Lecture 2 - infringment and revocation of trade marks

Question 1

what does section 10 of the trade marks act 1994 state about infringement

Answer 1

• establishes the criteria for an infringement action
• accords with the provisions in sec 5
• a person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered subsection1

Question 2

what is the significance of ltj diffusions v sadas vertbaudet sa 2003

Answer 2

‘a sign is identical with the trade mark where it reproduces without any modification or addition all the elements constituting the trade mark or where viewed as a whole it contains differences so insignificant that they may go unnoticed by an average consumer

Question 3

what does section 10(4)(e) state about comparative advertising

Answer 3

• a company that uses the trade mark of another company in its own advertisements in order to advertise the goods or services of that company and does so with honest practices wont be guilty of infringement
  -such use will be an infringement if it is not in accordance with honest practices

Question 4

what are the exceptions to infringement

Answer 4

sec 11(2)(a) - use by an individual of his/her own name or address
sec11(2)(b) - permits the fair use of a trade mark if it relates to signs or indications as to the characteristics of goods or services of the user of the sign
sec11(2)(c) - relates to the use of a mark to indicate the purpose of goods or services

Question 5

what does section 12 state about exhaustion

Answer 5

removes the right to bring an infringement action in relation to goods put on to the market anywhere in the uk or the european economic area with that trade mark by the proprietor with his or her consent

Question 6

what are the consequences of trade mark infringements

Answer 6

damages, accounts of profits, injunctions are usual remedies

Question 7

what are the 4 grounds for revocation of trade marks

Answer 7

under s46(1)
- five years lack of genuine use of the mark in the uk without cause
- a suspension for 5 years after initial use
- the mark has become the common name for the product in question in the trade
- if the trade mark has been used in a misleading manner as to the nature quality or origin of the goods or services