European harmonisation measures in the field of trade mark law have brought new legal concepts to various member states. The Council Directive 89/104/EEC(“The Directive”) and the introduction of the Community trade mark, which was created by Council Regulation 40/94(“The Regulation”), by introducing so-called novel forms of trade marks, have changed the trade mark law of the Member states significantly. Now that almost a decade after implementation of the Directive in Germany and the UK has passed - the German MarkenG came into force on January 1 1995, the UK TMA on October 31 1994 - trade mark forms like smells, sounds, shapes or colours can hardly be regarded as novel any more. However, recent ECJ decisions show that there was still need for authorative guidance on issues such as distinctiveness, the need to keep free, the scope of protection and the requirement of graphic representation regarding these forms of trade marks. This dissertation critically examines and compares registration practice and case law of German and UK Patent and Trade Mark Offices and Courts with regard to smells, sounds, colours and shapes before and after implementation of the Directive. Furthermore, it will be scrutinised if the current state of affairs regarding these forms of trade marks can be considered to be consistent with the registration practice of OHIM under the CTM system and recent case law of the CFI and the ECJ. As will be seen, the interest in the possibility of registering smells, sounds and shapes and colours as trade marks differs significantly in Germany and the UK. There have been numerous attempts to register single colours or colour combinations as trade marks in Germany while the excitement about this trade mark form in the UK was limited. Hardly any smells have been accepted for registration in the UK; in Germany, registration of this trade mark form was simply denied. Sound marks have fared rather better and there is - in contrast to the UK - a significant number of sounds on the register in Germany. The same can be said about shape marks in both the UK and Germany.
As the relevant statutes - the MarkenG in Germany and the TMA 1994 in the UK - were implemented as a result of the First Council Directive 89/104/EEC, it is first helpful to take a look at the aim of the Directive in general and the relevant provisions of the Directive as well as the relevant provisions of the national legislation based on the Directive. [...]
Table of Contents
I. Introduction
II. The First Council Directive 89/104/EEC and the Council Regulation 40/94
III. Relevant provisions
1. The Directive and the Regulation
2. The TMA 1994
3. The German Trade Mark Act (MarkenG)
IV. The Function of Trade Marks
V. Registration practice and case law in the UK, Germany and the European Community
1. Three-dimensional Marks
a) The UK approach
b) The German approach
c) The European approach
d) Conclusion
2. Smell marks
a) The UK approach
b) The German approach
c) The European approach
d) Conclusion
3. Sound Marks
a) The UK approach
b) The German approach
c) The European approach
d) Conclusion
4. Colour Marks
a) The UK approach
b) The German approach
c) The European approach
d) Conclusion
Research Objectives and Thematic Scope
This dissertation examines the registration practice and case law regarding "novel" trade mark forms—specifically smells, sounds, shapes, and colours—in the UK and Germany, evaluating their consistency with European Union standards and the practices of the OHIM.
- Comparative analysis of registration procedures in the UK and Germany for unconventional trade marks.
- Evaluation of the "graphic representation" requirement as a barrier to registration.
- Assessment of distinctiveness thresholds for three-dimensional and non-traditional signs.
- Analysis of the impact of ECJ and CFI case law on harmonizing national practices.
Excerpt from the Book
Registration practice and case law in the UK, Germany and the European Community
Before incorporation of the Directive into the UK Trade Mark Act, the shape or packaging of goods was not registrable as a trade mark. This practice was founded in the decision James' Trade Mark, the first application for a shape trademark in the UK. The case concerned an application for registration of black lead in the shape of a dome for stoves. Lindley L.J. held that a mark must be something distinct from the thing marketed and therefore denied the plaintiffs a monopoly in the shape.
The UK TMA 1938 did not bring a change regarding the registrability of three-dimensional marks. Proprietors of distinctive shape marks could therefore only rely on the common-law right of passing-off or, in appropriate cases, on the copyright or registered design law to prevent third parties from copying forms of goods or containers. In the famous Jif lemon case, the plaintiff company was held to have a trading reputation in lemon juice sold in life-size plastic lemons and could therefore prevent the defendant from using lemon-shaped containers although they bore a different mark, namely “ReaLemon”.
In accordance with the established practice, registration of the shape of the famous Coca-Cola bottle as a trade mark was refused in 1976. On appeal of the applicant, the House of Lords determined that the Coca-Cola bottle was a container, not a trade mark, and was therefore incapable of being registered.
Summary of Chapters
I. Introduction: Outlines the impact of EU harmonisation on trade mark law and the shift toward accepting non-traditional forms of trade marks.
II. The First Council Directive 89/104/EEC and the Council Regulation 40/94: Explains the aim of harmonising national trade mark laws and distinguishing the Directive from the Community Trade Mark system.
III. Relevant provisions: Details the legal definitions and grounds for refusal as stipulated in the Directive, the UK TMA 1994, and the German MarkenG.
IV. The Function of Trade Marks: Discusses the transition from the classical doctrine of origin identification to the modern concept of trade marks as communication tools.
V. Registration practice and case law in the UK, Germany and the European Community: Provides a comprehensive comparative analysis of specific hurdles for 3D shapes, smells, sounds, and colours in the mentioned jurisdictions.
Keywords
Trade mark law, European harmonisation, 3D marks, smell marks, sound marks, colour marks, graphic representation, distinctiveness, MarkenG, TMA 1994, OHIM, ECJ, case law, registration practice, secondary meaning.
Frequently Asked Questions
What is the fundamental objective of this dissertation?
The work aims to critically compare the registration practices and evolving case law in Germany and the UK regarding non-traditional trade marks like sounds, smells, shapes, and colours, and assess their alignment with European Union standards.
Which specific "novel" trade mark forms are investigated?
The study focuses on three-dimensional shapes, olfactory (smell) signs, acoustic (sound) marks, and various types of colour marks (both single-colour and combinations).
How is the "graphic representation" requirement addressed?
The author analyzes how different jurisdictions interpret the legal requirement that a mark must be represented graphically, highlighting the challenges this poses for intangible marks like smells and sounds.
What scientific or legal methodology is employed?
The study utilizes a comparative legal methodology, analyzing relevant statutes, committee reports, and key judicial decisions from national courts, the European Court of Justice (ECJ), and the Court of First Instance (CFI).
What is the core conflict discussed regarding three-dimensional marks?
The central issue is the tension between granting monopoly protection to functional shapes and the need to preserve free competition, leading to high thresholds for distinctiveness in both UK and German practice.
How do the UK and German approaches to colour marks differ?
The text explores the shift from "get-up" marks to "abstract" colour marks, detailing how both countries have had to adjust their registry practices in response to European judicial guidance.
What does the "Coca-Cola bottle" case signify in the historical UK context?
It represents the restrictive pre-Directive era where the courts consistently refused to treat product shapes as trade marks, classifying them merely as containers.
Why was the "smell of cinnamon" application rejected?
The registration failed primarily because the verbal description provided was held to be too ambiguous and subjective to meet the rigorous standard of clear and precise graphical representation.
- Citation du texte
- Jochen Jüngst (Auteur), 2004, Registration practice and case law regarding novel forms of trade marks in the UK and Germany - consistent with the European approach?, Munich, GRIN Verlag, https://www.grin.com/document/60642
