[TM] Litigation

Question 1

How long do people have to oppose these, if no opposition how long will it last?

Answer 1

“3 months. Absolute (anyone), relative (owner of earlier mark)
If no opposition = registered for 10 years.”

Question 2

What must C show for an infringement claim?

Answer 2

“1. [COMMIT] infringment comitted (s10(4))

2. [UK] took place in uk (9(1))
3. [COMMERCIAL] in commercial use & not private (Arsenal v Reed)
4. [GS] Rs to G/S
5. [PROTECTION] falls within scope of protection (s10)
6. [FUNCTIONS] [use affects one of functions of TM (origin, quality, advertising, investment) [Arsenal v Reed]”

Question 3

What has D done to infringe?

Answer 3

s10(4) of TMA.

Question 4

What can D argue against infringement?

Answer 4

“1. no infringing conduct (eg: consent)

2. statutory defences apply
3. revocation/invalidity proceedings may apply to C”

Question 5

When is origin not affected?

Answer 5

“deorative/desc way [Opel v Autec]

[Arsenal] -> clear signs not arsenal. ECJ: if use gives impression of link = infringement. COA; if use of sign jepordise arsenal guarantee of origin. “

Question 6

What an effect the quality of a trademark?

Answer 6

Copad v Christian Dior: aura of luxury (not just physical quality)

Question 7

What an effect the investment of a trademark?

Answer 7

Interflora v M&S: investment in TM affected

Question 8

What are specific defences D can use against infringement

Answer 8

“1. Consent

2. Non-TM use [Travelex] [Adidas v Fitnessworld - decorative] [BMW v Deenik - descriptive]
3. Legitimate use by other traders (honest use)[Gillette v LA Laboratories]
4. D prior rights (predates C mark)
5. Non-use (s46) for 5 years
6. Comparative advertising”

Question 9

How can Aquired distinctiveness help?

Answer 9

“For invalidity claims, D could argue AD.

[Windsurfing] significant portion ID.
[Bignell v Just Employment] Must be in the UK
[Evegate v Newsquest] marks distinctivenss on national level acceptable for only 3 countys

elite consumers: [Ferragamo Italia] depends on whether its a household name.

Evidence: advertising, length of time on market, vol sold, advertising expenditure, statements from other associations, consumer surveys”

Question 10

If non-use but suddenly use 4 months before application?

Answer 10

“for 5 years and no good reason.
if restart use before application (outside of 3 months before application) = cannot revoke.

s11A: now doesnt have to be part of infringement claim. Can be standalone.Also D can put onus on C to provide proof”

Question 11

What is considered genuine use?

Answer 11

“(TM) must be used as a TM [Animated Music]
- nellie the elephant. not for audio services, but talking about character

(TOKEN) not token use (honest intent)
[Ansul v Ajax] they did sell parts to fire extinguishers despite not selling the extinguishers. Compotent parts = good enough

(SELL) [Laboratories Goemar] as long as there is a genuine intent to sell (results dont matter)

(G/S) [Kodiak]: clothing for brand. but promotion not for retail = not for class 25.

(MARKET) [Smartwater] bottled water is larger market = sales so tiny not genuine use (unlike labratories)”

Question 12

Proper reasons for non-use?

Answer 12

“[Armin Haupl v Lidl]

1) independent obstacle
2) direct rs between obstacle & failure to use
3) obstancle for use imposisble or unreasonable [K-2 Trademark][Consolidated Cigar]”

Question 13

Comparative Arrangment

Answer 13

“S10(6)TMA now.
Comparative Ad Directive (MCAD) –> new s10(4)(3)
8 conditions
[O2 Holdings v Hutchison 3G] -> yes infringe, but objective, honest, fair, and clear usage.
- if confusion s10(2) -> not clear -> no defence.
- if unfair -> not fair -> no defence”