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Edward Smith, ROCKBASS, LOKTHREAD, and EUROPIG, Journal of Intellectual Property Law & Practice, Volume 2, Issue 12, December 2007, Pages 805–807, https://doi.org/10.1093/jiplp/jpm188
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Abstract
This article considers Article 7(1)(c) of Council Regulation (EC) No. 40/94 of 20 December 1993 and Section 3(1)(c) of the Trade Marks Act 1994. Both equivalent provisions cover absolute grounds objections to trade mark registration based upon descriptiveness.
This article highlights three recent cases, which have been referred both to the European Court of Justice and to the Court of First Instance on appeal from decisions of the Office for Harmonization in the Internal Market Trade Marks and Designs (OHIM). Using the three examples, the author sets out the practical steps, which would be undertaken in the UK-IPO to assess whether an application for registration is descriptive of a characteristic of the goods or services for which application is sought. The author then sets out various propositions of law which must also be applied in relation to a descriptiveness objection. In particular, the author considers guidance in relation to neologisms comprising two or more descriptive terms. The author believes that the displacement of practical assessment by rigid rule-based legal proposition is undesirable. Within a partially harmonized system, the author argues for more weight to be given to registration within the country of ‘linguistic origin’, and for authorities to pay more heed to internet-based evidence.
The author explains the process of examination that would be undertaken in the UK-IPO and the reference material which would, in particular, be used in that assessment.
