It just a few months ago that this blog reported on the Opinion of Advocate General Tanchev in the Sky v SkyKick, C-371/18 case.

• Whether an EU or national trade mark may be declared wholly or partially invalid on the ground that some or all of the terms in the specification of goods and services are lacking in sufficient clarity and precision to enable the competent authorities and third parties to determine on the basis of those terms alone the extent of the protection conferred by the trade mark;
• In case that answer to the question above is in the affirmative, whether a term like 'computer software' is too general to be considered 'sufficiently clear and precise';
• Whether it is bad faith simply to apply to register a trade mark without any intention to use it in relation to the specified goods or services;
• If so, whether it is possible to conclude that the applicant made the application partly in good faith and partly in bad faith if and to the extent that the applicant had an intention to use the trade mark in relation to some of the specified goods or services, but no intention to use the trade mark in relation to other specified goods or services;
• Whether section 32(3) of the UK Trade Marks Act 1994 is compatible with the EU Trade Mark Directive and its predecessors.

Hästens chequered figurative mark

• Class 20: ‘Furniture,  including  beds,  bed  frames  and  bedroom  furniture;  mattresses,  spring mattresses, overlay mattress; pillows and down pillows’;

• Class 24: ‘Woven textiles, textile products, not included in other classes; bed linen; down quilts’;
• Class 25: ‘Clothing; footwear; headgear’;

• Class 35: ‘Marketing, commercial information related to furniture, home furnishings and interior decoration products, textile products, bed linen, bed covers, clothing, footwear and headgear and toys’.

Did you remember to specify the scope of your trade mark application?

1. How does the requirement of legitimate reasons relate to the requirement that the exercise of the exclusive rights of the trade mark holder "must be reserved to cases in which another party’s use of the sign adversely affects or is liable adversely to affect one of the functions of the trade mark" [CJEU C-661/11 Martin Y Paz, par. 58]?
   In particular, can there be legitimate reasons if the functions of the trade mark are not adversely affected? Conversely, will an adverse impact on the functions of the trade mark always constitute legitimate reasons within the context of resale of exhausted goods?
2. Can a trade mark proprietor oppose resale of goods carrying the trade mark after they have been repaired by a third party not licensed to use the trade mark? If this depends on the existence of legitimate reasons, are the nature of the goods and the nature of the repair carried out relevant to this inquiry? 
3. Is opposition against resale excluded if it is clear that the repair was carried out by a party not licensed to use the trade mark and there are no suggestions of economic ties to the trade mark proprietor?
4. What, if any, difference does it make if the trade mark at stake is a collective mark? 

I find that the essential characteristics of the contested trade mark are the shape of the goods in the dimensions indicated in the representation of the mark, the protrusions making up the pull tag, and the colour red. [para 40]

3(1) The following shall not be registered –
(a) signs which do not satisfy the requirements of section 1(1)...

(1) In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.
A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

The Libertel judgment has been generally understood as meaning that neither a sample of the colour(s), nor merely descriptions of colour in words, such as ‘red’, are sufficiently clear, precise and/or durable to satisfy the requirement for a graphical representation of colour marks. Instead, the practice of using internationally recognised colour identification codes has become the usual way of representing such marks. [para 78]

… It seems to me that where a mark contains colour but is not a colour per se mark, the need for precision as to hue will depend on the extent to which other elements of the mark serve to make the mark capable of distinguishing. More exactly, it will depend on the extent to which the colour of the relevant feature of the mark contributes to making the mark capable of distinguishing and whether it is likely that only a particular hue will confer on the mark that capacity to distinguish. It will always be a question of fact and degree. [para 67]

The Trade Mark could be capable of distinguishing only if a particular hue of red used on the main body of the product is associated with FBSA’s cheese. It follows that the Trade Mark must be limited to a single hue of red... [para 76]

… The description specified the colour red, but not any particular hue. The absence of any statement about hue (such as a Pantone number) was all the more striking because the description did expressly limit the shape to particular dimensions shown in the picture. Had the Trade Mark been filed with no description at all, the reader would of necessity fall back on the picture and assume that the colour of the Trade Mark was the hue shown in the picture. Alternatively, if the description had said ‘the colour red as shown in the representation’, the result would have been the same. As it is, a reader of the specification must take the description on file into account and would conclude that ‘the colour red’ encompassed any red hue. [para 78]

…if reader did not reach this conclusion, the only viable alternative view would be that the description and the picture are inconsistent. The principle that such inconsistency results in a trade mark registration lacking the clarity and precision required by the Sieckmann criteria, first stated in Glaxo, has also been adopted by the CJEU, most recently in Red Bull GmbH v EUIPO (Case C-124/18 P) EU:C:2019:641: [para 79]
[37] Where the application is accompanied by a verbal description of the sign, that description must serve to clarify the subject matter and scope of the protection sought under trade mark law and such a description cannot be inconsistent with the graphic representation (see, to that effect, judgment of 27 March 2019, Hartwall, C-578/17, EU:C:2019:261, paragraphs 39 and 40).