Trade Mark Law (UK) - Relative Grounds for Refusal Flashcards
What must be proven under Section 5(1) of the TMA 1994?
That the sign applied for is identical to an earlier mark and used for identical goods/services.
Which case emphasised that even minor differences between marks may prevent identity under Section 5(1)?
LTJ Diffusion v Sadas
Under Section 5(2), what is NOT required to prove likelihood of confusion?
Conceptual differences
Is using a reputable mark on offensive or conflicting products an example of “tarnishment” under Section 5(3)?
Yes, using a reputable mark on products perceived as offensive or conflicting with the brand image is tarnishment.
What is the primary threshold required for a trade mark to claim reputation under Section 5(3)?
Recognition by a significant portion of the relevant public in a substantial part of the UK.
Section 5(1) requires the claimant to prove that identical goods/services are proposed alongside the identical mark.
(True/False)
True
Section 5(1) requires identical goods/services alongside the identical mark.
Likelihood of confusion under Section 5(2) is assessed from the perspective of an average consumer who is reasonably well-informed.
(True/False)
True
Likelihood of confusion is assessed from the perspective of an average consumer.
Section 5(3) does not require that the earlier trade mark has a reputation if the goods are complementary.
(True/False)
False
Section 5(3) requires the earlier trade mark to have a reputation.
“Due cause” under Section 5 may justify a later mark, but only if it is used in direct competition with the earlier mark.
(True/False)
False
“Due cause” can justify a later mark even if not in direct competition.
The global appreciation test under Section 5(2) accounts for all factors, including the category of goods and consumer perception.
(True/False)
True
The global appreciation test considers all factors, including consumer perception.
What does “double identity” under Section 5(1) mean, and why is likelihood of confusion unnecessary in this context?
Double identity means the proposed mark is identical to an earlier mark for identical goods/services, making likelihood of confusion unnecessary as the identity itself is sufficient for refusal.
What factors determine likelihood of confusion under Section 5(2), and how are they assessed?
Likelihood of confusion is determined by visual, aural, and conceptual similarities, the proximity of goods/services, and consumer perception, assessed through the global appreciation test.
Explain an example where a conceptual difference offset other similarities between marks under Section 5(2).
An example is Sabel v Puma, where conceptual differences offset visual/auditory similarities.
Describe the significance of the VISA condoms case in demonstrating tarnishment under Section 5(3).
The VISA condoms case demonstrated tarnishment by associating a financial services brand with unrelated products, damaging its reputation.
What must a claimant prove to establish that a later mark takes unfair advantage of an earlier mark under Section 5(3)?
To establish unfair advantage, a claimant must prove the later mark exploits the earlier mark’s reputation without due cause, affecting consumer behavior.
How does the “due cause” provision under Section 5 balance fairness in trade mark registrations? Provide an example of when “due cause” may apply successfully.
The “due cause” provision balances fairness by allowing justified use of a mark despite conflicts. It may apply if a defendant shows prior good faith use, as in the “Red Bull” case, where justified conditions allowed continued use.
