• COURT DIARY

    A Clear Bin Policy

    In 1993, Dyson Ltd introduced a revolutionary new vacuum cleaner to the UK market. This was the bagless Dual Cyclone cleaner which employed the cyclonic technology invented by James Dyson. The most notable feature of this new product was that the collection bin was made from clear plastic, which allowed the user to see the dirt collected by the cleaner. Annual sales of this popular product in the UK increased from £3 million in 1993 to £60 million in 1996. During this period, 1993-1996, Dyson held monopoly in the sale of bagless cleaners having a transparent bin in the UK.

    In December 1996, Notery Ltd (a company owned by James Dyson) applied to register the following trade mark in respect of, amongst other goods, vacuum cleaners:

    “The mark consists of a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation”, the representation being an illustration of the Dual Cyclone cleaner.

    The UK Office raised objections to the mark under Sections 3(1)(a), (b) and (c) of the 1994 Trade Marks Act. These objections were maintained at a Hearing, in the face of a broad body of evidence, put forward by the applicant, to establish acquired distinctiveness. The applicant appealed to the High Court.

    The Court (Mr Justice Patten) ruled as follows:

    • The appeal was a review rather than a re-hearing, given that it involved errors of law and a dispute about the adequacy of the evidence filed by the applicant.

    • It was unnecessary to consider the Section 3(1)(a) objection separately. The Court only needed to answer a single question in relation to distinctiveness of origin, which is whether the sign is capable of distinguishing the goods of one undertaking from those of another in the mind of the consumer.

    • Section 3(1)(c) required the consideration of two separate but related aspects of descriptiveness:

      i) Whether the descriptive nature of the sign is such as effectively to rob it of commercial distinctiveness; andii) Whether its use of ordinary descriptiveness (whether literal or graphic) is unfairly monopolistic.

    • Novelty in itself was insufficient to prevent the clear bin from being merely descriptive of the kind of cleaner it formed part of.

    • The goods in question, for the purposes of Section 3(1)(c), were bagless vacuum cleaners. The transparent bin claimed by the applicant indicated to the customer that he was buying such a bagless cleaner. In other words, it indicated the kind of product being purchased. It followed that the mark was correctly rejected under Section 3(1)(c).

    • The trade mark nature of the distinctive grilles or radiators of motor cars had long been a feature of the trade and the relevant public had come to recognise it as such. This was not the position with regard to features of vacuum cleaners in 1996.

    • Although it was unnecessary to decide the point, it was likely that the application would also have been rejected under Section 3(1)(c) because it would represent a monopoly in a feature that should be freely available for use by other manufacturers of bagless cleaners.

    • Where, at the relevant date, there is only one manufacturer of the particular type of goods, and therefore only one user of the mark, it must be seriously arguable that the test of distinctiveness as a trade mark can only be applied by discounting the links between the mark and the goods which exist solely because of the monopoly of position and the association it produces.

    • Having reviewed the applicant’s evidence of use, it was clear that, by 1996, the transparent bin had not been actively promoted by Dyson as a trade mark. Without such promotion, it was difficult to see how the clear bin could have come to be regarded in the minds of the public as a guarantee that the product was a Dyson product. On this basis, the Judge found that, in his view, the applicant’s evidence did not establish the level of acquired distinctiveness required to overcome a Section 3(1)(c) (and Section 3(1)(b)) objection.

    • However, it was possible that, under the test laid down in the Philips v Remington decision, the ECJ had envisaged a situation where a manufacturer, having a monopoly in a feature of a product, could establish the necessary degree of acquired distinctiveness, even in the absence of the promotion of the feature as a trade mark. For this reason, the Judge decided to put this point of law to the ECJ for a ruling.

     

    Comment

    It has long been established, under trade mark law, that the manufacturer of an entirely new, patented product should not only identify a trade mark under which to sell the product, but also coin a generic term for the product that can be used by competitors, once the period of patent protection expires. Although this has generally applied to word marks and their generic descriptors, there is no reason why the principle should not also apply to less traditional marks such as shape and/or get-up.

    It appears that, in Germany, Dyson sells cyclonic technology based vacuum cleaners which do not have transparent bins. For some reason, German consumers prefer not to see the debris being collected. It is submitted that this non-transparent bin product should also have been launched by Dyson in the UK under a trade mark other than Dual Cyclone. Having done that, Dyson could then have run an advertising campaign emphasising the transparent bin feature of its Dual Cyclone product and its exclusive association with that brand.

    Given the anti-monopolistic instincts of the English judiciary, it is by no means certain that even these steps would have led to the acceptance of Dyson’s transparent bin mark as a registrable trade mark. However, without, what could be viewed as a “generic”, non-transparent bin version of the cyclonic vacuum cleaner on the market, for the purposes of comparison, it was never likely that Dyson’s transparent bin feature would be accepted as a trade mark in this country.