TMs - key cases Flashcards
Why was the TM revoked in Philips v Remington
It was:
devoid of distinctive character
descriptive of the goods
necessary to achieve a technical result
What was the failed mark in Shield Mark
The sound of a cock crowing / kukelukuuu
hat was the failed mark in Sieckmann (3 ways they tried to represent it)
The smell of cinnamon:
Chemical formula - was for the substance not the smell
Sample - was not durable
“Balsamically fruity” - not intelligible / precise
What are the Sieckmann 7 criteria
- Clear
- Precise.
- Self-contained
- Easily-accessible
- Intelligible
- Durable
- Objective
What was the failed mark in Libertel
The colour orange - described as “orange”
What was the failed mar, in Linde
3D TMs for a forklift truck, a torch and a watch
They lacked distinctiveness - consumer perception makes distinctiveness hard to make out
What was the failed mark in Windsurfing Chiemsee
The geographical name Chiemsee
facts of LTJ Diffusion
Senior mark = Arthur - handwritten, with a dot
Junior mark: Arthur et Felice
What test did LTJ outline
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
Facts and judgment of Sabel v Puma
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
Facts and judgement of canon
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.
What did Lloyd Schufabrik say
Aural similarity can lead to confusion.
The more similar the goods, the more likely the confusion
What did GM define
Reputation - known to a significant nu,ber of the consumers in the sector concerned
What happemed in Ikea
Ikea opposed registration of idea - it was visually, aurally and conceptually different
Fact and judgment odf Premier Brands
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
Facts and judgment of Celine
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.
Facts and judgment of Arsenal v Reed
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
What did RxWorks v Hunter say
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
What happened in Adidas v Fitness World
Fitness World’s use of the 2 stripes was mere embellishment - not used as trademark
