Trademark Law Lecture 3 PDF

TRADEMARK LAW Elsa Mimoun IÉSEG School of Management Campus Paris : Parvis de la Défense 92800 Puteaux [email protected] IÉSEG - School of Management, Campus de Paris TRADEMAR...

TRADEMARK LAW Elsa Mimoun IÉSEG School of Management Campus Paris : Parvis de la Défense 92800 Puteaux [email protected] IÉSEG - School of Management, Campus de Paris TRADEMARK LAW LECTURE 3 IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? ! Conditions of validity of a trademark Introduction I. Absolute grounds for refusal II. Relative grounds for refusal (a sign that is available) IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? ! Conditions of validity of a trademark Introduction I. Absolute grounds for refusal II. Rela8ve grounds for refusal (a sign that is available) IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal ! Not a trademark Trademark definition: “A trade mark may consist of any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of: (a) distinguishing the goods or services of one undertaking from those of other undertakings; and (b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.” Article 3 TM Directive IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 1. A sign a. Any signs b. But not a concept 2. Sign capable of representation 3. Sign capable of distinguishing goods and services coming from one undertaking a. Distinctiveness i. Definition ii. Excluded signs iii. Distinctiveness can be acquired by use or lost without b. Deceptive signs c. Signs contrary to public policy or acceptable principle of morality ,and flags IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 1. A sign a. Any signs b. But not a concept IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 1. A sign a. Any signs words mark figurative mark shape mark position mark pattern mark colour mark sound mark multimedia mark motion marks layout of a retail store hologram IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 1. A sign a. ny signs b. But not a concept CJEU, 25 January 2007, Dyson, C-321/03 Dyson’s application was formalised in the application form by the following representations and descriptions: ‘The mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation’. ! CJUE : it is not a sign in the meaning of article 2 of the TM Directive IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation Article 3 of the TM Directive 2015/2436 “A trade mark may consist of any signs (…) provided that such signs are capable of (…) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.” IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation OLD VE RSION Ar8cle 2 of the TM Direc8ve 2008/95 “A trade mark may consist of any signs capable of being rep resented graphically, parAcularly words, including personal names, designs, leBers, numerals, the shape of goods or of their packaging, provided that such signs are capable of disAn guishing the goods or services of one undertaking from those of other undertakings.” IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation CJEU, 12 December 2002, Sieckmann, C-273/00 In order to register a trademark, the applicant should send the registrar a representation of the sign requested that should be : - clear - precise, - self-contained - easily accessible, - intelligible, - durable - objective IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation word figurative pattern mark shape mark motion marks ! For each kind of trademark there will be colour mark a valid way to represent the sign position mark sound mark layout of a retail store smell/olfactory mark ? taste mark ? IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation pattern mark The pattern marks have to be represented by submitting a reproduction showing the pattern of repetition. Descriptions detailing how its elements are repeated regularly are allowed for this type of mark. IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation shape mark The representation of shape marks requires the submission of: either a graphic reproduction of the shape, including computer-generated imaging; or a photographic reproduction. The graphic or photographic reproduction may contain different views. Where the representation is not provided electronically, it may contain up to six different views. IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation motion marks Motion marks must be represented by submitting one of the following. A video file showing the movement or change of position. A series of still sequential images showing the movement; the images may be numbered or accompanied by a description explaining the sequence IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation colour mark CJEU, 6 May 2003, Libertel, C-104/01 « A colour per se, not spatially delimited, may, in respect of certain goods and services, have a distinctive character within the meaning of Article 3(1)(b) and Article 3(3) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, provided that, inter alia, it may be represented graphically in a way that is clear, precise, self-contained, easily accessible, intelligible, durable and objective. The latter condition cannot be satisfied merely by reproducing on paper the colour in question, but may be satisfied by designating that colour using an internationally recognised identification code. » IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation colour mark Black & Decker Trade marks consisting exclusively of a single colour (without contours) require: a reproduction of the colour (mandatory); a reference to a generally recognised colour code (mandatory). Trade marks consisting exclusively of a combination of colours (without contours) require: a reproduction of the colour combination that shows the systematic arrangement of the colour combination in a uniform and predetermined manner (mandatory); a reference to a generally recognised colour code (mandatory); a description detailing the systematic arrangement of the colours (optional). IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation position mark The representation should contain : - An appropriate identification of the position of the mark and its size or proportion with respect to the relevant goods (mandatory). - A visual disclaimer of those elements that are not intended to form part of the subject-matter of the registration (mandatory). The EUTMIR gives preference to broken or dotted lines. - A description explaining how the sign is affixed to the goods (optional). The representation should by itself clearly define the position of the mark as well as its size or proportion with respect to the goods. Therefore, the description may only serve explanatory purposes; it cannot serve to substitute visual disclaimers. IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation sound mark CJEU, 27 November 2003, Shield Mark BV, C-283/01 14 trademark requests for registraVon : - 4 of those trade marks consist of a musical stave with the first nine notes of the musical composi8on 'Für Elise', by Ludwig van Beethoven. 2 of them also state: 'Sound mark. The trade mark consists of the representa8on of the melody formed by the notes (graphically) transcribed on the stave', plus, in one case, 'played on a piano’. - 4 other trade marks consist of the first nine notes of 'Für Elise'. Two of them also state: 'Sound mark. The trade mark consists of the melody described', plus, in one case, 'played on a piano’. - 3 Three further marks consist of the sequence of musical notes Έ, D#, E, D#, E, B, D, C, A'. Two of them also state: 'Sound mark. The trade mark consists of the reproduc8on of the melody formed by the sequence of notes as described', plus, in one case, 'played on a piano’. - 2 of the trade marks registered by Shield Mark consist of the denomina8on 'Kukelekuuuuu' (an onomatopoeia sugges8ng, in Dutch, a cockcrow). One of them states: 'Sound mark, the trade mark consists of an onomatopoeia imita8ng a cockcrow’. - Last, one mark consists of a 'cockcrow' and also states: 'Sound mark, the trade mark consists of the cockcrow as described'. IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation sound mark CJEU, 27 November 2003, Shield Mark BV, C-283/01 « Article 2 of Directive 89/104 must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that its representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective. In the case of a sound sign, those requirements are not satisfied when the sign is represented graphically by means of a description using the written language, such as an indication that the sign consists of the notes going to make up a musical work, or the indication that it is the cry of an animal, or by means of a simple onomatopoeia, without more, or by means of a sequence of musical notes, without more. On the other hand, those requirements are satisfied where the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals. » IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation => To sum up : sound mark Sound marks can only be an audio file reproducing the sound or an accurate representation of the sound in musical notation ≠ onomatopoeia, musical notes alone (such as E, D#, E, D#, E, B, D, C, A ) or representation of a sonogram IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation smell/olfactory mark ? TEU, 27 October 2005, Smell of ripe strawberries, T-305/04 IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation smell/olfactory mark ? taste mark ? It is currently not possible to represent smells in compliance with Article 4 EUTMR, as the subject matter of protection cannot be determined with clarity and precision with generally available technology. ≠ graphic representation and/or description, chemical formula … IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation They need your help …. They come for your advice as to whether they can register the following signs as trademarks IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation Georges would like to the register the following sign: The mooing of a cow IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation Linda would like to register the register the following sign: The colour pink IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation Linda would like to send register the register the following sign: Orange strip covering the toe area of a sock IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 2. Signs capable of representation Bill would like to register the register the following sign: The shape of an egg (for cosmetics) as exemplified here IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking a. Distinctiveness i. Definition Distinctiveness of a trade mark within the meaning of Article 7(1)(b) EUTMR means that the sign serves to identify the product and/or services in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from those of other undertakings ! "Principal of speciality” : A trademark is only protected for the products and services for which it is registered. => the chosen sign needs to be distinctive towards these products and services. IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking a. Distinctiveness ii. Excluded signs Article 4 e) TMD: “1. The following shall not be registered or, if registered, shall be liable to be declared invalid: (…) (b) trade marks which are devoid of any distinctive character; (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services; (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona Cide and established practices of the trade” IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking a. Distinctiveness ii. Excluded signs : descriptive or commonly used A sign is not distinctive towards goods and services if it: - Is a designation for the goods or services (generic) ex: bags to sell bags - refers to one of the characteristics of the goods or services (descriptive) ex: leather or fabric to sell leather bags - is commonly used to designated the goods or services ex: pack (backpack) to sell bags IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking a. Distinctiveness ii. Excluded signs : descriptive or commonly used CJEU, July 10, 2014, Apple, C-421/13 Compared to Cour de Cassation, Chambre commerciale, du 11 janvier 2000, 97-19.605 CJEU, 21 January 2010, Vorsprung durch Technik, C-398/08 - Slogans CJEU, 24 May 2012, Lindt, C-98/11 P - Shape TEU, 7 July 2021, Ardagh Metal Beverage Holdings / EUIPO, T-668/19 – Sound IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking a. Distinctiveness ii. Excluded signs : descriptive or commonly used CJEU, July 10, 2014, Apple, C-421/13 Compared to Cour de Cassation, Chambre commerciale, du 11 janvier 2000, 97-19.605 Apple Store vs Sephora store IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking a. Distinctiveness ii. Excluded signs : descriptive or commonly used CJEU, 21 January 2010, Vorsprung durch Technik, C-398/08 - Slogans Audi requested the sign : « Vorsprung durch Technik » meaning « Advantage through technology » CJUE: « in so far as those marks are not descrip+ve for the purposes of Ar0cle 7(1)(c) of Regula0on No 40/94, they can express an objec0ve message, even a simple one, and s0ll be capable of indica0ng to the consumer the commercial origin of the goods or services in ques0on. That can be the posi0on, in par0cular, where those marks are not merely an ordinary adver0sing message, but possess a certain originality or resonance, requiring at least some interpreta0on by the relevant public, or seIng off a cogni0ve process in the minds of that public. Even if it were to be supposed that the slogan ‘Vorsprung durch Technik’ conveys an objec+ve message to the effect that technological superiority enables the manufacture and supply of beOer goods and services, that fact would not support the conclusion that the mark applied for is devoid of any inherently dis0nc0ve character. However simple such a message may be, it cannot be categorised as ordinary to the point of excluding, from the outset and without any further analysis, the possibility that that mark is capable of indica+ng to the consumer the commercial origin of the goods or services in ques+on. In that context, it should be pointed out that that message does not follow obviously from the slogan in ques0on. As Audi observed, the combina0on of words ‘Vorsprung durch Technik’ (meaning, inter alia, advance or advantage through technology) suggests, at first glance, only a causal link and accordingly requires a measure of interpreta+on on the part of the public. Furthermore, that slogan exhibits a certain originality and resonance which makes it easy to remember. Lastly, inasmuch as it is a widely known slogan which has been used by Audi for many years, it cannot be excluded that the fact that members of the relevant public are used to establishing the link between that slogan and the motor vehicles manufactured by that company also makes it easier for that public to iden+fy the commercial origin of the goods or services covered. » => A slogan can be a valid trademark ! IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking a. Distinctiveness ii. Excluded signs : descriptive or commonly used CJEU, 24 May 2012, Lindt, C-98/11 P « Only a mark which departs significantly from the norm or customs of the industry and thereby fulfils its essential function of indicating origin is not devoid of any distinctive character for the purposes of Article 7(1)(b) of Regulation No 40/94 ». IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking a. Distinctiveness ii. Excluded signs : descriptive or commonly used TEU, 7 July 2021, Ardagh Metal Beverage Holdings / EUIPO, T-668/19 – Sound Ardagh Group is a global supplier of sustainable, value added, infinitely recyclable, metal and glass packaging for brand owners around the world. They tried to register the noise of a can opening. « after recalling that the criteria for assessing the distinctive character of sound marks were not different from those applicable to other categories of marks, the Board of Appeal stated that the general public was not necessarily used to considering a its as an indication of the commercial origin of unopened beverage packaging and packaged beverages. It added that, in order to be registered as a trademark, a sound had to have a certain significance or ability to be recognized, so that it could indicate to consumers the commercial origin of the goods or services in question. Finally, the Board of Appeal held that the mark applied for consisted of a sound inherent in the use of the goods in question, so that the relevant public would perceive that mark as a functional element and an indication of the qualities of the goods in question and not as an indication of their commercial origin. It concluded that the mark applied for was devoid of any distinctive character. » IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking a. Distinctiveness ii. Excluded signs : shape or other characteristics… Article 4 e) TMD: “1. The following shall not be registered or, if registered, shall be liable to be declared invalid: (…) (e) signs which consist exclusively of: (i) the shape, or another characteristic, which results from the nature of the goods themselves; (ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result; (iii) the shape, or another characteristic, which gives substantial value to the goods; » ! Why ? IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking a. Distinctiveness ii. Excluded signs : shape or other characteristics… Article 4 e) TMD: “1. The following shall not be registered or, if registered, shall be liable to be declared invalid: (…) (e) signs which consist exclusively of: (i) the shape, or another characteristic, which results from the nature of the goods themselves; (ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result; (iii) the shape, or another characteristic, which gives substantial value to the goods; » ! Why ? The interest underlying Article 4(1)(e) TMD is to prevent trade mark law granting an undertaking a monopoly - on technical solutions or functional characteristics of a product that should otherwise be protected by a patent for a limited period of time (4.e.(ii)) - on esthetic characteristics of a product that should otherwise be protected by a design for a limited period of time (4.e.(iii)) IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking a. Distinctiveness ii. Excluded signs : shape or other characteristics… CJEU, Lego Juris, 14 September 2010, C-48/09 P - « the position of an undertaking which has developed a technical solution cannot be protected – with regard to competitors placing on the market slavish copies of the product shape incorporating exactly the same solution – by conferring a monopoly on that undertaking through registering as a trade mark the three-dimensional sign consisting of that shape, but can, where appropriate, be examined in the light of rules on unfair competition. » - « The technical functionality of the characteristics of a shape may be assessed, inter alia, by taking account of the documents relating to previous patents describing the functional elements of the shape concerned » - « the existence of other shapes which could achieve the same technical result is not, (…) such as to exclude the ground for refusal of registration » => The Lego trademark was not valid ! IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking a. Distinctiveness ii. Excluded signs : shape or other characteristics… CJEU, Louboutin, 12 June 2018, C-163/16 “the question arises as to whether the fact that a particular colour is applied to a specific part of the product concerned results in the sign at issue consisting of a shape within the meaning of Article 3(1)(e)(iii) of Directive 2008/95. 24 In that regard, it must be noted that, while it is true that the shape of the product or of a part of the product plays a role in creating an outline for the colour, it cannot, however, be held that a sign consists of that shape in the case where the registration of the mark did not seek to protect that shape but sought solely to protect the application of a colour to a specific part of that product. 25 As has been observed by the German, French and United Kingdom Governments, as well as by the Commission, the mark at issue does not relate to a specific shape of sole for high-heeled shoes since the description of that mark explicitly states that the contour of the shoe does not form part of the mark and is intended purely to show the positioning of the red colour covered by the registration. 26 In any event, a sign, such as that at issue in the main proceedings, cannot be regarded as consisting ‘exclusively’ of a shape, where, as in the present instance, the main element of that sign is a specific colour designated by an internationally recognised identification code.” => The Louboutin trademark was valid ! IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking iii. Distinctiveness can be acquired or lost A trademark that would be generic, descriptive or commonly used to designated the goods or services covered by the trademark can still be registered provided that it ‘has become distinctive in relation to the goods or services for which registration is requested in consequence of the use which has been made of it’ cf Lindt case The acquired distinctiveness must be assessed in relation assessed in relation to the perception of the average consumer for the category of goods or services in question. => Use of surveys or polls, market share advertising and turnover IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking b. Deceptive signs The marks that are of such a nature as to deceive the public, for instance, as to the nature, quality or geographical origin of the goods or services, will not be registered " Hence : RegistraPon of a trademark will be refused when it exits an actual deceit or a sufficiently serious risk that the consumer will be deceived An objecPon should, therefore, be raised when the list of goods/services is worded in such a way that a non-decep=ve use of the trade mark is not guaranteed and there is a sufficiently serious risk that the consumer will be deceived. It is assumed that the average consumer is reasonably a?en=ve and should not be regarded as parPcularly vulnerable to decepPon When assessing if a given trade mark is decepPve or not, account should be taken of the characteris=cs of the goods and services at issue, of market reality and of consumers’ habits and percep=ons. IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking b. Deceptive signs Ex: The application for this trademark was refused IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking c. Signs contrary to public policy or acceptable principle of morality, and flags The following trademarks cannot be registered : 1 - trade marks which are contrary to public policy or to accepted principles of morality 2 - trade marks which include flags, (state) emblems, badges, armorial bearings or escutcheons which are of particular public interest, unless the consent of the competent authority to their registration has been given IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking c. Signs contrary to public policy or acceptable principle of morality, and ?lags 1 - trade marks which are contrary to public policy or to accepted principles of morality Hence, for example, the following trademark registration was rejected : IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking c. Signs contrary to public policy or acceptable principle of morality, and flags 1 - trade marks which are contrary to public policy or to accepted principles of morality Rem : it will depend on the products and services concerned, affecting the perception of the public targeted: Rejected ≠ Accepted IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal 3. Sign capable of distinguishing goods and services coming from one undertaking c. Signs contrary to public policy or acceptable principle of morality, and flags The following trademarks can be registered : 2 - trade marks which include flags, (state) emblems, badges, armorial bearings or escutcheons which are of particular public interest, unless the consent of the competent authority to their registration has been given Hence the following trademark application was rejected: IÉSEG - School of Management, Campus de Paris TRADEMARK LAW Part II. What can be protected as a trademark ? I. Absolute grounds for refusal Case study : Sarah runs a company that sells cosmeIcs. She offers a wide range of products including the tradiIonal perfumery products, cosmeIc products for body and face care and make up. She is considering several signs she could register as a trademark: 1- The words “Beauty Cares” 8- The logo: 2- The word ”Beautiful” 3- The colour white 4- Bubbles in motion 5- The meowing of a cat 6- The word “Cannabis” 7- The word « Milky care» Please advice her as to the intrinsic validity of these signs as trademarks for cosmeIcs (are there any absolute grounds for refusal?). What kind of representaIon would she need to submit for each of them? What would make the strongest trademark? IÉSEG - School of Management, Campus de Paris  BUSINESS LAW Any questions ? IÉSEG - School of Management, Campus de Paris