Short Answer Questions

Question 1

Describe the test devised by the ECJ for establishing that a trade mark enjoys reputation.
(x5)

Answer 1

General Motors v Yplon:

There must be a sufficient degree of knowledge of the earlier trade mark that the public, when confronted with the later mark may possibly make an association between the two trade marks, even when used for non-similar products or services, and that the trade mark may consequently be damaged.

It must be known by a significant part of the public concerned by the products or services covered by the TM. Reputation need only exist in a substantial part of territory

Question 2

Discuss briefly the importance of the decision of the E.C.J. in L’Oreal SA v Bellure NV,
Case C-487/07.
(x3)

Answer 2

Where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit,
without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that
has been unfairly taken of the distinctive character or the repute of that mark.

Question 3

Explain the principle of coexistence in the context of the Community Trade Mark system.
(x3)

Answer 3

The principle of coexistence further implies that the EUTM system actively acknowledges the relevance of national rights and their scope of protection.

Where conflicts arise between EUTMs and national trade marks or other national rights, there is no hierarchy determining that one system prevails over the other; instead, these conflicts apply the principle of priority.

Question 4

Explain the principle of priority as it relates to trade marks.
(x4)

Answer 4

An applicant can claim priority from an earlier registered mark where: i) the mark was registered in a country with reciprocal protection to the UK; ii) that was the first registration for that mark; and iii) it is within the 6 month priority period

Question 5

Describe the procedure for obtaining a registration under the Madrid Agreement.

Answer 5

The applicant designates the countries/regions they wish to file in and WIPO, following a formalities examination (but no substantive examination) sends the application to the national/regional offices of the designated contracting parties. If the office of the designated contracting party does not refuse the application within a given time, the application is treated as registered.

Question 6

Describe the scope of section 9 of the Trade Marks Act 1994.

Answer 6

s.9 sets out the rights conferred by registration of a trade mark.

The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent.

The rights of the proprietor have effect from the date of registration (i.e. the date of filing).

Question 7

Discuss briefly the importance of the decision of the ECJ in Windsurfing Chiemsee v
Boots C-108/97, with respect to ‘acquired use’.
(x2)

Answer 7

The Act sets out that a mark shall not be refused if, before the date of registration, it acquired distinctiveness as a result of use made of it.

In Windsurfing, the ECJ explained that an unregistrable name (in this case a geographic name) could be registered as a trade mark if it has come to identify the product as originating from a particular undertaking and thus distinguishes the product from those of other undertakings.

The legal test is in assessing the need to keep the sign free for competitors to use in the future:
• are consumers familiar with the geographic term;
• are consumers familiar with the characteristics of the place designated with that name;
• are consumers familiar with the category of goods concerned?

Question 8

Can the UK law of passing off be used to protect fictitious characters from imitation? Explain briefly your answer using case authority by way of illustration.

Answer 8

As set out in Mirage Studios v Counter-feat Clothing where TMNT characters were placed on a t-shirt, the public are likely to perceive that the characters are subject to copyright, and thus that the t-shirt must be made subject to a licence. Therefore, there is a misrepresentation to the customers if there is in fact no such licence agreement for the characters, and the law of passing off may come into force.

Question 9

Describe briefly the test applied by the ECJ for determining confusion.

Answer 9

In assessing the likelihood of confusion between two marks, the global appreciation test is used in which the legal test for the similarity of the goods/services (the Canon v MGM test) and for the similarity of the marks (aural, visual and conceptual similarity) are applied.

All of the relevant factors for a given case are then applied in order to assess whether the average consumer would be confused.

Question 10

Describe briefly the test applied by the ECJ for determining similarity between products.
(x5)

Answer 10

Canon v MGM:

All the relevant factors should be taken into account (global appreciation test), including, among other things, their: nature, end-users, method of use, and whether they are in competition with each other or are complimentary.
The method of distribution may also me relevant.
In infringement, may also take account of how the defendant marketed its goods.

Question 11

Discuss briefly the importance of the decision by the ECJ in Gillette Group Finland Oy v LA Laboratories Ltd Oy (Case C-228/03).
(x2)

Answer 11

Reference is only “necessary” when it is the only way of conveying the information.

Question 12

Discuss briefly the importance of the decision of the ECJ in Intel Corporation Inc v CPM UK Ltd (C-252/07).
(x3)

Answer 12

This case is concerned with whether a junior mark calls to mind an earlier mark that enjoys a reputation. The ECJ stated that in assessing whether there is sufficient similarity between the marks to give rise to a link depends on a global appreciation of the marks, and suggested a multi-factorial approach to identifying a link.

The factors include the degree of similarity of the marks, the similarity of the goods or services, the strength of the earlier marks reputation and distinctive character, and the likelihood of confusion.

Question 13

Are geographical names registrable as trade marks in the UK? Explain your answer.

Answer 13

In Windsurfing, the ECJ explained that an unregistrable name (in this case a geographic name) could be registered as a trade mark if it has come to identify the product as originating from a particular undertaking and thus distinguishes the product from those of other undertakings.

The legal test is in assessing the need to keep the sign free for competitors to use in the future:
• are consumers familiar with the geographic term;
• are consumers familiar with the characteristics of the place designated with that name;
• are consumers familiar with the category of goods concerned?

Question 14

Describe briefly the importance of the decision of the CJEU in Chartered Institute of Patent
Attorneys v Registrar of Trade Marks, Case C-307/10, 19.6.2012, (IP translator).

Answer 14

This case was concerned with the scope of protection offered by the specification of the goods or services that the mark relates to. Class headings can be used for this purpose, but they need to be specified with clarity and precision.

In this case, it was made clear that the applicant should specify whether all the goods/services in a class heading were claimed, or only some of them. Here, the applicant filed the mark “IP Translator” under class 41 which included translation services (without disclaiming that sub-heading), so the registration was refused on the basis of the sign being descriptive.

Question 15

Describe briefly the public interest underlying the absolute ground for refusal contained in
Section 3(2)(b) Trade Marks Act 1994 (non-registrability of signs consisting exclusively of
the shape of goods which is necessary to obtain a technical result).

Answer 15

• TM protection would limit the possibility of competitors
supplying a product incorporating functional characteristics;

• TM Protection would limit competitors’ freedom of choice in regard to the technical solution they wish to adopt
• Signs performing a technical function should be freely used by all and not end up being reserved to one undertaking alone because they have been registered as trade marks
• Trade mark protection of technical features would effectively (unfairly) grant perpetual patents.

Question 16

Explain briefly the main differences between the U.K. Intellectual Property Office and
OHIM opposition proceedings.

Answer 16

EUIPO:

• can oppose on absolute grounds, UK only relative grounds.
• bad faith is a ground for opposition as well as invalidity, UK only invalidity.
• can use design rights and copyright as relative grounds of opposition.

Question 17

What does a trade mark proprietor need to demonstrate in order to establish that there are
‘proper reasons for non-use’ within the meaning of Section 46(1)(a)-(b) Trade Marks Act 1994 and Article 51(1)(a) CTMR respectively? (Armin Häupl v. Lidl Stiftung & Co. KG, Case C-246/05, 14.6.2007, [2007] ECR I-4673).
(x2)

Answer 17

(1) the obstacle preventing it from using the mark arose independently of the proprietor’s will,
(2) there is a direct relationship between the obstacle and the failure to use the mark, and
(3) the obstacle is such as to make the use of the mark impossible or unreasonable.

Question 18

Explain briefly how the owner of a foreign mark which is well-known in the U.K. may protect his/her interests in the U.K.

Answer 18

The owner may oppose any registrations for similar marks in the UK, provided that the owner’s mark constitutes an ‘earlier mark’ as defined in s.6 of the TM Act (i.e. entitled to protection under the Paris Convention as a well known mark). Similarly, the owner could bring infringement proceedings against an existing (but later) similar mark.

Alternatively, the owner could rely upon the law of passing off. However, the owner would then have to show that they have customers in the UK rather than a mere reputation in the UK.

Question 19

Explain the requirement in Trade Mark law that an infringing use must be use “in the course
of trade” in the UK.
(x2)

Answer 19

For the purposes of infringement in s.10 TMA, a person uses a trade mark if, in particular, they:

(a) affix it to goods or packaging thereof;
(b) offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;
(c) imports or exports goods under the sign; or
(d) uses the sign on business papers or in advertising.

The particular meaning of ‘in the course of trade’ is examined in the case of Reed v Arsenal where the court stated that it is use that “takes place in the context of commercial activity with a view to economic advantage and not as a private matter”.

Question 20

Describe the test devised by the CJEU for establishing that a trade mark has acquired a distinctive
character.

Answer 20

Nestle v Cadbury:

In order to demonstrate that a sign has acquired distinctive character, the applicant or trade mark proprietor must prove that, at the relevant date, a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question (as opposed to any other trade mark which may also be present).

Also use the ‘reliance test’ as in Nestle v Unilever where the trade mark owner must have relied upon the mark to distinguish his goods without the use of any other surrounding mark.

Question 21

What is the public interest underlying the exclusion from registration of descriptive terms?

Answer 21

It ensures that descriptive terms can be freely used by all traders. Furthermore, descriptive signs do not fulfil the essential function of a trade mark, that is, to indicate its origin.

Question 22

What factors indicate, according to the case law of the CJEU, that a mark has been registered in bad
faith?
(x2)

Answer 22

As stated in Lindt v Hauswirth the relevant factors are:

(a) whether the applicant knows or must know whether a similar or identical sign is being used by a third party,
(b) the applicant’s intention to stop the third party from continuing to use the sign, and
(c) the degree of legal protection enjoyed by the third party’s and the applicant’s sign.

Question 23

Describe briefly the functions of trade marks that enjoy legal protection according to the case law of
the CJEU.

Answer 23

Origin function - allows consumers to know from which undertaking the goods/services came from. Allows consumers to know in advance the quality of the goods/services due to coming from a known undertaking.

Advertising function - a trade mark also serves to advertise the undertaking whose mark it is. Trade marks protect this by preventing the dilution of the mark by similar signs by different undertakings.

Investment function - the use of the mark by its proprietor “to acquire or preserve a reputation
capable of attracting consumers and retaining their loyalty” should be protected (Interflora case).

Question 24

What are the criteria for assessing whether a geographical term is descriptive according to the decision of the CJEU in Windsurfing Chiemsee, Case C-108/97, ECLI:EU:C:1999:230?

Answer 24

The legal test is in assessing the need to keep the sign free for competitors to use in the future:
• are consumers familiar with the geographic term;
• are consumers familiar with the characteristics of the place designated with that name;
• are consumers familiar with the category of goods concerned?

Question 25

Explain briefly the type of evidence required for an applicant to establish distinctiveness acquired through use when applying to register a sign as a European Union Trade Mark.

Answer 25

Evidence must refer to the entire territory in relation to which the ground for refusal applies.

For verbal marks that territory is the territory where the term is understood.

For non-verbal marks the evidence of acquired distinctiveness must be adduced that relates to all Member States.

Question 26

When would a junior use affect the origin function of an earlier trade mark in the context of AdWords advertising?

Answer 26

Google France:

When the advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.

Question 27

When would a junior use affect the advertising function of an earlier trade mark?

Answer 27

When the later mark is used to divert customers away from plaintiff to other sellers. E.g. Argos case where the defendant was taking advantage of misdirected users to gain ad revenue.

Question 28

What is the legal test for ascertaining whether a junior use takes an unfair advantage of the repute of an earlier mark with a reputation?

Answer 28

Three stages to show unfair advantage as seen in L’Oreal v Bellure, and Intel Corp:

(i) identify the power of attraction, reputation and prestige of the earlier mark;
(ii) establish whether any advantage has been transferred to (or likely to transfer to) the earlier similar or identical mark (unlike blurring and tarnishment, where the reaction of the consumers of the reputed mark are central, here the focus is on the impact assessed from the perspective of the average consumer of the relevant goods or services);
(iii) establish that the advantage has been thereby secured has been unfairly taken.

Question 29

Under what circumstances would it be possible for a trade mark proprietor to maintain his registration if the sign he had actually been using differed in some respects from the sign actually registered?

Answer 29

As set out in Anheuser Busch v Budvar, use in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered still constitutes use of the mark such that the proprietor may defend against revocation for non-use.