Professional Documents
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FACTS
Dyson Ltd. was the manufacturer of the Dual Cyclone vacuum cleaner, a bagless cleaner
in which the dirt and dust is collected in a transparent plastic container forming part of
the machine since 1993. After 3 years into its manufacturing and marketing, in 1993, it
made a trade mark application in Class 92 for “apparatus for cleaning, polishing and
shampooing floors and carpets; vacuum cleaners; carpet shampooers; floor polishers;
parts and fittings for all the aforesaid goods” for a trade mark pursuant to the Trade
Marks Act of 1994. The following representation and description was given for the same:
1
Mike Walmsley, “Too Transparent? ECJ Rules Dyson Cannot Register Transparent Collection Chamber
as Trademark”, 2007 European Intellectual Property Rights 298.
2
Class 9 of the Nice Agreement concerning the International Classification of Goods and Services for the
Purpose of the Registration of Marks of 15 June 1957.
“The mark consists of a transparent bin or collection chamber forming part of the external
surface of a vacuum cleaner as shown in the representation.”
The Registrar of Trademarks rejected the application by a decision on 23 July 2002 on
the ground that the sign in question was devoid of any distinctive character within the
meaning of section 3(1) (b) of the 1994 Act. It was also stated that the chamber was only
an indication of the purpose of the product which became an absolute ground for refusal
on the basis of section 3(1) (c) of that Act. Hence an appeal was filed for in the High
Court. The High Court had ruled that the sign lacks distinctive character; it is only a
description of the characteristics of a product and was not actively promoted by Dyson as
a trademark. However, it decided to turn to the European Court of Justice (ECJ) for a
preliminary ruling on 2 issues. The first question was whether a sign used by the
applicant which consists of a feature which forms part of the appearance of a new kind of
article acquires a distinct character if a significant proportion of the relevant public has
come to associate the relevant goods with the applicant and no other manufacturer. The
second question related to whether it was necessary for the person to use the sign in a
way to promote it as a trademark.
4
Swaddling v Adjudication Officer (Case C-90/97) [1999] ECR I-1075.
5
First held in Libertel [2004] Ch 83.
Deutsches Patent- und Markenamt6 that the sign has to be visually perceived. As in the
present case, a trademark for a particular object in a particular shape and form is capable
of being perceived in a definite form. When it comes to a visual perception, even an
absence of colour in a definite shape can be perceived and would thus, come under the
word colour itself.7
Going by the analysis made so far, even if Dyson had clearly limited his rights to the
specific representations accompanying his form, it is highly likely that the courts would
still be troubled by the threat to competition posed, and that the “sign” objection would
be engaged. For example, the court expressly links “sign” to what it terms a “mere
property” of the product.8 At this point, some may argue that, in the same way that the
abstract application of colour can in principle be protectable subject-matter (as well as a
“mere property”), then so, in principle, should the transparent property of a vacuum
cleaner bin--or indeed anything. The answer to this should not be that transparency per se
cannot ever comprise registrable matter. In any given circumstance, but especially where
technical advantage or solution can be objectively linked to the given property (or even
subjectively from the perspective of the consumer), then the requirement to be a “sign” in
combination with s.3(2)(b) may well combine to deliver a knock-out blow.9
12
“It must therefore be stated that a functional feature like that which is the subject of the main proceedings
does not have the characteristics of non-ambiguity and uniformity required by article 2 of the Directive.”
(Paragraph 64 of the Judgment)
13
W.R.Cornish, Intellectual Property: Patents, Copyright, Trademark and Allied Rights, (Universal: New
Delhi, 2001), 582.
14
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (Case C-39/97) [1998] ECR I-5507.
15
(Case C-299/99) [2003] Ch 159.
Thus any such use of a bag in any other form or any other colour would not be an
infringement as what has been considered is the specificity of the form.
If critically analysed, the bag that has been applied for registration does not correspond to
a technical feature but is an integral part of the machine and is quite specific in what has
been applied for.
The ECJ has not confined itself to a simple requirement for specificity but has opened a
fresh avenue of potential objection which may be applied, albeit in a minority of cases.
Thus there arises a need to be prepared to interpret the meaning of “sign” in a way which
is both consistent with other provisions (especially s.3(2)(b)), and broadly enough to act
as a residual ground of objection where no other may suffice.
CONCLUSION- ALL FOR PUBLIC INTEREST
The reasoning of the judgment is quite beholding the fact that all was done in public
interest. The Court considered that any technological feature cannot be given to one
person as to would create an unfair monopoly. As the Court has stated, “it is not the
function of a trade mark to create a monopoly in new developments in technology”.
However at some point the court does recognise the need to give protection to such a
development but again digresses by sating that it can be done only through patents and
not trademark. Had the view been taken for the specific thing in question, then the bag
would have been readily protected by a trademark. The danger of “perpetual monopoly”
is always secondary to the distinctiveness of the product.16
Coming to the question of whether a proven consumer association with a particular
producer is sufficient to establish acquired distinctiveness in circumstances where that
producer has enjoyed a period of de facto monopoly. In Unilever Plc's Application17, the
learned judge had asked similar questions to those of Dyson. Had the ECJ answered the
questioned posed in Dyson they might well have come to a different conclusion from
what the authorities may have wished. This assessment is based on the ECJ's reluctance
to build in specific requirements for registration which are not self-evident from the
actual text of the Directive as distinct from identifying an underlying public interest.
16
Coco-Cola T.M., [1986] R.P.C. 421.
17
[2003] R.P.C. 35, “Public use the shape (of an ice cream dessert) alone as a trade mark.”