All three shape marks-exclusions in EUTMR art. 7 e) can be avoided by adding an essential element to a shape, which is not attributable to the conditions set out in the exclusions, such as a distinctive nonfunctional element. A valid shape mark registration gives the rights holder the right to prevent other trade mark registrations of identical or similar signs for identical or similar goods if there exists a likelihood of confusion on the part of the public, as well as to initiate infringement proceedings against anyone who uses such a sign in their line of business. Under the test for likelihood of confusion, it is assessed to what extent the average consumer remembers a distinctive sign, which is not limited to its distinctive elements. Since the average consumer is capable to remember other elements than distinctive elements, only negligible elements are excluded from the average consumer’s overall perception of the sign. Non-distinctive elements are not necessarily deemed negligible, depending on their size and/or position within the mark. So, while functional elements are usually perceived as merely functional or ornamental, and thus non-distinctive, they may still be deemed non-negligible due to their size and/or position within the mark. Case law shows that a likelihood of confusion may therefore follow as a result of two marks only sharing an element deemed non-distinctive on its own. The CJEU has also expressed that the public interest behind the test for likelihood of confusion is to secure the rights holder’s interests and not to secure the competitors’ need for a free access to signs and elements. The need to keep certain signs and elements free is therefore not considered a relevant factor in the test for likelihood of confusion. So, while it may seem logical that a sign, which is registrable only due to incorporating a distinctive element as a part of a complex mark, would have a scope of protection limited only to that distinctive element, case law shows that such a conclusion is not necessarily true. In this thesis it is argued that if the average consumer does not even perceive that a functional element constitutes a part of a complex decorated shape mark, consisting of both e.g. a functional naked shape and the added distinctive element, the functional element is negligible and will not be remembered by the average consumer. But if the average consumer is able to perceive a functional naked shape or element as its own indication of origin, or at least as an element of such a complex mark, its size and position alone in the complex mark could be enough to be able to establish a similarity of signs with another resembling shape, even if the latter lacks the inclusion of the same distinctive element. If the other shape does not deviate enough from the visual appearance of the functional naked shape or element in the registered complex mark, the similarity of the signs could be enough to cause a likelihood of confusion.
| Identifer | oai:union.ndltd.org:UPSALLA1/oai:DiVA.org:su-165875 |
| Date | January 2019 |
| Creators | Gierlöff, Gustav |
| Publisher | Stockholms universitet, Juridiska institutionen |
| Source Sets | DiVA Archive at Upsalla University |
| Language | Swedish |
| Detected Language | English |
| Type | Student thesis, info:eu-repo/semantics/bachelorThesis, text |
| Format | application/pdf |
| Rights | info:eu-repo/semantics/openAccess |
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