ECJ asked to clear up 'distinctiveness' in Dyson registration

United Kingdom

In Dyson Limited v Registrar of Trademarks, the High Court has referred a question to the European Court of Justice (ECJ) seeking guidance as to whether the monopoly use of a sign (eg, a clear plastic bin) that identifies a particular trader's goods can create the necessary degree of distinctiveness required for registration as a trademark, even where the sign has not previously been promoted as a mark.

In 1993 Dyson Limited began the commercial manufacture of a bagless vacuum cleaner. In December 1996 Dyson applied to register a series of trademarks in Class 9 of the Nice Classification, relating to the transparent dust collection bin of the vacuum cleaner. The registrar refused the application on absolute grounds, rejecting Dyson's argument that the sign had acquired distinctiveness. Dyson appealed to the High Court.

Dyson argued that the transparent collection bin was very unusual, if not unique, in the industry in December 1996 (the date of the application). As a result, when first seen, it could serve as an indication of the origin of the goods, rather than as a mere feature of those goods. The High Court accepted that no other vacuum cleaner manufacturer had, as at the date of application, sought to produce a transparent component. However, it stated that novelty itself is not sufficient to prevent a clear bin from being merely descriptive of the vacuum cleaner of which it forms part. The court noted that it is not the function of a trademark to create a monopoly on new developments in technology, especially as a number of manufacturers of other types of bagless cleaners now use transparent bins as a feature of their products.

The High Court held that the clear bin did not have the required inherent distinctiveness to warrant registration since, among other things, it was designed to serve a particular function (ie, to inform consumers when the bin was full) and did not, in the minds of consumers at the time of the application, differentiate the commercial origin of the goods from those of other manufacturers. However, it was still possible, said the court, for the clear bin to have acquired distinctiveness at the time of application but that Dyson must demonstrate that, at that time, there was more than a mere association between products with transparent bins and Dyson. The court noted that this was particularly important as by 1996 the clear bin had not been actively promoted by Dyson, and it stressed that if the registration were allowed, Dyson would have a right to use clear plastic as an exclusive indicator of origin beyond the period during which it was the sole producer of bagless cleaners.

The court stated that it was inclined to find that in order to establish acquired distinctiveness, and thereby trademark status, it must first be established that the sign had been used up to the relevant date (ie, December 1996) as a trademark. However, the court noted that this area of law is not certain, as it was unclear whether the particular circumstances of this case were covered by the ECJ's landmark ruling in Koninklijke Philips Electronics NV v Remington Consumer Products Ltd. It therefore referred to the ECJ the question of whether:

"the test laid down in Philips v Remington does envisage circumstances in which a de facto monopoly leading to the recognition of the goods as those of a particular trader, even absent actual promotion of the sign as a trademark, may nonetheless produce the necessary degree of distinctiveness."

It will be interesting to see whether the ECJ takes a more broad-minded approach to the issues of novelty and distinctiveness than the English courts when considering a trademark registration.

Christina Pettit, DLA, London

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