Deck 5 - TM 004

Question 1

s. 9 & s. 10 TMA

Answer 1

Infringement

Question 2

s. 10 TMA

Answer 2

Mks will be infringed if (mirror s. 5)

(i) Double identity (s.10(1));
(ii) Marks identical, goods/services similar, and likelihood of confusion/association (s.10(2)(a));
(iii) Marks similar, and goods/services are either identical or similar, and confusion (s.10(2)(b));
(iv) Marks identical or similar, and registered TM has a reputation in UK, and use of D’s mark would take unfair advantage of, or be detrimental to, distinctive character or reputation of unregistered TM (s.10(3)).

Question 3

Differences b/twn infringement & grounds for refusal

Answer 3

1) Need to id D’s mk;

2) To establish infringement = necessary to show mk was used in course of trade (10(4))

Question 4

Arsenal v Reed

Answer 4

INFR’mtn – 2002 – ECJ – sign used in course of trade if has been used ‘in the context of commercial activity w/ view to economic adv’tg not as a private matter’

Question 5

Holterhoff

Answer 5

2002 – use as a description ≠ infringement

Question 6

L’oreal v Bellure

Answer 6

2009 – Infr’mnt – ECJ – elevates TM above function of badge of origin as brand is more than maker’s mk – 
Art 5(1) (a) allows TM owner to prevent use of his TM by 3rd party where comparative advertising not satisfy req’mnt of Art 3a (1) dir

Question 7

Comparative Advertising cases

Answer 7

02
L’oreal v Bellure;
Opel v Autec;

Question 8

Opel v autec

Answer 8

2007 - Unless public perceive a link which will undermine the TM function, then the use will not ingringe.

Question 9

interflora

Answer 9

Tm owner is entitled to prevent competitior from advertising goods by means of a sign selected in an internet referencing service by competitor w/out proprietor’s consent WHERE THE USE IF LIKELY OTO HAVE AN ADVERSE EFFECT ON ONE FO THE Functions of the TM – BUT NOT THE ADVERTISING FUNCTION

Question 10

S. 70 TMA

Answer 10

Tm register ≠ guarantee of validity of TMs.

Question 11

Reasons why a Mk might be removed from register

Answer 11

1) Invalid on basis that it was reg’d in breach of an absolute or relative grounds
2) Revocation (2.46) – Four Grounds for revocation:
A) Non – useTM not used in 5 years w/out good reason;
B) Use of TM suspended for uninterrupted 5 years
C) TM has become ‘common name in trade’ – Generic;
D) Deceptive – TM used to mislead public.

Question 12

s. 72 TMA

Answer 12

Onuse for proving mk shld be revoked falls on party seeking revocation;

Question 13

s. 100 TMA

Answer 13

Modifies position for revocation for non-use – P’pr must show use has been made of Reg’d mk.

Question 14

Ansul

Answer 14

2003 – genuine use of mk – genuine use = use of mark in market, not just on net;
Token use for purpose of preserving mk ≠sufficient;

Question 15

La Mer Techs

Answer 15

2004 – crucial factor = quality of use;

Question 16

Silberquelle

Answer 16

2009 – Use needs to indicate origin;

G&S offered on non-profit ≠ decisive use

Question 17

Haupl

Answer 17

2007 – obstacles having direct relationship w/ TM which make it impossible AND which are independent of the will of the p’or of the MK = proper reasons for non use.

Question 18

Test for revocation b/c of generic use

Answer 18

s. 46 (1) (c) TMA – MK can be revoked ‘if in consequne of acts or inactivity of the p’or the TM has become common name in trade for a produce or service for which the MK was reg’d.
Designates a type of product rather than a particular product;

Question 19

Bjornekulla

Answer 19

2004 – ECJ – assessment for generic use should be interpreted from consumers’ or end users’ point of view rather than those in the trade;

Question 20

Levi Strauss

Answer 20

Mk will only be revoked if it has become generic as a ‘consequence of the acts or inactivity’ of the P’or.

Question 21

S. 46 (1) (d) TMA

Answer 21

TEST for misleading mks

MK must mislead public regarding function of TM;

Question 22

Bostitch

Answer 22

Mk must have become misleading as result of use made of it by p’or or the use made of it w/ his consent

Question 23

Liz Emanuel

Answer 23

2006 – if Mk assigned to 3rd party – revocation based on misleading mk ≠ work b/c mk was assigned.

Question 24

s. 46 (6) TMA

Answer 24

Revocation effects – rights of p’or cease to have effect from date of application for revocation;

Question 25

s. 11 TMA

Answer 25

Defences
11 (1) use of reg’d mk;
11 (2) ue of own name & address

Question 26

Celine Sarl

Answer 26

Defence provision apply to business & company names