Registration is to be refused in respect of descriptive marks, ie marks composed exclusively of signs or indications which may serve to designate the characteristics of the categories of goods or services in respect of which registration is applied for. Article 3(1)(c) therefore prevents descriptive signs and indications from being reserved to one undertaking alone because they have been registered as trade marks. A geographical name could not normally be registrable as a trade mark, even where a place was already associated with certain goods, or might become so associated. A name could only be registrable where had come to be associated with a particular product. As to the use of a registered mark by third parties: ‘In addition, Article 6(1)(b) of the Directive, to which the national court refers in its questions, does not run counter to what has been stated as to the objective of Article 3(1)(c), nor does it have a decisive bearing on the interpretation of that provision. Indeed, Article 6(1)(b), which aims, inter alia, to resolve the problems posed by registration of a mark consisting wholly or partly of a geographical name, does not confer on third parties the right to use the name as a trade mark but merely guarantees their right to use it descriptively, that is to say, as an indication of geographical origin, provided that it is used in accordance with honest practices in industrial and commercial matters.’
Citations:
Times 18-May-1999, Gazette 06-Oct-1999, C-108/97, [1999] ETMR 585, [1999] EUECJ C-108/97, [2000] 2 WLR 205, [2000] Ch 523
Links:
Statutes:
Council Directive 89/104/EEC art 3
Jurisdiction:
European
Cited by:
Cited – Dyson Limited v The Registrar of Trade Marks ChD 15-May-2003
Applications for trade marks on behalf of the claimant had been rejected. Acquired distinctiveness was a significant issue, and the question of whether the appeal was a review or a rehearing was significant. In this appeal, the parties had given . .
Cited – British Airways Plc v Ryanair Limited ChD 25-Oct-2000
The claimant alleged that disparaging adverts by the defendant infringed its trade marks and amounted to the tort of malicious falsehood.
Held: There was no dispute that the mark had been used. The Act could not be used to prevent any use of . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 04 May 2022; Ref: scu.162076