Acceptable specimen for downloadable music files






















It is important to remember that the Canary Wharf decision explained considerations for services only. In relation to goods, it should not automatically be assumed that most towns and cities are likely to produce them.

Whilst every town, regardless of size, would likely offer library services, not every town would produce tea bags, and so the consideration of reputation becomes more prevalent. Each case will be assessed on its own merits. The examples above have been selected in order to illustrate the more fundamental principles for assessing geographical-type trade marks.

In addition to the scenarios set out above, the following paragraphs provide tailored guidance in relation to some specific types of geographical trade marks. Nevertheless, it should also be borne in mind that towns, cities and regions located in countries outside of the UK are unlikely to be as familiar to UK consumers as those which are within the UK.

In practice, therefore, it may be easier to register the name of a small or medium-size location in say Poland, than it would be to register the name of a comparably-sized location in the UK for the same product. Again, each case will be assessed on its own facts. Where an application seeks to protect the name of a small geographical area with no apparent reputation for any particular product, there may be a case for raising an objection where the services claimed are of a local nature.

In each case, notwithstanding the relatively small size of the geographical area, the lack of a particular reputation, and the potential for the place-names to be unknown to those UK consumers based outside of either Dorset or Gloucestershire, there may still be a case for objection under section 3 1 c on the basis that such terms should be kept free for others to use - most notably, other dentists and bus service providers in Christchurch and Lydney.

When considering the question of locally-provided services in the context of Canary Wharf, Mr Purvis QC stated the following at paragraph The names of small towns and villages would cover many place names which are unknown to the majority of potential consumers of the services in question in the UK.

On the other hand, it could be said… that the public policy underlying the restriction on registration of geographical terms is not served by allowing monopolies to be obtained over the names of small towns for the kind of services already being provided by numerous traders in those towns.

The names of places which are likely to be the source of natural produce are unlikely to be registrable as trade marks for such goods even if the place identified by the mark has no specific reputation.

A place will have to be obscure before its name can be registered as a trade mark for unprocessed products of the kind frequently sold from roadsides and farm shops, such as fruit and vegetables, flowers, potatoes, water, eggs and milk. This may not be the case in respect of processed foodstuffs, which are less likely to be associated with local producers and providers.

In the case of such products, the names of a larger, more populous areas may be objectionable if the examiner considers them likely to be perceived as a reference to where the foodstuff was processed.

A number of applications seeking to register postal address as trade marks have been made in recent years. This may reflect the growing trend to promote and market new commercial and residential developments by reference to postal address in which they are found. In most cases the sign intended for protection has commonly consisted of only part of the full postal address i. In such cases, and notwithstanding any intentions of the part of the applicant to use the sign as a trade mark as opposed to a mere address, an objection will be taken wherever it is found that the sign does exist as an actual postal location.

Where the applicant contests that such a sign has been used as a trade mark as opposed to a simple address , then they may use the proviso to section 3 1 , which allows such objections to be overcome where it can be demonstrated that the sign has acquired distinctive character through the use made of it. The objection will apply regardless of context. When considering whether a trade mark, has any distinctive character, one must consider whether the sign, as a whole, will identify the trade source of the goods or services to the average consumer.

Consideration will be given to the impact of the configuration or presentation, the extent of the descriptiveness of the word element, and the interplay between the two.

The distinctive element must also be of a sufficient size in the mark as a whole to be noticeable to the average consumer. The distinctive element must be visible and legible as a matter of first impression. The stylised font used in the above example is reasonably generic and does not imbue the mark with a trade mark character. Where the application is for a shape and includes a distinctive word or figurative element, the mark will generally be acceptable. This is because the mark cannot be said to consist exclusively of a sign which may serve in trade to designate the kind of goods, and cannot be said to be devoid of any distinctive character.

Although the word elements are descriptive when considered in their own right, the unusual presentation in each of these marks i. In contrast, the following marks which also consist of descriptive words combined with an additional figurative element are open to objection on the basis that their additional elements are either imperceptible in normal use, or they reinforce the descriptive message of the words.

Green crosses on a white background are generic for pharmacy and medical goods and services. White crosses on green backgrounds are generic for first aid goods and services. Such devices are not specifically covered by the Geneva Convention see Red Crosses , but would be objectionable under section 3 1 b.

They would be considered to be non-distinctive if used alone for goods and services in those fields. Use in combination with additional distinctive elements, however, would not face an objection. Holograms can operate as trade marks provided they are capable of distinguishing the goods or services of one undertaking from those of other undertakings and can be represented via an MP4 file or a graphic or photographic reproduction.

The acceptability of holograms, like words or other types of trade marks, must depend upon whether it is, or has become, a distinctive sign; that is, whether the average consumer will perceive the moving image s as meaning that the goods or services are exclusively associated with one undertaking. Consideration should also be given to whether other economic operators are likely to need to use the same or similar image s in the ordinary course of their business. For example, a hologram of a teapot pouring tea into a cup will not be distinctive for e.

The International Civil Defence sign consists of an equilateral blue triangle completely surrounded by an orange background, as illustrated below:. Use of this symbol within the UK requires the consent of the Secretary of State for Defence under the provisions of section 6 1 of the Geneva Conventions Amendment Act As a result, trade mark applications which consist of or contain either the symbol or anything which so nearly resembles it to the point of being capable of being mistaken for the symbol, are open to objection under section 3 4 for all goods and services.

Figurative representations of labels are considered to be devoid of any distinctive character, and an objection under section 3 1 b will be appropriate in most cases. In certain cases, a composite label device may be found to be commonly used in trade e. The following mark would be open to objection under section 3 1 b as labels similar to the one depicted are commonly found on the necks of wine or beer bottles.

Images of landscapes for goods such as foodstuffs, especially pastoral scenes on milk and dairy products, mountain scenes on mineral water etc, are considered unacceptable because they are commonly used as mere decorative matter. An objection under section 3 1 b would be appropriate.

The following are given as examples:. Numerals such as 18 or 21 are commonly used on jewellery to denote milestone birthdays. Such non-trade mark use is unlikely to indicate the origin of the goods, and so an objection under section 3 1 b and or c would be appropriate.

In such cases an objection under section 3 1 c will be taken. This identifies that there does not need to be current use of an abbreviation in order for an objection to be raised, so long as the abbreviation represents the additional descriptive word combination.

Therefore where the mark consists of a letter and word combination and the letter sequence clearly and unambiguously represents the initial letter of each accompanying word in the mark, an objection under section 3 1 c will be raised.

In instances where the word element is not descriptive but is considered to be devoid of any distinctive character pursuant to section 3 1 b , the combination will be considered to be acceptable. Therefore the combination with the abbreviation SFR makes the mark acceptable as a whole. By their very nature, magazine titles tend to contain descriptive elements.

This is to enable the average consumer to know, more or less, the content of the magazine. Nevertheless, consumers are used to relying on them as indicators of commercial origin and so consequently they can function as trade marks. This established trade practice should be taken into consideration when assessing the descriptiveness of the mark in relation to the nature of the specified goods, whose relevant consumers, in the case the relevant readers, are so familiar with this practice that they see marks, which they would not acknowledge as such in other areas of trade, as normal.

Whilst consumers may be familiar with such trade practices, this does not mean that wholly descriptive terms intended for use in respect of magazines and closely related goods and services are always automatically acceptable. The most descriptive of terms will still be objectionable even where used on magazines. The mark would also be objectionable for the following goods and services as they are considered closely related to magazines:. Class 9: Electronic magazines downloadable.

Class Printed matter; books; printed publications. Class Publishing services; Non downloadable electronic magazines. This is because they are purely descriptive marks which consist essentially of the name of the subject matter as plainly as it can be plus the name of the publication type. MASTER is consequently much more likely to be meaningful in relation to services rather than to goods. Motion marks can function as indicators of trade origin provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings and are either graphically represented as below or held on digital files, ie namely MP4.

Both of these criteria must be considered when deciding whether or not to accept the mark. In the example shown below of a coin being dropped into a money box, considerable effort had been invested in ensuring that the representation was acceptable in accordance with all the Sieckmann criteria i. This criteria applies equally to digital files in respect of a motion mark. This application was filed for a wide variety of goods and services in classes 4, 9, 35, 37, 38 and 39, with the core services being related to the provision of gas and electricity.

In this example, the mark satisfies both criteria, namely that it is suitably represented and is distinctive for the goods and services applied for.

Simple animations are now used so extensively on websites and other digital media meaning that the consumer is less likely to perceive them as trade marks, than the more traditional word or figurative trade marks. Marks which consist of a number of descriptive elements are themselves descriptive if the combination creates a descriptive totality. However there may be instances where the combination and placement of descriptive elements creates a distinctive totality. For the purposes of determining whether the ground for refusal set out in section 3 1 c applies to such a mark, it is irrelevant whether or not there are synonyms capable of designating the same characteristics of the goods or services referred to in the application for registration.

This may apply even where the combination of descriptive parts creates a word or phrase which has not been seen before and is unlikely to be used by other traders. Therefore, that abbreviation, which is indistinguishable from the goods and services covered by the trade mark application, is not of a character which can guarantee the identity of the origin of the marked product or service to the consumer or end-user from the viewpoint of the relevant public.

Furthermore, the two graphic elements placed after the abbreviation BioID, namely a full stop. It follows that those graphic elements are not capable of fulfilling the essential function of a trade mark, […], in relation to the relevant goods and services. A multi-media mark is one that incorporates eg, motion and sound. These marks can operate as trade marks provided they are capable of distinguishing the goods or services of one undertaking from those of another.

The acceptability of multi-media marks, like words or other types of marks, must depend upon whether it is, or has become, a distinctive sign; that is, whether the average consumer will perceive the mark as a whole as meaning that the goods or services are exclusively associated with one undertaking.

Consideration should also be given to whether other economic operators are likely to need to use the same or similar media in the ordinary course of their business. The shelf is only likely to be personalised by the user after purchase, with their unique selection of books not be personalised by the producer of the furniture itself. For example, the following marks would all be objectionable:. However, if the other meaning is more dominant, then the mark is likely to be acceptable.

In respect of services and goods that are unlikely to be or incapable of being coloured computer software, for example such marks may be acceptable. Where a mark consists of the name of a place where natural springs are known to exist, a geographic objection under sections 3 1 b and c should be raised if the specification consists of goods such as bottled water for example.

Depending on the size of the geographical location, and other factors such as the extent of its exploitation by third parties, such an objection may be overcome if the applicant provides evidence to show that it owns exclusive rights to the spring. Therefore, newspaper titles may be accepted where they consist of geographic names combined with words commonly used in the trade e. However, care should be exercised where the totality describes the goods. Trade marks may consist of words in languages other than English.

Where marks contain Welsh or Gaelic words they will be treated in the same way as trade marks consisting of the equivalent English words for the purposes of section 3 1. Where marks contain words from languages other than those mentioned above the following will be considered.

However, the percentage of other European languages spoken in the UK is growing, with more than 3 million EU nationals living in the UK as of Whilst the majority of UK consumers cannot be assumed to be fluent in all or any of these languages, most of them will have an appreciation of some of their more common words.

In addition, such is the population size of EU nationals in the UK, consideration must be made of all European languages and their meanings in regards to potential objections. Consequently, these names are not registrable for wine and olive oil, respectively. The more closely a non-English descriptive word resembles its English equivalent, the more likely it is that its descriptive significance will be understood by the consumer.

Unlike for goods, services are less likely to be imported into the UK, so the UK average consumer is not accustomed to seeing such terms. Consequently, with certain exceptions, such as travel, transport and language services, non-English words may be registrable for some services even where the meaning of the words would be apparent to the relevant average UK consumer.

The approach in so far as the specialist consumer of services goes, however, is slightly different. A paellera is the large circular pan used for cooking paella. Although the average consumer is unlikely to be aware of this, a chef or kitchen worker in a Spanish restaurant would. From their perspective the term is purely descriptive, and because they are the relevant consumer, the mark is objectionable.

Where the goods or services are aimed at a specific consumer who is far more likely to understand the language of the mark rather than the average UK consumer as a whole, this should be taken into account in determining whether the mark is objectionable under section 3 1 c. If the same Arabic word was accompanied by a distinctive figurative element, however, the mark would no longer be considered objectionable.

The same applies to other minority languages. This is because the addition of a distinctive figurative element will carry the overall impression of the mark. Non-English words which have become generic in the trade for goods or services by customers or traders are excluded from registration under section 3 1 d.

Characters in script such as Chinese, Japanese, Arabic, or a non-Roman alphabet language are not assumed to be acceptable prima facie. They must be translated to find out their meaning. Under this consideration, it is important to bear in mind that specific goods are often included in more general terms used in specifications.

If, however, a mark is applied for with either Chinese, Arabic, Cyrillic alphabet etc. However, Greek letters are frequently used as symbols for electrical purposes, and so care must be taken when considering goods proper to class 9. Similarly, some Greek letters have significance in mathematics e. The European Union have adopted a reverse Greek letter epsilon to indicate aerosol dispensers which meet certain standards.

Caution will always be required where marks appear to have criminal connotations, e. For a mark to be considered objectionable it does not need to offend a significant proportion of UK consumers. It is sufficient that a mark which is likely to cause serious offence to a minority of consumers in the UK for it to be objectionable under section 3 3 a.

If a mark is merely distasteful, an objection under section 3 3 a is unlikely to be justified, whereas if it would cause outrage or would be likely to significantly undermine religious, family or social values, then an objection will be appropriate. The outrage must be amongst an identifiable section of the public.

A higher degree of outrage amongst a small section of the public will be sufficient to raise an objection, just as a lesser degree of outrage amongst a larger section of the public will also suffice. In order to make the assessment, the consideration must be objective, not subjective.

Objectivity means being neither out of date nor a trend setter; not setting some kind of moral standard but also not being insensitive to public opinion. There are a large number of different religious beliefs held and practised in the United Kingdom. Care should therefore be taken when assessing marks which consist of or contain elements with religious significance and which may provoke offence beyond mere distaste, or even outrage, if used to parody a religion or its values.

Where a sign has a very sacred status to members of a particular religion, its mere use as a commercial trade mark may itself be enough to cause outrage. An objection under section 3 3 a can also be appropriate when the mark consists or contains images which would be considered offensive.

For example, objections should be raised against explicit full frontal nudes and offensive scandalous back views. No objection should be raised to outline drawings of nude figures which are not explicit. Also the words are somewhat hidden as presented.

Consequently, there is no objection under section 3 1 c. Consequently, the mark would be objectionable under section 3 1 c. However, where the name of an association is commonplace, it will nevertheless face an objection, e.

In this instance, because one or more of these associations would exist in most towns and cities, such signs would not indicate the goods and services of any one particular association. A pattern mark type is a sign which consists exclusively of a set of regularly repeated elements. Such marks must be represented by submitting a reproduction showing the mark and a description detailing the nature of the regularly repeated elements.

Pattern marks may cover any kind of goods or services; however they are more commonly filed in relation to goods such as clothing, fabrics, furniture, tiles etc. Repeating patterns made up of geometric shapes or designs are commonly applied to the surface of such goods to make the goods attractive to the consumer. Although these marks may be presented in the form of a square or rectangle, they should none the less be assessed as if they covered the entire surface of the goods for which protection is sought.

Where the applicant claims protection for goods such as beverages, the assessment of the pattern should be made in respect of the packaging of such a product. In many cases, the average consumer would consider a pattern as no more than a decoration on the product itself, or the packaging. Such marks would be incapable of distinguishing the goods and would be open to objection under Section 3 1 b. The distinctive character of pattern marks must be assessed with regard to goods for which cover is sought.

In this instance such patterns depicted above are commonly applied to the surface of goods such as loudspeaker enclosures for decorative purposes, and are therefore not capable of guaranteeing the origin of the goods to the average consumer. For example. Non-proprietary names are generic names for specific substances in the fields of a veterinary substances b pesticides and c pharmaceuticals. Applications in class 5 which consist of a mark identical to or with minor variations on a protected sign in this category are open to objection under sections 3 1 b and d where the specification contains pharmaceutical substances, veterinary substances or pesticides.

Where the protected sign is used in combination with a distinctive mark or another distinctive element e. This is because the average consumer would only perceive the descriptive or non distinctive message being conveyed rather than any trade mark message.

Conversely, uncommon misspellings of words may be acceptable because the average consumer would perceive the difference between the trade mark and the descriptive or non distinctive word. As a rule, misspellings endow the sign with a sufficient degree of distinctive character when:. If the Registrar establishes that a trade mark consists of, or reproduces in its essential elements, an earlier registered plant variety denomination, an objection will be raised. In instances where a mark contains a registered Plant Varietal Name, along with a distinctive element, the application will not be considered to conflict with the registered PVN and no objection will be raised.

Signs which consist of a plant name which is not a registered PVN may be registered as trade marks unless research shows that the name is descriptive. In such instances, an objection will be raised under sections 3 1 b and c. Pub names can be registered as trade marks.

It follows that the most common and familiar pub names are unlikely to be seen as indicators of trade origin and therefore cannot be distinctive and an objection will also be taken under section 3 1 b. An objection will only be taken if it can be shown that there are many public houses with the same name.

The same logic applies to and takeaway names. If it can be shown that there are many takeaways using the same name, e. A trade mark shall not be registered if or to the extent that its use is prohibited in the United Kingdom by any enactment or rule of law or by any provision of EU law other than law relating to trade marks. Thus, unauthorised use of the above within the UK is prohibited and would be objectionable under section 3 4.

Where the mark contains or consists of an exact replica of the protected signs with no other matter, consent must be sought from the Ministry of Defence. If the mark contains or consists of a sign similar to a protected sign, or is applied for together with other matter, then consent must be sought from the Secretary of State, via the Intellectual Property Office.

Further, any image consisting of a white or silver cross with vertical and horizontal arms of the same length on a red background, i. Applications made in colours or colour combinations other than red but which contain the device of a cross with equal vertical and horizontal arms, or a crescent moon, or a lion and sun, may equally face an objection under Section 3 4 if they could be mistaken for the Red Cross or its equivalents.

The aforementioned symbols, shown in any colour which falls within the red spectrum, may face an objection if it is considered that they could be mistaken for, or seen as referring to, the Red Cross.

The further away the colour from the red spectrum however, the more likely the sign would not attract an objection under Section 3 4. The registration of any word or figurative mark which consists of or contains elements which correspond to any of the provisions set out above will face an objection.

Conventional representations of the Royal Arms are shown below:. The perception as to whether or not the mark in question contains the Royal Arms or a device likely to be mistaken for the Royal Arms ought to be taken from the perspective of the average consumer.

This is considered to mean the shield, motto, supporters and crest, both individually and separately. For example a mark containing a unicorn supporter with other distinctive elements which have no royal connection, would be open to an objection under sections 3 5 and 4 1. Some elements of Royal Arms are protected as separate elements in their own right, for example the three lions and the harp.

If a mark includes a device of the Royal Crown, or a closely resembling image, an objection is appropriate under sections 3 5 and 4 1 b. Conventional representations of the Royal Crown are shown below:.

In contrast, crowns similar to those shown below may be used for business purposes, without infringement of the Royal Crown. This is because they are not considered to be heraldic imitations of the protected crowns. If a mark includes a representation of one of the Royal Flags an objection is appropriate under sections 3 5 and 4 1 b. Marks containing representations of Her Majesty The Queen, or any member of the Royal Family, are open to objection under sections 3 5 and 4 1 c , unless the consent of The Queen or the relevant member of the Royal Family is provided.

This would include humorous images of members of the Royal family. By way of example, the image below is considered to be such an imitation and so would be subject to an objection under sections 3 5 and 4 1 c :. Trade marks which consist of or contain words, letters or devices which suggest Royal patronage may not be registered without the consent of The Queen or the relevant member of the Royal Family.

Objectionable words and letters will include the names of the Royal Family, their titles, their residences, variants thereof, in some case the word Royal itself, plus other words which might signify royal patronage or authorisation. Whilst official Royal titles will be more clearly recognisable, special care and consideration should be taken in relation to generic terms, such as Duke, Prince, Palace etc.

Objectionable devices will be those not otherwise protected under Section 4 1 a , b or c , but which are nevertheless considered to evoke Royal patronage or authorisation. Edoardo Mapelli Mozzi and Mr. Jack Brooksbank and Mr. Daniel Chatto Mr. Samuel Chatto Mr. The Registrar holds a list of Royal Residences as supplied by the Lord Chamberlain which, although not exhaustive, gives an indication of Royal places which will be objectionable.

Whilst the residences in the list above cannot be accepted, without consent, there have been exceptions. In that case the applicant had many years of use without any consumer being confused that the Royal family had, in some way, authorised the term.

Section 3 5 and 4 1 d relates to the use of any words in such a manner as to be likely to lead persons to think that the applicant has, or recently has had, Royal patronage or authorization. Historically, certain goods and services have been more likely to be associated with receiving Royal patronage than others.

However due to the evolving nature and public perception of the Royal family, it is possible that Royal patronage may also be inferred in respect of goods and services, not typically associated with Royal Patronage. Because occasions such as galas are frequently televised and attended by members of the Royal family, the Hearing Officer felt the sign was at least suggestive that Royal patronage exists. The Hearing Officer also maintained the objection against the type of goods considered ancillary to the gala, such as typical merchandising and souvenir items.

This decision highlights the importance of consumer perception. However, consideration of whether a sign is likely to lead persons to think that the applicant has Royal patronage or authorisation, must be assessed from the perception of the relevant consumer of the goods and services.

Devices which suggest Royal patronage would include a pictorial representation of a Royal residence as discussed above. The devices would also include an indication of Royal Warrant, i.

Because the portcullis and crown device is associated with the Houses of Parliament, who has exclusive use under licence or warrant, it is objectionable under section 4 1 d. Because the above device contains a Royal crown, an objection under section 4 1 b and 3 5 is also appropriate. Objections under these sections can only be overcome if the applicant obtains the consent of The Queen, or the family member concerned, through the Lord Chamberlain.

If consent is given this will usually include an agreement to the use and registration of the royal element as a trade mark and conditions may apply to the granting of consent.

It is important to recognise that the granting of a Royal Charter or Warrant does not normally amount to the granting of consent for the purposes of the Trade Mark Act. In the case of any labelling or packaging which implies that the product contained therein is Scotch Whisky or a Scotch Whisky-based mixer, section 6 of the Regulations makes it clear that such a product must be Scotch Whisky or contains Scotch Whisky.

In comparison to the conditions set out in section 6 of the Regulations, the provisions set out in section 10 are less restrictive and apply solely to those marks which make reference to five protected Scotch Whisky-producing localities and regions as listed in the statute.

Those localities and regions are as follows:. They will also need to comply with the PGI. Any mark that contains the words Scotch or Scotch Whisky e. Where a mark contains any of the five protected regions listed above and does not contain any direct reference to Scotch or Scotch whisky, in either the mark or the specification, then the mark is acceptable.

The following examples demonstrate how both section 3 3 b and 3 4 in respect of marks which are evocative of Scotland are treated:.

Class 30 Tea; coffee; sugar. Class 32 Carbonated drinks. Class 33 Alcoholic wines; whisky; whisky-based liqueurs; vodka. An acceptable re-worded specification would therefore read as follows:. Class 30 Sugar. The mark does not contain any of the terms listed in the Regulations, and deception would only occur in respect of those products associated with Scotland i.

In the case of goods for which Scotland has a reputation, such as knitwear, salmon, spring water, beef, biscuits etc. This would apply even to those marks which contain additional distinctive character. After placing your order by submitting your assignment instructions, make payments. Once payment has been made in full, your order will be assigned to the most qualified writer who majors in your subject.

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