TM Short Flashcards
Describe the test for passing off established in Warnink v Townend [1979] A.C. 731, HL(Lord Diplock’s definition in the “Advocaat” decision).
i) misrepresentation
ii) by a trader in the course of trade
iii) to prospective customers of his or ultimate consumers of goods or services supplied by him
iv) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence)
v) which causes actual damage to the business or goodwill of the trader bringing the action or will probably do so
Damage can be:
- Loss of sales
- Damage to reputation
- Dilution of the mark
To what extent does the U.K. law of passing off protect well–known personalities? Explain briefly your answer, using case authority by way of illustration.
UK common law does not recognise the ‘right of personality’ to control the use that is made of their image and/or name.
Lyngstrad v Annabas Products
- Products that bore the name and image of the group (ABBA).
- No real likelihood of confusion among the public.
- The defendants were not doing “anything more than catering for a popular demand among teenagers for effigies of their idols”.
- There is no reason for public to believe that products came from the personality himself or from his beneficiaries.
- First, claimant must show he had a significant reputation or goodwill, and
- Second that there was a misrepresentation to a significant proportion of the public the impression the products were endorsed, recommended or approved of by the claimant.
- Third that there was damage to claimant, usually in lost licensing revenue.
E.g Irvine v Talksport – successful! (apparent radio station endorsement which appeared to mislead the public)
Rihanna v Topshop – successful! (Rihanna’s photo from album cover shoot used on t–shirt bearing Rihanna’s name on label).
Describe the test for passing off established in Reckitt & Colman Ltd v Borden Inc [1990] (the “Jif Lemon” decision). (aka Provide Lord Oliver’s definition of passing off.)
- Goodwill – in relation to the product or service in question
- Misrepresentation – that the defendant’s goods or services are derived from (or are otherwise economically linked with) the claimant.
- Misrepresentation takes advantage of the goodwill of the claimant.
- Misrepresentation must be operative – it must actually deceive the relevant section of the public
- Damage – the claimant must show that he has suffered, or is likely to suffer, damage as a result of the defendant’s misrepresentation
Discuss briefly whether it is possible to have goodwill in advertising techniques and themes under the law of passing off in the U.K.
Cadbury Schweppes v Pub Squash:
- Defendant marketed their lemon–flavoured soft drink with similar adverts to claimant.
- The claimant’s passing off claim was rejected
• But judge said it is possible to have acquired goodwill associated with a particular advertising style
.
• In that an intangible property right can be acquired owing to a distinctive character recognised by the market from the advertising.
Can goodwill exist in relation to a foreign trader, where the trading activity takes place outside the UK? Explain your answer.
Foreign Traders must show established communication mechanism of goodwill within the UK. Mere reputation is not enough.
- Sheraton Corp of America v Sheraton Motels [1964] – Existence of goodwill can be shown on the grounds bookings made through an office the plaintiff maintained in the UK.
- Alain Bernardin v Pavilion Properties Limited [1967] – A trader cannot acquire goodwill in this country without some sort of user in this country. Merely advertising here is not enough.
Anheuser– Busch Inc. v Budejovicky Budvar [1984]:
- Not every activity in this country which might loosely be called a “business” activity that qualifies as the carrying on of a business here.
- Sporadic and occasional sales do not constitute business in this country. (e.g. embassy bars, US air force bases)
- Ordinary member of the public must be able to consider himself a customer in this country
- Starbucks v British Sky Broadcasting Group PLC [2015]– For businesses carried on abroad, insufficient to show there are people in the UK who happen to be its customers when they are abroad
Describe the meaning and the purpose of the “sign” requirement, as established by ECJ in Dyson Ltd. v. Registrar of Trade Marks, [2007].
- ECJ considered that idea of a transparent collecting bin for a vacuum cleaner, irrespective of shape, appeals only to the imagination.
- It is not capable of being perceived by one of the five senses.
- If registered, Dyson would obtain a monopoly in the concept and would be able to prevent competitors from incorporating the feature of a bagless bin in their own vacuum cleaners.
- This is not the purpose of trade mark law.
- For these reasons, the ECJ held: the “idea” of incorporating a particular feature in goods is not a “sign”.
- I.e. A concept cannot be registrable.
- However, if Dyson had applied to register a particular form of bagless bin it might have been successful in obtaining some protection.
Are sounds registrable as trade marks in the U.K.? Explain your answer.
ECJ in Shield Mark BV v Joost Kist
- A trademark may consist of a sign that is not in itself capable of being perceived visually (e.g. a sound), on the condition that it may be represented graphically.
- Consequently, the Member States cannot preclude such registration as a matter of principle provided that:’
- it can be represented graphically
- its representation fulfils the Sieckmann criteria.
ECJ found that sounds mayconstitute a mark if they can be represented graphically· Onomatopoeiasare not allowed (not precise orobjective) · Music with full musical notation(such that it is objective, is allowed)
Are scents registrable as trade marks in the UK? Explain your answer.
Ralf Sieckmann v Deutsches Patent und Markenamt C273/00
- Sieckmann’s application for a scent was refused on the grounds that it couldn’t be represented graphically.
- ECJ set out the ‘Sieckmann requirements’ for graphical representation.
- It said that a trade mark could consist of a sign which is not capable of being percieved visually, but could be represented graphically.
- Such a representation had to be capable of representing the sign in a visual manner by using images, lines or characters and also had to be:
1– Easily accessible,
2– Precise,
3– Self–contained,
4– Objective,
5– Durable,
6– Intelligible,
7– Clear,
Are colours registrable as trade marks in the UK? Explain your answer.
Libertel
- Colour cannot be presumed to be a sign, but colour can be a sign.
- Colour sample is not a graphical representation, since it is not precise or durable.
- But if combine a colour sample with a written description and an internationally recognised ID code, this may constitute a graphical representation
- Colour can in some circumstances distinguish the goods or services of one undertaking from those of other undertakings (but does not do this inherently)
- Colour is probably not distinctive (from the viewpoint of the average consumer) without prior commercial use
- But colour can acquire distinctive character
- When considering applications to register colours, need to take into account the public interest relating to unjustified monopolies on colour to the detriment of competitors as number of distinguishable colours is limited.
- On the other hand: if the number of g/s is very restrictive and market is specific, colour can be registered.
Are combinations of colours registrable as trade marks according to the ECJ? Explain your answer.
Heidelburger Bauchemie
- ECJ held that a colour combination which isn’t spatially delimited is not a registrable trade mark, because it is not sufficiently precise that competitors can see from the register exactly what is protected.
- This type of mark would encompass too many possible combinations and interpretations.
- Impossible to say that a consumer would be able to remember each one with certainty.
- Arrangement of colours in a colour combination mark must be systematic, predetermined and uniform.
Are shapes registrable as trade marks in the UK? Explain your answer.
Section 3(2) TMA 1994:
A sign shall not be registered as a trade mark if it consists exclusively of
(a) the shape which results from the nature of the goods themselves
(b) the shape of goods which is necessary to obtain a technical result, or
(c) the shape which gives substantial value to the goods
Can lack distinctive character:
- Mag Instruments (torches) – fact that shape enjoys broad international recognition as a design is NOT material for determining whether design has origin indicating functions
- Bongrain S.A’s application (cheese wheel) – Fancy shape not enough. Must be used in trade to acquire a distinctive character.
- August Storck (Werther’s Originals) – shape must distinguish product immediately and with certainty from those of competitors’ products.
Are geographical names registrable as trade marks in the UK? Explain your answer.
s.3 (1)The following shall not be registered—….(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the … geographical origin ….
WindsurfingChiemsee:
- ECJ held: if there is (or is likely to be in future) an established connection between the place and the g/s, then registration will normally be refused.
- The connection could be belief that goods were manufactured OR conceived/ designed in that place.
- In the public interest to keep geographical names freebecause they: 1.may serve to indicate quality or othercharacteristics 2. may influence customer tastes associating g/s with a place which givesa favourable response.
Describe briefly the test applied by the CJEU for determining identity between signs.
LTJ Diffusion
a sign is identical with the trade mark where it
- reproduces, without any modification or addition, all the elements constituting the trade mark or
- where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer
- Average consumer: deemed to be reasonably well informed, reasonably observant and circumspect.
Describe briefly the test applied by the E.C.J. for determining similarity between signs.
Sabel BV vPuma AG
i) when assessing the similarity of two marks, the court should take into account:
* the degree of aural, visual, or conceptual similarity, as well as
* the inherent or acquired distinctiveness of the mark
ii) attention is given to the distinctive and dominant components of the mark
iii) the comparison is made from the point of view of the average consumer
iv) the average consumer has imperfect recollection so insignificant differences may go unnoticed.
Explain when goods are ‘similar’, as defined by the ECJ in Canon Kabushiki Keisha vMetro–Goldwyn–Mayer
Factors to be taken into account:
Distribution channels, Intended use,
whether Complementary
End users
Physical nature of the goods,
Location in supermarkets and whether in Competition with each other
Take into account earlier sign distinctiveness. Global assessment of likelihood of confusion.
Describe briefly the “proportionality test” as established by the E.C.J. in Canon v MGMC39/97.
In order to prove confusion:
A lesser degree of similarity between the g/s can be offset by a greater degree of similarity between the marks.
AND VICE VERSA
Describe briefly the test applied by the E.C.J. for determining confusion.
Sabel v Puma
The likelihood of confusion must be appreciated globally taking into account all factors relevant to the circumstances of the case i.e. it must be based on:
- overall impression created by the marks
- visual, aural or conceptual similarity of the marks, and
- distinctive and dominant components of the marks…
It is up to the national court to assess the degree of visual,aural or conceptual similarity between the marks …
E.g: it is possible that mere aural/ mere visual/ mere conceptual similarity between the trade marks may create a likelihood of confusion…
Discuss briefly the importance of the decision of the E.C.J. in Windsurfing Chiemsee (Joined Cases C–108/97 and C–109/97) regarding acquired distinctiveness
A trade mark acquires distinctivecharacter following the use which has been made of it where the markhas come to identify the product in respect of which registration isapplied for as originating from a particular undertaking and thus todistinguish that product from goods of other undertakings. If a significant proportion of therelevant class of persons identify goods as originating from aparticular undertaking because of the trade mark, it must haveacquired distinctive character.
- Up to national courts to assess
- National opinion polls may beused
SLIMPIG
Describe briefly the distinctiveness requirements for obtaining a trade markregistration in the USA.
A generic term cannot serve as a TM as it is notdistinctive at all
A descriptive term can serve as a TM only if it hasacquired a secondary meaning
A suggestive, arbitrary or fanciful term is inherently distinctive
Describe the test devised by the ECJ for establishing that a trade mark enjoys reputation for the purposes of S.10(3) of the UK Trade Marks Act 1994
GeneralMotors v.Yplon (the “Chevy‟ case)
Involves some kind of knowledge threshold if it was known by a significant part of the publicconcerned by the product or services covered by that mark.
In determining the above, anational court must take into account all the relevant facts, in particular the:
a) market share held by the trade mark,
b) intensity, geographical extent and duration of itsuse, and
c) size of the investment made in promoting it.
* A trade mark need not have a reputation throughout the territory.
* It was sufficient for it to be known by a significant part of the public concerned in a substantial part of that territory,
* This might consist of a part of one of the countries comprising that territory.
Whatis the meaning of an “earlier trade mark” as defined in the Trade Marks Act1994?
S6: (1) –
(a) a UK registered trademark, CTM, international trade mark (UK or EC), which has an earlier priority date
(b) a CTM or internationaltrade mark (EC) which has a valid claim to seniority from an earlier UK registered trade mark or international trade mark (UK),
(ba) a UK registered trademark or international trade mark (UK) which–
(i) has been converted from a Community trade mark or international trade mark (EC) which itself had a valid claim to seniority within paragraph (b) from an earlier trade mark,
(c) an trade mark, which was entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark at its priority date.
(2) References in the Act toan earlier trade mark also include any TM application which would if granted become one of (1)(a) or (b) above.
(3) A trade mark within subsection (1)(a) or (b) whose registration expires shall continue to be taken into account for a period of one year after the expiry unless the registrar is satisfied that there was no bona fide use of the mark during the two years immediately preceding the expiry.
Describe the nature of the search for prior rights conducted by the U.K. Trade Mark Office.
- Registrarwill perform the prior rights search only for notification purposes – there is no objection to registration on relative grounds [brings UK into line with OHIM].
- Applicant will be given results and allowed 2 months to proceed, amend or withdraw.
- If published, owner of the earlier mark will then be automatically notified.
- Owners of CTMs must requestand pay for notification service.
Explain the priority system for trade mark applications under the Paris Convention.
S.35 TMA 1994
Priority can be claimed to an earlier application, providing the (later) application covers
(a) the same mark and
(b) some or all of the goods andservices covered by the earlier application.
- Priority application must be a filing in a state party to the Paris Convention,
- Later application must be filed within six months.
- Effect of priority claim:
(1) filing date of the earlier application counts as the date offiling of the later application.
(2) rights of the application take precedence over any rights arising from a trade mark filed after the priority date.
