The European Court of Justice ["ECJ"] recently made a decision in Societe des ProduitsNestléSA v. Mars UK Ltd [2005] to make it easier for trademark owners to qualify for character testing when applying for a registered trademark. The European Court of Justice has determined that the necessary features required for trademark registration can be obtained as part of other registered trademarks, provided that generally well-informed consumers consider it to be different from its source of trade.
Nestlé owns the UK registered trademark, KIT KAT and HARE A BREAK ...... KIT KAT with chocolate, candy, candy and biscuits at level 30. In 1995, Nestlé applied to the UK Trademark Registry to register the phrase "HAVE A BREAK" as a separate 30-level trademark, including chocolate, candy, candy and cookies. The Trade Marks Registry accepts the trademark HAVE A BREAK and publishes it for objection. The mark was opposed by Mars UK Limited on the grounds that the mark lacked distinctiveness, in particular relying on Article 3[1][b] [approximate] Member States of the First Committee Directive [EEC] 89/104 [the "Directive"] Law on trademarks].
Paragraph [3][1][b] of the Directive [and Section 3[1][b] of the Trademark Act of 1994] stipulates that a trademark with distinctive characteristics may not be registered. The exception is "...the trademark is used before and after the registration application date and the trademark has been declared invalid [section 3[3]]".
As a result, the opposition was supported and the application for Nestlé's registered trademark HAVE A BREAK was redirected. Nestlé appeared in the High Court. The appeal was dismissed and Nestlé appeared in the Court of Appeal. The Court of Appeal must consider: -
In Article 3[1][b] of the Directive, Wh expresses whether the breakthrough is inherently unique, making the expression unregistrable.
Whether Wh can only register HARE A BREAK according to the provisions of Article 3[3] of the Directive, but need to prove that the unique character obtained by using, that is, whether the mark has obtained a uniqueness through the use of the mark HAVE a breakthrough..... There is a suit KAT. This means that if a trademark is unique because of its use, it will be registrable.
The Court of Appeal emphasized that the application was rejected on the grounds that the word "HAVE A BREAK" was basically used as part of the registered trademark. There is a breakthrough... there is a KIT KAT instead of really, as an independent trademark.
N Nestlé's submission suggests that this decision may have serious consequences for trademark owners seeking to register the shape of the mark, as the mark itself is used and that the slogan phrase associated with the mark may be repeated, creating an independent Independent impressions, thus gaining a unique personality through use.
Accordingly, the Court of Appeal decided to suspend the proceedings and submit to the European Community Court a preliminary determination as to whether the unique nature of the trademarks referred to in Article 3[3] could be obtained. The following may be the result of using the trademark as part of another trademark or with another trademark.
Rules of the European Court of Justice:
The distinctiveness of a trademark mentioned in section 3[3] of the Directive may be obtained as part of or in connection with a registered trademark.
Whether it is inherent or through the use of acquittal, on the one hand, it is necessary to evaluate the goods or services that are applied for registration, and on the other hand, the assumed expectations of the average consumer. They are well-informed, reasonably observed and cautious about the categories of goods or services.
In terms of obtaining special properties through use, it is up to the relevant person to confirm that the product or service originates from a specific company and must use the trademark as a trademark. In order to satisfy the latter case [in this case, a central issue], it is considered that the registered mark is not necessarily used independently.
Section 3[3] of the Directive has no restrictions in this respect and only covers the trademarks that have been used. Expression ' Use of a trademark as a trademark' was previously understood to refer only to the purpose of a trademark used to identify a product or service from a specific business. This identification, in order to obtain different characters, may be the result of using the components as part of the registered trademark and using the separate trademark with the registered trademark.
In both cases, due to such use, the relevant class of people actually believe that the product or service, especially the product or service identified by the applied trademark, is sufficient from a particular business.
Comment:
The main points that the decision that the trademark owner should know are:
o When used as part of another phrase or trademark, the trademark can acquire the necessary characteristics;
o The uniqueness must be assessed on the basis of the relevant goods and services and the assumed expectations of the well-informed consumers;
o Article 3[3] has no restrictions on the unique nature of any mark; and
o It is possible to achieve this unique property by using the phrase "HAVE A BREAK" as part of a larger mark. There is a breakthrough... there is a suit KAT.
The decision must be applied to the facts by the Court of Appeal. However, the European Court of Justice has made it clear that there is no need to use the trademark independently so that it is sufficiently unique to be registered as a trademark.
This decision completely changed the way in which the English courts deal with the uniqueness of the mark together. The method of the English courts is problematic for owners of non-traditional trademarks, such as symbols, shapes or colors that are rarely used alone. This combination will now be considered when judging whether any single element is registrable. This decision will apply to all EU countries.
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©RT COOPERS, 2005. This briefing does not provide a comprehensive or complete statement of the law on the issue in question, nor does it provide legal advice. It is only used to highlight general issues. Expert legal advice should always be provided for specific situations.
Orignal From: Intellectual Property - Trademarks - Featured Nature Testing - Landmark Decisions
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