Trade Marks - Infringement Flashcards
In Reed Executive v Reed Business Information [2004] EWCA Civ 159, what did Jacob LJ hold concerning the meaning of “identical sign” in s.10(1) TMA 1994?
(1) He referred to the ECJ judgement in LTJ Diffusion v Sadas Vertbaudet (“Arthur et Félicie”) where it was held that “there is identity between the sign and the trade mark where the former reproduces, without any modification or addition, all the elements constituting the latter”.
(2) He disapproved of the ECJ’s reference to the average consumer in determining a “perception of identity”, stating that this was more aptly related to the concept of likelihood of confusion.
(3) There can only be identity if there is both visual and aural identity.
How does the average consumer perceive signs?
(1) As a whole, and does not proceed to analyse its various details.
(2) Reasonably circumspect and reasonably well-informed.
(3) Rarely has the chance to make direct comparisons between signs, and instead must rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question.
When is there a likelihood of confusion?
If there is a risk that the public may believe that the goods or services in question come from the same undertaking or economically-linked undertakings.
What was Medion v Thomson about?
(1) Medion had an earlier TM for ‘LIFE’. Thomson sold products with ‘THOMSON LIFE’.
(2) ‘LIFE’ still had an independent distinctive role in ‘THOMSON LIFE’ despite not being the dominant element.
(3) As a result, the overall impression could lead the public to believe to believe that the goods or services derive, at the very least, from companies which are linked economically.
Due to the nature of the average consumer, how must likelihood of confusion be evaluated?
(1) Globally, taking into account of all relevant factors.
(2) Visual, aural and conceptual similarities must be assessed by reference to overall impressions.
(3) The comparison should be based on dominant elements if other elements are negligible.
What was Canon v MGM about?
(1) MGM tried to register ‘CANNON’ for films recorded on video cassettes. Canon had ‘Canon’ registered for cameras and recording devices.
(2) The public was well-educated that manufacturers of video recorders were not into video tape producing.
(3) The goods were therefore dissimilar enough that the public would assume that they had different origins.
(4) However, to assess the similarity of goods, factors must be taken into account including intended purpose, whether they are in competition or complementary.
(5) If the public might believe that the goods come from economically-linked undertakings, there is likelihood of confusion.
What was Matratzen Concord v Hukla about?
(1) Matratzen Concord tried to register a figurative EUTM with the words ‘Matratzen Markt Concord’. Hukla had ‘Matratzen’ registered in Spain.
(2) ‘Matratzen’ and ‘Concord’ were the dominant elements of the mark.
(3) Because ‘Matratzen’ had no resemblance to any Spanish word, it was more likely to be kept in mind by the relevant public.
(4) From the point of view of the relevant public, there was therefore a visual and aural similarity between the two trade marks.
What was Picasso estate v DaimlerChrysler about?
(1) DaimlerChrysler tried to register ‘Picaro’ for vehicles. They were opposed by the Picasso estate which had already registered ‘Picasso’ for the same goods.
(2) The goods were partly identical and partly similar, and there was visual and phonetic similarity between the signs.
(3) However, ‘Picasso’ had a clear and specific meaning so that the public was capable of grasping it immediately.
(4) As a result, there was a conceptual difference, which counteracted the visual and phonetic similarities.
(5) Because of the high degree of attention of the relevant public when buying vehicles, there was no likelihood of confusion.
What was PAGO v Tirol Milch about?
(1) Pago had registered the shape of its green glass bottle. Tirol Milch had marketed a similar green glass bottle.
(2) While there was no likelihood of confusion, there could be freeriding.
(3) Was reputation in Austria sufficient to have reputation in a substantial part of the EU?
(4) The CJEU replied that it was.
What was Ferrero v Tirol Milch about?
(1) Tirol Milch tried to register a figurative mark with ‘TiMi Kinderjoghurt’, and were opposed by Ferrero’s earlier ‘Kinder’ mark.
(2) Because ‘Kinderjoghurt’ was a single merged word and ‘TiMi’ was displayed prominently, there was no similarity between the marks.
(3) Therefore, there would be no link in the relevant public’s mind between the two marks.
(4) As a result, there could be no dilution, tarnishment or free-riding, despite the earlier’s mark’s reputation.
What was Freiesleben v Hölterhoff about?
(1) Mr Freiesleben was proprietor of the ‘Spirit Sun’ and ‘Context Cut’ trade marks, covering precious stones. Mr Hölterhoff referred to a stone ‘in the Spirit Sun cut’.
(2) Because the reference was made for purely descriptive purposes and to a potential customer who was already familiar with the trade mark, the reference could not be interpreted as indicating the origin of the product.
(3) Therefore, the essential function of the mark was not impaired so the use was lawful.
In Arsenal v Reed C-206/01, what did the Court hold regarding the extent of the trade mark proprietor’s right to prohibit double identity uses?
(1) The essential function of a trade mark is to offer a guarantee that all the goods or services bearing it have been manufactured under the control of a single undertaking which is responsible for their quality.
(2) The exclusive right given to a trade mark proprietor was conferred in order to enable the proprietor to ensure that the trade mark can fulfil its functions.
(3) The exercise of that right must therefore be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential original function.
