12. Defences Flashcards
Dinwoodle (academic)
D more likely to try and rely on defences after scope of infringement widened
Federation cynologique
proprietor need not invalidate later mark before bringing proceedings for infringement
Anheuser-Busch v Budvar (use of name or address)
defence not confined to personal names
Celene (use of name)
company name covered by defence
Hotel Cipriani v Cipriani
trading name = covered
BUT substantial variation from it is not
(Recast Directive –> own personal name and address only)
Gerosteiner
“Gerri” for miniral water
“Kerry spring” later use
later use indicates geographical origin (descriptive use) = defence
Adam Opel
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
BMW v Deenik
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
Gilette v LA Lab (spare parts)
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
Gilette v LA Lab (honest practices)
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
Celine
court added slight subjective reasoning
- has d caused confusion?
- should d be aware of this?
- does TM owner’s mark have a rep from which D might benefit?
ie. DID D DO ENOUGH TO CHECK?
Hotel Cipriani v Cipriani (honest practices)
- confusion? = yes
- should d be aware? = yes famous, D turned blind eye, D didn’t do enough to prevent confusion
- D benefited from C’s reputation?
NOT HONEST PRACTICE
O2 Holdings v Hutchinson 3G
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
L’oreal v Bellure (comparative advertising)
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
TM may be removed if
- invalid (TM should never have been registered)
2. revoked (was valid but no longer valid/functioning as TM)
onus of proof for revokation
s. 72: on person wanting to revoke it
s. 100: on TM owner if revocation for non-use
Ansul BV v Ajax (minimax)
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
La Mer
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
Silberquelle v Maselli
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
Armin v Lidl
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
FAULT (in generic)
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
Emmanuel
to satisfy DECEPTIVE s.26(1)d
existence of actual deceit or sufficiently serious risk of deceit
