Trade Mark Infringement and Defences

Question 1

Sabel v Puma

Answer 1

Global appreciation test for likelihood of confusion

Question 2

Celine

Answer 2

Use in the course of trade - “used in the course of a commercial activity with a view to gain and not as a private matter”

Question 3

Arsenal v Reed

Answer 3

Reed was selling unauthorised merchandise near Arsenal’s football stadium, products had Arsenal marks but sign said they were not official. Where a third party uses in the course of trade a sign which is identical to a validly registered TM on goods which are identical to those for which it is registered, the TM proprietor of the mark is entitled to rely on Article 5(1)(a) of that directive to prevent that use. Essential function of TM is guarantee of origin.

Question 4

Trebor v Football Association

Answer 4

No TM infringement when Trebor Bassett included within their packets of confectionery photographs of footballers wearing shirts with the three lions logo (registered TM belonging to the FA), logo was not being used in any real sense.

Question 5

L’Oreal v Bellure

Answer 5

Functions of a TM - origin, quality (opinion of AG in Dior that this is part of origin), advertising and investment. Article 5(1)(a) of the directive means use of TM can be prevented if it does not comply with directives on misleading advertising.

Question 6

Celine v Celine

Answer 6

Shop used business name, same name as pre-existing TM, honest practice found.

Question 7

Adam Opel

Answer 7

Descriptive uses not decorative uses - car badges used on miniature models.

Question 8

eBay

Answer 8

Free distribution (samples etc.) does not trigger exhaustion

Question 9

Dior

Answer 9

Consent - must determine whether licensee has exceeded scope of license. Opinion of AG that quality function of TM covered by indication of origin function.

Question 10

Interflora v M and S

Answer 10

Did Google infringe TM law by allowing M and S to purchase TM as adword? Did M and S infringe by purchasing it? Google used TM in the course of trade, but were not using it for their own commercial gain so it was allowed. Purchase of competitor’s TM is allowed as long as the ad does not raise uncertainties as to origin or suggest that there is a link between a third party and the TM owner. Free riding and blurring - if there is an attempt at tarnishing there is an actionable infringement. TM has the function of establishing origin of goods/services, protecting the TM’s investment function and an advertising purpose.

Question 11

Tommy Hilfiger v Delta

Answer 11

D rented stalls in market hall to traders, held to be an intermediary. Responsible for preventing sale of counterfeits.

Question 12

Telekabel

Answer 12

Blocking injunctions are compatible with EU law, can be sought against infringers

Question 13

L’Oreal v eBay

Answer 13

Accusation that eBay did not prevent the sale of counterfeits, and even encouraged it through AdWord purchases. Can a TM owner prevent an owner of an online marketplace from advertising counterfeits? Yes - safe harbour does not apply in some situations. Requirements for loss of protection - that an operator takes an active role (through optimisation etc.) has control/knowledge. Article 13 suggests that optimisation alone would be enough to lose safe harbour.

Question 14

Cartier

Answer 14

Held that it was possible to get injunction against website selling fake goods. Considerations - he relief must be necessary, effective, proportional, dissuasive, not unnecessarily complicated or costly, fair and equitable, avoid barriers to legitimate trade and strike a fair balance between applicable fundamental rights.

Question 15

Marleasing

Answer 15

Duty of member states to transpose EU legislation. UK’s position having not transposed Article 11? Use of s37(1) SCA?

Question 16

Wintersteiger

Answer 16

TM was registered in Austria, Google AdWord was purchased in Germany. Held - could sue in Germany or Austria. Can bring actions before the courts of the MS in which the TM is registered, or courts of the MS of the place of establishment of the advertiser.

Question 17

LJT Diffusion SA v Sadas Vertaudet SA

Answer 17

Identical marks - where it reproduces without any modification or addition all the elements constituting the TM or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.

Question 18

Gilette v LA Laboratories

Answer 18

L made razor blades, attached sticker stating compatibility with Gilette handles. Held - use is necessary if it is the only way to allow public to understand the intended purpose of the product. Use must not imply commercial connection or affect distinctive character. Must not indicate it is a replica.

Question 19

Bravado Merchandising v Mainstream Publishing

Answer 19

Book written about pop group used name in title, held defence of descriptive use available for pure descriptive use that conveys features/characteristics of the product concerned.

Question 20

Asprey v Garrard WRA

Answer 20

Own name defence does not apply to new company names

Question 21

L’Oreal v Johnson and Johnson

Answer 21

Letter mentioned possibility of future proceedings for TM infringement. Held - test of whether a communication constitutes a threat is whether it would be understood by an ordinary recipient as a threat.

Question 22

Argos v Argos Systems Inc

Answer 22

ASI wasn’t infringing by buying Argos adword, Argos consented to their adverts appearing on ASI’s website through adword programme, and ASI were not targeting UK so no infringement could be committed here.