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Added for You - Intellectual Property - Trade Marks - Distinctive Character Test - Landmark Decision
You have heard enough times "the money is in the list". Having read many articles and successes of other people profiting from their opt-in lists, your appetite is whelped. So, finally you are convinced that you need an opt-in list. One that is responsive. Now, you are ready to take the leap to build your own opt-in list.You learned everything there is to know from the experts about building opt-in list, and followed their advice religiously. Yet at the end of the day profits are not rolling in though you have into the thousands on your opt-in list.You may even hire the best writers to provide content for your publication but your Return on Investment is pathethic. Despite a huge opt-in list, only a small percentage of subscribers actually bought your goods or services.What happened Mac? What went wrong? Why have you failed where others have succeeded? Why is it others are making
In both cases it was sufficient that, in consequence of such use, the relevant class of persons actually perceived the product or service, designated exclusively by the mark applied for, as originating from a given undertaking.
Comment:
The main points arising from the decision that trade mark owners should be aware of are:
The decision must be applied to the facts by the Court of Appeal. However, the ECJ has made it clear that there is no requirement for a mark to be used independently in order for it to obtain a sufficient level of distinctive charac
If you were to put me up against a brick wall with a gun to my head and said to me, "Okay, tell me what the ONE thing is that I need to do in order to make money online" and gave me just 3 seconds to answer, I would have to say, without hesitation, focus. If you don't exactly know what I mean by that, don't worry, by the time you are done reading this article, you will know EXACTLY what I am talking about.I don't have to go far to give you a story about lack of focus. I can walk right into my own backyard and give you a dandy. This was a little over 4 years ago when I first started to try to make a living on the Internet. I had no clue what I was doing and focus wasn't even in my vocabulary.I found this site, through a search engine, called "Paid Response." You type ads and get paid for each one that gets a response. Simple, right? Well, it wasn't so simple. But that's not the point. After
Nestl? owns the UK registered trade marks, KIT KAT and HAVE A BREAK…HAVE A KIT KAT in class 30 in respect of chocolate, confectionary, candy and biscuits. In 1995, Nestl? applied to the UK Trade Marks Registry to register the phrase HAVE A BREAK as a separate trade mark in class 30 in respect of chocolate, confectionary, candy and biscuits. The mark HAVE A BREAK was accepted by the Trade Marks Registry and published for opposition purposes. The mark was opposed by Mars UK Limited on the grounds that the mark was devoid of distinctive character relying in particular on art 3(1)(b) of First Council Directive (EEC) 89/104 (“the Directive”) (to approximate the laws of the member states relating to trade marks).
Art (3)(1)(b) of the Directive, (as well as s3(1)(b) of the Trade Marks Act 1994) provides that trade marks devoid of distinctive character shall not be registered. An exception arises where “…before the date of application for registration and following the use which has been made of it, the mark has acquired a distinctive character (Art 3(3))”.
As a result, the opposition was upheld and Nestle’s application for registration of the mark HAVE A BREAK was rejected. Nestle appealed to the High Court. This appeal was dismissed and Nestle appealed to the Court of Appeal. The Court of Appeal had to consider:-
Whether the expression HAVE A BREAK was devoid of inherent distinctive character under art 3(1)(b) of the Directive rendering the expression unregistrable.
Whether registration of HAVE A BREAK might occur only on the basis of art 3(3) of the Directive, subject to proof of distinctive character acquired through use i.e. whether the mark HAVE A BREAK had acquired distinctiveness through the use of the mark HAVE A BREAK…HAVE A KIT KAT. This meant that if the mark had acquired distinctiveness as a result of its use, then it would be registrable.
The Court of Appeal highlighted that the application had been rejected on the ground that the phrase HAVE A BREAK was essentially used as part of the registered mark HAVE A BREAK…HAVE A KIT KAT and not, genuinely, as an independent trade mark.
Nestle’s submission that this decision could have serious consequences for trade mark owners seeking to register marks comprising shapes since such marks were seldom used by themselves, and considered that a slogan-like phrase associated with a trade mark might, by repetition over time, create a separate and independent impression and thus acquire distinctive character through use.
As a result, the Court of Appeal decided to stay proceedings and refer to the Court of Justice of the European Communities for preliminary ruling the question whether the distinctive character of a mark referred to in art 3(3) of the Directive might be acquired following or in consequence of the use of that mark as part of or in conjunction with another mark.
The ECJ ruled:
The distinctive character of a mark referred to in art 3(3) of the Directive might be acquired in consequence of the use of that mark as part of or in conjunction with a registered trade mark.
Whether inherent or acquired through use, distinctive character had to be assessed in relation, on the one hand, to the goods or services in respect of which registration was applied for and, on the other, to the presumed expectations of an average consumer of the category of goods or services in question, who was reasonably well-informed and reasonably observant and circumspect.
In relation to acquisition of distinctive character through use, the identification, by the relevant class of persons, of the product or service as originating from a given undertaking had to be as a result of the use of the mark as a trade mark. In order for the latter condition, which was a central issue in this case, to be satisfied, the mark in respect of which registration was sought need not necessarily have been used independently.
Art 3(3) of the Directive contained no restriction in that regard, referring solely to the ‘use which has been made’ of the mark. The expression ‘use of the mark as a trade mark’ had therefore to be understood as referring solely to the use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking. Such identification, and thus acquisition of distinctive character, might be as a result both of the use, as part of a registered trade mark, of a component and of the use of a separate mark in conjunction with a registered trade mark.
In both cases it was sufficient that, in consequence of such use, the relevant class of persons actually perceived the product or service, designated exclusively by the mark applied for, as originating from a given undertaking.
Comment:
The main points arising from the decision that trade mark owners should be aware of are:
The decision must be applied to the facts by the Court of Appeal. However, the ECJ has made it clear that there is no requirement for a mark to be used independently in order for it to obtain a sufficient level of distinctive charac
Some of the top Internet marketers, such as Armand Morin and Alexandria K. Brown, spend a minimum of $20,000 a year on professional development and education. This includes coaching packages, telemeetings, live events and other educational materials.Even though they make triple this amount a month in product sales, these successful entrepreneurs see the value in spending money on other people's products to ensure they continue to stay up-to-date on new marketing techniques.It's important that you spend money on educating yourself. Doing so helps you to accomplish these 3 very important goals: You spend less time searching and more time earning. How many times have you used a search engine to research for information, only to take you hours to wrap your head around the volume of data? By spending money on an ebook or telecourse, you start the process of making money b
As a result, the opposition was upheld and Nestle’s application for registration of the mark HAVE A BREAK was rejected. Nestle appealed to the High Court. This appeal was dismissed and Nestle appealed to the Court of Appeal. The Court of Appeal had to consider:-
Whether the expression HAVE A BREAK was devoid of inherent distinctive character under art 3(1)(b) of the Directive rendering the expression unregistrable.
Whether registration of HAVE A BREAK might occur only on the basis of art 3(3) of the Directive, subject to proof of distinctive character acquired through use i.e. whether the mark HAVE A BREAK had acquired distinctiveness through the use of the mark HAVE A BREAK…HAVE A KIT KAT. This meant that if the mark had acquired distinctiveness as a result of its use, then it would be registrable.
The Court of Appeal highlighted that the application had been rejected on the ground that the phrase HAVE A BREAK was essentially used as part of the registered mark HAVE A BREAK…HAVE A KIT KAT and not, genuinely, as an independent trade mark.
Nestle’s submission that this decision could have serious consequences for trade mark owners seeking to register marks comprising shapes since such marks were seldom used by themselves, and considered that a slogan-like phrase associated with a trade mark might, by repetition over time, create a separate and independent impression and thus acquire distinctive character through use.
As a result, the Court of Appeal decided to stay proceedings and refer to the Court of Justice of the European Communities for preliminary ruling the question whether the distinctive character of a mark referred to in art 3(3) of the Directive might be acquired following or in consequence of the use of that mark as part of or in conjunction with another mark.
The ECJ ruled:
The distinctive character of a mark referred to in art 3(3) of the Directive might be acquired in consequence of the use of that mark as part of or in conjunction with a registered trade mark.
Whether inherent or acquired through use, distinctive character had to be assessed in relation, on the one hand, to the goods or services in respect of which registration was applied for and, on the other, to the presumed expectations of an average consumer of the category of goods or services in question, who was reasonably well-informed and reasonably observant and circumspect.
In relation to acquisition of distinctive character through use, the identification, by the relevant class of persons, of the product or service as originating from a given undertaking had to be as a result of the use of the mark as a trade mark. In order for the latter condition, which was a central issue in this case, to be satisfied, the mark in respect of which registration was sought need not necessarily have been used independently.
Art 3(3) of the Directive contained no restriction in that regard, referring solely to the ‘use which has been made’ of the mark. The expression ‘use of the mark as a trade mark’ had therefore to be understood as referring solely to the use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking. Such identification, and thus acquisition of distinctive character, might be as a result both of the use, as part of a registered trade mark, of a component and of the use of a separate mark in conjunction with a registered trade mark.
In both cases it was sufficient that, in consequence of such use, the relevant class of persons actually perceived the product or service, designated exclusively by the mark applied for, as originating from a given undertaking.
Comment:
The main points arising from the decision that trade mark owners should be aware of are:
The decision must be applied to the facts by the Court of Appeal. However, the ECJ has made it clear that there is no requirement for a mark to be used independently in order for it to obtain a sufficient level of distinctive charac
The "dot-com bubble" was a speculative bubble covering roughly 1995–2001 during which stock markets in Western nations saw their value increase rapidly from growth in the new Internet sector and related fields. The period was marked by the founding (and in many cases, spectacular failure) of a group of new Internet-based companies commonly referred to as dot-coms. A combination of rapidly increasing stock prices, individual speculation in stocks, and widely available venture capital created an exuberant environment in which many of these businesses dismissed standard business models, focusing on increasing market share at the expense of the bottom line. The bursting of the dot-com bubble marked the beginning of a relatively mild yet rather lengthy early 2000s recession in the developed world.Early in the bubble years, three major technology groups benefitted most from the building excitement of w
Nestle’s submission that this decision could have serious consequences for trade mark owners seeking to register marks comprising shapes since such marks were seldom used by themselves, and considered that a slogan-like phrase associated with a trade mark might, by repetition over time, create a separate and independent impression and thus acquire distinctive character through use.
As a result, the Court of Appeal decided to stay proceedings and refer to the Court of Justice of the European Communities for preliminary ruling the question whether the distinctive character of a mark referred to in art 3(3) of the Directive might be acquired following or in consequence of the use of that mark as part of or in conjunction with another mark.
The ECJ ruled:
The distinctive character of a mark referred to in art 3(3) of the Directive might be acquired in consequence of the use of that mark as part of or in conjunction with a registered trade mark.
Whether inherent or acquired through use, distinctive character had to be assessed in relation, on the one hand, to the goods or services in respect of which registration was applied for and, on the other, to the presumed expectations of an average consumer of the category of goods or services in question, who was reasonably well-informed and reasonably observant and circumspect.
In relation to acquisition of distinctive character through use, the identification, by the relevant class of persons, of the product or service as originating from a given undertaking had to be as a result of the use of the mark as a trade mark. In order for the latter condition, which was a central issue in this case, to be satisfied, the mark in respect of which registration was sought need not necessarily have been used independently.
Art 3(3) of the Directive contained no restriction in that regard, referring solely to the ‘use which has been made’ of the mark. The expression ‘use of the mark as a trade mark’ had therefore to be understood as referring solely to the use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking. Such identification, and thus acquisition of distinctive character, might be as a result both of the use, as part of a registered trade mark, of a component and of the use of a separate mark in conjunction with a registered trade mark.
In both cases it was sufficient that, in consequence of such use, the relevant class of persons actually perceived the product or service, designated exclusively by the mark applied for, as originating from a given undertaking.
Comment:
The main points arising from the decision that trade mark owners should be aware of are:
The decision must be applied to the facts by the Court of Appeal. However, the ECJ has made it clear that there is no requirement for a mark to be used independently in order for it to obtain a sufficient level of distinctive charac
Recently a few scholars have been talking about franchising the world and luckily I am the one who is brought to their attention. They ask the obvious question, which has been asked before of major projects; if we franchise the nations of the world then who will build the franchise system and who will help the franchisees of the Third World countries who sign-up to become first world nations? There will be lots of infrastructure to build so the civilization will succeed as a franchisee of the world franchise system.Well, last time I checked industrialized nations did not have a shortage of large corporations or businesses who were interested in building stuff. For instance; The Military Industrial Complex does not care what it builds? Nuclear power plants, levees in New Orleans, a bridge in Peru, a high-speed train in Argentina, a dam in Egypt. Or the same companies could just keep building roc
In relation to acquisition of distinctive character through use, the identification, by the relevant class of persons, of the product or service as originating from a given undertaking had to be as a result of the use of the mark as a trade mark. In order for the latter condition, which was a central issue in this case, to be satisfied, the mark in respect of which registration was sought need not necessarily have been used independently.
Art 3(3) of the Directive contained no restriction in that regard, referring solely to the ‘use which has been made’ of the mark. The expression ‘use of the mark as a trade mark’ had therefore to be understood as referring solely to the use of the mark for the purposes of the identification, by the relevant class of persons, of the product or service as originating from a given undertaking. Such identification, and thus acquisition of distinctive character, might be as a result both of the use, as part of a registered trade mark, of a component and of the use of a separate mark in conjunction with a registered trade mark.
In both cases it was sufficient that, in consequence of such use, the relevant class of persons actually perceived the product or service, designated exclusively by the mark applied for, as originating from a given undertaking.
Comment:
The main points arising from the decision that trade mark owners should be aware of are:
The decision must be applied to the facts by the Court of Appeal. However, the ECJ has made it clear that there is no requirement for a mark to be used independently in order for it to obtain a sufficient level of distinctive charac
There was a time in our history when workplace injuries were limited to occupational accidents, slip and falls and repetitive motion injuries. Forget the garden variety injuries, when it comes to workplace violence this is an iceberg and you’re the Titanic!In America alone, some 2 million workers are victims of workplace violence each year and the upward trend seems to continue. All too often we hear disturbing news reports of workplace violence. We hear of disturbed workers that commit violent acts in their own workplace or workers who are assaulted in their workplace by those they serve. Workplace violence can strike anywhere, and absolutely no one is immune. There are however some workers who are at increased risk. Among them are workers who exchange money with the public; deliver passengers, goods, or services; or work alone or in small groups, during late night or early morning hours,
In both cases it was sufficient that, in consequence of such use, the relevant class of persons actually perceived the product or service, designated exclusively by the mark applied for, as originating from a given undertaking.
Comment:
The main points arising from the decision that trade mark owners should be aware of are:
The decision must be applied to the facts by the Court of Appeal. However, the ECJ has made it clear that there is no requirement for a mark to be used independently in order for it to obtain a sufficient level of distinctive character to be registered as a trade mark.
This decision has completely changed the English court’s approach to the question of distinctiveness when marks are used together. The English court’s approach was problematic for owners of non-conventional marks such as slogans, shapes or colours which are rarely used on their own. Use of the combination will now be taken into account when judging whether any individual element is registrable. This decision will be applied in all European Union Countries.
If you require further information contact us at enquiries@rtcoopers.com
© RT COOPERS, 2005. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.
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