A concept cannot be registered as a mark, says Advocate General

European Union

Advocate General Léger has opined that Dyson Ltd cannot register as a trademark the transparent dust collection chamber used in its vacuum cleaners.

Dyson manufactures and markets a bagless cleaner in which dirt and dust is collected in a transparent plastic container, forming part of the machine. It filed a trademark application in the United Kingdom consisting of representations of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner. The goods specified were vacuum cleaners and related items. The application was rejected by the UK Trademarks Registry on the grounds that the sign was devoid of any distinctive character within the meaning of Section 3(1)(b) of the Trademarks Act 1994, but that in any event the transparent collection chamber ultimately served to designate the kind and intended purpose of the product in question, contrary to Section 3(1)(c) of that act. Dyson appealed to the High Court of England and Wales. The High Court was of the view that the mark was devoid of distinctive character within the meaning of Section 3(1)(b) and was descriptive of the characteristics of the relevant products pursuant to Section 3(1)(c). However, it decided to stay the proceedings and refer certain questions to the European Court of Justice (ECJ) namely: (i) Where a sign consists of a feature which has a function and the applicant has a de facto monopoly in such articles, is it sufficient for the sign to have acquired a distinctive character that a significant proportion of the relevant public has come to associate the relevant goods bearing the sign with the applicant and no other; (ii) If not, what else is needed and, in particular, is it necessary that the sign has been promoted as a trademark?

Advocate General Léger held it was necessary to determine as a preliminary matter whether a functional feature such as that in issue is capable of constituting a trademark. He concluded that the sign in question was not capable of constituting a trademark. He thought that Dyson was actually seeking protection for a new concept for collecting, storing and emptying waste. Such a concept cannot constitute a trademark as consumers will not see it as an indication of origin and consequently it is not capable of fulfilling the distinguishing function of a trademark. In addition, a functional feature that forms part of the appearance of a product and which is capable of taking on a multitude of appearances cannot be regarded as a sign capable of being represented graphically nor can it have a sufficiently precise meaning to indicate the origin of the product without possible confusion.

In any event, even if the sign in question did constitute a trademark, Léger considered there was an absolute ground for refusal to register on the basis of Article 3(1)(e) of the Community Trademark Directive. He referred to the ECJ ruling in the Philips Case with approval and said that this provision precludes the registration as a trademark of a functional feature which forms part of the appearance of a product.

Patricia McGovern, P McGovern & Co Solicitors, Dublin

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