Everything is NOT Awesome. A Lego Brick as a 3D Trade Mark

This paper discusses the reasoning of the protection of the flagship Lego products – the rectangular brick and the Lego minifigure as the trade marks from the perspective of European Union trade mark system and the Polish legal system. The main part is dedicated to the most important absolute grounds for refusal of trade mark registration, i. e. the distinctive character and the shape of goods necessary to obtain a technical result. However, it is crucial to understand the history, especially the history of legal protection, of both the brick and the minifigure. In the end, the Lego case allows to draw general conclusions about the overlapping of different intellectual property protection regimes and the relation of public domain to the trade mark registration. All these considerations are presented with the use of both comparative and doctrinal method.

14. Trade marks 2: definition of a registrable trade mark, absolute grounds for refusal and invalidation, and revocation

This chapter examines the definition of a registrable trade mark, absolute grounds for refusal or invalidation of a registered trade mark, the extent to which objections can be overcome through proof of distinctiveness acquired through use and the rules on revocation of a registered trade mark, both at national and EU levels. It examines these issues looking at many different kinds of trade mark, from traditional work marks and logos to so-called ‘non-conventional’ trade marks such as three-dimensional product shapes, sounds, smells, colours, and ‘position’ marks. The chapter reflects evolving legislation at an EU level (particularly the EU’s 2015 trade mark reform package), a rich base of case law, and links to the the theroetical debates seen in Chapter 13.

14. Registration and Use of the Trade Mark

This chapter discusses the acquisition of a trade mark. EU law distinguishes between the product or service to which the trade mark is applied on the one hand, and the trade mark on the other hand. One needs first of all to be in the presence of a sign, something that can be applied to the product or service and that can convey information. The cornerstone of the matter is that the sign should be distinctive as to origin. The main objective of trade mark law is to enable rights holders and consumers to distinguish the source of identical goods or services with a different origin. The remainder of the chapter covers unregistrable marks, absolute grounds for refusal of registration, relative grounds for refusal of registration, applying for a Community trade mark, and uses of trade marks.

11. Absolute grounds for refusal of registration

This chapter examines the absolute grounds for refusal of trade marks from registrability, which are found in s. 3 of the Trade Marks Act 1994 (TMA). The chapter lists objections to registrability based on the mark's own characteristics. To be refused registration, the mark should possess some innate quality which prevents registration. For instance, the mark applied for may be descriptive, generic, or it may lack distinctiveness. Marks that go against public policy or marks that are immoral will also be refused protection. The TMA also contains a number of negative objections in contrast to its predecessor, which required an applicant to show that the mark applied for was positively entitled to registration.

10. Registration of a ‘sign’

This chapter discusses the registration of trade marks. Unlike passing off protection that is not subject to formalities, trade marks ought to be registered in order to receive legal protection. Whether a trade mark is capable of registration depends on three requirements. First, whether the subject matter of the application satisfies the definition of ‘trade mark’ in s. 1 of the Trade Marks Act 1994; second, whether there are any objections to the application under the absolute grounds for refusal in s. 3; and third, whether there are any prior rights which could prevent registration under the relative grounds for refusal in s. 5. The chapter then presents an outline of the registration procedure. In essence, the procedure can be broken down into six steps: application and filing of Form TM3; examination; search and notification of prior rights; publication and notification to owner(s) of prior rights; opposition; and registration.

Intellectual Property Law

Intellectual Property Law aims to provide a comprehensive text on all aspects of this field. The first part looks at the complexities of copyright law, from authorship and first ownership to infringements and defences. It also covers moral and related rights. The second part looks exclusively at passing off. Then the text turns to trade marks. It examines the absolute grounds for refusal and the relative grounds for refusal of registration. It looks in detail at infringement and loss of registration of trade marks, and this part of the book ends with an examination of defences to trade mark infringement. The next part is about patents. After an introduction to patents the text analyses ownership and infringement of patents. The text then moves on to confidential information, in other words, trade secrets. Designs are examined after this. The final few chapters are about the exploitation and enforcement of intellectual property. The text concludes.

37. Absolute grounds for refusal

This chapter examines the ‘absolute’ grounds for refusing to register a trade mark as set out in section 3 of the Trade Marks Act 1994, Article 3 of the Trade Marks Directive, and Article 7 of the European Union Trade Mark Regulation (EUTMR). It first looks at the reasons for denying an application for trade mark registration before analysing the absolute grounds for refusal, which can be grouped into three general categories: whether the sign falls within the statutory definition of a trade mark found in sections 1(1) and 3(1)(a) and (2) of the Trade Marks Act 1994; whether trade marks are non-distinctive, descriptive, and generic; and whether trade marks are contrary to public policy or morality, likely to deceive the public, prohibited by law, or if the application was made in bad faith. Provisions for specially protected emblems are also considered.

6. Trade Marks I

All books in this flagship series contain carefully selected substantial extracts from key cases, legislation, and academic debate, providing able students with a stand-alone resource. This chapter examines the main justifications for the protection of registered trade marks. It considers the substantive law relating to the subject matter of registration as set out in the Trade Marks Directive (2016) and its predecessor. It looks at which signs will be registered as well as the absolute grounds for refusal of registration and at the Court of Justice of the European Union and domestic case law interpreting these grounds. The practicalities of the trade mark registration process both domestically and internationally are also considered. The chapter then looks at the relationship between registered marks and the public domain.

Product and process functionality in shapes necessary to obtain a technical result under EU Trademark Law

Product and process functionality in shapes necessary to obtain a technical result under EU Trademark Law European Union law permits to register the shape of goods as a trademark, providing an ad hoc set of rules governing this particular category of signs . Both EU Trademark Directive and EU Trademark Regulation (with identical wording) codify three special absolute grounds for refusal or invalidity. These concern “signs which consist exclusively of: (i) the shape which result from the nature of the goods themselves; (ii) the shape of goods which is necessary to obtain a technical result; (iii) the shape which gives substantial value to the goods”

Loss of RightsRequirement of Use, Conversion to Generic Indication

The rights arising from trade mark registration may be lost. First, when registration is not renewed, the registration will be deleted from the register. Second, a registered trade mark is liable to be revoked if it has not been put to genuine use for more than five years. Third, a trade mark is subject to revocation when it has become the generic indication, the ‘name’ of the product. Fourth, a mark is also subject to revocation when it has become misleading. The last two revocation grounds are the mirror image of the absolute grounds for refusal, the difference being that revocation is available when the mark, although properly registered initially, has become generic or misleading at a later time. The first ground for revocation, absence of genuine use, has no counterpart at the time of filing or registration. Rather, the legislation provides trade mark proprietors with a period of five years following registration after which revocation is possible.