the introduction of
the Sieckmann criteria.
Colours as a sign was a concept which was relatively settled with cases such as Libertel101
stating that a colour may be accepted under article 2 of the Trade Mark Directive102
. However,
89
(N 11)
90
(N 5) 57
91
Vennootschap Onder Firma Senta Aromatic Marketing's Application [1999] R156/1998-2
92
Myles Ltd.'s Application R 711/1999-3 [2003] ETMR 56
93
Eden SARL v OHIM (Case T-305/04) [2005] ECR 11-4705
94
(N 93)
95
(N 25)
96
Eli Lilly and Company/The Taste of Artificial Strawberry Flavour [2004] ETMR 4
97
(N 5) 50
98
Anne Gilson LaLonde and Jerome Gilson, ‘Getting Real With Nontraditional Trademarks: What’s Next After
Red Oven Knobs, The Sound of Burning Methamphetamine, and Goats on a Grass Roof?’ The Trademark
Reporter (2011) 209
99
(N 98) 209
100
Alex Butler, ‘The Smell of Ripe Strawberries: Representing Non-visual Marks’ http://www.iam-
magazine.com/Magazine/Issue/29/Industry-insight/The-smell-of-ripe-strawberries-representing-non-visual-
trademarks’ 23/11/2014
101
(N 20)
102
(N 27)

7. 7
following recent judgments it now appears that this is no longer the case. In 2013, Nestlé
challenged Cadbury103
over their registration of the colour purple (pantone 2685c) in class 30.
In what became a revolutionary move104
, the court found against Cadbury after taking issue
with the written description submitted alongside the colour sample intended to serve as graphic
representation. Cadbury had submitted for the colour purple “applied to the whole visible
surface, or being the predominant colour applied to the whole visible surface, of the packaging
of the goods”105
. It was held that the use of the word ‘predominant’ was too vague to comply
with the Sieckmann criteria. The ability to mix this colour with other colours allowed the
potential to create too many different ‘signs’ and thereby gave Cadbury an unfair advantage
over its competitors whilst contravening article 3(1)(a) of the Trade Mark Directive106
, as it
was not possible for an accurate graphical representation to be made107
. This not only left
questions as to the registration of new colour marks but also questioned the validity of existing
ones108
. Finding a solution to this is proving difficult. Whilst strictly adhering to the ‘whole
visible surface’ would appear to side step the problem, it would just be likely to raise an issue
under s.3(1)(b)109
as it would be difficult to establish any distinctive features110
. Sir Timothy
Lloyd suggested the use of a specific percentage, such as covering ‘more than 50%’ of the
visible area111
, but this would stray away from the clear and simplistic nature championed by
the Advocate General in Libertel112
. A novel solution suggested by Stobbs and Bains113
would
be to forego any accompanying description altogether, simply submitting the colour sample
and a pantone number. This, they claim, would be conceptually precise as it would be about
the colour itself, not the use114
. This would be difficult and would probably require proof that
the colour has become distinctive enough through use to satisfy the s.3(1) proviso as a single
colour is not likely to be naturally distinctive115
. The counter argument to this however is that
if ‘predominant’ is not accurate enough, than surely having no description at all could be
viewed as worse116
. In either case, this area has become a grey area with no easy remedy as
any attempt to amend existing registrations would surely change the nature of the existing trade
marks enough to fall foul of s.39117
.
Auditory marks originally faced similar problems. Judgements up to and including Shield Mark
BV (2003)118
indicated that the only acceptable form of graphic representation was musical
notation written in the correct form incorporating features such as a clef and rests to accurately
103
Société Des Produits Nestlé S.A. v. Cadbury UK Ltd [2012] EWHC 2637
104
(N 17) 122
105
(N 103)
106
(N 27)
107
Julius Stobbs and Savan Bains
http://www.stobbsip.com/creo_files/upload/default/article_intellectual_property_magazine_january_2014_julius
_and_savan.pdf 23/11/17
108
(N 107)
109
(N 3)
110
(N 107)
111
(N 103)
112
(N 20)
113
(N 107)
114
(N 107)
115
(N 107)
116
(N 107)
117
(N 3) S.39
118
Shield Mark BV v Joost Kist h.o.d.n. Memex [2003] C-283/01

8. 8
represent the sound119
. Whilst this seemed relatively simple in theory, in practice it limited
what sounds could be registered. With the same judgment ruling out the use of descriptions
and onomatopoeia120
, it prevented the use of sound effects such as animal cries or explosions121
.
MGM Lion Corp (2004)122
appears to have found a solution to this with it being indicated that
a spectrogram or sonogram could be acceptable for non-musical sounds so long as it clearly
displays the pitch, volume and progression over time123
. It is worth noting that MGM’s was not
accepted due to lack of precision124
.
In conclusion, as stated by both statute125
and prominent judgements such as Phillips (1988)126
,
any sign capable of conveying information whilst meeting the relevant criteria may potentially
be registered as trademark, regardless of it being recognised as a conventional or non-
conventional mark. Non-traditional marks do appear to be more likely to fail during the
registration process with them being more susceptible to grounds for refusal, such as
s.3(1)(b)127
which causes issues in showing a distinctive nature as witnessed in AD2000
Trademark Application 1996128
. The biggest issue for non-conventional marks appear to be
their graphical representation. Following Sieckmann129
, it seems that scents and flavours have
effectively been prohibited as signs. Whilst still hypothetically capable of registration, there
does not appear to be a satisfactory way of recording them as all current methods were held to
be insufficient. Colours, shapes and sounds are still apparently easy to register, but even these
are not risk free as they can easily succumb to the Sieckmann130
criteria with shapes as a mark
being further restricted by s.3(2)(a), (b) and (c)131
.
119
(N 118)
120
(N 118)
121
(N 25)
122
Metro-Goldwyn-Mayer Lion Corp. v OHIM [2004] ETMR 34
123
(N 25)
124
(N 122)
125
(N 3) S.1(1)
126
(N 11)
127
(N 3) S.3(1)(b)
128
(N 16)
129
(N 23)
130
(N 23)
131
(N 3) S.3(2)(a),(b)&(c)

9. 9
Bibliography
“Trade Mark Law in UK Has Been Thoroughly Revitalized”, http://www.lawteacher.net/business-
law/essays/trade-mark-law-in-uk-has-been-thoroughly-revitalized-business-law-essay.php 20/11/2014
David Bainbridge and Claire Howell, ‘Intellectual Property Law 4th Edition’ (Pearson, Harlow 2015)
Alex Butler, ‘The Smell of Ripe Strawberries: Representing Non-visual Marks’ http://www.iam-
magazine.com/Magazine/Issue/29/Industry-insight/The-smell-of-ripe-strawberries-representing-non-
visual-trademarks’ 23/11/2014
Janice Denoncourt, ‘Intellectual Property Law 2nd Edition’ (Routledge, Oxford 2010)
Anne Gilson LaLonde and Jerome Gilson, ‘Getting Real With Nontraditional Trademarks: What’s
Next After Red Oven Knobs, The Sound of Burning Methamphetamine, and Goats on a Grass Roof?’
The Trademark Reporter (2011)
Mark Van Hoorebeek, ‘Nutshells: Intellectual Property Law 3rd Edition’ (Sweet and Maxwell,
London 2009)
Vasheharan Kanesarajah, ‘The Taste of Ripe Strawberries: Representing Non-Visual Trademarks’
http://ip-science.thomsonreuters.com/m/pdfs/klnl/2008-03/taste.pdf 22/11/2014
Celia Lury, ‘Brands: The Logos of the Global Economy’ (Routledge, London 2004)
Julius Stobbs and Savan Bains
http://www.stobbsip.com/creo_files/upload/default/article_intellectual_property_magazine_january_2
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