Registrability in UK Law

Leading Cases
  • Thomson Holidays Ltd v Norwegian Cruise Line Ltd
    • Court of Appeal (Civil Division)
    • 17 Diciembre 2002

    In my view that task should be carried out so as to limit the specification so that it reflects the circumstances of the particular trade and the way that the public would perceive the use. If the test of infringement is to be applied by the court having adopted the attitude of such a person, then I believe it appropriate that the court should do the same when deciding what is the fair way to describe the use that a proprietor has made of his mark.

  • Designer Guild Ltd v Russell Williams (Textiles) Ltd (trading as Washington DC)
    • House of Lords
    • 23 Noviembre 2000

    The purpose of the examination is not to see whether the overall appearance of the two designs is similar, but to judge whether the particular similarities relied on are sufficiently close, numerous or extensive to be more likely to be the result of copying than of coincidence. It is at this stage that similarities may be disregarded because they are commonplace, unoriginal, or consist of general ideas.

  • Angiotech Pharmaceuticals Inc. v Conor Medsystems Inc.
    • House of Lords
    • 09 Julio 2008

    In the Court of Appeal, Jacob LJ dealt comprehensively with the question of when an invention could be considered obvious on the ground that it was obvious to try. He correctly summarised the authorities, starting with the judgment of Diplock LJ in Johns-Manville Corporation's Patent [1967] RPC 479, by saying that the notion of something being obvious to try was useful only in a case in which there was a fair expectation of success.

  • H Young (Operations) Ltd v Medici Ltd
    • Chancery Division
    • 14 Julio 2003

    I do not think there is anything technical about this: the consumer is not expected to think in a pernickety way because the average consumer does not do so. In coming to a fair description the notional average consumer must, I think, be taken to know the purpose of the description. Otherwise they might choose something too narrow or too wide. The whole exercise consists in the end of forming a value judgment as to the appropriate specification having regard to the use which has been made.

  • Compass Publishing BV v Compass Logistics Ltd
    • Chancery Division
    • 24 Marzo 2004

    The visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components. Furthermore, if the association between the marks causes the public to wrongly believe that the respective goods come from the same or economically linked undertakings, there is a likelihood of confusion.

  • Youview TV Ltd v Total Ltd
    • Chancery Division
    • 09 Noviembre 2012

    I reject Mr Alexander's submission that one should construe database and database programs to "freestanding" ones. Mr Alexander's analogy with the car would only be relevant at all if the specification was limited so as to restrict it to goods where the database program was necessarily sold as a small part of a larger article. The specification in issue here does not have that effect.

  • IPC Media Ltd v Highbury-SPL Publishing Ltd
    • Chancery Division
    • 21 Diciembre 2004

    In copyright cases, chipping away and ignoring all the bits which are undoubtedly not copied may result in the creation of an illusion of copying in what is left. If you look at those remaining grains it is possible to say that similar patterns of distribution exist. It is even possible to say that these similarities are surprising. This type of artefact created by close attention only to the areas of similarity is a risk in any court proceedings.

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Legislation
  • Trade Marks Act 1938
    • UK Non-devolved
    • 1 de Enero de 1938
    ... ... ) of subsection (1) ... of section four, or in paragraph ( b ... ) of subsection ... (3) of section thirty-seven, of this Act ... Registrability and validity of registration ... Registrability and validity of registration ... Distinctiveness requisite for registration in Part A. 9 ... ...
  • The Registered Designs and Trade Marks (Isle of Man) (Amendment) (EU Exit) Order 2019
    • UK Non-devolved
    • 1 de Enero de 2019
    ... ... (b) the registrability of the trade mark shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to in ... ...
  • The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019
    • UK Non-devolved
    • 1 de Enero de 2019
    ... ... any) accorded pursuant to a right of priority claimed pursuant to Article 35 in respect of the existing EUTM application; and(b) the registrability of the trade mark shall not be affected by any use of the mark in the United Kingdom which commenced in the period between the date referred to in ... ...
  • The Designs and International Trade Marks (Amendment etc.) (EU Exit) Regulations 2019
    • UK Non-devolved
    • 1 de Enero de 2019
    ... ... the Paris Convention in respect of the existing ITM application or the existing request for EU extension (as the case may be) .(3) The registrability of the trade mark the subject of an application under this Act of the type mentioned in sub-paragraph (1) (b) and made within the period mentioned in ... ...
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Books & Journal Articles
  • Shaving the Trade Marks Directive Down to Size?
    • No. 63-4, July 2000
    • The Modern Law Review
    ... ... of the exceptions, together with the question of the extent to which policy concerns should be built into other parts of the test of registrability. 13 In the United Kingdom these issues were recently addressed by the Court of Appeal in Philips Electronics NV v Remington Consumer Products Ltd ... ...
  • Ilanah Fhima and Dev S. Gangjee, The Confusion Test in European Trade Mark Law, Oxford: Oxford University Press, 2019, 278 pp, hb £125.00.
    • No. 83-5, September 2020
    • The Modern Law Review
    ... ... confusion? Once that discussion is broached one needs to distinguish between distinctiv eness for infringement and distinctiveness for registrability purposes. With these conceptual issues neutralised, the book reverts to its primary strength of distinguishing in detail between a range of practical ... ...
  • Lords Design Constraints
    • No. 59-3, May 1996
    • The Modern Law Review
    ... ... to parts of an article which ‘must match’ another article.6 The introduction of these restrictions upon registrability reflects a belief that problems exist in relation to complex products which do not correspond to the image of the commodity ... ...
  • A Square Foot of Old Scotland: Ownership of Souvenir Plots
    • No. , September 2015
    • Edinburgh Law Review
    • 393-398
    ... ... Para 4.32 ... The Scottish Law Commission Report on Land Registration notes, “[w]e have seen it suggested that the non-registrability of souvenir plots means that ownership in them passes by simple contract. That is not so.”10 ... Report on Land Registration (Scot Law Com No 222, ... ...
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Law Firm Commentaries
  • Colour Cohesion: The Secret To Registering Your Alcohol Bottle Shapes?
    • Mondaq UK
    ... ... Recently, further guidance from the Fifth Board of Appeal (the ... Board) in relation to the registrability of 3D shapes (specifically ... in the drinks sector) has come to light. This follows an EUIPO ... examiner's decision to refuse registration of a ... ...
  • Transport Research And Innovation Grants 2022 (TRIG 2022) Now Open To Applicants
    • Mondaq UK
    ... ... important. We can provide initial advice or opinions on the ... patentability of your ideas, or on the registrability of the design ... of the products themselves, or even likely risks to you if you are ... aware of, or need to find, third party IP. We are also ready ... ...
  • Protection Of Colour Combination Marks
    • Mondaq UK
    ... ... Subject to any appeal by Red Bull to the CJEU, the decision was a blow for brand owners, setting the test for registrability of two-colour marks very high. Indeed, the effect of the decision seems to be that colour marks comprising colour combinations are harder to register ... ...
  • Loss Of Gravity For The Moon Boot
    • Mondaq UK
    ... ... registered forever, unlike designs or other IP rights. However, ... fulfilling the legal registrability criteria at the application ... filing stage does not guarantee lifelong immunity from problems ... Trade mark protection is neither static nor ... ...
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