Registration practice and case law regarding novel forms of trade marks in the UK and Germany - consistent with the European approach?

Thèse de Master , 2004 , 62 Pages , Note: 72 %

Droit - Droit civil / Droit commercial, Droit des sociétés, Droit des cartels, Droit des affaires

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

Bibliography

I. Introduction

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^[1] (“The Directive”) and the introduction of the Community trade mark, which was created by Council Regulation 40/94^[2] (“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. A very brief look will be taken at the Regulation concerning the Community Trade Mark and its relevant provisions. Further, before registration practice and case law of the UK, Germany and the European Union will be presented and examined, a short introduction as to the function of trade marks will be given.

II. The First Council Directive 89/104/EEC and the Council Regulation 40/94

The Directive aimed at the harmonisation of certain provisions of national trade mark law. The harmonisation effected by the Directive was not intended to bring a full scale approximation of trade mark law; only those national provisions which most directly affected the functioning of the internal market were harmonised.^[3] It was therefore considered to be necessary “that the conditions for obtaining and continuing to hold a registered trade mark are, in general, identical in all Member States”.^[4]

Thus, the Directive, inter alia, contains a list of examples of sign which may constitute a trade mark. Further, the grounds for refusal or invalidity concerning the trade mark were listed in an exhaustive manner.^[5] Other subjects covered by the Directive like the rights conferred by a trade mark (infringement, limitations on the rights and exhaustion), the waiver of rights on the basis of non-use or acquiescence, licensing and collective marks and geographical indications, are of minor importance for the purpose of this dissertation.

The Directive should not be confused with the Community Trade Mark which has been instituted on the basis of the Regulation of the Council. The CTM makes it possible to acquire one exclusive right covering the whole territory of the European Communities on the basis of one registration. It is therefore a system which runs parallel with the national trade mark system.

In the following, only the provisions of the Directive and the Regulation that are relevant for the purposes of this dissertation will be presented.

III. Relevant provisions

1. The Directive and the Regulation

Article 2 provides the definition that “a trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”^[6]

Article 3 lays down the absolute grounds upon which an application to register a trade mark may be refused. Article 3.1. provides that, inter alia, the following shall not be registered or if registered shall be liable to be declared invalid:

(a) signs which cannot constitute a trade mark;
(b) trade marks which are devoid of any distinctive character;
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;
(e) signs which consist exclusively of:

- the shape which results from the nature of the goods themselves, or
- the shape of goods which is necessary to obtain a technical result, or
- the shape which gives substantial value to the goods.

According to Article 3.3., “a trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character..."

Article 4 of the Regulation defines the signs of which a CTM may consist and is virtually identical to Art. 2 of the Directive. Equally, the Regulation follows the Directive with regard to absolute grounds for refusal and invalidity.

Both the Directive and the Regulation remain silent on whether or not colours or colour combinations, smell and sounds are capable of being a trade mark. However, when the Council adopted the texts of the Directive and the Regulation in its meetings in 1988 respectively 1993, a series of statements were approved for entry in the minutes of these meetings.^[7] These statements clarify that Art.2 of the Directive and Art.4 of the Regulation were not intended to “rule out the possibility of registering as a (Community) trade mark a single colour or a combination of colours or sounds, provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings”.^[8]

In the following, the national legislation of the UK and Germany based on the Directive will be described.

2. The TMA 1994

S. 1(1) provides the definition that a trade mark “means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings” and “may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging”.

S. 3 contains the absolute grounds upon which an application to register a trade mark may be refused.

According to s. 3(1), the following shall not be registered:

(a) signs which do not satisfy the requirements of section 1(1),
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade:

Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

S. 3(2) provides that a sign shall not be registered as a trade mark if it consists exclusively of:

(a) the shape which results from the nature of the goods themselves,
(b) the shape of goods which is necessary to obtain a technical result, or
(c) the shape which gives substantial value to the goods.

As can be seen, the UK has remained close to the original text of the Directive quoting the same non-exhaustive list of examples of registrable marks. The specific shape related grounds for refusal are regulated in s. 3(2) TMA.

3. The MarkenG

§ 3 (1) MarkenG contains the definition of a trade mark and provides that “any signs, in particular words, including personal names, designs, letters, numerals, acoustic signs, three-dimensional configurations, including the shape or packaging of a product as well as other get-ups including colours and combinations of colours, which are capable of distinguishing goods or services of one undertaking from those of other undertakings may be protected as trademarks”.^[9]

According to § 3 (2) MarkenG, “a sign shall not be registered as a trade mark if it consists exclusively of:

1. the shape which results from the nature of the goods themselves,
2. the shape of goods which is necessary to obtain a technical result, or
3. the shape which gives substantial value to the goods.”

In contrast to the Directive and the UK TMA, in addition to three-dimensional marks, colour and colour combination marks as well as acoustic signs are explicitly mentioned in the catalogue of possible trade marks.

The German legislature departed from the systematic structure of the Directive with respect to the special absolute obstacles to protection for three-dimensional trademarks listed in Art. 3 (1) (e) of the Trademark Directive by regulating these obstacles to protection in § 3 (2) of the MarkenG as features amounting to a lack of capability of trademark protection. This was the result of efforts at achieving equal treatment as far as possible of registered trademarks and trademarks acquired through use.^[10]

Under German Trade Mark law, according to § 4 Nr. 1, 2 trade mark protection arises through registration or through use of a sign as a trade mark; the obstacles to protection contained in § 3 (2) are only applicable to registered trade marks and not to trade marks acquired through use.

The requirement for graphic representation is regulated in § 8 (1) MarkenG and thus shifted to the area of absolute obstacles to protection. According to § 8 (2) (1) MarkenG, trade marks which are devoid of any distinctive character with respect to the goods or service shall not be registered; the lowest distinctiveness is sufficient to overcome the legal bar to protection. § 8 (3) MarkenG provides that a sign that is not inherently distinctive shall be registered when it has acquired distinctiveness through use among the relevant trade circles, unless it is not capable of distinctiveness according to § 3 (1) MarkenG.

IV. The Function of Trade Marks

The basic requirement for registration of a sign as a trade mark is that it is capable of distinguishing the goods or services of one undertaking from those of other undertakings. This confirms that the essential function of a trade mark is “in economic and legal terms to indicate the origin of goods or services and to distinguish them from those of other undertakings”^[11]

In modern literature this classical doctrine is no longer valid; a trade mark is more than simply a sign to identify the origin of products and services.^[12] The modern approach is that a trade marks as a means of identification and communication.^[13] The origin of a product is of no importance to consumers. A mark is a sign which enables consumers to identify a product or a service; it facilitates the choice in the marketplace. For manufacturers and retailers a mark makes it possible to promote and advertise their products and services in an efficient manner. Furthermore, the trade mark serves as a means to communicate information, both rational and emotional.^[14] In other words, the trade mark is a messenger.

However, according to settled case law of the ECJ, the essential function of a trade mark still is to guarantee the identity of the origin of the marked goods or service to the consumer by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.^[15]

Can colours, shapes, smells and sounds in practice serve this essential trade mark function? The following core part of this dissertation will, inter alia, answer this question.

V. Registration practice and case law in the UK, Germany and the European Community

1. Three-dimensional trademarks

a) The UK approach

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.^[16] 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.^[17]

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”.^[18]

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.^[19]

Lord Templeman summarised the appeal in the following words^[20]:

“This is another attempt to expand the boundaries of intellectual property and convert a protective law into a source of monopoly.”^[21]

It was however accepted that the Coca-Cola bottle was distinctive, so that protection for passing off was available.^[22]

Both the practice of the Patent Office and the denial of the courts of any possibility of registration of shapes reflected the conclusions of the Mathys Committee. This committee had been appointed in the early 1970s to examine United Kingdom trade mark law and practice. The Mathys Committee concluded in its report^[23] which was published in 1974 that allowing the registration of three-dimensional marks would lead to an unacceptable restriction on the choice of shapes available to other traders.^[24]

In 1990 the Government - forced by developments in Europe and at international level^[25] and the need to bring United Kingdom trade mark law into line with the Directive - carried out a review of United Kingdom trade mark law and published its findings and proposals for modifying trade mark law in a White Paper. Regarding the registrability of shapes as trade marks, the White Paper took up the opposing argument than the Mathys Committee^[26]:

“It is a fact of the marketplace however that some shapes are recognised by consumers as distinctive of the products of a particular trader. Allowing the registration of such shapes would therefore not be conferring a monopoly - it would merely be recognising that a de-facto monopoly already exists. In other words, although not registerable as the law now stands, such shapes are in fact already functioning as unregistered trade marks”.

Concerns about unjustified monopolies were answered by referring to the various safeguards laid down in the Directive and the experience of the United States, which showed that applications to register unusual kinds of trade marks (such as three-dimensional shapes) were very infrequent and caused no administrative or legal problems.^[27]

In line with the Directive, the UK TMA 1994 incorporated provisions for the registration of three-dimensional marks as trade marks. The UK provision follows the Directive exactly in that it explicitly mentions the shape of goods or their packaging in the non-exhaustive list in s. 1 (1) as registrable trade marks.

Whilst it is uncontroversial that distinctive shapes of containers and packaging can be registered the same cannot be said of the shape of goods itself. A registered trade mark gives its proprietor a monopoly in the mark which can be of unlimited duration. Other forms of intellectual property rights such as patents and design rights are of limited duration and can, if the requirements of the respective intellectual property rights are met, apply to shapes or the function performed by a particular shape. Therefore the danger exists that the proprietor of a patent or design right may be able to extend protection of a shape indefinitely through registration of this shape as a trade mark.

The shape-related absolute grounds of refusal in s. 3 (2) of the UK TMA which mirror the Directive, try to reconcile trade mark rights and other intellectual property rights by preventing some shapes from being registered as trade marks. According to s. 3 (2) TMA, a sign shall not be registered as a trade mark if it consists exclusively of

(a) the shape which results from the nature of the goods themselves,

(b) the shape of goods which is necessary to obtain a technical result, or

(c) the shape which gives substantial value to the goods.

It has to be noted that unlike the other absolute grounds for refusal, which can be overcome by showing that the sign has achieved a distinctive character through use, the specific grounds of refusal for shapes cannot be defeated in this way. No matter how distinctive a sign consisting exclusively of a shape has become, if one of the absolute grounds in s. 3 (2) is met, it will not be registrable, regardless of how clearly associated the shape is with the goods of one specific undertaking. The application of these absolute grounds of refusal by the Courts will be examined below.

Although three-dimensional signs are nowadays generally accepted as possible trade marks, applicants have to face the fact that, in the past, consumers have not been accustomed to perceiving shapes as trade marks as such. In general, shapes per se have not acted as an indicator of origin of goods and, without educating the public accordingly, shapes may not serve to distinguish goods of one undertaking from those of others.

The public will particularly not regard shapes as trade marks where the source of goods of a certain shape is well known but it is rather the name of the enterprise than the shape which is recognised as being the trade mark by the public. The registration of the shape of the famous Lego brick as a trade mark, for example, was refused. On appeal of the applicant, Neuberger J found that the application must fail because there was no real evidence that the public recognised the brick as a trade mark.^[28]

However, in several cases the shape of containers or goods was found to have trade mark significance and registration was accepted. On 31 October 1994 - the day the UK TMA 1994 came into force - a successful application was submitted to register the Coca-Cola bottle as a trade mark; the bottle shape was registered in 1995.^[29] Other registered trade marks include container marks such as the Chanel perfume bottle^[30] and the Domestos bottle including wording on the bottle.^[31]

Graphical Representation

Regarding the graphical representation of three-dimensional marks, the Trade Mark Works Manual states that they may be represented on the application form by line drawings or photographs; multiple aspect views should be filed and a declaration that the mark consists of a three-dimensional shape should be given.^[32]

In Swizzels Matlow Ltd`s Trade Mark Application^[33], UK Courts had the chance to clarify the requirement of graphical representation of three-dimensional trade marks. The case concerned a trade mark application comprising the verbal description “the trade mark consists of a chewy sweet on a stick”. On appeal of the applicant - the registrar refused registration - it was found in accordance with the guidelines given by the Works Manual that this was not a sufficient graphical representation; the appeal was dismissed. A later application to register a mark described as “a circular compressed tablet bearing a raised heart outline on both flat surfaces and containing within the heart outline on one side any one of several different words or phrases” (sweets sold under the trade mark “LOVE HEARTS”) also failed. The description was held to be inadequate as no restriction to the size, the location, thickness or shape of the heart outline or to the area available for the words and phrases was given.^[34] Eventually, a similar mark with given dimensions together with a visual image has been registered.^[35]

Distinctiveness

Even if a shape could possibly be considered as a trade mark by the public, only those three-dimensional signs that are either inherently distinctive or distinctive by “secondary meaning” can be registered. As will be seen, the standard for distinctiveness of three-dimensional signs applied by the UK Patent Office and Courts is very high. The Trade Mark Works Manual provides for guidance regarding this issue. A shape is deemed to be prima facie acceptable if:

1. the shape in question immediately strikes the eye as different and therefore memorable;

2. the differences between the applicant`s shape and those used by other traders are arbitrary and not dictated by function or some other non-trade mark purpose;

and the public therefore are likely to assume that the goods or services with reference to which the shape is to be used recurrently are those of one and the same undertaking. Commonplace shapes or small variations on commonplace shapes should be regarded as devoid of any distinctive character.^[36]

Yakult Honsha KK's Trade Mark Application^[37] is a recent example for the restrictive approach of the UK Registries and Courts towards three-dimensional marks, in this case a container. The application concerned the registration of the shape of a bottle as a trade mark in Classes 29 and 32. The bottle contained an indentation running around the circumference of the bottle that somewhat resembled a “headless dumpy human figure”. The applicant also relied on evidence of sales promotions and on the results of a survey to show that the shape had become distinctive through use. The hearing officer held that the design was nothing more than a bottle of ordinary shape and therefore devoid of any distinctive character according to s. 3 (1) (b) and that it had not become distinctive through use.

On the applicant’s appeal, Laddie J, accepting that “the bottle is both new and visually distinctive”, held that that does not make it inherently distinctive in a trade mark sense.
Even if it were to be recognised as of different shape to other bottles on the market, he found that “there is nothing inherent in it which proclaims it as having trade mark significance”. He furthermore held that the applicant’s survey evidence did not show that the mark acquired a distinctive character through the use made of it before the relevant date and accordingly dismissed the appeal.

The following cases show that the same restrictive approach was taken by the Registries and Courts when the shape of the goods itself was in question.

In Dualit Ltd v. Rowlett Catering Appliances Ltd^[38] the High Court had to decide upon an application for the shape of toasters. The plaintiff had made toasters for about 50 years which became fashionable items in the last couple of years. The trade mark in question consisted of two model toasters without application of the registered word mark Dualit. The application was successfully opposed by a competitor. On appeal, Lloyd J. found that although the shapes were not incapable of being distinctive generally, they were not inherently distinctive; furthermore, the appellant failed in proving that the shapes had acquired a distinctive character through use by the date of the application.

The recent Vienetta decision by Jacob J clearly demonstrates the problems faced by applicants for three-dimensional trade mark applications and the boundaries of trade mark protection.^[39] On October 31, 1994, Unilever sought to register two shape marks for “ice-cream dessert products” in Class 30 which were sold under the word mark Vienetta.^[40] One application was for a “white” version of the mark; the other was for a “dark” version.^[41] Unilever was, until August 2001, when it expired, proprietor of a patent in respect of a “layered confection product”. The undertaking supported its applications with evidence of use and both applications were accepted.

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[...]

^[1] First Council Directive of 21 December 1988 to approximate the laws of Member States relating to trade marks, OJ L40/1, 11.02.1989.

^[2] (1994) O.J. L 11/1, January 14, 1994.

^[3] Recital 1 of the Directive: “Whereas the trade mark laws at present applicable in the Member States contain disparities which may impede the free movement of goods and freedom to provide services and may distort competition within the common market; whereas it is therefore necessary, in view of the establishment and functioning of the internal market, to approximate the laws of Member States”.

^[4] Recital 7 of the Directive: “Whereas attainment of the objectives at which this approximation of laws is aiming requires that the conditions for obtaining and continuing to hold a registered trade mark are, in general, identical in all Member States”;…

^[5] Recital 7 clarifies that some of these grounds are listed as an option for the Member States.

^[6] According to Recital 7 this list of signs which may serve as trade marks merely represents some examples and it must therefore follow that it is not intended to be exhaustive.

^[7] Published by Gielen (1996) E.I.P.R. 83.

^[8] Re Article. 2 of the Statements for entry in the Minutes of the Council Meeting at which the Directive is adopted and Re Article 4 of the Statements for entry in the Minutes of the Council Meeting at which the Regulation on the CTM is adopted.

^[9] English translation of the German Trade Mark Act of 1995 by M. Aufenanger and G. Barth, Markengesetz/The German Trade Mark Act, 2nd ed., 1996).

^[10] Ströbele; Cf. the explanatory Memorandum to the draft Trademark Reform Act, 1994 Bl.f.PMZ, 45, 59.

^[11] (European Commission's Explanatory Memorandum on the Community Trade Mark, Bulletin of European Communities, Supplement 5/80, p. 56).

^[12] Gielen (1992) E.I.P.R. 262 (264).

^[13] This modern approach was introduced by Schechter in his article “The rational basis of trade mark protection, (1927) Harvard Law Review 813.

^[14] Hubmann/Götting (2002), p. 267.

^[15] See, for instance, Case C-39/97 Canon Kabushiki Kaisha at para. 28.

^[16] (1886) L.R. 33 Ch.D. 392.

^[17] Ibid., at 395: “The thing itself cannot be a mark itself , but there we have got the thing and we have got a mark on the thing, and the question is whether that mark on the thing is or is not a distinctive mark within the meaning of the Act. Of course the plaintiffs in this case have no monopoly in the black lead of this shape. Anybody may make black lead of this shape provided it does not pass it off as the plaintiffs`black lead. There is no monopoly in the shape, and I cannot help thinking that that has not been sufficiently kept in mind. What the plaintiffs have registered is a brand, a mark like a dome intended to represent a dome.”

^[18] Reckitt & Colman v. Borden (1990) R.P.C. 341, HL; in this case, Oliver L.J. elaborated the three elements which a plaintiff must show in order to make a case of passing off.

^[19] Coca-Cola Trade Marks (1986) R.P.C. 421.

^[20] i bid., at 456.

^[21] The attempt to use the Copyright Act 1956 for this purpose failed before in British Leyland Motor Corporation Ltd v. Armstrong Patents Co Ltd, (1986) R.P.C. 279.

^[22] i bid. at 444.

^[23] British Trade Mark Law and Practice, Cmnd. 5601, (1974).

^[24] See White Paper, Reform of Trade Mark Law, CM. 1203 (1990), para. 2.17.

^[25] Especially the advanced stage of the set up of a trade mark system for the European Community and the plans to ratify the Protocol to the Madrid Agreement.

^[26] White Paper, Reform of Trade Mark Law, CM. 1203 (1990), para. 2.18.

^[27] ibid., para. 2.13.

^[28] Interlego AG`s Trade Mark Application (1998) R.P.C. 69; the case was decided under the 1938 TMA but it is assumed that the outcome would have been the same under the 1994 TMA.

^[29] Reg. Nos. 2000546 and 2000548.

^[30] Reg. No. 2001783.

^[31] Reg. No. 2149830.

^[32] Chapter 6, section 2.3.4.

^[33] (1998) R.P.C. 244.

^[34] Swizzels Matlow Ltd`s Three Dimensional Trade Mark Application (1999) R.P.C. 879.

^[35] Reg. No. 2153268.

^[36] Chapter 6, s. 6.4.

^[37] (2001) R.P.C. 756.

^[38] (2001) I.I.C. 578.

^[39] Societe de Produits Nestle SA v Unilever Plc (2003) E.T.M.R. (53) 681.

^[40] Reg. Nos. 2,000,661 and 2,000,662. The application was filed on October 31, 1994.

^[41] The white mark was topped with white chocolate while the dark mark had a layer of dark chocolate on top. The dark mark was the main and original form of Vienetta, the white chocolate variant was introduced in 1993 and was initially refused registration by the registrar.

• Université: University of Southampton (Business School)
• Cours: LL.M. Intellectual Property Law
• Note: 72 %
• Auteur: Jochen Jüngst (Auteur)
• Année de publication: 2004
• Pages: 62
• N° de catalogue: V60642
• ISBN (ebook): 9783638542678
• ISBN (Livre): 9783656785972
• Langue: anglais
• mots-clé: Registration, Germany, European, Intellectual, Property