CASE COMMENT:

DYSON LTD. V. REGISTRAR OF TADE MARKS

INTRODUCTION
One question that has always been raised in relation to registration of “non-traditional”
signs as trademarks is that of claiming relief under public interest.1 But the problem is
that no where has there been an express ground for rejection on the basis of “public
interest”. Like the proverbial onion, Dyson is a case with a multitude of layers; as one is
peeled away another gets exposed and the strong likelihood is that if the person doing the
peeling gets too close, it can only end in tears. On the surface is the fundamental question
of whether the sign has been graphically represented to the required level of certainty.
What exactly is the "object" of protection: the transparent nature of the bin, the shape,
configuration or position of the bin: who can say? As we shall see, the UK authorities
were satisfied on that point but what concerned them was the question whether, in
showing acquired distinctiveness, all that was required was a demonstration of
"recognition" by the public.
Beyond this we have the requirement to be a "sign" and what this may entail, and finally
the scope of Art.3(1)(e) which is referred to in terms which suggest that its scope may be
broader than applying only to shapes per se. This is undoubtedly an important case and
one which has resulted in a Practice Amendment Notice (PAN 7/07) published by the UK
Trade Marks Registry.

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.

CRITICAL ANALYSIS OF THE JUDGMENT

At the outset, the ECJ pointed out that though only 2 questions had to be decided by the
Court, it could nevertheless look into an interpretation of a question which has not been
asked for and which is necessary for the subsequent case. Reliance was placed on the
judgment of Finanzamt Kassel-Goethestraße v Viessmann KG3 where it was stated that
“It is the Court's duty to interpret all provisions of Community law which national courts
need in order to decide the actions pending before them, even if those provisions are not
expressly indicated in the questions referred to the Court of Justice by those courts.”
Hence at this point the Court was correct in taking up the initiative to deal with the
question whether the sign in question actually constituted a “sign” for the purposes of the
act. However the Court contradicts itself when it says that though it is the duty of the
national court to look into this question, the ECJ can still look into the matter. But the
question in hand was one of primary importance where to judge the requirements under
3
(Case C-280/91) [1993] ECR I-971.
one law; it becomes necessary to check the fulfilments of essentials through a preliminary
inquiry.4
CONDITIONS FOR CONSIDERATION AS A TRADEMARK
Considering itself fit to look into whether the trade mark can be considered to be a sign,
the requirements for the same were pointed out. Under Article 2 of the Council Directive
89/104/EEC, the trademark has to (1) be a sign5; (2) must be capable of being represented
graphically; and (3) must be capable of distinguishing the goods or services of one
undertaking from those of other undertakings (which is notably not mirrored in the
language of the Trade Marks Act, although the Trade Marks Act must be interpreted in
accordance with the provisions of the Directive). The Article uses the word “include”,
making the definition an inclusive one and not exhaustive. So the first inquiry should be
whether the trade mark can be considered within the ambit of Article 2.
Whether it is a Sign?
It was considered that the application was not for the registration of a sign but for a
concept. The Court stated that the use of the transparent bin was only an idea which was
left to the interpretation of the human mind. However the court moved on the assumption
that the trade mark was not for that particular shape but for the idea of using a transparent
bag in the cleaner. It was thus stated that: “There are many possibilities as regards the
shape, the dimensions, the presentation and even the composition of that collection
chamber in relation to the product in question, depending not only on the vacuum cleaner
models developed by Dyson but also on technological innovations.” It did not look into
the fact that the trade mark could have only been for the specific shape and appearance as
used in the cleaner provided in the picture. Also it was a wrong assumption on the part of
the Court that with technological innovations, the size of the cleaner would also vary. It
could have been judged in a manner that the trademark was asked not for the existence of
the transparent bin in any shape but only in that particular shape which was present at that
time which was used as an advertising incentive to sell the product. Also the bag cannot
be considered as a concept as it is not only an idea of any transparent bin in any shape,
but only that particular bin used in the vacuum cleaner. As seen in Sieckmann v

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

Possibility of Graphical Representation

Precise identification is the aim for a graphical representation. As seen in Sieckmann10,
such a representation must be “clear, precise, self-contained, easily accessible,
intelligible, durable and objective”. The Court hence considered that a functional feature
like this cannot be considered as being able to be graphically represented. The ECJ was
swayed by Dyson's concession that the two illustrations accompanying the form were just
that--illustrations only. Thus, in the court's mind, the application lacked specificity. 11 On
the face of it, the critical issue for the court seems to have been lack of specificity and
essential linkage between the descriptions of the mark applied for and illustrations
6
(Case C-273/00) [2003] Ch 487
7
Smith Kline & French Application, [1976] R.P.C. 511. Determination of a specific colour would enable a
registration for a trademark.
8
Koninklijke Philips Electronics NV v Remington Consumer Products Ltd (C-299/99) [2002] ECR I-5475.
9
Ibid.
10
[2003] Ch 487.
11
White Paper ( Cm. 1203, 1990).
provided. If the ECJ would not have considered this only to be an example which would
change over the years and had the photographs been conceived as the only possible
arrangement, it would lead to the satisfaction of the condition of being graphically
represented. It would be incorrect to consider it only as a functional feature and not as a
clear piece in the product for which the trademark has been asked for.12

Existence of a Distinctive Character

The distinctive character is basically a requirement to distinguish the product from other
undertakings which has to be considered in the plainest sense.13 So in essence what has to
judged in the present case is whether a functional feature which forms a part of the
appearance of a product is capable in itself of distinguishing the goods or services of one
undertaking from those of other undertakings. It should be noted that the court has
defined that function as seeking to “guarantee the identity of the origin of the marked
product to the consumer or end user by enabling him, without any possibility of
confusion, to distinguish the product or service from others which have another origin”.14
So in that case the possibility that could have been considered is when the sign could
have been construed in a specific sense rather than considering it as an example.
Coming to the use of functionality, the court came to the conclusion that it should be let
open to the general public and cannot be exploited by only one producer thus making it
an absolute ground for refusal under Article 3 (1)(e). This was done in the light that the
producer should not get a monopoly over goods. Referring to the case of Koninklijke
Philips Electronics NV v Remington Consumer Products Ltd15, “The rationale of the
grounds for refusal of registration laid down in Article 3(1)(e) of the Directive is to
prevent trade mark protection from granting its proprietor a monopoly on technical
solutions.” But here there shall be no monopoly if it is cleared that the application of
trademark is only for that particular sign and shall not exist in any other form or colour.

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.”