| TRADE MARK — Registration — Marks capable of registration — “Sign” — Whether including all conceivable shapes of a device — Council Directive 89/104/EEC, art 2}
Dyson Ltd v Registrar of Trade Marks (Case C-321/03)
ECJ: President of Chamber Rosas, Judges Malenovský and Ó Caoimh: 25 January 2007
An application for the registration as a trade mark of all the conceivable shapes of a transparent bin forming part of a vacuum cleaner could not be entertained, as the subject matter of the application was not a “sign” capable of constituting a trade mark within art 2 of Directive 89/104 on trade marks.
An application for the registration as a trade mark of all the conceivable shapes of a transparent bin forming part of a vacuum cleaner could not be entertained, as the subject matter of the application was not a “sign” capable of constituting a trade mark within art 2 of Directive 89/104 on trade marks.
Art 2 of Directive 89/104 provides: “A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging …”
The claimant, the manufacturer of bagless vacuum cleaners in which the dirt was collected in a transparent plastic container forming part of the machine, applied for the registration as trade marks of two marks described as “consist[ing] of a transparent bin or collection chamber”, accompanied by a picture of one or other of two versions of the claimant’s vacuum cleaner. The application was rejected by the defendant registrar, and on appeal the High Court held that the marks were devoid of distinctive characteristics and descriptive of qualities of the goods, but that they could have acquired a distinctive character as a result of the use made of them, under the provision of the Trade Marks Act 1994 implementing art 3(3) of Directive 89/104, if, as a matter of law, it was possible for distinctive character to be acquired when, as was the case with the claimant’s cleaner, the applicant had a de facto monopoly in the type of product concerned, which, accordingly, had not been actively promoted as a trade mark. Questions on that issue were referred to the European Court.
THE COURT said that, even though the national court had not raised the matter, it was necessary to determine whether the application came within art 2 of the Directive at all, as art 3(1)(a) precluded the registration of “signs which cannot constitute a trade mark”. Although the list in art 2 comprised signs capable of being perceived visually, that list was
not exhaustive, and signs not capable of visual perception, such as sounds or smells, were not expressly excluded: see Sieckmann v Deutsches Patent- und Markenamt (Case C-273/00) [2003] Ch 487, paras 43 and 44, and Shield Mark BV v Joost Kist hodn Memex (Case C-283/01) [2004] Ch 97, paras 34 and 35. However, unlike the subject matter of the applications in those cases, that in the present case was not specific and was capable of taking on a multitude of different appearances. If registration were allowed, the proprietor would be entitled to prohibit the marketing of any vacuum cleaners having a transparent collecting bin, irrespective of its shape, and would thus have an unfair competitive advantage. The subject of the application was in fact a mere property of the product and therefore did not constitute a “sign” within art 2: Libertel Groep BV v Benelux-Merkenbureau (Case C-104/01) [2004] Ch 83, para 27.
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