Deck 3 - TM 002

Question 1

Lego v. OHIM

Answer 1

2010 – correct application of provision requires:
1) Essential char’ics of shape identified – i.e. most important elements of sign;
2) Authoriy may base assessment on OVERALL impression produced by sign or examine each component in turn;
3) Once the sign’s essential Char’ics are Id’d, authority has to determine the technical function of the goods
Considered easier approach than lego;

Question 2

S.3 (3) (a) TMA

Answer 2

Contrary to public policy or morality

Question 3

Ghazillian’s App

Answer 3

2002 – TINY PENIS – refused reg’ion;
Unacceptable to social & family values;
Correct anatomical terms for parts of genitals shld be reserved for serious use, not smutty clothing;

Question 4

FCUK

Answer 4

2007 – TM is only objectionable under TMA 3(3)(a) if its use contravened generally accepted moral principles by reason of its intrinsic qualities – intrinsic qualities of FCUK ≠ objectionable

Question 5

S.3 (3) (b)

Answer 5

Deceptive MKs

TMs which deceive the public

Question 6

Wine OH! V OHIM

Answer 6

2006 - Wine OH! Refused for mineral waters b/c of difference between water & wine in terms of nature & quality;

Question 7

Portakabin v OHIM

Answer 7

2002 - TITAN refused for portable buildings b/c would have deceived relevant public as to nature of goods

Question 8

s.3 (6)

Answer 8

BAD FAITH – Tm shall not be reg’d if application nis made in bad faith;
3 types:
1) No intention to use Mk – Mickey Dees
2) Abuse of relationships;
3) Knowledge of 3rd party claim – lindt 2009

Question 9

Mickey Dees 1998

Answer 9

Employee at nightclub tried to reg’Mickey Dees = bad faith b/che didn’t own a club & had no intention to use it
Justification – prevents stock piling

Question 10

S.5 TMA 1994

Answer 10

Relative Grounds – mks which conflict w/ and earlier mk are not reg’bl.

Question 11

s. 6 (3) TMA

Answer 11

Has earlier Mk been used? Where appl’t faced with opposition on s. 5 grounds – the appl’t can demant opponent produce evidence of TM use w/in past 5 years or proper reasons for non-use – otherwise opposition = rejected;

Question 12

s. 5 (1)

Answer 12

Identical mks – Double Identity test =
1) Is the TM applied for identical to earlier mk?;
2) Are the g&s identical with earlier mk?
If yes – no need to prove further as TM protected – assumed confusion on part of consumers;

Question 13

LTJ diffusion

Answer 13

LTJ diffusion

Question 14

Websphere

Answer 14

2004 – Web-sphere and Websphere = identical

Question 15

CANON

Answer 15

1999 – TEST for similar G&S –
Factual comparison b/twn G&S taking into account all relevant factors – including:
1) End users
2) Method of use;
3) Are mks in competition or complementary
Strength in one category can outweigh weakness in another – ECJ ‘low lvls of similarity btwn goods might be offset by high lvl of similarty b/twn mks.

Question 16

Vedial

Answer 16

Contrast w/ canon – ECJ indicated 3 req’mnts (similarity of goods, similarity of mks & confusion) are cumulative

Question 17

SABEL

Answer 17

Similarity of MKS – Global approach – Crt compares Mk as avg. Cnsmr would – as a whole;
Attention will be paid to dominant components;
Aural, visual, conceptual similarity shld be compared;
Mks = two leaping cats – conceptual similarity may be enough if earlier mk was well known or image particularly imaginative;

Question 18

Il Ponte

Answer 18

2008 – visual/conceptual differences can offset aural similarities

Question 19

Inter ikea

Answer 19

Visual similarity important for 3D mks & certain kinds of goods – clothes, furniture etc

Question 20

Mystery drinks v OHIM

Answer 20

AURAL SIMILARITY – 2004 – phonetics of wine important as will be heard in restaurants & recommendations passed by word of mouth – mystery & mixery = similar

Question 21

L’Oreal v OHIM

Answer 21

2009 – SPALINE ≠ successful reg’ion

Question 22

New Look

Answer 22

2004 – appl’ion for NLSport/NLJEANS etc rejected b/c customers associate NL with New Look –
CRITICSM – could lead to monopoly

Question 23

Reed v reed

Answer 23

2004 – JACOB J – where mk = descriptive, small difference may = sufficient to avoid confusion

Question 24

Medion v Thompson

Answer 24

2005 – ECJ – b/c earlier mk had independent, distinctive role, origin of G&S covered by composite sign is attributed by public to owner of that MK.
(Thompson LIFE ((M had TM LIFE)) )

Question 25

SpecSavers

Answer 25

2010 – word SPECSAVERS is neologism, strapline breaks it up again – look back at composite word otherwise the play on words doesn’t work – but not generate confusion;

Question 26

British Sugar

Answer 26

1997 – Jacob LJ – guidance

    (a) The respective uses of the respective goods or services;
    (b) The respective users of the respective goods or services;
    (c) The physical nature of the goods or acts of service;
    (d) The respective trade channels through which the goods or services reach the market;
    (e) In the case of self-serve consumer items, where in practice they are respectively found or likely to be;
    (f) The extent to which the respective goods or services are competitive.

Question 27

s. 5 (2) TMA

Answer 27

Likelihood of confusion; - SABEL v PUMA – perception of Mks in mind of avg. Cnsmr. Of the type of goods or servies in qtn plays a decisive role in global appreciation of the likelihood of confusion;

Question 28

Lloyd Schuhfabrik

Answer 28

s. 5 (2) case – customers must be confused as to origin of product;
Likelihood = probability not possibility;

Question 29

s. 5(3) TMA

Answer 29

Mks w/ a reputation; - USED where Mk does not confuse traders
No req’mnt for confusion – Adidas v Fitnessworld

Question 30

GM v. Yplon

Answer 30

1999 – use of tm CHEVY –
Crts said mk need rep known by ‘significant part of public’
Public needed to ‘make an association’ btwn two mks.
relevant criteria=
1) Market sharesl
2) Intensity, geographical extent,
3) duration of use;
4) investment in promotion;
Low threshold – test = quantitative – Mk must be known

Question 31

Intel

Answer 31

2009 – ECJ - similarity of mks – LINK essential:
‘The existence of a link between the marks is an essential condition – the relevant public must make a connection between them – or the use of the later mark is not likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark. The existence of such a link must be appreciated globally, taking into account all factors relevant to the circumstances of the case