Trade mark short answer questions Flashcards
Describe the test for passing off established in Warnink v Townend [1979] A.C. 731, HL (the “Advocaat” decision).
Lord Diplock:
It is essential for the plaintiff in a successful passing off action to show at least the following five facts:
- A misrepresentation
- Made in the course of trade
- To a prospective customer of his or ultimate consumer of the goods or services supplied to him
- Which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence); and
- Which causes actual damage to the business or goodwill of the trader by whom the action is bought or (in a quia timet action) will probably do so.
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.
Unlike the position in many continental jurisdictions, UK law does not recognise a general right of publicity or personality. Instead, a celebrity seeking to control their image should use breach of contract, breach of confidence, or infringement of copyright.
However, in principle, there is no reason why good will might not arise through use or a celebrity’s image, likeness or voice (i.e. Personality merchandising). If there is also a misrepresentation and damage (i.e. the JIF trinity) there is not reason why passing off cannot be used to protect the personality. This will always be a question of fact and, in particular, will depend on the public believe that there is a relevant connection between the personality and the goods or services. Importantly, passing off cannot be used to protect a person against fair competition.
For example, in Elvis Presley trade marks, it was suggested that the use of the word ‘official’ on goods bearing a personalities name or likeness ‘may’ infer such an association.
Edmund Irvine v Talksport (expanded passing off to include false endorsement claims, therefore rejecting the need for a common field of activity).
Fenty v Arcadia (Rihanna successfully brought a passing off action against Topshop, which sold T-shirts bearing here photo without her approval. This was the first instance in the UK of a celebrity successfully using passing off against 3rd parties to prevent unauthorised merchandising. The key to this case was that the image was associated with her much publicised new album, Topshop is known for celebrity collaborations, and Rihanna’s status as a style icon).
Describe the meaning and the purpose of the “sign” requirement, as established in Dyson Ltd. v. Registrar of Trade Marks, Case C-321/03.
Dyson sought to register the trademark of: “a transparent bin or collection chamber forming part of the external surface of a vacuum cleaner as shown in the representation”.
The CJEU answered the question: did the subject matter of Dyson’s application meet the requirements of Art 2 of the Directive (i.e. capable of being graphically represented, particularly words, including personal names, designs, letters, numerals, the shape of the goods or their packaging, provided that such shapes are capable of distinguishing the goods or services of one undertaking from those of another)?
The CJEU held that the transparent bin was not a sign, because:
1. Subject matter of case is not a particular type of transparent bin or collection chamber. Instead it is, in actual fact, a mere property of the product concerned. As pointed out by the Advocate General in point 51 of his
Opinion, the shape, the dimensions, the presentation and composition of that subject-matter depend both on the vacuum cleaner models developed and on technological innovations. Likewise, transparency allows for the use of
various colours.
2. Thus, the application is for all the conceivable shapes of such a bin or collection chamber (i.e. a general and abstract idea).
3. Thus the sign sought to be registered is a mere property of product concerned
4. Hence does not constitute a ‘sign’ for purposes of Article 2.
Purpose:
As the Court has held previously, the purpose of that requirement is in particular to prevent the abuse of trade mark law in order to obtain an unfair competitive advantage (Heidelberger Bauchemie, paragraph 24).
In this case, the trade mark holder would be entitled to prevent its competitors from marketing vacuum cleaners
having any kind of transparent collecting bin on their external surface, irrespective of its shape.
Are interior designs of retail outlets registrable in the UK? Explain your answer.
In Apple Inc, the court recalled that, in order to be capable of constituting a trade mark for the purpose of Art 2 of Directive 2008/95, the subject matter of any application for registration must satisfy three conditions: must be a sign, must be capable of graphic representation, and the sign must be capable of distinguishing the goods or services of one undertaking from those of another. These are the same three criteria set out in section 1(1) TMA 1994.
It is absolutely plain from the wording of Article 2 of Directive 2008/95 that designs are among the categories of signs capable of graphic representation. It follows that a representation, which depicts the layout of a retail store by means of an integral collection of lines, curves and shapes, may constitute a trade mark provided that it is capable of distinguishing the products or services of one undertaking from those of other undertakings.
Consequently, such a representation satisfies the first and second conditions. In this case, the exact dimensions, precision and clarity are not issues. Uniformity may be enough to constitute a trade mark.
The fact that a sign is, in abstract capable of constituting a trade mark within the meaning of Article 2 of Directive 2008/95 does not mean, however, that the sign necessarily has a distinctive character for the purposes of Article 3(1)(b) of the directive in relation to the products or services for which registration is sought.
The distinctive character of the sign must be assessed in concreto by reference to, first, the goods or services in question and, second, the perception of the relevant public, namely the average consumer of the category of goods or services in question, who is reasonably well informed and reasonably observant and circumspect
This should be the case when the depicted layout departs significantly from the norm or customs of the economic sector concerned (i.e. in respect to the specific products for the purposes of Art 3(1)(b) of the Directive).
In Apple Inc, the Court held that representation, by a design, of the layout of a retail store is capable of distinguishing the products or services of one undertaking from those of another, and hence satisfying the third criteria (when viewed in abstract for the purposes of Art 2 of the Directive).
What is the public interest underlying the exclusion from registration of descriptive terms?
Distinguishing function = excludes signs that the average consumer does not identify as reliably indicating the commercial origin of the goods.
Protective function = minimise the negative impact that the grant of trade marks may have upon traders working in the same or related field. ECJ refers to this as the requirement of availability. This public interest requires that all signs or indications which may serve to designate characteristics of the goods or services in respect of
which registration is sought remain freely available to all undertakings in order that they may use them when describing the same characteristics of their own goods (Konicklijke).
Thus, the test under Article 3(1)(c) of the Directive is to determine whether a trade mark for which registration is sought currently represents, in the mind of the relevant class of persons, a description of the characteristics of the goods or services concerned or whether it is reasonable to assume that that might be the case in the future. It is irrelevant whether there are other, more usual, signs or indications for designating the same characteristics of the goods or services referred to in the application for registration than those of which the mark concerned consists.
The public interest underlying Article 7(1)(b) [3(1)(b) TMD] of the regulation is, manifestly, indissociable from the
essential function of a trade mark.
What factors indicate, according to the case law of the CJEU, that a mark has been registered in bad faith?
Test set by the Court of Appeal is the same test used for ‘knowing assistance’ in breach of trust.
What did the applicant know
Asses whether a reasonable person would regard the applicant’s behaviour, given that knowledge, as conduct falling short of acceptable commercial behaviour.
This assessment is judged ‘by the ordinary standards of honest people’.
The CJ has yet to indicate whether this test is appropriate. In fact, they have also declined to define the term ‘bad faith’, but merely endorse the close analysis of all facts. In many respects, this is a broad test in which cases are placed into three categories:
The ECJ in Lindt & Sprüngli vs Hauswirth stated that bad faith is to be assessed in its entirety considering all of the factors of significance in each individual case. The relevant factors include:
No intention to use the mark
The General Court has also recognised that registering repeatedly to avoid the consequences of revocation for non use could well be bad faith.
Intention to sell (or traffic) the registered right.
Registration of ghost marks
Knowingly abusing a relationship with a third party (e.g. breach of trust or contract).
May be treated as in bad faith where the abuse falls short of a breach of a legal relationship, for example, where the parties were in a pre-contractual negotiations.
Knowledge of third party claims (i.e. applicant knows that a third party has some better claim to the reputation or goodwill attached to the sign).
This may include seeking to appropriate for themselves the goodwill of a trader who has stopped trading (Jules Rimet cup)
For example, noticing that a foreign business is expanding and racing to register the trade mark first.
e.g. Lindt & Sprüngli vs Hauswirth, the proprietor of the trademark had knowledge that the prior user was already using an identical or similar sign for identical or similar goods. Therefore the conduct was intended to prevent the prior user from continuing to use its sign.
Describe briefly the test applied by the CJEU for determining identity between signs.
It is necessary to compare representation of the earlier trade mark contained in the registration certificate with the trade mark that has been applied for (or in the case of infringement, that being used by the defendant).
In Societe LTJ Diffusion, the CJ stated that the test for identity should be interpreted narrowly.
Article 5(1)(a) of the directive must be interpreted as meaning that 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.
Additionally, common conventions should be born in mind. Including the idea that a word mark represents that word in any form, and that matter disclaimed in the registration will be ignored.
The court has provided little further guidance, taking the view that this is a matter of factual appraisal for national courts.
Describe briefly the test applied by the CJEU for determining similarity between products.
In Canon, the CJEU pointed out that, in assessing the similarity of the goods or services concerned, as the
French and United Kingdom Governments and the Commission have previously pointed out, all the relevant factors relating to those goods or services
themselves should be taken into account. Those factors include, inter alia:
their nature,
their end users [should read ‘intended purpose’] and
their method of use and
whether they are in competition with each other or are
complementary
See British Sugar v Robertson, Canon
Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc, and Balmoral Trade Mark
Describe briefly the test applied by the CJEU for determining similarity between marks.
The European Courts have formulated a “global appreciation” test (first developed in Puma v Sabel) in which likelihood of confusion is assessed on the basis of an overall consideration of the similarities (and
dissimilarities) between the respective marks and goods/services. The essence of the test is the principle of interdependency between these contributing factors.
The familiar concepts of :
- first impressions (attention should be paid particularly to the dominant and distinctive components of the mark)
- marks to be compared as a whole, disregarding matters common to the trade (i.e. in the way the average consumer would see them)
- aural as well as visual comparison (in doing so, taking account of the inherent or acquired distinctiveness of the mark).
- doctrine of “imperfect” or “sequential recollection”
- importance of first syllable
- particularly with device or composite marks, the “idea of the mark” or conceptual similarity (i.e. does use of the later mark immediately summon up the first mark, BETTY BOOP)
- In the case of composite marks, there is also a tendency to emphasise the textual elements.
Describe the “average consumer” as defined by the CJEU in Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV, Case C-342/97.
For the purposes of that global appreciation, the average consumer of the category of products concerned is deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or services in question.
Describe the test devised by the CJEU for establishing that a trade mark enjoys reputation.
Public policy = advertising function
Section 5(3) encompasses
- erosion of a marks distinctiveness by use on the goods of another (blurring)
- tainting the repute or goodwill associated with a mark (tarnishment)
- prevention of free-riding
In General Motors v Yplon, the CJ stated that reputation involved some sort of knowledge threshold so that ‘a mark would have a reputation where it is known by a significant part of the public concerned by the product or serviced covered by the trade mark.
This is only the case where there is a sufficient degree of knowledge of the mark that the public, when confronted with the later trade mark may possibly make an association between the two trade marks, even when used for non-similar products or services, and that the trade mark may consequently be damaged.
A realistic assessment of whether a mark has a reputation should be determined on the basis of a number of different criteria. These include the market sharehold by the trade mark, the intensity, geographical extent, duration of its use, and the size of the investment made in advertising.
In Yplon, the Court said that the threshold for reputation was a relatively low one.
In the case of Community trade marks, the reputation must exist in a substantial part of the Community.
In conclusion, in Yplon the court stated that in order to enjoy protection extending to non-similar products or services, a registered trade mark must be known by a significant part of the public concerned by the products or services.
*Also see PAGO
Describe the test devised by the CJEU for establishing that a trade mark enjoys reputation.
Public policy = advertising function
In General Motors v Yplon, the CJ stated that reputation involved some sort of knowledge threshold so that ‘a mark would have a reputation where it is known by a significant part of the public concerned by the product or serviced covered by the trade mark.
This is only the case where there is a sufficient degree of knowledge of the mark that the public, when confronted with the later trade mark may possibly make an association between the two trade marks, even when used for non-similar products or services, and that the trade mark may consequently be damaged.
A realistic assessment of whether a mark has a reputation should be determined on the basis of a number of different criteria. These include the market share-hold by the trade mark, the intensity, geographical extent, duration of its use, and the size of the investment made in advertising.
In Yplon, the Court said that the threshold for reputation was a relatively low one.
In the case of Community trade marks, the reputation must exist in a substantial part of the Community.
Discuss briefly the importance of the decision of the CJEU in Intel Corporation Inc. v CPM UK Ltd, Case C-252/07.
Article 5(2) of the Directive, entitled ‘Rights conferred by a trade mark’, provides:
‘Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.’
In Adidas-Salomon the court stated that, the infringements referred to in Article 5(2) of [Directive 89/104], are the consequence of a certain degree of similarity between the mark and the sign, by virtue of which the relevant section of the public makes a connection between the sign and the mark (i.e. establishes a link between them even though it does not confuse them.
The existence of such a link must, just like a likelihood of confusion in the context of Article 5(1)(b) of Directive [89/104], be appreciated globally, taking into account all factors relevant to the circumstances of the case.
To fall within section 5(3), it must be shown that use of the later mark relates to unfair advantage or detriment to the distinctive character or reputation of an earlier mark.
Intel relates to detriment to the distinctive character of the earlier mark (blurring).
INTELMARK for marketing services v INTEL for microprocessor chips.
CJ defined ‘detriment to distinctive character’ s dilution, whittling away, or blurring, which occurs when there is a weakening of a mark’s ability to identify the goods or services for which it is registered and used, because the use of the later mark leads to ‘dispersion’ of the earlier mark’s ‘identity and hold upon the public mind’.
The Court referred to the impact of such blurring on the length of time that the consumer would take to associate the mark with the goods.
The CJ stated that Article 4(4)(a) of the Directive must be interpreted as meaning that whether there is a link, within the meaning of Adidas, between the earlier mark with a reputation and the later mark must be assessed globally, taking into account all factors relevant to the circumstances of the case. The fact that for the average consumer, who is reasonably well informed and
reasonably observant and circumspect, the later mark calls the earlier mark with a reputation to mind is tantamount to the existence of such a link, within the
meaning of Adidas-Salomon and Adidas Benelux, between the conflicting marks.
The fact that:
- the earlier mark has a huge reputation for certain specific types of goods or services, and
– those goods or services and the goods or services for which the later mark is registered are dissimilar or dissimilar to a substantial degree, and
– the earlier mark is unique in respect of any goods or services,
does not necessarily imply that there is a link, within the meaning of Adidas, between the conflicting marks.
The more immediately and strongly the earlier mark is brought to mind by the later mark, the greater the likelihood that the current or future use of the later
mark is taking unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier mark.
The assessment of injury must also be a global assessment.
The Court the went on to establish a test for when such detriment would occur:
- mark need not be unique
- any mark with a reputation, and thus acquired distinctive character could have that character damaged.
- If the earlier mark was unique, then the later use of an identical or similar mark would be more likely to damage the distinctive character.
- first use on an identical or similar mark could damage distinctiveness (do not need to rely on death by 1000 cuts).
- proof that use of the later mark would be detrimental to the distinctive character of the first requires evidence of a change in the economic behaviour of the average consumer of the goods or services in question, or a serious likelihood that such a change will occur in the future.
It is immaterial, however, for the purposes of assessing whether the use of the later mark is or would be detrimental to the distinctive character of the earlier
mark, whether or not the proprietor of the later mark draws real commercial benefit from the distinctive character of the earlier mark.
Explain briefly the concept of dilution by tarnishment.
Damage to reputation (tarnishment) occurs when: the goods/services for which the identical or similar mark is used may be perceived in a way that reduces the mark’s power of attraction.
The likelihood of such detriment may arise in particular where the goods or services offered by the third party possess a characteristic or a quality which is liable to have a negative impact on the image of the mark.
There are two obvious ways tarnishment can occur:
- proposed use would reflect badly (e.g. antagonism between goods)
- Later mark modifies the earlier sign in a denigratory way.
Discuss briefly the importance of the decision of the CJEU in L’Oreal SA v Bellure NV, Case C-487/07 in relation to the concept of taking ‘unfair advantage’.
Facts: claimant manufactured expensive perfumes under registered trade marks and sold them through exclusive outlets. The defendants manufactured and distributed perfumes with a ‘smell-alike’ relationship. The packaging was also designed to call to mind the claimant’s packaging.
In this particular situation:
1. the guarantee of origin was not impaired or put at risk
2. there was not tarnishing or blurring
3. the trademarks owner’s sales were not impaired
the trademark owner was not deprived of any reward for promotion of the mark
However
5. the trader did get a commercial advantage from use of the sign.
Jacob LJ thought that taking advantage need not be unfair. Nevertheless, he asked the CJEU to address the question of when taking advantage was unfair.
The CJEU first set out what it understood ‘unfair advantage’ to mean:
- parasitism or free-riding
- doesn’t relate to the detriment of the mark but the advantage taken by the third party.
- clear exploitation on the coat-tails of a mark with a reputation.
identified the circumstances in which taking unfair advantage could be proved:
- global assessment
- strength of the marks reputation
- degree of distinctiveness
- degree of similarity between the marks
proximity of the goods or services
the stronger the mark’s distinctive character and reputation, the easier it will be to accept that detriment has been caused. - the more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the sign is taking unfair advantage.
Concluded: the link between the claimant and the defendants marks confers a commercial advantage to the defendants, intended to benefit from the reputation and prestige of the earlier mark, and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor.
Describe briefly the functions of trade marks that enjoy legal protection according to the case law of the CJEU.
The essential/origin function
to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.
The quality function
For a trade mark to be able to fulfil its role, it must offer a guarantee that all good bearing it have been produced under the control of a single undertaking which is accountable for their quality.
The advertising function
The Google France case, examined the use by internet advertisers of someone else’s trade marked words as
keywords to trigger ads in a search engine like Google.
Here, the ECJ held there that “the proprietor of a trade mark is entitled to prohibit a third party from using, without the proprietor’s consent, a sign identical with its trade mark in relation to goods or services which are identical with those for which that trade mark is registered, in the case where that use adversely affects the proprietor’s use of its mark as a factor in sales promotion or as an instrument of commercial
strategy.”
This might include situations where the mark of a luxury good is associated with down market goods This description is remarkably broad and arguably liable to increase legal uncertainty, particularly taking into account that it is not required that the third party use affects in any way the function of indicating origin.
The investment function
The investment function of a trademark was analysed by the ECJ in Interflora, again a case dealing with the use of a third-party trademark as a keyword for triggering the display of Google ads. The court defined the “investment function” as the use of the mark by its proprietor “to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty”.
The court noted that while this investment function “may overlap with the advertising function, it is none the less distinct from the latter.
Communication function
So far the CJ has said nothing about the communication function. However, in L’Oreal, the Advocate General observed that a trade mark can convey numerous messages to consumers. He treated the communication function as encompassing informative advertising and communication that cultivates an image of the product.
Discuss briefly the importance of the decision of the CJEU in Ansul BV v Ajax Brandbeveiliging BV, Case C-40/01.
Ansul registered the mark MINIMAX in the Benelux countries in 1971 for fire-extinguishers and related products. It had not sold any fire extinguishers since 1989. However, it had component parts for fire extinguishers, and services and maintained them.
A German company who also sold fire extinguishers registered the mark MINIMAX in Germany. Ajax, a subsidiary of the German company, started to use the mark in the Netherlands and applied for revocation on the grounds of non-use.
CJ adopted a largely subjective test for genuine use.
CJ said that:
- token use, serving solely to attempt to preserve rights was not genuine use.
- must be consistent with the essential function of a trade mark, to guarantee the identity of the origin of the goods or services.
- should not be internal use
- must be related to goods or services currently on, or about to be put on, the market.
- used to secure customers, such as in advertising campaigns.
- use of the mark need not be quantitatively significant
- use in relation to components or after-sales services could be use that ‘related to’ goods, even though the goods for which the mark was registered were no longer being sold.
What does a trade mark proprietor need to demonstrate in order to establish that there are ‘proper reasons for non-use’ within the meaning of Section 46(1)(a)-(b) Trade Marks Act 1994 and Article 51(1)(a) EUTMR respectively? (Armin Häupl v. Lidl Stiftung & Co. KG, Case C-246/05.
CJ interpreted the notion of ‘proper use’ in light of Art 19 TRIPS
- obstacles arose independently of the will of the proprietor
- must be wholly outside the proprietor’s control
- classic examples are import restrictions or government regulations
- lack of resources, financial problems, lack of staff, marketing problems or difficulties perfecting technology are likely to be considered situations that are not independent of the proprietor’s will, because they are matters within a businessman’s control. - there is a direct relationship between the obstacles and failure to use the mark
- bureaucratic obstacles such as gaining building permission is not sufficiently directly related to use of the trademark on the foodstuff.
- use of a particular name may be dependant on marketing authorisation. - the obstacle would make use of the mark impossible or unreasonable
- these cases will be rare
- tribunal should examine the existing corporate strategy, any good will already achieved, alternative strategies (such as licensing).
List four defences that are available to the infringement of a trade mark registered under the Trade Marks Act 1994.1
- use of a name or address, in accordance with honest practices in industrial or commercial matters
- descriptive use use of a name or address, in accordance with honest practices in industrial or commercial matters
- use to indicate the intended purpose, use of a name or address, in accordance with honest practices in industrial or commercial matters
- comparative advertising, if the advertisement satisfies the eight conditions specified in Art 4 of the Directive on Misleading and Comparative Advertising (MCAD)
- local use of an earlier right
Explain briefly the circumstances in which a trade mark owner may oppose further dealings in goods which he/she has put on the market in the European Economic Area?
There must be legitimate reasons to do so…
- Altering the goods
Where the condition of the goods has changed or been impaired
for example, an adaptor is of a different standard from that which the trader would supply in the authorised package, or where changing the characteristics of the goods would affect the reputation. - depackaging
For example, eBay,.
A legitimate reason on this ground may include the removal of essential information, or damage to reputation. - repackaging
Bristol-Myers v Paranova
cannot rely on this right to prevent importing or marketing in another member state, unless repackaging jeopardised the guarantee of origin. - rebranding
- advertising the goods
damage to reputation
detracting from the allure and prestigious image of the goods.
Describe the effects of invalidity and revocation under the UK Trade Marks Act 1994.
Invalidity
• Section 47(6) Trade Marks Act 1994: Where the registration of a trade mark is declared invalid to any extent, the registration shall to that extent be deemed never to have been made: Provided that this shall not affect transactions past and closed.
An application may seek to invalidate the entire
registration, or only invalidate the registration of the mark for some of the registered goods or services.
Revocation
• Section 46(6) Trade Marks Act 1994: Where the registration of a trade mark is revoked to any extent, the rights of the proprietor shall be deemed to have ceased to that extent as from— (a) the date of the application for revocation, or (b) if the registrar or court is satisfied that the grounds for revocation existed at an earlier date, that date.
If a party wants revocation to take effect from a date earlier than the date of application for revocation, it should explicitly allege that the grounds for revocation existed at the earlier date.
Describe the effect of a successful central attack under the Madrid Agreement and the Madrid Protocol.
For a period of five years from the date of the international registration, the protection resulting from the international registration remains dependent on the
mark registered or whose registration has been applied for with the Office of origin.
This dependence is absolute, and is effective regardless of the reasons why the basic application is rejected or is withdrawn or the basic registration ceases to enjoy, in whole or in part, legal protection.
If during that time the basic application is refused or withdrawn or the basic registration or the registration resulting from the basic application is canceled or has lapsed, the holder of the international registration may no longer invoke the protection of that registration.
Similarly, if the basic registration is canceled after the five years as a result of an action that began during the five-year period, the international registration will likewise be canceled.
The Madrid Protocol provides that the holder of an international registration that is canceled through a “central attack” may apply for registration of the same mark with all Offices of designated Contracting Parties where the international registration had effect and whose designation is governed by the Protocol, as long as such
application is made within three months after the international registration is canceled.
The national applications that result from this procedure,
known as “transformation,” are given the date of the original international registration. Other than the extraordinary priority, these applications become ordinary national applications that must be filed with the Office of
the Contracting Party directly. Note that transformation is not available where the holder has itself opted to cancel the registration.
Where the EU designation is refused or liable to fall away as a result of central attack, it can be transformed either:
Into national applications in one or more EU member states under the EUTM legislation.
Under the Protocol “opting-back” provision, into national applications in those EU countries party to the Protocol, as long as those countries are members of the Protocol as at the date of transformation.
Under the Madrid Agreement, an International application cannot transform into a bundle of national applications.
Explain the principle of coexistence in the context of the European Union Trade Mark system.
The flexibility of the trade mark system enables different businesses to use the same trade marks without problem. It lets them own marks just within the own commercial sectors in which they trade. That is how, for example, the same word POLO could be reserved for quite unrelated businesses that sold confectionery, clothing and cars at the same time.
The system is just as flexible in that it allows businesses to register and use similar trade marks even for goods and services in the same commercial sector. This is so for as long as that similarity does not confuse consumers into being unable to identify which goods or services are which, while at the same time protecting them against later businesses that want to use similar trade marks if confusion is likely to result.
Explain the principle of seniority in the context of the European Union Trade Mark system.
A company that has identical registrations of its marks in one or more EU member states may consolidate those national registrations and record them as part of an EUTM registration. In doing so, the owner not only preserves the original national filing dates in the EUTM record (this is known as “seniority”), but also saves money on renewal fees, as there will only be one fee to pay instead of multiple fees (one for each national registration). However, the EUTM holder cannot take advantage of the seniority claims unless and until it allows its national registrations to lapse.
Describe the test for passing off established in Reckitt & Colman Ltd v Borden Inc [1990] R.P.C. 340, HL (the “Jif Lemon” decision).
The classic trinity identified in ‘JIF LEMON’ as necessary for a passing off action are:
i. Goodwill
ii. Reputation
iii. Damage or, in a quia timet action, the likelihood of damage
Describe briefly the importance of the decision of the CJEU in Chartered Institute of Patent Attorneys v Registrar of Trade Marks, Case C-307/10, 19.6.2012, (IP translator).
The IP TRANSLATOR case concerned the scope of protection conferred by trade mark registrations which use ‘class headings’ in their specifications of goods and services.
The goods and services for which the protection of a trade mark is sought must be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark.
It is permissible to use the wording of the class headings of the Nice Classification to identify the goods and services for which the protection of a trade mark is sought, provided that such identification is sufficiently clear and precise.
An applicant who uses all the general indications of a particular class heading must specify whether its application is intended to cover all of the goods or services included in the alphabetical list for that class or only some of them. If the latter, the applicant is required to specify which of the goods or services in that class are intended to be covered.
