34 - Limitations to Trademark Protection as Defences to Infringement

Summary

True to its free market origins, the EU Trade Mark Directive (TMD)¹ allows any sign to be registered as long as it is acting as a badge of origin and as long as it does not fall into one of the absolute grounds for refusal of registration. Some bars to registration cannot be overcome, such as those prohibiting the registration of functional shapes or signs that offend against public morality. However, other signs, which are descriptive, non-distinctive or generic, while disallowed from immediate registration, can subsequently be registered provided they have acquired distinctiveness through use. The EU trademark regime thus allows for the registration of signs that under previous laws of member states might have been denied registration in the public interest. For instance, in the United Kingdom and in Germany, this category included signs that were distinctive but, the courts held, should be left free for others to use, such as geographical names.² For the same reason, under its 1938 Trade Marks Act, the UK courts would not allow the registration of functional and non-functional shape marks even with acquired distinctiveness.