Oralgate manufactures toothpaste and dental equipment. Advise Oralgate in respect of EACH of the following three scenarios: i.

The extent to which it can obtain trade mark registration for its popular toothpaste aimed at children which they can use not only to brush their teeth, but also to blow bubbles. The toothpaste is pink, strawberry flavoured and named DENTABUBBLE. It has been sold in the UK since 2003. ii. Oralgates most popular product is a toothpaste named MINTEX. Oralgate holds a registered trade mark for the word MINTEX for toothpaste. Radex has applied to register the term MINTOX for toothpaste, mouthwash and cleaning fluid for use in bathrooms. iii. Dentaco has obtained supplies of genuine MINTEX toothpaste from Germany and Bolivia which it is selling in the UK. It has applied a sticker to the side of each box with a description of the product and its ingredients. In addition, in order to entice consumers, it has taped a toothbrush on to the side of each toothpaste box as a free gift.

1
When submitting its trade mark application, Oralgate will need to provide a list of the goods and/or services on which it intends to use its mark. This is an integral step because it determines the scope of protection offered to the mark owner and it opens the mark to partial revocation for those goods and services it was registered but not used for: s46 Trade Mark Act 1994 (TMA). Oralgate will seek to register its three marks under toothpastes in Class 3 and potentially for tangential goods and services it may expand into, like mouthwash or dental equipment. Examination of the mark is conducted by UKIPO, whose main focus is s3(1) TMA. Pink Colour To be registrable, the mark must be a sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings: s3(1)(a), invoking requirements of s1(1). Colours are capable of perception by the senses, and thus qualify as a sign: Case C-273/00 Sieckmann v Deutsches Patent- und Markenamt. Colours can be represented graphically by providing a sample and the Pantone number: Case C-104/01 Libertel v Benelux Merkenbureau. This meets the standard set out in Sieckmann: it is clear, objective, precise, self-contained, durable, intelligible and easily accessible. However, the colour is incapable of distinguishing, irrespective of any possible acquired distinctiveness, as this is a common colour for the goods in question: Case C-447/02 P KWS Saat AG v OHIM, taking into account the presumed expectations of the average consumer of such goods, ie. parents who are reasonably well-informed, observant and circumspect: Case C-342/97 Llyod Schuhfabrik Meyer. Alternatively, the registration of the colour pink will fail under s3(1)(b) as a mark devoid of any distinctive character. The test is whether the relevant section of the public perceives the sign as a trade mark: Philips v Remington. The consumer would not think it indicative of origin, merely as decoration or indicative of the strawberry flavouring: Colgate-Palmolive Co's TM Application. Pink toothpaste is neither original nor novel get-up for toothpaste: KWS Saat.

For these reasons, it may also fail as a descriptive mark: s3(1)(c). Third parties are likely to use the sign as applied for in order to describe characteristics of toothpastes (e.g. strawberry flavouring), and by policy, these should remain open to use, whether commercially essential or merely ancillary: Case C-191/01 P OHIM v Wm Wrigley Junior Co (DOUBLEMINT). These tests operate independently of each other, but may overlap and the reasons for objection under one section may support objection under another: Case C-329/02 P SAT.1 SatellitenFernsehen GmbH v OHIM. If it passes s1(1) but fails under s3(1)(b), the registration may be rescued by the proviso to s3(1) where through extensive use, consumers become aware that the colour is indicative of originating from a particular undertaking. Applying the requirements in C-108/97 Windsurfing Chiemsee: the nature of the sign is a generic, naturally occurring colour and the proportion of consumers who will use pink to identify the goods as originating from Oralgate is probably small. As the mark here is extremely non-distinctive and descriptive, Oralgate will have to adduce great evidence of the marks market share, its intensive, wide-spread and long-standing use, promotional expenditure on education and statements from chambers of commerce and other trade associations. It is likely to fail under s1(1), and even if successful, it is unlikely to be registrable by way of s3(1)(b) and s3(1)(c), unless against all odds Oralgate can adduce evidence of acquired distinctiveness. Strawberry Flavour The strawberry flavour qualifies as a sign as it is perceived through taste. However, it is difficult to represent graphically, and a parallel can be drawn with smell marks: molecular compositions, chemical formulae, text descriptions and taste samples are all unlikely to suffice for they are neither precise nor self-contained: Sieckmann. Representing the taste as a picture of a strawberry is also too imprecise: T-305/04 Eden SARL v OHIM. Even if there were a way of graphically representing it, it is likely to fail for S3(1)(b) distinctiveness. Taste marks do not inherently distinguish one undertaking from anothers especially because there are so many strawberry-flavoured toothpastes and consumers have no access to the products flavour prior to purchase. Average consumers are more likely to assume that the flavouring is intended to disguise the unpleasant taste of the product, and there is public interest in keeping the flavour available to other manufacturers: Case R-120/2001-2 Eli Lilly. It is likely to fail under s1(1), and even if successful, it is unlikely to be registrable by way of s3(1)(b), save for the proviso to s3(1); taste marks rarely succeed and this one is particularly weak. DENTABUBBLE DENTABUBBLE passes the requirements of s1(1). As a made-up word, it is likely to be both inventive and capable of distinguishing origin. The greatest challenge to its registration is likely to come from s3(1)(c) where the mark is merely descriptive of the class of goods in question, and there is a reasonable likelihood that third parties will use the sign to describe characteristics of the goods in the ordinary course of trade. It is not necessary for a sign to be in current use before it is susceptible to an objection; thus, dental and

bubble might be descriptive in the future even though it is currently novel for toothpastes: Doublemint. However, as a portmanteau, it must be taken as a whole, used naturally, and its constituents should not be assessed separately: SAT.1. Where the mark consists exclusively of descriptive terms, the words in question may be juxtaposed such that it is resistant to natural descriptive uses, ie. dental bubble as opposed to bubble toothpaste: Case C-383/99 P Procter & Gamble Company v OHIM (BABY-DRY). The difference between the natural use of language and the mark suggests that it is distinctive and non-descriptive: Doublemint. Alternatively, its popularity and education of the public, among others, may allow the registration to be saved by the proviso to s3(1).

2
The onus is on Oralgate to convince the registrar to refuse Radexs registration of MINTOX by raising opposition on s5 relative grounds. As the proprietor of the earlier mark MINTEX, they have standing to bring proceedings: s6(1). The assumption is that there is evidence of use of MINTEX within the past 5 years or proper reasons for non-use: s6(3). Oralgate may first try to assert that the marks are identical and they will be used for identical goods, ie. toothpaste: s5(1). They will seek to do so because once established, nothing further needs to be proved; confusion is presumed and the junior mark will be denied. There is identity between the marks from the view of the average consumer where the junior mark reproduces, without any modification or addition, all the elements constituting the latter. The courts will construe identity narrowly as the protection awarded is great: Case C-291/00 LTJ Diffusion v Sadas Vertbaudet, and hence, switching the E for an O is likely significant enough visual and aural difference: Diffusion. Alternatively, Oralgate will rely on s5(2)(b) where the marks are similar and the goods are identical/similar. To determine mark similarity, marks should be compared as a whole, bearing in mind their distinctive and dominant components, namely their high degree of visual, conceptual (invented words) and phonetic similarity (MINT-X): Case C-251/95 SABEL v Puma. Consumers imperfect recollections must be taken into account, such that they are unlikely to be alert to the one letter difference and may be careless with spelling or pronunciation; the marks should not be compared side to side: Llyod. Next, it will seek to prove that the goods are similar. Applying the factors suggested in Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc: all are hygiene products (intended purpose), used in the bathroom (nature, method of use), typically sold through similar trade channels (complementary products), but unlike mouthwash, cleaning fluid is not typically sold alongside toothpaste. The factors are interdependent. Greater similarity in marks and greater reputation of the earlier mark can offset the lesser degree of similarity in goods, taking a global appreciation of the situation: SABEL. Oralgate needs to adduce evidence of confusion in the mind of average consumers, association being one aspect of such confusion: Canon. However, likelihood of association does not result in a presumption of confusion: Case C-425/98 Marca Mode CV v Adidas AG and Adidas Benelux BV. With

regard to mouthwash and cleaning fluid, a likelihood of confusion may be found, despite a lesser degree of similarity between the goods, since the marks are very similar and the earlier mark, whether per se or because of the reputation it has acquired, is highly distinctive and thus afforded higher protection: Canon. MINTOX can be successfully opposed.

3
Given that Dentaco is selling the toothpaste under Oralgates MINTEX sign, it is clear that there is infringing use under s10(1). However, they will rely on the concept of exhaustion of rights in s12(1) to defend against Oralgates opposition, namely that when goods are placed in the European Economic Area by or with the consent of the IP owner, the owners rights are exhausted in all the states of the EEA. The goods must have been intended for marketing within the EEA for the owners rights to be exhausted: Case C-414/99 Zino Davidoff SA v A&G Imports Ltd. Thus, Oralgate may face difficulty stopping Dentacos parallel imports from Germany, but not Bolivia, which easily qualifies as infringing use. This is unless Dentaco can prove Oralgate gave express or implied consent when marketing in Bolivia that the goods would be resold within the EEA, though the fact that Oralgate sold in Bolivia without contractual provision against reimporting is insufficient grounds for the courts to imply consent: Mastercigars Direct Ltd v Hunters and Frankau. It is also on the assumption that Oralgate has put the toothpastes on the market, which entails a sale and transfer of property outside the UK: Case C16/03 Peak Holding v Axolin-Elinor. For instance, if Dentaco obtained free samples in Germany (Case C-324/09 LOral v eBay International) or obtained the goods contrary to Oralgates contract with its licensees (Case C-59/08 Copad SA v Christian Dior Couture) then Oralgate will not be deemed to have put the goods on the market, and it will not have exhausted its rights. However, Oralgates exhaustion of rights is subject to s12(2) which exempts Oralgate where there exist legitimate reasons for the mark owner to oppose further commercialisation of the goods. Oralgate will seek to argue that Dentacos tampering with the goods is a legitimate reason for it to oppose its sales. Applying the Case C-427/93 Bristol-Myers Squibb v Paranova guidelines to this case: Dentaco may provide reasonable initial evidence that the repackaging was necessary to translate the description and ingredients of the toothpaste from Germany (Case C-348/04 Boehringer Ingelheim v Swingward Ltd and Dowelhurst). Conversely, the lack of notice given to Oralgate may allow Oralgate to claim substantial damages for past infringing sales and to stop future sales till sufficient notice is given: Boehringer II. Unfortunately, Dentaco can easily discharge its burden by giving 2 or 3 days notice: Glaxo Group Ltd v Dowelhurst Ltd (No 2). It is preferable for Oralgate to prove that the repackaging affects the condition of the goods or injures the reputation of the trade mark. It would rely on the extension of a string of pharmaceutical related cases to show that the addition of a tool suffices as physical impairment: Paranova, drawing

parallels between a spoon and a toothbrush. This may not be effective as these cases were driven by a desire to protect the pharmaceutical companies investment and profit margins against cheaper parallel imports, a situation which is not analogous to Oralgates. Alternatively, it could argue that the presumably low quality of the toothbrush or the provision of a free gift detracts from the reliability, quality and aura of luxury attached to its MINTEX mark, and suffices as mental impairment: Boehringer II. In the unlikely event that it is able to do so, both are grounds to prevent repackaged parallel imports by Dentaco. Word Count: 2002