On 14 September, Advocate General Léger opined that a transparent bin, as used in a Dyson vacuum cleaner, is not a trade mark. He said Dyson was trying to protect a concept and a concept cannot be a trade mark. He added that even if it was a trade mark it was precluded from registration by Article 3(1)(e) of the Trade Marks Directive (89/104) (Dyson v Registrar of Trade Marks C321/03).

Dyson, the manufacturer of bagless vacuum cleaners, had filed a trade mark application in class 9 for vacuum cleaners, carpet shampooers and the like. The application contained two drawings of vacuum cleaners, one in the upright range, the other in the canister range, accompanied by the description "a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner"

The UK Trade Marks Registry rejected the application on the grounds of lack of distinctiveness under Article 3(1)(b) of the directive and under Article 3(1)(c) that it served to designate the kind and intended purpose of the product. Dyson appealed.

The High Court thought that the marks were devoid of distinctive character and descriptive but wondered whether they could have acquired a distinctive character through use under Article 3(3) of the directive. It referred to the ECJ two questions to determine under what conditions a functional feature which forms part of the appearance of a product can acquire a distinctive character through use. The Advocate General did not consider these questions because, in his view, the mark was not a trade mark in the first place.

He agreed with the European Commission (which had intervened in the proceedings) that Dyson was actually seeking protection for a new concept for collecting, storing and emptying waste. The application sought to obtain exclusive rights over all possible appearances that the functional feature could take on.

The container was shown in the application in two different shapes but the protection claimed was not limited to a particular shape. The feature need only form part of the external surface of a vacuum cleaner and allow the user to see through the container. Thus Dyson was not seeking to protect a shape but a transparent collecting bin per se. Nor was it seeking to protect a colour, but transparency.

The Advocate General said that a concept cannot constitute a trade mark. A concept appeals only to the imagination. Unlike an odour, a colour or a sound, a concept is conceived by the mind and cannot be perceived by one of the five physical senses. The essential function of a trade mark is to enable a consumer to distinguish one product from others which have another origin. This objective cannot be achieved by a sign which is capable of being perceived by human beings in diverse ways.

He also said that a functional feature which forms part of the appearance of a product and is capable of taking on a multitude of appearances is not capable of being represented graphically within the meaning of Article 2. In Sieckmann (Case C-273/00), the ECJ said that a graphic representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. The appearance of Dyson’s collecting bin and the way in which it is integrated into a vacuum cleaner will change over the years. The graphic representation would not allow the competent authorities or competitors to determine the precise subject of the protection afforded by the registered mark.

The Advocate General went on to say that if the ECJ were to consider that such a functional feature could fulfil all the necessary characteristics to constitute a trade mark, Article 3(1)(e) would still preclude registration.

He said that the reasoning behind the ECJ judgment in Phillips (Case C-299/99) applies equally to any functional feature which forms part of the appearance of a product. Although Article 3(1)(e) refers to signs which consist exclusively of the shape of a product, the general interest underlying that provision requires that registration of a functionality like that at issue here should be refused. Otherwise, it would reserve the exclusive use of a technical solution to a single economic operator forever. It could prevent new operators from entering the bagless vacuum cleaner market and paralyse competition, thereby frustrating the system of undistorted competition which the EC Treaty seeks to maintain. It would also run counter to Article 7 of the TRIPS Agreement.

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