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36. Subject Matter  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

products. 47 The essential characteristics are the ‘most important elements of the sign’. 48 Precisely which elements qualify has to be assessed on a case-by-case basis, which gives

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14. Trade marks 2: definition of a registrable trade mark, absolute grounds for refusal and invalidation, and revocation  

within the ground of refusal. 247 The assessment of the essential characteristics of a sign must be carried out on a case-by-case basis. There is no systematic hierarchy between the types

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40. Infringement  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

right was confined to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark—in particular, its essential function of guaranteeing

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20. EU competition law and intellectual property  

Unwired v Huawei , 115 it is part of a long-running and complex set of related cases regarding standard essential patent for a formal telecoms standard, when declarations had been made regarding

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39. Revocation  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

distinct commercial origin for products was an essential prerequisite for withstanding a revocation challenge. It follows from the case law that use of marks to decorate products—or

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38. Relative Grounds for Refusal  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

provision is not intended to prevent any use of a mark with a reputation; it is essential in any case that the opponent establishes that use of a similar mark would have one of these

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37. Absolute Grounds for Refusal  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

nappies nor for describing their essential characteristics. The phrase was a ‘lexical invention’, bestowing distinctive power on the mark. In the last case, the subtraction of the space

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15. Trade marks 3: relative ground for refusal and invalidation, infringement, and defences  

therefore be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing

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41. Trade Mark Defences  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

‘own name’ case Anheuser-Busch v. Budvar , Case C-245/02 [2004] ECR I–10989, [82]–[84] cites the earlier ‘descriptive fair use’ case of Gerolsteiner Brunnen v. Putsch , Case C-100/02

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6. Nature of the Rights  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

action of the user must be ‘indispensable’ or ‘essential’ to enable the public to access the work (or subject matter). 202 In many cases, it has been suggested that this means the public

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9. Defences  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

that the inclusion of the emblem was ‘essential to the object for which the image … was created’ rather than incidental. 272 In an earlier case, the High Court held that, by featuring

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43. Geographical Indications of Origin  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

Galana , Case C-393/16, EU:C:2017:991, [32] (hereafter Champagner Sorbet ); Calvados , Case C-75/15, EU:C:2016:35, [21] (hereafter Calvados ). 170 Champagner Sorbet , Case C-393/16

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24. Rights Related to Patents  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

Teva v. Gilead , Case C-121/17, EU:C:2018:585, [35]; Royalty Pharma Collection Trust , Case C-650/17, EU:C:2020:327, [35]. See also Eli Lilly v. Human Sciences , Case C-493/12, EU:C:2013:835

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19. Free movement of goods and intellectual property  

from cases are used in the text. 11 Case 78/70 [1971] CMLR 631. 12 ibid, para 11. 13 [1974] ECR 1147. 14 Case C-19/84 Pharmon v Hoechst [1985] ECR 2281 at para 23. 15 Case C-16/03

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1. Introduction  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

or tribunal in the United Kingdom in a case decided before IP completion day (whether or not as an essential part of the decision in the case’. According to the House of Lords Constitution

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27. Grounds for Invalidity: Novelty, Individual Character, and Relative Grounds  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

v. OHIM , Case T-337/12, EU:T:2013:601. 93 Grupo Promer Mon Graphic v. OHIM-PepsiCo , Case T-9/07 [2010] ECR II–981, [24]–[26]; aff’d in PepsiCo v. Grupo Promer , Case C-281/10P

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13. Trade marks 1: key features, theoretical underpinnings, and the national, EU, and international regimes  

recognised this since its earliest case law on trade marks, identifying the origin-denoting function of a trade mark as its ‘essential function’: 6 the essential function of the trade mark

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49. Civil and Criminal Remedies  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

no arguable case because the evidence is so insubstantial that it is clear that the case will fail. 22 In many situations, particularly in passing-off and trade mark cases, the court

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8. Registered designs  

component can be seen some of the time in such a way that all of its essential features can be apprehended. In that case, the rotor element of a shredding machine was considered to remain

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11. Patentability  

novelty, since it is unlikely to be the case that all essential features have been revealed. 49 [1980] RPC 261. 50 [1982] FSR 303 (HL). 51 See Case T658/91 SANOFI/Enantiomer [1996]