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IP > Trade marks: Relative grounds (infringement) > Flashcards

Trade marks: Relative grounds (infringement) Flashcards

1
Q

What must the P show in order to make out infringement

A
  1. Infringing conduct; AND

2. Ds mark is within the scope of Ps registration

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2
Q

What sections list infringing conduct

A

10(4) and (5)

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3
Q

When can action for infringement be brought

A

Celine: Only if use is:

  1. In the course of trade
  2. Without consent
  3. In respect of goods and services
  4. Liable to affect one or more of Ps TM functions
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4
Q

Definition of in the course of trade

A

Travelex: In the course of commercial activity whereby goods / services are manufactured and supplied in a market

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5
Q

Example of use not in the course of trade

A

Electrocoin: Use of mark as a winning symbol on a fruit machine

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6
Q

Definition of in respect of goods and services

A

RxWorks: being used for goods

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7
Q

What did Arsenal v Reid say about in respect of goods and services

A

Look to the end user’s perception

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8
Q

Example of incidental use, not in respect of goods and services

A

FA

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9
Q

Use of TM on invoice IS in respect of goods and services

A

Beautimatic

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10
Q

How to judge whether use affects trademark functions (2 cases)

A

Consumer thinks it indicates approval: Opel

Consumer thinks there is a link between the advertiser and the TM owner: Google France v Louis Vuitton

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11
Q

What section says that infringing use must be in the UK

A

s9(1)

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12
Q

Which case says that there is no need for confusion in a s10(1) infringement (identical + identical) case

A

Holterhof

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13
Q

3 things to note about the application of s10(1)

A

The comparison is between the senior mark as it appears on the register and the junior mark: British Sugar
The test is STRICT because protection is absolute: LTJ
For word marks, the lettering is irrelevant: Bravado

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14
Q

What is the test for whether signs atre identical

A

LTJ Diffusion: Does the junior mark reproduce, without modification or addition, all the elements constituting the TM, or, where viewed as a whole, contain differences so insignificant as to go unnoticed by the average consumer

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15
Q

What is the test for identity where the junior mark is contained within the senior mark

A

Reed v Reed: Is the extra content trade mark matter (anything which sends a TM message)? If not, ignore it

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16
Q

What is the test for identity of goods

A

Reed v Reed: Look to the core activities. Do not interpret widely

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17
Q

What is the test for similarity of signs

A

Sabel v Puma: Global test, taking into account all the relevant factors - visual, conceptual. oral. Average consumer perceives marks as a whole. Bear in mind that the consumer will not have both marks in front of them.

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18
Q

Example of marks found to be similar on aural grounds

A

Lloyd Schufabrik: Lloyd and Loint

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19
Q

Example of marks found not to be visually similar

A

IKEA / IDEA - the junior mark had extra TM matter (considered purchase)

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20
Q

Example of conceptually similar marks

A

Neutralia / Neutrogena (impulse buy)

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21
Q

Test for similarity of goods

A

Canon: Nature of goods, end users, method of use, competitive, complementary

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22
Q

3 types of confusion

A

Direct, indirect or association (nb association goes to define scope of confusion, is not a separate test - Sabel v Puma)

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23
Q

3 tests for confusion in correct order

A
  1. Sabel v Puma: Global test - the more distinctive the senior mark, the more likely there will be confusion
  2. Canon: The reputation of the senior mark has a bearing - the consumer may think there is some sort of trade connection
  3. Lloyd: The more similar the goods, the more likely there will be confusion
24
Q

What case says that there is no need for confusion in 10(3) (similar/identical + reputation + detriment) cases

A

Davidoff

25
Q

4 questions to address in s10(3) cases

A

1, Is the mark similar/identical

  1. Does the mark have a reputation
  2. Is the use without due cause
  3. Does the use take unfair advantage or cause harm
26
Q

What is the lowest threshold for similarity n 10(3) cases

A

It is sufficient that the public makes a link: Intel

27
Q

How to ascertain whether a mark has a reputation

A

GM: Is it known to a significant number of the consumers in the sector concerned - use the windsurfing criteria

28
Q

What is due cause for the purposes of s10(3)

A

Necessity or entitlement in their own right: Premier Brands

29
Q

3 types of unfair advantage / harm for purposes of s10(3)

A
  1. Disppersion of identity: Premier Brands
  2. Tarnishment: Quorn for hunting
  3. Free riding: L’Oreal
30
Q

Guidance as to whether detriment has been suffered

A

Oasis Stores:
Inherent distinctiveness of earlier marek
Extent of repurtation
Range of goods reputation attached to
Uniqueness of mark in marketplace
Whether junior mark’s goods are related / likely to be sold in the same shops
Would the new mark make the senior mark less distinctive in its field

31
Q

Example of suvccessful free riding case

A

Viagra / Viagrene

32
Q

Example of unsuccessful tarnishment case

A

Ty.phoo / typhoon

33
Q

What section contains the provisions on groundless threats

A

s21

34
Q

Defences to TM infringement (7)

A
  1. Consent (see S9)
  2. Use of own TM (s11(1))
  3. Descriptive use / use of own name / advertising spares (s11(2))
  4. Acquiescence (s48)
  5. Comparitive advertising (CAD)
  6. Non trademark use
  7. Ps mark is invalid
35
Q

Example of successful use of consent defence

A

Northern and Shell v Conde Nast

36
Q

What must you rememeber about defence of use of own TM

A

That it must be in the form registered: Neutrogena

37
Q

Use of own name - when will it sytill be infringement (2 cases)

A

When objectively, in all the circumstances it amounts to unfair competition: Reed v Reed
Deliberate change of company name is NOT OK: Websphere

38
Q

Example of successful use of own name defence

A

Celine

39
Q

Example of descriptive use defence

A

BMW v Deenik

40
Q

Example of dishonest descriptive use

A

Volvo v Heritage - use of large font for Volco was dishonest

41
Q

When does the spare parts defence operate

A

Only where therez is no other way to communicate the information: Gillette v LA

42
Q

When will the spare parts defence not work

A

Where used on products of inferior quality

43
Q

3 cases on where practice is honest

A

Putsch - must be fair
Gillette - cannot discredit / be an imitation
Celine: take into account extent to which the public makes a link & extent to which D shoudl have been aware of the link in the public’s mind

44
Q

What does Scandecor say

A

The test for honest practice is objective

45
Q

What did O2 v Hutchinson say about the CAD

A

Use of a TM is prima facie infringement UNLESS it complies with ALL the requirements of s4 CAD
TMA should be read in accordance with CAD
CAD applies to IDENTICAL signs only

46
Q

Who is the burden on under the CAD

A

Mark owner, to prove non-compliance by D

47
Q

3 points to cover in the non trademark use defence

A
  1. Is it a guarantee of origin (Arsenal)
  2. Does the consumer think the mark indicates endorsement or merely that it is decorative: Opel / Adidas
  3. Is the use in relation to goods and services (even if not affixed to the goods): Celine
48
Q

When can an actio nfor infringement be brought

A

Post registration date s9(3)

49
Q

Starting point for a defence of invalidity of Ps mark

A

s72 - Registration is prima facie evidence of validity

50
Q

What section outlines the grounds for invalidity

A

s47(1) - Does not comply with s3 requirements - void ab initio

51
Q

What section outlines grounds for revocation

A

s46 - Removal because of failure to protect / inactivity

52
Q

What is genuine use for the purposes of revocation for non-use (3 cases)

A

Real commercial use: Ansul v Ajax (fire extinguishers)
Quality not quantity of use - Laboratoires Garnier
Giving free samples is not genuine use - Silberquelle

53
Q

Who is the burden on in an action for non use

A

The mark owner, to prove use

54
Q

What is the exception to revocation for non use

A

Where owner can give proper reason for non-use - obstacles beyond the control of the proprietor: Magic ball

55
Q

An example which shows that revocation will only be in respect of those classes where the mark has not been used

A

Thompson v Norweigan Cruise

IP (4 decks)

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