TMs - key cases

Question 1

Why was the TM revoked in Philips v Remington

Answer 1

It was:
devoid of distinctive character
descriptive of the goods
necessary to achieve a technical result

Question 2

What was the failed mark in Shield Mark

Answer 2

The sound of a cock crowing / kukelukuuu

Question 3

hat was the failed mark in Sieckmann (3 ways they tried to represent it)

Answer 3

The smell of cinnamon:
Chemical formula - was for the substance not the smell
Sample - was not durable
“Balsamically fruity” - not intelligible / precise

Question 4

What are the Sieckmann 7 criteria

Answer 4

1. Clear
2. Precise.
3. Self-contained
4. Easily-accessible
5. Intelligible
6. Durable
7. Objective

Question 5

What was the failed mark in Libertel

Answer 5

The colour orange - described as “orange”

Question 6

What was the failed mar, in Linde

Answer 6

3D TMs for a forklift truck, a torch and a watch

They lacked distinctiveness - consumer perception makes distinctiveness hard to make out

Question 7

What was the failed mark in Windsurfing Chiemsee

Answer 7

The geographical name Chiemsee

Question 8

facts of LTJ Diffusion

Answer 8

Senior mark = Arthur - handwritten, with a dot

Junior mark: Arthur et Felice

Question 9

What test did LTJ outline

Answer 9

The test for identity: Whether the junior mark reproduces, without modification or addition all of the elements of the senior mark, or where viewed as a whole, contains differences so insignificant as to go unnoticed by the average consumer

Question 10

Facts and judgment of Sabel v Puma

Answer 10

sabel tried to register a bounding feline
Held:
Concept of assoviation os not a separate test
Likelihood of confusion is a global test
The more distinctive the earlier mark, the higher the likelihood of confusion
There was no likelihoood of confusion - the earlier mark was not that well known

Question 11

Facts and judgement of canon

Answer 11

Canon (camera manufacturer) opposed Cannon for VHS.
The senior mark’s reputation must be considered in the assessment of confusion.
There is confusion if thepublic think there may be some sort of trade connection.
The test for similarity of goods: Nature of goods, end users, method of use, whether competitive, whether complementary.

Question 12

What did Lloyd Schufabrik say

Answer 12

Aural similarity can lead to confusion.

The more similar the goods, the more likely the confusion

Question 13

What did GM define

Answer 13

Reputation - known to a significant nu,ber of the consumers in the sector concerned

Question 14

What happemed in Ikea

Answer 14

Ikea opposed registration of idea - it was visually, aurally and conceptually different

Question 15

Fact and judgment odf Premier Brands

Answer 15

Ty.Phoo opposed Typhoon for kitchen equipment.
For a 10(3) infringement case there must be detriment
There WAS a possibility of a mental link, but there was no detriment

Question 16

Facts and judgment of Celine

Answer 16

Owner of Celine for clothes and shoes opposed Celine for a clothes shop, even though the label would not be applied to the goods sold.
Proximity - use can still be in relation to goods even if not applied to them IF used in such a way as to establish a link in the consumer’s mind.
There is no infringement unless:
Use is in course of trade, without consent, in respect of goods and services and liable to affect the functions of the trademark.

Question 17

Facts and judgment of Arsenal v Reed

Answer 17

Scarves sold outside the ground under a disc;aimer “not official goods”#
Infringement occurs only where the third party use undermines the functions of the trademark - in particular the guarantee of origin
Perception of end use should be taken into account

Question 18

What did RxWorks v Hunter say

Answer 18

It explained the Celine requirements

And it said that the mark need not be visible at the point of sale or the reason the goods were bought

Question 19

What happened in Adidas v Fitness World

Answer 19

Fitness World’s use of the 2 stripes was mere embellishment - not used as trademark