ABC Ltd.

, and its prospects of securing EU Trade – Trademark Law Case Analysis

Assignment 1

Name: Monesh Boopalan

Subject: Trademark Law

Student I’d: 21202044

Date of Submission: 22- April-2022

[1]
 ABC Ltd., and its prospects of securing EU Trade – Trademark Law Case Analysis

Prospects of securing EU Trademarks – The case of ‘Squeaker Beaker,’ a new and

innovative beaker by ABC Ltd.

The system of trademark in the EU is known to be a dual system, which means a

particular trademark can be registered in two forms. The first one being registration of a

trademark at the EU level which then becomes European Union Trademark (EUTM) that is

registered at the EUIPO, and secondly, registering at the national level which then becomes a

national trademark, the registration of which is to be done at the respective intellectual

property office of various EU Member States.1 This system of trademark in the EU had been

subject to various reforms, the onset of which is known to be from the year 2016. The related

doctrines of such reforms were documented as follows:

 “The EU Trademark Regulation (Regulation (EU) 2017/1001) referred as the

EUTMR, which includes EUIPO-related fees. The Regulation entered into force on

March 23, 2016 (or, for a few provisions, on October 1, 2017).

 The European Union trademark delegated regulation (EU) 2018/625

 The European Union trademark implementing regulation (EU) 2018/626.”2

Several other directives are proposed to be introduced in the forthcoming years, with a few

being expected in January 2023.3

As already denoted earlier in this essay, there have been several reforms introduced to

the trademark law over the years. In this context, according to the latest reforms for

trademark law that the EU had introduced, a trademark protection within the EU is available

1
International Trademark Association (ITA), “European Union Trademark System Review” (International
Trademark Association2020) <https://www.inta.org/topics/european-union-trademark-system-review/> accessed
March 7, 2022.
2
Ibid.
3
Ibid.

[2]
(in principle) to any sign or mark, which is capable of signifying the origin and is represented

in an appropriate fashion.4 Thus, as per the new reforms, it is not just words and brand logos

that can be used for obtaining trademarks, but also various other factors like patterns, sounds,

colours, and shapes, among several others can be used for registering a trademark. Having

said this, it is important to understand that every request that is submitted for trademark

registration within the EU is decided based on its own independent merits and factors.

(a) the name of the beaker product ‘Squeaker Beaker’

A 7(1)(e) of the EUTMR is the specific trademark law that governs registration of an EU

trademark. This law lays restrictions on companies wanting to register shapes and other

distinctive characteristics of products as trademarks. Presented below are a few important

considerations related to prohibitions of registering a shape, or any other similar

characteristics.

Under A 7 (1) (e), a shape or relevant feature would be prohibited for trademark registration,

if

“(i) which results from the nature of the goods

(ii) which is necessary to obtain a technical result

(iii) which gives substantial value to the goods.”5

As such, shape or any other characteristics resulting out of the nature of the product cannot be

registered as a trademark for the product.

The requirement of ABC Ltd. To register the name ‘Squeaker’ falls under the

category of registering collective or certification marks. As such, EUIPO recognises various

4
European Union Intellectual Property Office (EUIPO), “History of Trademarks” (European Union Intellectual
Property Office (EUIPO)December 6, 2021) <https://euipo.europa.eu/ohimportal/en/news/-
/action/view/9079942> accessed March 7, 2022.
5
A 7(1)(e) - TMA 1996.

[3]
types of mark including word marks that have slogans, names of individuals, numeric signs

and others, or even figurative marks, besides non-traditional marks like shapes, colours,

design patterns, colour combinations, multimedia marks, holograms, position marks, motion

marks, and several others (for example, layout of a retail store). The following are the two

important conditions that have been set out under the EUTR No. 2017/1001 (EUTMR):

 “the sign must be capable of being reproduced on the register in a clear, precise, self-

contained, easily accessible, intelligible, durable, and objective manner; and

 the sign must be capable of distinguishing the goods or services of one undertaking

from those of others.”6

The above requirement of ABC Ltd, can be categorized under registering collectives, as the

name ‘Squeaker’ has been an old EU trademark under the category of plush toys. Besides, as

was ruled in the Wrigley ‘Doublemint’ case, the term ‘Squeaker’ is not something that is used

in normal parlance and thus could be registered. On the other hand, if this word is considered

as being purely descriptive as in the case of Baby-Dry nappies, then the result would have

been unfavourable to ABC Ltd.

Under the A 4 EUTM Regulation and A 3 TM Directive, ABC Ltd., can pursue

registering the name ‘Squeaker,’ based on the key elements of capacity to distinguish and the

capacity for representation, both of which means the said name serves as a badge or origin

and as a vehicle for recognizing the product. However, since the EUTR allows registering

collectives as long as they are able to distinguish the goods or services of the members of the

association who already have registered trademarks, from the newly proposed registrations.

6
Noerr PartGmbB-Dr Tobias Dolde and Michael Hawkins, “At a Glance: Trademark Registration and Use in
European Union” (LexologyOctober 1, 2021) <https://www.lexology.com/library/detail.aspx?g=f95dbc62-fa6a-
4c87-a185-1b9638289588> accessed March 7, 2022.

[4]
Besides, there is also a mandatory requirement for submitting the regulations of use by ABC

Ltd., while applying for trademark registration.

(b) the rubber duck shape of the beaker

It is possible for ABC Ltd., to register the rubber duck shape of the beaker as an EU

trademark because the same is not resulting from the nature of goods, like for example,

registering the shape of a banana cannot be registered as a trademark for banana itself under

A 7(1)(e)(i), or a football shape for football as a product. However, it has been acknowledged

by the European Court of Justice (ECJ) that all shapes of goods/packages are functional to a

considerable extent, and such functionality in itself could not prohibit registration of

trademark. A pertinent example in this context would be reference to the Dyson case, in

which the court ruled out that in order to register a shape as trademark, it is required that the

same needs to be specific and not abstract, must not be an attribute of the product, and should

not help in gaining undue competitive advantage. In the current case of ABC Ltd., the shape

of the beaker, which is a duck, cannot be prohibited, as was the ruling given in the case of

Lego Juris Vs OHIM,7 registration of the duck shape can be allowed because the shape in

itself does not impact the functionality of the product. In particular, under the EUTM

Regulation 2007/1001, A 4 EUTM Regulation/A 3 TM Directive, trademarks include the

shape or packaging of the goods, and in the current case, it is the duck shape of the product.

The mandatory requirement of capacity to distinguish/distinctiveness should be fulfilled as in

the same should serve as a vehicle for customers to recognize the product based on the shape,

and it should also serve as a medium of communication between the manufacturer and the

consumer.

(c) The colour scheme used on the product (lime green on the surface of the cup with bright

pink wings/handles and beak)

7
Lego Juris v OHIM Case C-48/94 (European Court of Justice (ECJ)).

[5]
The challenge involved in registering a colour or colour scheme as a trademark within the EU

has its origins in the 2003 Libertel (Case C-104/01 Libertel (ECJ, 6 May 2003) judgement by

the Court of Justice of the European Union (CJEU). The CJEU has been considerably

rigorous in its rulings on the registration of colour and colour schemes since this historical

ruling8. The Libertel ruling has specifically put forth that the average consumer cannot

identify the origin and attribution or origin of a product and/or service based on its colour

alone. Likewise, in Case T-316/00 Viking Umwelttechnik (CFI, 25 Sept 2002), the court ruled

out that colour combinations could possibly be registrable as long as the choice of colours is

non-standard and/or has a unique and distinct arrangement. This particular ruling fits the

current context of ABC Ltd., wanting to register the colour scheme as an EU trademark,

under the EUTM Regulation 2007/1001, A 4 EUTM Regulation/A 3 TM Directive. As a

consequence of this ruling, companies wanting to register brand colour or product colour are

required to fulfil a few specific prerequisites so as to be eligible for registering the colour as a

trademark. Such prerequisites include usage of any single identification codes, like for

instance, Pantone, Rex or Hal, etc., that are globally recognized. Besides, ABC Ltd., will

also be required to prepare a substantial quantum of proofs to exhibit the fact that the mark is

either unique or sufficiently striking with respect to the product in question and the products

that are eligible for trademark registrations, under the guidelines listed by the EUIPO titled

Guidelines for Examination, Part B, section 4, chapter 3.9

(d) the squeaking sound emitted by the beaker when it is squeezed (all to be registered for

plastic cups in class 21).

8
Libertel Groep BV v Benelux-Merkenbureau [2003] Case [2003] wwwoxbridgenotescouk (Court of Justice of
the European Union (CJEU)).
9
Lexology, “A Grey Area? How to Register Colours as Trademarks” (LexologyJuly 28, 2020)
<https://www.lexology.com/library/detail.aspx?g=c5e79289-f242-4889-80ad-5a54fd88420d> accessed March 7,
2022.

[6]
On July 7, 2021, the CJEU issued a first ruling that is applicable to registering a sound sign

that was submitted in an audio format as an EU trademark in the case involving Ardagh

Metal Beverage Holdings v EUIPO (T-668/19).10 In this case, the sound that was planned for

registration of EU trademark involved the sound made by a canned beverage at the time of

opening it for consumption. The initial sound, upon opening of the can, pauses for an

extremely short time period, before eventually giving out a fizz sound that lasts for roughly

about 8-9 seconds. This case ruling is pertinent to the current case of ABC Ltd., wanting to

register the squeaky sound that the beaker makes when it is squeezed. The application of

Ardagh was rejected by the EUIPO stating that the mark, i.e., the sound for which EU

trademark was sought was not distinctive in nature, and besides, criteria used for evaluating

the distinctiveness of marks containing sound and the eventual perception of such marks are

generally the choice of consumers. Further, the court also stipulated that in cases involving

registration of a sound as a trademark, it is important that such sound contains a specific

degree of resonance that enables the target consumer to distinguish it as a trademark, rather

than perceiving it as functional element or a sign lacking any form of innate attributes.11

Similarly, the specific requirements for graphic representation were laid out by the ECJ in

Case C-273/00 SIECKMANN (ECJ, 12 Dec 2002) on smell registration, and Case C-283/01

SHIELD (ECJ, 27 Nov 2003) on sound registration.

However, taking into account the confirmation of the Court concerning the criteria for

evaluating the distinctive character of sound marks fails to be different from those that are

pertinent to other categories of trademarks, companies like ABC Ltd., wanting to register a

sound mark under the EUTM Regulation 2007/1001, A 4 EUTM Regulation/A 3 TM Directive,

10
CURIA - Documents (2019) R 530/2019-2 curiaeuropaeu (Court of Justice for the European Union (the CJEU)).
11
Priyam Raj Kumar, “Can a Sound Mark Be Registered as a Trademark - European Union Court’s Ruling -
Intellectual Property - European Union” (www.mondaq.comJuly 21, 2021)
<https://www.mondaq.com/india/trademark/1092276/can-a-sound-mark-be-registered-as-a-trademark--european-
union-court39s-ruling> accessed March 7, 2022.

[7]
can try doing so, as long as they can make sure such mark contains a slight degree of

resonance associated, besides attributes or uniqueness enabling the users or consumers in

general, to recognize the same as a trademark.

Recommendation to ABC Ltd., towards securing EU trademark for “Squeaker Beaker”

The EUTM legislation differentiates between absolute and relative grounds as per the

articles 7+8 EUTM Regulation (ss 8-10 TMA 1996) for refusing an application submitted for

trademark registration. These include signs that are not capable of being represented on the

EU trademark register, non-distinctive trademarks which do not possess any distinctive

character, descriptive signs or word choice, generic words or phrases, shapes or other similar

attributes, and trademarks that contradict with public opinion, among others. However, the

absolute grounds used for refusing by the EUTR in the absence of unique character,

descriptive nature, or generic usage, among others, might be effectively dealt with, provided

the trademark applied for has developed the unique character as a result of its usage or

function for which it has been designed. Considering the fact that ‘Squeaker’ has been

recently registered as an EU trademark for duck meat, which is a completely different

product category, ABC Ltd., might still be able to register it as long as care is taken that the

same is put to use in the EU in relation to the specific goods/services for which such a

protection is being requested for. In the current case, ABC Ltd., wants to secure EU

trademark for the name under the baby products (plastic) category. On the other hand, in a

scenario where the term ‘squeaker’ represents ‘eco-friendly’ in any other Member State

(Member State A), then the company can refrain from opting for a national level trademark

so as to avoid any controversies in future. This would be applicable for Member State B also,

where the chosen term denotes ‘holy scripture.’ Based on the above analysis, it is

recommended to ABC Ltd., that presenting all the required evidence in adequate quantum so

as to substantiate their premise of registering the name, shape, and colour of the Squeaker

[8]
Beaker, which they intend registering as EU trademarks could be possible. However, it is not

easy and definitely not simple because it involves lot of documentation to be provided as

evidence to the EIPO authorities.

[9]
Bibliography

Dolde NP-DT and Hawkins M, “At a Glance: Trademark Registration and Use in European
Union” (LexologyOctober 1, 2021)
<https://www.lexology.com/library/detail.aspx?g=f95dbc62-fa6a-4c87-a185-1b9638289588>
accessed March 7, 2022

European Union Intellectual Property Office (EUIPO), “History of Trademarks” (European

Union Intellectual Property Office (EUIPO)December 6, 2021)
<https://euipo.europa.eu/ohimportal/en/news/-/action/view/9079942> accessed March 7, 2022

International Trademark Association (ITA), “European Union Trademark System Review”

(International Trademark Association2020) <https://www.inta.org/topics/european-union-
trademark-system-review/> accessed March 7, 2022

Lexology, “A Grey Area? How to Register Colours as Trademarks” (LexologyJuly 28, 2020)
<https://www.lexology.com/library/detail.aspx?g=c5e79289-f242-4889-80ad-5a54fd88420d>
accessed March 7, 2022

Raj Kumar P, “Can a Sound Mark Be Registered as a Trademark - European Union Court’s
Ruling - Intellectual Property - European Union” (www.mondaq.comJuly 21, 2021)
<https://www.mondaq.com/india/trademark/1092276/can-a-sound-mark-be-registered-as-a-
trademark--european-union-court39s-ruling> accessed March 7, 2022

CURIA - Documents (2019) R 530/2019-2 curiaeuropaeu (Court of Justice for the European
Union (the CJEU))

Lego Juris v OHIM Case C-48/94 (European Court of Justice (ECJ))

Libertel Groep BV v Benelux-Merkenbureau [2003] Case [2003] wwwoxbridgenotescouk

(Court of Justice of the European Union (CJEU))

A 7(1)(e) - TMA 1996

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