[TM] Relative Grounds

Question 1

General idea of realative marks

Answer 1

opositions due to earlier marks - then left to applicant to decide if they want to proceed. not a bar, but is a bad idea bc people can sue for infringement (3rd parties raise objection)

Question 2

What are the relative grounds for refusal of registration and their statute sources? (Citing the statute section is enough)

Answer 2

“s5 Trademark Act 1994

(1) Identical marks + G/s
(2) a. ID mark + Similar G/S
(2) b. Similar Mark + ID G/S
(3) (reputation) similar & use without due cause would be detrimental to character or reputation
(4) use in UK prevented by rule of law (passing off) or CP

• identical to s10, case principles can be used”

Question 3

How to know if trademsark is wellknown (stute + guidance)

Answer 3

“s6(1)(c) ““well known trademarks””

WIPO (guiding)

• [AWARE] awareness in relevant sector
• [DEG USE] duration,extent, and geographical use of mark
• [DEG PROMO] duration, extent, and geographic area of publicity + promo
• [AUTHORITY] extent recognised by competent auhtorities”

Question 4

“Are marks identical?

How to tell (1 case)
Confusion necessary? (1 case)
Significant elements (1 case)
scopes
language (1 case)
Other considerations "

Answer 4

“[LTJ Diffusion v Sadas]: Abosolute Identity (From point of consumer)
““reasonable well informed, obeservant, rare to make direct comparison””. Insiginifant may be unoticed

Significant elemnts: Ignore non-TM matter [Reed Executive v Reed Business International]. Each element must be distinctive to be part of trademark.

Scopes: if earlier > later scope = identical.

language: [Beutimatic Int v Mitchell Int] Language identical in industry

Simiarities in G/S: [British Sugar v Robertson & Sons] Consider: Use, Location, Sectors.”

Question 5

“Are marks similar? (IMPORTANT CASE)

Answer 5

“[Sabel v Puma] Global Appreciation approach

1. compare as whole as average consumer [CONSUMER]
2. see as whole, not detailed [WHOLE]
3. Dominant/distinctive [DOM]
4. Vidual, aural, coneptual similarity [SIMILARITY]
5. more distinctive > greater confusion. [DISTINCTIVENESS]”

Question 6

Case: Text is considered dominant over image

Answer 6

Specsavers v Asda Opticians

Question 7

“Types of similarity? (visual/Aural)

for: clothes, restaurants, aural, and concepts”

Answer 7

“Clothes/furniture: Visual. [Inter-Ikea v OHIM]
Wine/restaurant: Aural [Castellani SpA v OHIM]
Aural: first syllable more important. [Neutrogena v Golden Ltd]
Conceptual meaning: made up vs concept. [Inter-Ikea v OHIM]”

Question 8

Similar marks but not similar G/S?

Answer 8

“Cannon KK v MGM: Global appreciation test.

• compare with similiarity in marks even if goods not similar
• more distinctive prior = more confusion.”

Question 9

“How to determine likelihood of confusion?

1 Main case + case for intention”

Answer 9

“Must have mistaken belief of origin. (Not just think.)
[Lloyed v Klijsen Handle BV] - relevant average consumer + category of G/S + Time of confusion.

Intention [Slazenger v Feltham]: not commonly done, but was done in this case”

Question 10

What is detrimental? What link is required?

Answer 10

“dilute mark = must protect clear reputation from damage.

tarnish and/or blurring

Confusion not necessary. But must show Link + Actual detriment/unfair advantage.”

Question 11

how to prove mark link for detriment:

Answer 11

“[Intel Corp v CPM]

• similarity of marks
• similarity of goods
• strength of reputation”

Question 12

How to prove unfair advantage

Answer 12

“L’oreal v Bellure

- transfer of image (sufficient rs to applicant mark) of the mark.”

Question 13

What is tarnishment?

Answer 13

“[Oasis stores]: eveready condoms v batteries. Courts: take into acc soc views means not harmful

[Souza Cruz v Hollywood SAS]

1. poor quality
2. incompatible w quality/prestige
3. amended in negative way”