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Dyson 'collection chamber' not a Trade Mark
The European Court of Justice (ECJ) has recently indicated that a Trade Mark application by Dyson Limited for a “transparent bin or collection chamber” for a vacuum cleaner should not be registrable. The ECJ felt that Dyson were seeking registration of a “concept” and that this did not fulfil the basic legal requirements to qualify as a Trade Mark.
The Law
It is stated at Section 1(1) of the UK Trade Marks Act 1994 that a Trade Mark is any sign capable of graphical representation that can distinguish the goods or services of one undertaking from those of other undertakings.
A Trade Mark shall not be registered; if it fails to fulfil the requirements of Section 1(1), if it is devoid of distinctive character, or if it is descriptive of the goods or services for which it is to be applied.
However a Trade Mark that has acquired distinctive character through use, before the date of application, shall not be refused registration.
Dyson's Application
Dyson's sought Trade Mark protection for the “transparent bin or collection chamber” of their bagless vacuum cleaner in the UK but the Registrar rejected the application. Dyson then appealed to the High Court. The court was of the opinion that the Trade Mark was devoid of distinctive character but was uncertain as to whether the Trade Mark had acquired distinctiveness through use. Dyson had not promoted the sign as a Trade Mark but did have a de facto monopoly in bagless vacuum cleaners.
Therefore the High Court referred a question to the ECJ as to whether a de facto monopoly alone can suffice to give distinctive character.
The ECJ's View
The ECJ recognised that Dyson sought protection for all conceivable shapes of a transparent collecting bin and that, as such, does not constitute a 'sign' and so cannot be registered as a Trade Mark.
However, this was not the question that was referred by the High Court and the ECJ cannot answer a question that has not been asked. The ECJ circumvented this by invoking its right to provide the national court with additional elements that might assist in the interpretation of Community law. The ECJ also recognised that any sign that cannot constitute a Trade Mark is liable to be invalidated if registered and that providing additional advice to prevent this situation would be favourable.
Consequently the ECJ gave guidance as to the subject matter of any application.
There are three conditions;
i) it must be a sign, and
ii) it must be capable of graphical representation, and
iii) it must distinguish the goods or services of one undertaking from those of another.
The ECJ deemed that Dyson's application failed the first criterion because “a concept is not capable of being perceived by one of the five senses and appeals only to the imagination (para.29).”
A concept cannot be registered because it would grant the proprietor an unfair competitive advantage. The proprietor would hold a monopoly of technical solutions and/or functional characteristics, and a Trade Mark is not intended to provide this scope of protection. Dyson's application was simply a representation of a mere property of the product concerned and so could not constitute a 'sign'.
