Practice Amendment Notice

PAN 7/07 - Issued 20 July 2007

This notice affects Examination practice about:

Section 3(1)(a)

This PAN replaces paragraph 7.3 in its entirety. The ECJ Dyson case (C-321/03) has already resulted in redrafted paragraphs on ‘graphical representation’, and also sheds light on the meaning of the word ‘sign’ in Section 3(1)(a). The paragraph has been revised to incorporate that guidance, but also covers the other two elements of section 3(1)(a).

7.3 Section 3(1)(a)

'Sign'

European Court of Justice (‘ECJ’) case law, (see Heidelberger Bauchemie, Case C-49/02 and Dyson, Case C-321/03 ) has developed the requirement that to be registrable a mark must be a ‘sign’.

To be a ‘sign’ is an independent and fundamental requirement which, if not considered met, will result in an objection under section 3(1)(a) being raised prior to any full examination.

The ECJ has said that the underlying purpose of the requirement to be a ‘sign’ is to prevent the abuse of trade mark law by obtaining an unfair competitive advantage.

In the Dyson case, the ECJ felt that an unfair competitive advantage was being sought by the applicant who, in the description on his initial form and by admission during proceedings, stated that the application covered all conceivable shapes (and colours) of transparent bins, being parts of vacuum cleaners. The application and resulting rights were not therefore confined to the shape/appearance of a specific bin(s) presented with the form.

The registrar may raise a section 3(1)(a) objection against the following illustrative types of mark:

  • wherever the subject of the application appears to be a mere ‘property’ of a product such as the material from which something may be made or a functional feature which is not limited to any specific shape;
  • applications to protect an “idea” rather than a fixed expression of the idea; an example may be marks which purport to secure rights in relation to a ‘theme’;
  • applications to register extended moving imagery, such as an advertisement, which cannot be regarded as forming a single sign.

The following types of description (non exhaustive) would give rise to such an objection:

  • "The mark consists of a drinking vessel made of leather"
  • "The mark comprises a transparent collecting chamber of a vacuum cleaner, as shown in the representation"
  • "The mark comprises a rugby themed restaurant, several photographs of which are shown"
  • "The mark comprises an advertisement showing a man walking into a bar (frames 1-5), engaging in conversation (frames 6-11), eating a packet of crisps (frames 11-20)"

In the first example above, even assuming that a representation had been filed, there is no clear ‘linkage’ or ‘fixing’ to any accompanying representation. Moreover, the ‘subject’ of protection appears to be a property of the vessel (the fact that it is made of leather). In the second example, the ‘subject’ of protection appears to be the transparent nature of the bin and any representations are merely illustrative of that concept. In the Dyson case, the use of the words “as shown in the representation” were found to be an ineffective means of fixing the mark to collecting bins of the particular shapes shown in the application. Consequently, if the intention is to fix the mark to the particular shape shown in a pictorial representation of the mark, applicants should use unequivocal wording such as “of the shape (and/or in the position/location) shown in the representation”. In the third example, use of the word ‘themed’ is uncertain and, again, any accompanying photographs would be assumed to be illustrative only. In the fourth example, the subject of protection appears to be a sequence of unrelated movement(s) which cannot be said to be a single ‘sign’.

'capable of being represented graphically'

A ‘sign’ objection and a ‘graphic representation’ objection may well overlap but this will not necessarily be the case. The specific requirement for graphical representation is covered more fully in the section on unconventional trade marks.

'which is capable of distinguishing goods or services of one undertaking from those of other undertakings'

If a ‘mark’ has no capacity to serve this primary distinguishing function then it would attract objection under section 3(1)(a). The often quoted example of this would be the word ‘soap’ sought to be registered for ‘soap’. The ‘mark’ applied for is nothing more than the common name for the goods; such a ‘mark’ has no capacity to serve the essential function of a trade mark, no matter how much ‘use’ has been made of it (see, for example, Re Registered Trade Mark “Jeryl Lynn” [1999] FSR 491, [2000] ETMR 75 sub nom Merck and Company’s Trade Mark: SmithKline Beecham PLC’s Application for a Declearion of Invalidity (Laddie J)).