Law after Dyson ruling still not transparent

The much awaited decision from the European Court of Justice (ECJ) on the registrability of Dyson's transparent bin for vacuum cleaners provided no real answer to the questions referred and yet gave a definitive view on how the case should be decided.

Dyson Ltd applied to register a UK trademark, which was described as "a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner". At this point, its bagless vacuum cleaners had been for sale for about three years. The application was refused by the registry and the case was appealed to the High Court. The court took the view that the mark was devoid of any distinctive character and also descriptive of the characteristics of the goods in the application.

However, under Section 3 of the UK Trademarks Act 1994 and Article 3(3) of the First Trademarks Directive, such marks may still be accepted for registration if "it has in fact acquired distinctive character as a result of the use made of it". The court found that consumers recognized the transparent bin to indicate a bagless vacuum cleaner and knew that the bagless vacuum cleaner originated from Dyson as Dyson at that time had a de facto monopoly in that type of product. It was nonetheless observed that the proposed mark, the transparent bin, had not been actively promoted as a trademark by Dyson.

Two questions were referred to the ECJ for a preliminary ruling:

• Where there is a de facto monopoly in a product and a sign is recognized as part of that product, is it sufficient that the relevant public associates the product which bears the sign with the applicant?
  
  
• If it is not sufficient, what else is needed and is it necessary for the sign to have been promoted as a trademark?
  

It was clear that Dyson was not seeking to protect a particular shape of transparent bin, but the transparency of the bin itself, which may be in any conceivable shape.

The ECJ decided to provide the national court with all relevant assistance in interpreting EU law and therefore while it did not determine the subject matter of the questions, it considered the meaning of Article 2 of the directive as a preliminary matter. In essence, Article 2 states that a trademark must be a sign, which is capable of (i) being represented graphically, and (ii) distinguishing the goods and services of one undertaking from those of another.

Thus, the first condition to be satisfied was whether the subject matter, namely a transparent collecting bin irrespective of shape, constituted a sign in the present case. The transparency allows the application of various colours and the subject matter can take on different appearances and is thus not specific. To provide this non-specific subject matter with trademark protection would allow the proprietor to have an unfair competitive advantage. The concept of transparency is a mere property of the product and thus cannot constitute a 'sign' within the meaning of Article 2.

Therefore as the subject matter cannot be considered a sign, the ECJ stated that it was unnecessary to decide on matters raised under Article 3(3) of the directive.

This can be seen as a policy decision to prevent non specific subject matter from gaining an unfair competitive advantage. It does not make it less disappointing that the clarity that was sought has been dodged. Yet the underlying feel of the case suggests that the court is reluctant to allow trademark protection when it may have the effect of perpetuating a monopoly right in a technological advancement properly protected under patents or design rights.

Cheng Foong Tan, McDermott Will & Emery UK LLP, London