11. TMIII - infringement (use) Flashcards
BMW v Deenik
s. 10(1) infringement
- use as a TM
- even though not using it to identify origin of his goods
- just mention of someone else’s TM in course of trade = infringement
Holterhoff v Ulrich
s.10(1) infringement?
NO - use did not indicate origin so its not infringement
- TM used descriptively
- if use in the course of trade, but used descriptively = NOT indicating origin so NOT use
cases after this constrained it to facts:
- oral dealings with non-consumer
- descriptive use (neither D nor C considered term to indicate goods came from C)
Arsenal v Reed
to exercise rights against use, TM owner must show use jeopardises TM’s function (in particular the “essential” function of indicating goods
s. 10(1) not absolute protection
- use of sign in context of sale to consumers not purely descriptive
- use creates impression of MATERIAL LINK between Reed and Arsenal
- use jeopardises guarantee of origin
R v Johnstone
HL misapplied test
- said ECJ said focus on whether there is harm to essential function of TM
- HL said this is harmed if D uses mark as tM to indicate origin
- so didn’t here, so no infringement
- outcome correct
- but probably wrong appraoch
Adam Opel v Autech
only infringe if D’s use affects function of C’s TM
- if public do not see it as indicating origin or that D/C are economically linked, NO infringement
L’Oreal v Bellure (Extending functions)
no damage to origin function (consumers knew it was smell-a-like, not linked to TM proprietor)
- court held art.4(1)a can be infringed if there is an adverse effect on other functions
COMMUNICATION
INVESTMENT
ADVERTISING
but did not clarify these
Google France (advertising function)
purchasing keyword of C’s TM does not harm advertising function even if C now has to pay a higher price for obtaining better ranking for its own sponsored links
- C will appear prominently (and for free) in the unsponsored links
Inferflora (investment function)
TM used to “acquire a reputation to develop customer loyalty” = investment function
- wider than advertising function (just one technique to acquire/preserve rep)
Damaged if 3P substantially interferes with proprietor’s use of mark to acquire rep (i.e. garnishment)
L’Oreal v bellure (communication function)
TM’s ability to communicate information
- alludes to g/s’s characteristics
Arsenal v Reed (in course of trade)
“In the context of commercial activity with a view to economic advantage and is not a private matter”
- incl not profit
- incl charitable
- incl. barbie girl
L’Oreal v eBay (in course of trade)
sale by individuals on internet market not course of trade
- but can be if “beyond the realms” of private activity (e.g. 1000s, e.g. eBay calls them “business sellers”)
Liability for selling keywords?
Google France
- NO
- in course of tarde
- BUT NOT in relation to g/s (not putting it on g/s)
- google = no primary liability
Liability for PURCHASING keywords?
Google France:
ORIGIN function harmed?
- could be,
- if advert does not enable average internet user to ascertain whether g/s refer to TM owner’s goods
ADVERTISING function harmed
- needing to pay more does not harm advertising function
Harm to investment function for purchasing keywords
YES if use harms acquiring/preserving reputation
BUT fair competition if use requires TM owner to adapt its efforts to acquire and maintain rep
L’Oreal v EBAY (liability of eBay)
displaying TM on marketplace
- NO infringement (not used, just allowing others to)
selection by eBay of TM via google adwords to promote ebay
- NO infringement (use re: g/s, but not for goods similar or identical, just for auction site)
- could be s.10(3) infringement unless due cause
use to promote customer sellers’ offers of TM goods
- can be harm to function
