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IP > 10. TMII - infringement (relative grounds) > Flashcards

10. TMII - infringement (relative grounds) Flashcards

1
Q

Lloyd Schufabrik Meyer

A

AVERAGE CONSUMER

  • reasonably well informed, observant, and circumspect
  • not a brain box but not stupid
  • type of goods changes level of attentiveness
  • consumers suffer from imperfect recollection (never side by side comparison)
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2
Q

LTJ Diffusion v Sadas

A

IDENTICAL MARKS?
ECJ: “interpreted strictly”
1. exact reproduction
2. only insignificant differences unnoticed by average consumer

MOST differences will be noticed by average consumer

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3
Q

Websphere TM

A

web-sphere and websphere = identical

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4
Q

Blue UP v KCS

A

Herr-Voss and KCS Herr Voss = not identical

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5
Q

Reed v Reed

A

“Reed” vs “Reed Business Information”

if sign is just “reed” then identical

  • important to define what the mark is
  • sign is defined by eyes of average consumer
  • average consumer would read the whole thing as a whole (same font and all caps lock - one unit)
  • not identical marks
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6
Q

Canon v MGM (interdependency principle)

A

CONFUSION

  • interdependency prinicple
  • various elements of s.10(2)/s.5(2) are interdependent
  • as long as ALL ELEMENTS PRESENT, low levels of one element can be offset by another element
  • e.g. high sim of goods, w/ low sim of marks
  • this reflects consumer attitude
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7
Q

Sabel v PUMA

A

SIMILAR MARKS?
global appreciation
compare marks as a whole

examine similarity in:
VISUAL (here one has words other doesn’t)
AURAL/PHONETIC (here Puma has no phonetic comparison - consumers don’t translate marks)
CONCEPTUAL (key in this case - both leaping cat)

AS A WHOLE SIMILAR
nb. not side by side comparison

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8
Q

Lloyd Schufabrik Meyer (confusion)

A

low level of similarity in 1 aspect can be compensated for by high level of another

  • AURAL SIMILARITY ALONE might be enough
  • context is important (if mark used orally like in bars, aural is important)

LLOYDS V LOINTS

  • visual (not really, only LO in middle)
  • conceptual (no, both meaningless in German)
  • aural (high sounds the same in German)

NB, no other case where aural was enough

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9
Q

Matratzen Concord v OHIM

A

Matrazen v Matrazen Market Concord and figure of flying matress

  • similar enough
  • matratzen = dominant feature
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10
Q

VISUAL - consider

A 
words
images
initial and final letters
length of mark
relative size of elements (bigger =more likely dominant)
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11
Q

AURAL - consider

A 
words (consumers don't translate images into words)
shared beginnings (most persuasive)
shared endings (relevant)
central letters (least relevant)
pronunciation of consumers (even if wrong)
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12
Q

conceptual - consider

A 
meaning behind mark
important for pectoral marks
meaningless elements = dissimilar 
misspelling = similar (See more v CMORE)
hard to articulate concept though!
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13
Q

Specsavers v ASDA

A

overlapping ovals on both
BUT Asda’s said “Asda Opticians”
- not infringement
- in composite marks, words dominate

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14
Q

COMPOSITE MARKS

A

words dominate
overall impression
consider fact, colour, size, position, spacing
shared dominant element?

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15
Q

IBSolution v IBS

A

composite mark:
basic font
Geometric shape = negligible

FOCUS ON WORDS then
which were similar (start is the same, and IBS was one unit)

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16
Q

Shaker v OHIM

A

Lemoncello

additional elements (plate) not negligible = so the marks is not similar

only when other elements negligible is assessment only of dominant element

17
Q

Canon v MHN (goods similar - confusion)

A

consider these factors:

  • their nature
  • end users
  • method of use
  • in competition
  • method distributed
  • how D marketed
  • use of ingredient as other product
  • same trade channels
  • same manufacturer

NO SINGLE FACTOR –> argue as many as possible

MOST IMPORTANT: trade practice where consumers know these goods often made by same undertaking = similar (e.g. milk producer likely to make cheese)

18
Q

Canon v MGM (confusion?)

A

function of tm = indicate origin

confusion must be confusion as to origin

MUCH narrower than passing off

19
Q

Lloyd Schuhfabric (confusion?)

A

genuine and properly substantiated likelihood of confusion

CAN’T be remote

20
Q

Interflora v M&S (confusion?)

A

likelihood (of confusion) = probability not possibility

21
Q

SABEL v PUMA

A

likelihood of association is not an alternative to likelihood of confusion

22
Q

Marca moda v Addidas

A

Adidas tried to argue

  1. if earlier mark = reputation
  2. and there is association
  3. then confusion can be presumed

COURT REJECTED THIS
ALWAYS NEED CONFUSION

23
Q

Reputation of earlier mark

A 
Sabel = the more distinctive the more likely confusion
Canon = this applies to inherent distinctiveness AND acquired distinctiveness
24
Q

Picasso v OHIM

A

FAME IS NOT REPUTATION

  • Picasso is a famous historical figure known AS AN ARTIST not as a TM
  • so not more likely confusion
25
Q

Vodafone v Viopafone

A

similar marks

  • visual yes (red box, similar words)
  • phonetic yes (end and start letters)
  • conceptual yes (hints to phone)

similar goods
- identical goods

confusion
- yes vodaphone has reputation too! famous

26
Q

Intel v CPM

A

earlier mark holders might be restricted to reputation “for” certain goods

  • intel famous for chips but that doesn’t stretch to telemarketing
27
Q

Windsurfing (reputation)

A

quantitative (significant number familiar), well known

28
Q

Adidas v Fitnessworld

A

similarity of marks for each ground is different because concept is interpreted in light of each provision

s. 5(2) - confusingly similar
s. 5(3) - sufficiently similar for consumer to ESTABLISH LINK?

here yes

29
Q

Intel Corporation v CPM

A

Intel v Intelmark
- mere bringing to mind is sufficient to establish link for similar marks

global appreciation:
degree of similarity 
similarity of g/s
reputation of earlier mark 
likelihood of detriment
30
Q

Intel Corp v CPM

A

“detriment to distinctive character”

  • dilution
  • whittling away
  • blurring
  • dispersion of identity of earlier mark

factors relevant: reputation, unique on market, damage to distinctiveness

essential factor:
CHANGE IN (OR SERIOUS LIKELIHOOD OF CHANGE IN) ECONOMIC BEHAVIOUR OF AVERAGE CONSUMERS OF G/S
31
Q

Thomas Pink v Victoria’s Secret

A

DETRIMENT TO DISTINCTIVE CHARACTER
able to show Intel criteria because:
- luxury brand
- economic power of later mark (swamped original owner)

32
Q

Interflora (detriment to distinctive caracter)

A

distinctive character can also be damaged by use on identical goods as a description of those goods
(rendering sign generic)

33
Q

L’Oreal v Bellure (damage to reputation)

A

damage to reputation = “power of attraction is reduced”

2 obvious ways
ONE - proposed use would reflect badly on opponent’s reputation (i.e. mark on ineffective goods, antagonism)

TWO - later mark modifies earlier sign in denigratory way (e.g. cursive Coca Cola font saying ‘cocaine’)

34
Q

Colgate v Lucas Bols

A

Klarien for detergent tarnishes Claeryn for Gin

  • power of attraction reduced
  • ‘no one would likely to be reminded of detergent whilst drinking their favourite tipple’
35
Q

L’Oreal v Bellure (unfair advantage)

A

NO NEED FOR CONFUSION

  • not about detriment caused to mark but advantage taken by 3P
  • “clear exploitation on the coat-tails of the mark with a reputation”
  • unfair if no payment = incredibly wide
36
Q

Interflora v M&S (due cause)

A 
INFRINGED (unfair advantage)
DUE CAUSE (Yes)

fair competition = due cause
offering alternative = legitimate use
UA too wide!! need to add teeth to due cause

4 conditions:

  1. offered alternative
  2. not mere imitation
  3. use does not dilute/tarnish mark
  4. use does not adversely affect function of mark
37
Q

Leidseplein Beheer v Red Bull

A

DUE CAUSE = PERIOD USE WITH GOOD FAITH

due cause does not require necessity of use but can relate to subjective interests of D

DUE CAUSE: explicitly recognised as balancing mechanism

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