Any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or the packaging of goods as per Article 3 of the Trademark Directive. (Revised i.e. 2015 version) and Article 4 (TMR 2017/1001).[1]
Prerequisite 1 : Distinctiveness
Represented in a clear, objective and precise manner as per (Art. 3(b) TMR amended version 2015, Art 3 TMD and Article 6 of Paris convention.
Distinctiveness i.e. the (1) The ability to distinguish goods from one undertaking to those of another is assessed by reference to the perception of the relevant public, which is the average consumer of the good/service who are reasonably well informed (Eurohypo v OHIM [2008] Secondly, The Trade mark has to be in relation to the product/good/service for which it is applied.
The Trademark should not be descriptive (but can be acquired over time over use) as per Art. 3(1) TMD. Art. 7(1)(b) TMR in contrario sensu: distinctive character.
Article 7(1)(c) TMR.. Interpretation of “descriptive” is very broad as in the Doublemint case[2] (OHIM v Wrigley) it was held that the Trademark (“may”) be descriptive, but if you have a TM with composed elements of a descriptive term it is sufficient (distinctive).
Art. 7(1)(d) TMR: when it has become a generic term it can no longer be a TM i.e. it leads to dilution of the Trademark and there may be particular leeway within Article 10 of the TMR for that matter. Shapes can be registered as Trademark, yet there is a higher threshold set. (Remington case) For goods that don’t have a shape and need to be packed the shape of the packaging counts (Henkel case), yet for the shape of the packaging needs to satisfy the same TM requirements. However, the shape of the good/ packaging needs to deviate significantly from the norm/standard in the sector (Henkel case), the public should recognize it immediately (Wherther’s case ), however the shape cannot be registered as a TM if the shape gives substantial value of the goods (B&O case).
Prerequisite 2: Acquired Distinctiveness:
Another way in which a Trademark can gain protection is through acquired distinctiveness as per Art. 7(3) TMR rules out the absolute exclusions of Art. 7(1)(a)-(d) if a sign, word,… has become distinctive for a specific use, purpose, good, that is acquiring distinctive through use and at this point one can choose to register as a Trademark (because you fulfil the distinctive requirement now)
“Werther’s,”[3] the Trademark was first rejected because of lack of distinctiveness, but later acquired it because of large market share and people being able to recognize it, and was thereby able to register as a TradeMark); other cases for acquired distinctiveness would be single color (Libertel case), Colour combinations, shapes.
Prerequisite 3: Genuine Use
Article 15(a)(b) Holder of a Trademark obligated to use it. But there is a grace period after registration before the use obligation comes into effect. Unjustified non-use can lead to the loss of a TradeMark (the registration of that TM is open to cancellation at request of a person with a legitimate interest). Non-use can be justified in the case of force majeure. Improper use can have the same result: if the registered owner has provoked or tolerated the TM’s transformation into a generic term (result: significance of the TM has been lost).
Exceptions or relative grounds of refusal:
Art. 8TMR (upon opposition by older TM or unregistered TM that is well-known and had more than local significance: Art. 41 TMR) Bad faith application for TM is refused (Lindt chocolate bunny), but when enough protection granted to 3rd party sign that is targeted it is not refused. Art. 52TMR: Absolute grounds for invalidity; Art. 53: Relative grounds of invalidity (“shall be declared invalid” – so after it is granted) Art. 12 TMR: limitations of the effect of a EUTM (what the holder cannot prevent 3rd parties from using, provided it is used in commercial matters according to honest practices, but honest practices are defined/limited
Contrary to public policy/morality = Art. 7(1)(f) TMR, deceiving in quality, nature or origin = Art. 7(1)(g), violating 6ter PC, Art. 7(1)(h), badges and emblems = Art. 7(1)(i) Art. 13TMR: exhaustion when goods have been put on the market with right holders consent.
Rationale:
One Rationale for behind trademark protection is the protection of brand value because mark owners should have the right to exploit their mark in any possible way they want. Another one is for users to know the origin and value of the products on the market and be able to distinguish them. This diminishes confusion of the consumer’s part. They protect the rights of the producer so that he can in turn protect his business goodwill or brand value.
[1] Annette Kur et al, European Intellectual Property Law Text, Cases and Materials( 2nd edn, Edward Elgar publishing 2019). [2] Doublemint: Case C-191/01 P, Office for Harmonisation in the Internal Market (Trade Marks and Designs), V. Wm. Wrigley Jr. Company (E.C.J. October 23, 2003)
[3] Case C-24/05 (August Storck v. OHIM; Werther's Echte
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