Trade Marks - Relative Grounds

Question 1

What are the relative grounds for refusal?

Answer 1

(1) Double identity (same mark, same goods or services). (s.5(1) TMA / Art. 8(1)(a) EUTMR)
(2) Likelihood of confusion (similar mark, similar goods or services and likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark). (s.5(2) TMA / Art. 8(1)(b) EUTMR)
(3) Freeriding or dilution (similar mark, reputation, use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier mark). (s.5(3) TMA / Art. 8(5) EUTMR)
(4) If using the trade mark is liable to be prevented by a rule of law protecting an unregistered mark or any other sign used in the course of trade or by virtue of an earlier right e.g. copyright, design right or registered design (s.5(4) TMA / Art. 8(4) EUTMR)

Question 2

In LTJ Diffusion v Sadas C-291/00, what did the Court hold regarding when signs are identical?

Answer 2

(1) There is identity where a sign reproduces without any modification or addition, all the elements constituting the trade mark.
(2) Beccause this test is to be applied from the viewpoint of the average consumer, who will assess signs on the basis of their overall impression, insignificant differences between the sign and the trade mark may go unnoticed by the average consumer.

Question 3

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?

Answer 3

(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.

Question 4

In Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer C-39/97, what was held concerning how to evaluate likelihood of confusion?

Answer 4

A lesser degree of similarity between the goods and services may be offset by a greater degree of similarity between the marks, and vice versa.

Question 5

In Sabel v Puma C-291/95, what was held concerning how to evaluate likelihood of confusion?

Answer 5

(1) The likelihood of confusion on the part of the public must be appreciated globally, taking into account all factors relevant to the case.
(2) The average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.
(3) The more distinctive the earlier mark, the greater will be the likelihood of confusion.