Dyson's Transparent Case
On 25 January 2007 the ECJ delivered its judgement following the refusal by the UK Trade Marks Registry of an application by Dyson Limited to register its transparent bin as a trade mark. Dyson appealed from the Registry to the High Court and it was during this appeal that the High Court sought guidance from the ECJ on certain legal issues relating to requirements that must be fulfilled for a sign to be registrable.
The ECJ did not need to consider the High Courts questions. Instead, it considered whether Dysons application was for a "sign" in the first place. If it were not a sign, the remaining criteria for registrability would be irrelevant and the application fail at the very first hurdle.
Changes in the law introduced by the Trade Marks Act 1994 suggested that almost anything could constitute a "sign". The types of marks that have since been accepted for registration include not only the traditional types of trade marks such as words and logos but also letters, numerals, the shape of goods or their packaging as well as colours, sounds and even smells.
Dysons application was for a "transparent bin or collection chamber forming part of the external surface of a vacuum cleaner". The goods listed in Dysons application were, as expected, [a]pparatus for cleaning, polishing and shampooing floors and carpets; vacuum cleaners; carpet shampooers; floor polishers; parts and fittings for all the aforesaid goods. A picture of a bagless vacuum cleaner manufactured and marketed by Dyson was attached to the description but was merely included as an example. It was the concept of incorporating a transparent bagless bin that Dyson wanted to register as a trade mark.
In its judgment, the ECJ considered that a transparent collecting bin for a vacuum cleaner, irrespective of shape, appeals only to the imagination. It is not capable of being perceived by one of the five senses. If registered, Dyson would obtain a monopoly in the concept and would be able to prevent competitors from incorporating the feature of a bagless bin in their own vacuum cleaners. This is not the purpose of trade mark law. For these reasons, the ECJ determined that the "idea" of incorporating a particular feature in goods is not a sign.
This case clearly illustrates that a concept cannot be registrable. However, if Dyson had applied to register a particular form of bagless bin as a trade mark rather than just the idea of incorporating a bagless bin it might have been successful in obtaining some protection.