Nathan Abraham Practice Manager, Trade Marks & Designs UK Intellectual Property Office

Intellectual Property Office is an operating name of the Patent Office www.ipo.gov.uk

Marks to which the Treaty applies and Methods of Representation;

Elements of the Application; Filing Date

Nathan AbrahamPractice Manager, Trade Marks & Designs

UK Intellectual Property Office


Singapore Treaty Information

• UK has not yet formally ratified or acceded to Singapore Treaty on the Law of Trade Marks

• But, UK intends to ratify this year

• Most recent redrafting of secondary legislation – The Trade Marks Rules 2008 – ensured full compliancy with Singapore Treaty in advance


Relevant Marks, Application Requirements and Establishment of Filing Date

Three inter-related areas of trade mark ‘formality’ requirements – all covered by the Singapore Treaty on the Law of Trademarks:

•‘Type’ of sign is addressed by Article 2;

• Application requirements are addressed by Article 3;

•Filing Date requirements are addressed by Article 5


Relevant Marks, Application Requirements and Establishment of

Filing Date• Explore and analyse those articles of the Singapore

Treaty which set out obligations of contracting parties

• Explore and analyse those parts of UK trade mark legislation which correspond to the Treaty

• Compare and contrast UK national practice with content of the Treaty


Marks to which the Treaty applies – Art.2 Set out in Article 2 of Singapore Treaty, and contains two sub-sections:2 (1) Treaty applies to any sign which can be registered as a mark under Contracting Party’s national law

2 (2) (a) Treaty shall apply to goods or services or goods and services

2 (2) (b) Treaty shall not apply to collective marks, certification marks, or guarantee marks


Elements of Application – Article 3 Article 3(1)sets out long list of details relating to trade mark application – which Contracting Party may or may not choose to adopt in its application procedure:

(i) A request for registration

(ii) Name and address of the applicant

(iii)Name of the state in which applicant domiciles

(iv) Legal nature of legal entity


Elements of Application – Article 3 (v) Name and address of representative

(vi) Address for service, if required

(vii) Declaration of priority under Paris Convention, and evidence if required

(viii) Declaration relating to display of goods/services in an exhibition

(ix) At least one representation of the mark


Elements of Application – Article 3 (x) Statement indicating the ‘type’ of the mark

(xi) Statement indicating that mark is to be registered in ‘standard characters’ of the Office

(xii) Declaration that colour is claimed as distinctive feature of the mark

(xiii) Transliteration of the mark (or part of it)

(xiv) Translation of the mark (or part of it)


Elements of Application – Article 3

(xv) List of goods/services grouped according to Nice classification, each group preceded by number of corresponding class

(xvi) Declaration of intention to use the mark

• Also, if required, declaration of actual use

• Requirement that fees are paid to the Office


Elements of Application – Article 3 • Article 3(2) confirms that single application can cover

multiple specifications in multiple classes of the Nice Classification

• Article 3(3) confirms that, where applicant has declared use, time period may be set for evidence of such use to be presented

• Article 3(4) prohibits setting any further requirements e.g. providing business certificates; proof of registration in other jurisdictions


Elements of Application – Article 3 • Article 3(5) confirms that Contracting Party may

request evidence if it doubts veracity of any claim made in application

• So, a total of 22 details which may be requested at application stage in compliance with Singapore Treaty

• Contracting Party may request the applicant to furnish some or all of these 22 details, but may not ask for anything more!


Elements of Application – corresponding UK Trade Mark Legislation

• UK has streamlined application process as much as possible – our trade mark application form requires much less less information than is set out in Article 3 of the Treaty

• UK application form asks no more than nine questions corresponding to Treaty requirements



Form TM3 (application) asks for the following:

• Illustration of your markArt. 3 (1) (a) (ix)

• If your mark is a three-dimensional shape, or a sound, or a repeating pattern, say here which it isArt. 3 (1) (a) (x)



• If you have shown the mark in colour, we will assume you want the mark registered in these colours, unless you tell us something different here

• If you have shown the mark in black and white, we will not consider these colours a feature of the mark unless you tell us something different hereBoth relate to Art. 3 (1) (a) (xii)



• If your application claims priority, give details of Priority Date; Country; and NumberRelates to Art. 3 (1) (a) (vii)

• List the goods or services, with corresponding class numberRelates to Art. 3 (1) (a) (xv)



• Provide full name and address of applicant, including place of incorporation if applying in the name of a companyRelates to Arts. 3 (1) (a) (ii), (iii), and (iv)

• Provide name and address of representative, or address for service if different from details in previous answerRelates to Art. 3 (1) (a) (v) and (vi)



So, UK application form does not require any of the following:

Declaration relating to display of goods; declaration relating to standard characters; claim that colour is a distinctive feature; transliteration; translation; a declaration of actual use;


Filing Date – Article 5

• Article 5(1)(a) of Singapore Treaty sets out six criteria to be used as basic requirement for establishing filing date

• Article 5(1)(b) allows Contacting Parties to pick and choose which of those six criteria can be used

• Article 5(1)(b) also allows Contracting Party to recieve application details in alternative language


Filing Date – Article 5

What are the six criteria?

(i) An indication that registration is sought(ii) Identity of the applicant(iii) Address for contact(iv) Sufficiently clear representation of the mark(v) List of goods/services(vi) Declaration of intention to use


Filing Date – Article 5 • Five of those six criteria are simple and

straightforward. Application form takes care of names, addresses, declarations, list of goods and services etc.

• Also simple to provide ‘sufficiently clear representation’ where mark is a word or figurative device

• But, more problematical where application is for non-conventional mark


Filing Date – Article 5 • Rule 3 of Singapore Treaty Regulations

acknowledges difficulties associated with non-conventional marks

• Provides basic guidance – in terms of number of representations required for marks containing colour, three-dimensional marks, hologram marks, motion marks, non-visible signs etc.

• But, Treaty and Regulations do not seek to tackle fundamental issue of graphical representation


Filing Date – UK Legislation • UK Law complies with Treaty by insisting that a clear

representation of the mark must be provided in order to establish filing date

• Section 1(1) of the UK Trade Marks Act 1994 defines a trade mark as being:

“any sign capable of being represented graphically which is capable of distinguishing goods and services of one undertaking from those of other undertakings”


Filing Date – UK Legislation • Section 1(1) of UK Trade Marks Act 1994 also states

that:“A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging”

• So, in principle, any sign capable of being graphically represented can be a trade mark; and the provision of a graphical representation will enable a filing date to be established


Filing Date – UK Legislation To meet Singapore Treaty’s requirement that mark is “clearly represented”, following criteria must be met:

•Definition of mark must be precise enough for infringment purposes

•Representation must be able to stand in place of mark without samples etc.

•Reasonably practical for public to understand what the trade mark actually is


Filing Date – Non-conventional marks

“The trade mark consists of a blue bottle of optical characteristics such that, if the wall thickness is 3mm, the bottle has, in air, a dominant wavelength of 472 to 474 nanometres, a purity of 44 to 48%, an optical brightness of 28 to 32%”

TY-NANT SPRING WATER LTD Trade Mark Application [2000] RPC 55


Filing Date – Non-conventional Marks

• Very small number of non-traditional trade marks filed at Intellectual Property Office

• Out of 29,508 trade marks filed between September 2009 and September 2010, only 41 were ‘non-conventional’ i.e. colours, shapes, sounds etc.

• Just over 0.1% of total UK trade mark input


Olfactory (Smell) Marks

Very small number of olfactory marks registered in UK:

2 000 234 The mark comprises the strong smell of bitter beer applied to flights for

darts (1994)

2 001 416 The trade mark is a floral fragrance/smell reminiscent of roses as applied to

tyres (1994)



Equally small number of olfactory marks registered at Community Trade Mark Office (OHIM):

E 000 428 870 The mark consists of the smell of fresh cut grass applied to the product

(1996)



Highly problematical in terms of graphic representation

Sieckmann case (C-273/00), where smell was represented via chemical formula being: C6H5-CH=CHC000CH3

Applied for in respect of business and advertising services



Sieckmann case refused

Court confirmed that in order to meet graphical representation criterion, marks need to be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”.

Such criterion form basis for IPO practice



Following Sieckmann, smell marks cannot be represented by:

• Chemical formula• Description in written words• Deposit of an odour sample• A combination of the above



• Small number of marks registered in mid-nineties

• Passed both graphical representation test and distinctiveness test

• But, later applications’ subsequent failure to pass graphical representation test means that we have little guidance


Sound Marks

Graphical Representation

“A sound may only constitute a trade mark if it is not only capable of distinguishing, but is also capable of being represented graphically in a clear, accurate, complete as such, easily accessible, comprehensive, durable and objective manner”.

Advocate General’s opinion on Shield Mark BV v Joost Kist (C-283/01) – Opening bars of ‘Fur Elise’


Sound MarksGraphical Representation

Applications might consist of sonograms, MP3 files, musical notation, written note sequences, written descriptions, or combination of all

Different practices across European Community, but possibility of future change?


Sound Marks


Sound marks may be represented by:

“A stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals.”


Holograms


Very rare - only known case in UK is O-181-99 which says that:

• Holograms are not unregisterable, but they must be capable of being represented graphically

• Application form should not contain the hologram itself, but should have several views so that all features can be seen clearly


Holograms


Moving Images

• Again, these types of applications are rare

• But, they do more easily meet the requirement for graphical representation

• Will then be assessed for distinctiveness as per any other mark


Moving Images

• An example is UK Application Number 2 130 164:


Abstract Colour(s)• Cannot be represented merely by reproducing the

colour on paper

• But, may be represented by use of a recognised colour identification code

• Combinations of colours must include a systematic arrangement associating the colours in a uniform way

ECJ cases on Libertel Groep vs Benelux Merkenbureau (C-104/01) and Heidelberger Bauchemie (C-49/02)


Colour – Alternative Graphical Representation

• Alternative ways of representing colour may be accepted

• Precise descriptions which cannot be interpreted without the use of costly specialist equipment are not accepted

• Must be reasonable for third parties to gain an understanding of what the mark is – by inspecting the Trade Marks Journal


Single colour applicationNOT COMPLIANT

with Singapore Treaty Article 5(1)(iv)

Mark description: The colour brown applied to the goods

Goods: Chocolate (Class 30)


Single colour applicationCOMPLIANT

with Singapore Treaty Article 5(1)(iv)

Mark description:The mark consists of vodka coloured black, in the colour ‘Pantone black’.

Mark claim/limit: The applicant claims the colour black as an element of the mark

Goods: Vodka (class 33)


Combinations of Colours

• Representations must include a systematic arrangement associating the colours in a predetermined way

• But, the European Court of Justice offered no examples

See Heidelberger Bauchemie (C-49/02)


Colour CombinationsNON-COMPLIANT

• Heidelberger Bauchemie (C-49/02)‘The trade mark applied for consists of the

applicant’s corporate colours which are used in every conceivable form, in particular on packaging

and labels.The specification of the colours is:RAL 5015/HKS 47 – blueRAL 1016/HKS 3 – yellow’


Colour Combinations – COMPLIANT

Description: The distribution and ratio of the colours to each other is 50-50, whereby the colour blue runs horizontally above the colour red, forming a striped whole

Indication of colour: Blue RAL 5015; Red RAL 2002

Goods in classes 6, 11, 19 and 20


Colour Combinations – COMPLIANT

Description: The mark consists of the colours Red Pantone SHL005, Yellow Pantone SHL003, and Pantone White, applied to the packaging for the goods. The distribution and ratio of the colours to each other is 40/20/40, whereby the colour red runs horizontally above the colour white and the colour white runs horizontally above the colour yellow, forming a striped whole.

Good in class 3 – shoe polish


Article 5 continued • Contracting Party is permitted to refuse

establishment of filing date until fees are paid in full (if it was already doing so at time of accession)

• Time periods granted for rectifying filing deficiencies are set in the SP Regulations – “at least one month”

• UK has adopted shortest possible time period – only one month allowed; and filing date is re-set


QUESTIONS?

[email protected]

Nathan Abraham Practice Manager, Trade Marks & Designs UK Intellectual Property Office

Documents

Transcript of Nathan Abraham Practice Manager, Trade Marks & Designs UK Intellectual Property Office