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21 June 2009

A trade mark under section 1 of the Trade Marks Act 1994 (TMA94) may be any sign capable of being represented graphically, which is also capable of distinguishing goods or services of one undertaking from those of other undertakings.

More specifically s1(1) TMA94 says that the word signs includes words (including personal names), designs, letters, numerals, or the shape of goods or their packaging.

The registerability of shapes introduces a possibility of double-registration under the Copyright, Designs and Patents Act 1988 (CDPA88) section 265, Registered Designs. In 2004 the European Court of Justice (ECJ) ruled on the registerability of shapes as Community Trade Marks, ruling on nine appeals on the refusal of a detergent and dishwasher tablet shape trade mark.

The court held that under Article 7 (1)(b) (of the Community Trade Marks Regulations, which corresponds to s3(1)(b) TMA94) the criteria for distinctiveness is to be assessed on a stricter test than that required for design registration. The shape must have the distinctive qualities so as to identify to the average consumer that the product originates from a particular company, thus distinguishing it from its competitors.

The ECJ also made mention of the judgment of the Court of First Instance, which stated:

It is sufficient that the mark enables members of the public concerned to distinguish the product or service that it designates from those which have a different trade or origin.

This therefore is part of what distinguishes the protection afforded a Registered Design under the CDPA88 from that afforded to a design under TMA94. A design which is used as a trade mark must enable the public to mentally link the design to the origin, whereas a design protected under the CDPA88 is protected in itself, so long as it is new and of distinctive character.

Tim Mount is a trainee solicitor at Lawdit, and can be contacted on tim.mount@lawdit.co.uk


About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.



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Article Published/Sorted/Amended on Scopulus 2009-07-05 18:13:49 in Legal Articles

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