TM - Infringement

Question 1

What is the first main rule regarding TM infringement? What is the relevant piece of legislation?

Answer 1

s10 (2) TMA

there must be use

in the course of trade

in relation to the goods / services covered by the TM - s10(2)(a) TMA

Question 2

How is “use” defined? What is the relevant piece of legislation?

Answer 2

s. 10(4) TMA
a. affixing sign to goods / packaging
b. exposing goods for sale, putting them on the market, or keeping them in stock for that purpose
c. importing / exporting goods under infringing sign
d. using sign on business papers / adverts
e. internet

Question 3

what is the main rule regarding affixing sign to goods or packaging? Where can this rule be found?

Answer 3

must be direct?

Trebor v Football association

Question 4

How is “in the course of trade” defined? Case?

Answer 4

Arsenal v Reed

in the context of commercial activity

with a view to economic advantage

and not a private matter

Question 5

In what 4 main ways can infringement arise?

Answer 5

Double identity

similarity of signs

similarity of goods

dilution - which includes, blurring, tarnishment and free riding

Question 6

What is the main rule for double identity?

Answer 6

marks must be the same in all respects, and the later mark must have no modification or addition

Question 7

from which perspective must we determine double identity?

Answer 7

from perspective of average consumer - must look at signs globally, and at the overall impression

Question 8

What is the main case concerning double identity? What rule was established?

Answer 8

SA Societe case

insignificant differences between sign and trademark may go unnoticed

Question 9

What is the test applied to similarity of signs? Case?

Answer 9

Sabel v Puma

global appreciation test - compared from signs of the average consumer

must consider avg, consumer does not observe signs in detail, and have imperfect recollection

consumers will consider the signs

1. visually
2. aurally - e.i. number of syllables
3. conceptually

REMEMBER - more distinctive the earlier mark, more likely they will be similar

Question 10

What is the exception to the global appreciation test? Case?

Answer 10

Median AG v Thompson Multimedia Sales

where a well known brand name added to an earlier mark, independent distinctive role test applies

earlier sign must have independent, distinctive role, there is no similarity of signs

Question 11

Explain likelihood of confusion

Answer 11

identical / similar signs must lead to a likelihood of confusion, which indicates a likelihood of association

assessed from perspective of the average consumer, who are reasonably well-informed, observant and circumspect

A significant number of consumers must be confused - interflora v Marks and Spencers

Question 12

What does dilution include?

Answer 12

blurring, tarnishment and free riding

Question 13

what is blurring?

Answer 13

erosion of marks disctinctiveness because it is used on the goods of a different trader

Question 14

What is tarnishment?

Answer 14

repute associate with a mark is tainted by its use for products of unsavoury quality

Question 15

What requirements must be fulfilled for dilution?

Answer 15

1. Earlier mark must be reputed
2. there must be an established link between earlier mark and applied for sign
3. there must be detriment or an unfair advantage

Question 16

How do we determine whether the earlier mark is reputed? Case?

Answer 16

General Motors v Yplon

Must be known by a significant part of the public concerned by the products, or services covered by the trademark

considerations include:

1. market share held by the mark
2. intensity of use of mark
3. geographical extent
4. duration of use of mark
5. size of investment by owner to promote mark

Question 17

What is the threshold for proving reputation? Case?

Answer 17

low threshold - can be confined to a single member state

Pago v Tirolmich

Question 18

What is needed to establish link between earlier mark and applied for sign? Case?

Answer 18

“bringing to mind” is sufficient - Intel Corps v CPM UK

Question 19

What relevant factors determine “bringing to mind?” case?

Answer 19

Intel Corps v CPM UK

factors include:

1. similarity of marks
2. similarity of goods
3. repute
4. intention of later user of mark

Question 20

What is the significance of Loreal v Bellure?

Answer 20

Where later user wishes to convey message that their mark is like the earlier one, easier to establish link

Question 21

How do we prove detriment?

Answer 21

Detriment through blurring or tarnishment

need to prove a change of economic behaviour of consumer…as result of the later mark

or that such a change will occur in future

INTEL CORP V CPM UK

Question 22

How do we test for Unfair Advantage / Free riding? case?

Answer 22

1. must be power of attraction from earlier mark
2. advantage must be transferred to user of later sign
3. advantage taken unfairly. ie. intentionally riding on the coattails of the earlier mark, interflora v M & S