[TM] Litigation Flashcards
(13 cards)
How long do people have to oppose these, if no opposition how long will it last?
“3 months. Absolute (anyone), relative (owner of earlier mark)
If no opposition = registered for 10 years.”
What must C show for an infringement claim?
“1. [COMMIT] infringment comitted (s10(4))
- [UK] took place in uk (9(1))
- [COMMERCIAL] in commercial use & not private (Arsenal v Reed)
- [GS] Rs to G/S
- [PROTECTION] falls within scope of protection (s10)
- [FUNCTIONS] [use affects one of functions of TM (origin, quality, advertising, investment) [Arsenal v Reed]”
What has D done to infringe?
s10(4) of TMA.
What can D argue against infringement?
“1. no infringing conduct (eg: consent)
- statutory defences apply
- revocation/invalidity proceedings may apply to C”
When is origin not affected?
“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. “
What an effect the quality of a trademark?
Copad v Christian Dior: aura of luxury (not just physical quality)
What an effect the investment of a trademark?
Interflora v M&S: investment in TM affected
What are specific defences D can use against infringement
“1. Consent
- Non-TM use [Travelex] [Adidas v Fitnessworld - decorative] [BMW v Deenik - descriptive]
- Legitimate use by other traders (honest use)[Gillette v LA Laboratories]
- D prior rights (predates C mark)
- Non-use (s46) for 5 years
- Comparative advertising”
How can Aquired distinctiveness help?
“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”
If non-use but suddenly use 4 months before application?
“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”
What is considered genuine use?
“(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)”
Proper reasons for non-use?
“[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]”
Comparative Arrangment
“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”
