• Join over 1.2 million students every month
  • Accelerate your learning by 29%
  • Unlimited access from just £6.99 per month

Essay question on the extent to which the Trade Marks Act 1994 has expanded the range of product attributes that could be registered as a trade mark

Extracts from this document...


Intellectual Property Michael Roberts Tutor Group: A Dr. Ilanah Simon Fhima 'The Trade Marks Act 1994 was intended to expand the range of product attributes that could be registered as a trade mark, but the extent to which it has achieved that goal is debatable' (Michael Spence, 2007). Do you agree with this statement? Illustrate your answer by reference to the case law on the registrability of non-traditional trade marks. Since the Trade Marks Act 1994 ("the legislation") was enacted to implement the Trade Marks Directive (Directive 89/104) ("the Directive"), the traditional notion that trade marks are limited to words and pictures has been eradicated. Recently, all kinds of product attributes have fallen under the scope of trade marks: some successfully, others not so successfully. The impact the legislation has had on the trade mark registration system is unquestionable, but the extent to which its goals have been fulfilled is certainly a matter of debate. I will now briefly outline the structure of the essay. Firstly, the main provisions of the Trade Marks Act 1994 will be set out, following which I will outline various types of unusual trade marks with reference to appropriate case law. After this I will evaluate the extent to which the legislation has achieved its goals. ...read more.


The mark must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. In the present case the smell was non-registrable, as the written chemical formula represented the chemical itself rather than the odour. The sample was not durable, and the written description was also insufficient. It seems that there has only been one successful odour registration since the legislation4, and it occurred before Sieckmann. It seems that in future the registration of a smell will be a very difficult prospect. The next major case concerned the registration of a colour as a trade mark. In Libertel Groep BV v Benelux-Merkenbureau the applicant wished to register the colour orange, along with the word 'orange'. The ECJ reiterated the Sieckmann criteria, under which a colour may be registered if it meets the requirements. A sample of the colour is insufficient at colour samples fade over time. However, the identification of a particular colour using an internationally recognised system (such as the pantone system) would apparently meet the Sieckmann criteria. This raises further issues, however, as there are only so many different shades which the human eye can distinguish, which would seem to defeat the point of the trade mark. If the ECJ only accepted shades which were visually distinguishable, this would severely limit the number of colours available to registration (the 'colour depletion theory'). ...read more.


To sum up the current position on unusual trade marks, smells and tastes appear to be very difficult to register, while the registration of colours as a trade mark seems perfectly feasible. The potential for registering sounds varies, depending on what the sound is. Music may be trade marked in the form of musical notation, but other sounds run into difficulties of graphic representation. So, it appears as though whilst the legislation has opened up the possibility for registration of a wider range of product attributes, many of the new applications have been refused by the ECJ. I would argue, therefore, that the legislation does succeed in expanding the range of registrable product attributes but perhaps not to any significant extent (though this may change in the future). I find the title question difficult to answer as it depends mainly on what the intention of the legislation actually is. There is a case for maintaining that the legislation's goal is simply to comply with the Directive, in which case it succeeds. The ECJ in making its decisions consulted the Directive, which was also used by Parliament in creating the legislation. So perhaps one could argue that the failure to significantly expand the range of product attributes is not a fault of the Trade Marks Act 1994 but rather a deficiency in the Trade Marks Directive. Word Count: 1,631 (inc. ...read more.

The above preview is unformatted text

This student written piece of work is one of many that can be found in our University Degree Intellectual Property Law section.

Found what you're looking for?

  • Start learning 29% faster today
  • 150,000+ documents available
  • Just £6.99 a month

Not the one? Search for your essay title...
  • Join over 1.2 million students every month
  • Accelerate your learning by 29%
  • Unlimited access from just £6.99 per month

See related essaysSee related essays

Related University Degree Intellectual Property Law essays

  1. Discuss using case law what changes the Land Registration Act 2002 has made to ...

    The 2002Act refers to 'events' triggering compulsory registration. The only estates which can continue to have unregistered title are those estates which are not subject to any dealing at all in the title. The 2002Act makes registration compulsory on any event concerning the estate.

  2. Implementation of Enterprise system at Dyson

    Change management involves the conscious attempt to control or atleast to influence the change that is going to happen to the organization (Elearn, 2005). It leads to Radical restructring of business processes and with the help of management systems to enhance the performance of the organization (Oakland, 2003).

  1. Should Internet Service Providers be liable for the copyright infringements of their account holders ...

    Instead, they facilitate sharing by providing users with a simple index of information about the location of infringing files stored elsewhere on the internet. The providers have no control over or specific knowledge of the activities of users, and are far removed from any copyright infringement that is committed.

  2. Consider the idea of inventions the commercial exploitation of which would be contrary to ...

    that was conveyed to EPO Enlarged Board of Appeal Judgment in the WARF[18] case, shows an ethnical balance to this issue. [1] Biotechnology patentability ? the latest from the EPO (Patents in Europe 2013/2014,www.iam-magazine.com) <http://www.iam-magazine.com/issues/article.ashx?g=00a9c7b4-cf36-49cf-9ea0-65d8a13465ce> accessed on 13 September 2013 [2] DIRECTIVE 98/44/EC of the European Parliament and of the

  1. Critically analyse what makes for sufficient disclosure in the description of a patentable invention, ...

    7 in Tim Leung, 'Generics (UK) Ltd v H Lundbeck A/S: In search of optimal patent protection: Biogen insufficiency and the chequered history of product claims' (2010) 32 4 E.I.P.R. p 4 [7] The Mullard Radio Valve Co Ltd v Philco Radio and Television Corporation of Great Britain (1936)

  2. What might be the greatest strengths of the patent system in its modern form, ...

    2013 [2] Alberto Pera,'Changing Views of Competition, Economic Analysis and EC Antitrust Law' (2008) 4 1 European Competition Journal pp 6 - 9 <http://www.clubeconomia.it/pdf/ecj1.pdf> accessed on 6 September 2013 [3] The well know multitude of paradigm for patent protection for inventors are the natural-law, reward-by-monopoly, monopoly-profit-incentive, exchange-for-secrets that generally aim

  1. Online Piracy. Justice found between protection of infringers' privacy and enforcement of producers' ...

    The music industry?s revenues have plunged (Figure 1) and the unemployment rate of the industry has soared (Figure 2) since the arrival of Napster, the first generation of P2P (Siwek, 2007). Instead, most people share files in P2P simply because they are less likely to be caught comparing with stealing a CD from a shop (Logsdon et al., 1994).

  2. Trademarks &amp;amp; Intellectual Property Case. when PRU go to register the name Lancashire ...

    Moreover, it is also highly likely that there would be some confusion due to the fact that both organisations operate substantially in the same market place, i.e. in rugby.

  • Over 160,000 pieces
    of student written work
  • Annotated by
    experienced teachers
  • Ideas and feedback to
    improve your own work