Intellectual Property Enterprise Court

IP-2024-000037 - [2025] EWHC 547 (IPEC)

Fecha: 11-Mar-2025

The case law

The case law

10.

I was taken to a line of authorities relevant to the correct application of s.1(1). An important step in explaining what the requirements of s.1(1) entail – more exactly the equivalent provisions in the EU Directive from which the subsection is derived – came in the judgment of the CJEU in Sieckmann v Deutsches Patent- und Markenamt (C-273/00) EU:C:2002:748. This the first paragraph of the dispositive ruling (my underlining):

‘1. Article 2 of Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the member states relating to trade marks must be interpreted as meaning that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.’

11.

Sieckmann was about an olfactory mark, raising issues all of its own, but the ruling applied generally and the words underlined are treated as stating the requirements of all trade marks. They have since become enshrined in art.3(1) of EU Trade Mark Implementing Regulation 2018/626.

12.

The CJEU explained the Sieckmann criteria further in Chartered Institute of Patent Attorneys v Registrar of Trade Marks (IP Translator) (C-307/10) EU:C:2012:361:

‘[46] In that connection, it must be recalled that the entry of the mark in a public register has the aim of making it accessible to the competent authorities and to the public, particularly to economic operators (Sieckmann, at [49], and Case C-49/02, Heidelberger Bauchemie GmbH's Trade Mark Application [2004] E.C.R. I-6129, at [28]).

[47] On the one hand, the competent authorities must know with clarity and precision the nature of the signs of which a mark consists in order to be able to fulfil their obligations in relation to the prior examination of applications for registration and the publication and maintenance of an appropriate and precise register of trade marks (see, by analogy, Sieckmann, at [50], and Heidelberger Bauchemie, at [29]).

[48] On the other hand, economic operators must be able to acquaint themselves, with clarity and precision, with registrations or applications for registration made by their actual or potential competitors, and thus to obtain relevant information about the rights of third parties (Sieckmann, at [51], and Heidelberger Bauchemie, at [30]).’