12. Defences

Question 1

Dinwoodle (academic)

Answer 1

D more likely to try and rely on defences after scope of infringement widened

Question 2

Federation cynologique

Answer 2

proprietor need not invalidate later mark before bringing proceedings for infringement

Question 3

Anheuser-Busch v Budvar (use of name or address)

Answer 3

defence not confined to personal names

Question 4

Celene (use of name)

Answer 4

company name covered by defence

Question 5

Hotel Cipriani v Cipriani

Answer 5

trading name = covered
BUT substantial variation from it is not

(Recast Directive –> own personal name and address only)

Question 6

Gerosteiner

Answer 6

“Gerri” for miniral water
“Kerry spring” later use

later use indicates geographical origin (descriptive use) = defence

Question 7

Adam Opel

Answer 7

REFERENTIAL USE is outside scope of descriptive use defence

• use was part of faithful reproduction but NOT within exception
• purpose of defence is to stop TM proprietor stopping others using descriptive words to describe their own goods

Question 8

BMW v Deenik

Answer 8

D could not communicate his services without using the BMW mark
- can rely on s.11(2)c defence

necessary use –> his services cannot be communicated without using mark

Question 9

Gilette v LA Lab (spare parts)

Answer 9

s. 11(2)c NOT confined to spare parts
- spare parts just an example
- any use to indicate intended purpose

necessity? = use is necessary only if necessary to use TM to provide public with comprehensive and complete info about intended purpose

• if public familiar with tech standards/norms there is no need to use C’s TM to convey full information to consumer

Question 10

Gilette v LA Lab (honest practices)

Answer 10

use is not in accordance with honest practice if:

ONE - use gives impression of commercial connection

TWO - use affects value of TM

THREE - use discredits/denies the mark

FOUR - presented as replica/imitation

FIVE - presented as same quality/equivalent properties

lifted from CAD

• all overlap with infringement
• basically takes away defences

Question 11

Celine

Answer 11

court added slight subjective reasoning

1. has d caused confusion?
2. should d be aware of this?
3. does TM owner’s mark have a rep from which D might benefit?

ie. DID D DO ENOUGH TO CHECK?

Question 12

Hotel Cipriani v Cipriani (honest practices)

Answer 12

1. confusion? = yes
2. should d be aware? = yes famous, D turned blind eye, D didn’t do enough to prevent confusion
3. D benefited from C’s reputation?

NOT HONEST PRACTICE

Question 13

O2 Holdings v Hutchinson 3G

Answer 13

TM not infringed if it is comparative advertising (CAD has priority)

if use is misleading advertising (i.e. within art.4 CAD) it is not legitimate CA
- PLUS there can be assessment to TM infringe (usually yes too because of overlap)

DOUBLE INFRINGEMENT

Question 14

L’oreal v Bellure (comparative advertising)

Answer 14

defined UA very widely

AND said same definition applies for infringement and CAD because otherwise use that would otherwise be infringement would not be because caught by CAD

NOW: very easy to fall in art.4 plus no defences

Question 15

TM may be removed if

Answer 15

1. invalid (TM should never have been registered)

2. revoked (was valid but no longer valid/functioning as TM)

Question 16

onus of proof for revokation

Answer 16

s. 72: on person wanting to revoke it

s. 100: on TM owner if revocation for non-use

Question 17

Ansul BV v Ajax (minimax)

Answer 17

to show there was not non-use

ONE - use must be genuine

• not token
• use consistent with origin function
• helps consumers choose

TWO - not internal use only

THREE - consider all facts and circumstance to see if commercial exploitation is real

• consider economic sector
• characteristics of market and scale
• frequency of use
• nature of goods

Question 18

La Mer

Answer 18

small scale use justified as genuine use = because luxury goods

minimal use can qualify as genuine if use is for PRESERVING MARKET SHARE

single client is fine if genuine commercial transaction

Question 19

Silberquelle v Maselli

Answer 19

use on promotion items is NOT genuine use
- not use to indicate origin in promotion market over other items (not use as TM)

WELLNESS (t-shirts) put on bottles
- not genuine use, not planning on entering drinks market

Question 20

Armin v Lidl

Answer 20

strict standard for proper reasons for non use

ONE - obstacle must arise independently of will of TM proprietor

TWO - and sufficiently direct relationship with TM

THREE - which makes it impossible/unreasonable to use

Question 21

FAULT (in generic)

Answer 21

TM must abstain from using his mark in a way that it becomes generic

proprietor must take action to ensure other operators do not jeopardise distinctiveness of mark

Question 22

Emmanuel

Answer 22

to satisfy DECEPTIVE s.26(1)d

existence of actual deceit or sufficiently serious risk of deceit