Double Identity Flashcards
Relative grounds for invalidity are which section?
Article 5 of the TM Directive or Section 5(1-3) of TMA1994
When should a TM be declared invalid?
TM is identical with earlier TM, for which g/s are identical to the g/s of an earlier EM.
Because of its identity or similarity to an existing TM, or its g/s, there exists a likelihood of confusion for the public (inc. likelihood of association).
Where similarity or identicality is with a reputable TM, on which case dilution, free-riding or tarnishment could occur.
Double identity article
A proprietor shall be entitled to prevent all third parties not having his consent from using his sign in the course of trade or in relation to the g/s.
Double identity requirements
Requires that the consumer, using his imperfect recollection, cannot distinguish the marks and that it is being used for the same goods/services registered
For example Arthur for Class 55, and Arthur et al for Class 55.
Characteristics of average consumer
Reasonably circumspect
Reasonably well informed
Reasonably observant
Double Identity Case
LTJ Diffusion v Sadas Vertbaudet
Meaning of trade mark use for the purposes of double identity.
Whether it is liable to jeopardize the guarantee of origin.
Arsenal Football Club Plc v Matthew Reed 2002.
Adam Opel AG v Autec AG
Use of Opel Logo on Scale Model. CJEU said that the test for infringment under art 5(1)(a) should focus upon the actual goods marketed (i.e. real autos).
LVM v Google France CJEU
Concluded that merely making available to advertisers keywords which reproduce registered trademarks.
Buying a keyword
Reserving a third party trade mark as a keyword does not affect the “advertising function” of that trademark.
Advertising using an identical/similar keyword: with regard to the origin function is problematic when:
Third party ad’s suggests that there is an economic link between that third party and the trade mark proprietor.
Where an ad is so vague concerning the origin of the goods or services that a normally informed and reasonably attentive internet user is unable to determine on the basis of the advertising link and the commercial message attached to it, wether the advertiser is an unrelated third party or economically linked to that trade mark proprietor.
Google France Ruling
An ISP which stores a keyword which is identical to a trade mark is not use of the sign.
In the case where that ad does not enable an average internet user, or enables that user only with difficulty to ascertain whther the goods, referred to therein originate from the proprietor of the trade mark to it or, on the contrary, originate from a third party.
Interflora v M&S use of interflora effect
made a double identity claim and argued it had an adverse effect on the origin function of the trademarks. Alleged M&S infringed.
Double Identity Infringement can only succeed if (6 conditions)
- Must be use of sign by third party
- Use must be in the course of trade
- It must be without the consent of the TM proprietor
- Must be a sign which is identical to the TM
- It must be in relation to goods or services which are identical to those for which the TM is registered
- IT MUST AFFECT OR BE LIABLE TO AFFECT THE FUNCTIONS OF THE TRADEMARK
Case that states that the function of TM is origin
L’Oreal SA v Bellure NV [2009]
Case that states that use of signs could affect the origin and investment functions of trademarks
Interflora v Marks & Spencer [2013]
Case which confirms that its the advertisers responsibility to ensure that the advertisement is transparent as to the origin of the goods or services advertised in it.
L’Oreal SA v eBay International AG 2011
Portakabin v Primakabin role of keyword
Must assess wether the keyword is likely to have an adverse effect on the origin function of the mark in the light of how the ad is presented as a whole. Makes little difference whether or not the advertisement contains an actual offer for sale or not.
In trademark infringement cases under Art. 9(2)(a) EUTMR (DI, LOC, Dilution), who bears the onus of proof?
The onus is on the trademark owner (TMO) to show that the advertisement does not enable an informed and reasonably attentive internet user to ascertain the origin of the goods.
What is initial interest confusion in trademark law?
Temporary confusion experienced by a consumer regarding the origin of a product or service before making a purchase, even if later resolved.
