Relative Grounds Long Question Flashcards
What is said under section 5(1)-(3) TMA 1994?
Section 5 Relative grounds for refusal of registration
(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or service for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.
(2) A trade mark shall not be registered if–
(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(3) A trade mark which–
(a) is identical with or similar to an earlier trade mark
shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a European Union trade mark or an international trade mark (EC), in the European Union) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
How is LTJ Diffusion v Sadas Vertbaudet (“Arthur” and “Arthur et Felicie”) relevant?
One of the relative grounds for refusal in section 5 corresponds to identity between marks and identity between G/S (“DOUBLE IDENTITY” in s 5(1)).
This case provides guidance on how to determine identity between the marks.
The Court ruled that:
—A sign is identical with a trade mark where
the sign reproduces, without any modification or addition, all the elements constituting the trade mark; OR
where, viewed as a whole, the sign contains differences so insignificant that they may go unnoticed by the average consumer.
The Court held that the perception of identity between the sign and the trade mark must be assessed globally with respect to an average consumer who is deemed to be reasonably well informed, reasonably observant and circumspect.
The Court further held that insignificant differences may go unnoticed by the average consumer as the consumer only rarely has the chance to make a direct comparison between signs and trade marks and must place his trust in the imperfect picture of them he has kept in his mind.
How is Reed Executive v Reed Business
Information [2004] EWCA Civ 159 (CA) relevant?
This case provides further guidance on assessing the identity between marks (“DOUBLE IDENTITY” in s 5(1)).
In the case, the Court ruled that additions to a sign which are wholly and specifically descriptive to the sign constitute an insignificant difference that would go unnoticed by the average consumer.
How is Lloyd Schuhfabrik Meyer v Klijsen Handel BV, Case C-342/97 relevant?
This case actually defines what is meant by the “average consumer”. This this case would be most relevant for likelihood of confusion.
The Court ruled that:
—for the purposes of assessing globally the likelihood of confusion, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect.
—the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture he has of them in his mind.
—the average consumer’s level of attention is likely to vary according to the category of goods or services in question.
[General note (not in case): bearing in mind that the general appreciation test must be done from the perspective of the average consumer, the characteristics of the average consumer will affect how certain similarities impact the likelihood of confusion.
For example, the affect of aural similarity on the likelihood of confusion must take account of the fact that the average consumer has imperfect recollection; a rather dominant element of a mark e.g. wording in a composite mark makes it less likely that there would be a likelihood of confusion as the average consumer is reasonably observant.]
How is Sabel v Puma, C-251/95 relevant?
This is relevant for assessing likelihood of confusion between marks (specially, this case sets out test for assessing the similar between marks). If the marks are not identical, there may still be a likelihood of confusion in the cases where the marks are similar.
The Court ruled that:
—to assess similarity, the aural, visual, and conceptual similarities of the marks must be considered and based not he overall impression of the marks.
—the concept of likelihood of association is not an alternative to that of the likelihood of confusion. (mere association as a result of the marks’ analogous semantic content is not in itself a sufficient ground for concluding likelihood of confusion)
How is Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc., C-39/97 relevant?
PART 1
This case is the key case to use in the assessment of a likelihood of confusion.
The case is relevant on two counts:
(1) Sets out the legal test for assessing the similarity between G/S; and
(2) Outline how to apply the global appreciation test (as when ultimately deciding if there is a likelihood of confusion, a global assessment which takes into account all the relevant factors must be made)
Earlier mark: ‘CANON’ for still cameras and cameras for motion pictures.
Later mark: ‘CANNON’ for films recorded in video tape cassettes.
(1) the Court ruled that to assess similarity between G/S, need to consider:
(a) their nature;
(b) their end user (intended purpose);
(c) their method of use;
(d) whether they are in competition with each other or whether they are complementary.
But note that Court also ruled that there may be a likelihood of confusion even where the public perception is that G/S have different places of production i.e. public perception that they come from the same undertaking or economically-linked undertakings.
For notes on (2), see other slide.
How is Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc., C-39/97 relevant?
PART 2
(2) In order to ultimately come to a conclusion of whether or not there is a likelihood of confusion, you need to take into account all the relevant facts of the case (i.e. global appreciation). This must be done from the PERSPECTIVE of the AVERAGE CONSUMER.
This case sets out the Global Appreciation Test to apply in order to do the above:
(a) assess similarity of marks (Sabel v Puma);
(b) assess similarity of G/S (Cannon v Metro-Goldwyn-Mayer)
(c) take into account all the relevant factors of a given case, including the similarity of the marks and G/S, in order to assess whether the average consumer would be confused.
Some factors to consider as part of step (c):
—the strength of the senior mark (the more distinctive the senior mark, the greater the risk of confusion);
—the interdependence between the similarity between the marks and the similarity between the G/S (the effect of this being that a lesser degree of similarity between G/S may be offset by a greater degree of similarity between the marks, and vice versa).
How is Specsavers v Asda Superstores [2012] EWCA Civ 24 relevant?
This case provides further guidance on what factors to consider when taking a global appreciation of the all the relevant factors in determining likelihood of confusion.
This Court ruled that as part of a global appreciation test, one needs to consider the dominant elements of the mark, e.g. words, shape
In this case, the Judge ruled that the words “Asda” are a dominant element of their mark so it is doubtful whether a reasonably observant consumer would mistake the mark as Specsaver’s.
How is British Sugar PLC v. James Robertson & Sons Ltd., 1996 R.P.C. 281 (Chancery Division)(U.K.) JACOB J relevant?
This case provides further guidance on assessing the similarity between G/S (for “LIKELIHOOD OF CONFUSION SECTION”).
The Court ruled that one must consider how a particular product is regarded for the purposes of trade, and use that for construing the meaning of a particular word used to designate the G/S in the TM application.
In this case, desert foods and savoury foods were ruled not similar goods, as the foods are used differently, positioned differently in the market, and are not in direct competition.
What do you need to establish/consider in order to determine if section 5(3) applies?
What is reason for this section?
Section 5(3) relates to earlier trade marks with a reputation.
To consider:
(1) whether the marks are identical/similar;
(2) whether the earlier mark has a reputation in the relevant jurisdiction;
(3) whether one of the “harms” have occurred; and
(4) whether use of the later mark is without due cause.
The “harms” are as follows:
(1) the erosion of a mark’s distinctiveness by its use on the goods of another (“dilution by blurring”);
(2) the reputation or goodwill associated with the mark becomes tainted by its use in connection with products of an unsavoury quality, or as a consequence of being portrayed in an unwholesome context (“dilution by garnishment”);
(3) later mark takes unfair advantage of repute/distinctiveness of earlier mark (“free-riding”)
The value of the modern trade mark lies in its selling power. This selling power depends on the mark’s psychological hold upon the public, not merely upon the merit of the goods upon which it is used, but equally upon its own uniqueness and singularity.
Thus, section 5(3) introduces protection for the “advertising function” of a trade mark by protecting the mark against various forms of non-confusing mental associations between an earlier mark with a reputation and a subsequent mark.
How is General Motors v Yplon, C-375/97 relevant?
This case is relevant in assessing whether the trade mark enjoys a reputation.
[Facts: the claimant applied to restrain Yplon from using the sign “CHEVY” for detergents.]
The Court ruled that “reputation” involves a knowledge threshold: a mark will have a reputation where it is known by a significant part of the public concerned by G/S covered by trade mark.
To determine whether there is knowledge, the Court set out the following factors to consider:
(1) market share held by the trade mark;
(2) the intensity, geographical extent, and duration of its use;
(3) the size of the investment made by the undertaking to promote it.
[Court also said that survey evidence has a supporting role and should be closely scrutinised.]
How is Intel Corp v CPM UK Ltd, C-252/07 relevant?
PART 1
This case is relevant for determining whether there is erosion of a mark’s distinctiveness by its use on the goods of another (“dilution by blurring”).
[Facts of case: ‘INTEL’ for CPUs v ‘INTELMARK’ for telemarketing service]
[In ‘Adidas-Salomon’, the Court ruled that dilution by blurring occurs where, as a consequence of a certain degree of similarity between the marks and the sign, the relevant section of the public makes a mental connection between the sign and the mark, that is to say–establishes a link between them even though they do not confuse them.]
This case both (1) identified the factors necessary to establish a link or mental connection and (2) identified a number of factors to consider when determining whether detriment to distinctive character occurs as a consequence of this link.
How is Intel Corp v CPM UK Ltd, C-252/07 relevant?
PART 2
(1) factors necessary to establish link or mental connection between the marks:
(i) the degree of similarity between the conflicting marks;
(ii) the nature of the G/S for which the conflicting marks were registered, including the degree of closeness or dissimilarity between G/S, and the relevant section of the public;
(iii) the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;
(iv) the existence of the liklihood of confusion on the part of the public.
(2) Factors to consider when determining whether there has been detriment to the distinctive character as a consequence of this link:
(i) merely establishing a link is not sufficient basis to presume that this detriment will inevitably follow;
(ii) it is not necessary for the earlier mark to be unique in order to establish such injury or a likelihood of it;
(iii) the first use of an identical or similar mark can damage distinctiveness.
How is Intel Corp v CPM UK Ltd, C-252/07 relevant?
PART 3
This case also ruled that proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer of the g/s for which earlier mark protects.
The Court defined the following as evidence of such a change in economic behaviour:
(1) loss of sales;
(2) devaluation of attractiveness or image;
(3) decrease of the mark’s economic value;
(4) mark becoming a generic term.
How is L’Oréal v Bellure, C-487/07 relevant?
re detriment to repute
In this case, the Court ruled that detriment to the repute of the mark occurs where the G/S for which the identical/similar mark is used by the 3rd party may be perceived by the public in such a way that the earlier TM’s power of attraction is reduced.
The Court further ruled that such detriment may arise from the fact that the G/S offered by the third party possess characteristics or qualities which are liable to have a negative impact on the image of the mark.
