Distinctiveness – IP Law Watch

No Point Crying Over Spilled “Not Milk” – Distinctiveness Issues For Trade Marks In The Plant-Based Food Industry

Jun 03 2024

The plant-based food industry is growing at a rapid pace, with popularity amongst consumers increasing because of its purported health and environmental benefits. However, a recent General Court decision in the EU highlights the difficulties brands face in obtaining trade mark protection for plant-based food if brands are not sufficiently distinctive (despite a tendency in the industry to develop brands which are a play on words of traditional food products).

Are You Eligible to Hold a .au Domain Name?

Mar 04 2024

In Australia, domain names under the .au namespace are subject to stringent eligibility and allocation rules. Importantly, non-Australian commercial entities are only eligible for registration for an Australian domain if they have applied for or hold an Australian trade mark registration with an exact match to the relevant domain name.

A Thorny Issue Resolved as “Flowers For All” Trade Mark Deemed Distinctive

Dec 03 2023

Business blooms for one trade mark owner as “FLOWERS FOR ALL” has been deemed distinctive enough to be registered as a trade mark in Australia.

Burger Wars: The Big Beef Between McDonald’s and Hungry Jack’s–McD Asia Pacific LLC v. Hungry Jack’s Pty Ltd [2023] FCA 1412

Dec 01 2023

In McD Asia Pacific LLC v. Hungry Jack’s Pty Ltd [2023] FCA 1412, fast-food giant McDonald’s and Australian dinner-time rival Hungry Jack’s faced off in the Federal Court of Australia over their burger names BIG MAC vs BIG JACK and MEGA MAC vs MEGA JACK.

Artificial Sweeter Decision Sours Halal Authority: Halal Certification Authority Pty Limited v Flujo Sanguineo Holdings Pty Limited [2023] FCAFC 175

Nov 28 2023

The Halal Certification Authority Pty Ltd (HCA) is a for-profit company that provides certification services to third parties. It is the owner of the following trade mark registered for issuing halal certification to businesses and individuals for goods and services if religious and technical requirements are met:

Nothing more than Empty Words: The Difficulty with Registering Slogans as Trade Marks in the EU

Apr 25 2023

Companies continue to face difficulties in achieving EU trade mark protection for their slogans. In separate recent decisions of the EU General Court, two trade mark applications relating to advertising slogans were rejected on the grounds that the marks lacked the ‘distinctive character’ required to be registerable under Article 7(1)(b) of Regulation 2017/1001. These two decisions join a long list of case law rejecting similar applications.

Dior Did Not SADDLE on Distinctive Character of Its Iconic Bag

Nov 17 2022

Another unfavourable decision on non-traditional trade marks has landed, now in relation to Dior’s iconic Saddle bag. The EUIPO’s Second Board of Appeal decided that Dior’s Saddle bag is not distinctive with respect to handbags. The decision is seen as surprising yet not unpredictable, given the recent history of unsuccessful trade mark applications for 3D signs (for example, see our previous article on the Moon Boot case here).

Can Dawgs Free-Ride on Bulls – Interpretation of Unfair Advantage for UK Trade Marks

Sep 19 2022

The UK High Court has rejected an appeal filed by Monster Energy to register its trade mark ‘RED DAWG’. The court deemed that it could take unfair advantage of the famous energy drink brand’s trade mark ‘RED BULL’. The case (Monster Energy Company v Red Bull GmbH [2022] EWHC 2155 (Ch)) was initially held before the UKIPO before Monster Energy’s appeal to the High Court.

Aug 31 2022

Cadbury has proven the adage that perseverance is the key to success as their continued and well-document pursuit over the registration of the colour purple has finally seen success in Société des Produits Nestlé S.A. v Cadbury UK Limited [2022] EWHC 1671 (Ch). The UK High Court has partially upheld the Cadbury appeal over UKIPO’s previous 2019 decision. Hopefully, this will bring clarity to businesses wishing to register colour marks instead of creating further ambiguity around the registrability requirements of colour marks and other non-traditional marks.

Putting Position Marks Front and Centre: CJEU Considers Assessment of Position Marks for Services

Oct 28 2020

In a recent Court of Justice of the European Union (CJEU) ruling, based on a referral from the Stockholm Court of Appeal, the CJEU considered whether the distinctiveness of a sign that is to be applied to specific services should be assessed with regard to what is customary in the relevant sector. A full copy of the decision can be found here.

The Court clarified that, in the context of trade marks for services, the assessment of a sign’s distinctiveness should not always involve an assessment of norms and/or customs of the sector.

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