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Trade marks: Relative grounds (infringement) Flashcards

(55 cards)

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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

Study These Flashcards
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

25
4 questions to address in s10(3) cases
1, Is the mark similar/identical 2. Does the mark have a reputation 3. Is the use without due cause 4. Does the use take unfair advantage or cause harm
26
What is the lowest threshold for similarity n 10(3) cases
It is sufficient that the public makes a link: Intel
27
How to ascertain whether a mark has a reputation
GM: Is it known to a significant number of the consumers in the sector concerned - use the windsurfing criteria
28
What is due cause for the purposes of s10(3)
Necessity or entitlement in their own right: Premier Brands
29
3 types of unfair advantage / harm for purposes of s10(3)
1. Disppersion of identity: Premier Brands 2. Tarnishment: Quorn for hunting 3. Free riding: L'Oreal
30
Guidance as to whether detriment has been suffered
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
Example of suvccessful free riding case
Viagra / Viagrene
32
Example of unsuccessful tarnishment case
Ty.phoo / typhoon
33
What section contains the provisions on groundless threats
s21
34
Defences to TM infringement (7)
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
Example of successful use of consent defence
Northern and Shell v Conde Nast
36
What must you rememeber about defence of use of own TM
That it must be in the form registered: Neutrogena
37
Use of own name - when will it sytill be infringement (2 cases)
When objectively, in all the circumstances it amounts to unfair competition: Reed v Reed Deliberate change of company name is NOT OK: Websphere
38
Example of successful use of own name defence
Celine
39
Example of descriptive use defence
BMW v Deenik
40
Example of dishonest descriptive use
Volvo v Heritage - use of large font for Volco was dishonest
41
When does the spare parts defence operate
Only where therez is no other way to communicate the information: Gillette v LA
42
When will the spare parts defence not work
Where used on products of inferior quality
43
3 cases on where practice is honest
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
What does Scandecor say
The test for honest practice is objective
45
What did O2 v Hutchinson say about the CAD
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
Who is the burden on under the CAD
Mark owner, to prove non-compliance by D
47
3 points to cover in the non trademark use defence
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
When can an actio nfor infringement be brought
Post registration date s9(3)
49
Starting point for a defence of invalidity of Ps mark
s72 - Registration is prima facie evidence of validity
50
What section outlines the grounds for invalidity
s47(1) - Does not comply with s3 requirements - void ab initio
51
What section outlines grounds for revocation
s46 - Removal because of failure to protect / inactivity
52
What is genuine use for the purposes of revocation for non-use (3 cases)
Real commercial use: Ansul v Ajax (fire extinguishers) Quality not quantity of use - Laboratoires Garnier Giving free samples is not genuine use - Silberquelle
53
Who is the burden on in an action for non use
The mark owner, to prove use
54
What is the exception to revocation for non use
Where owner can give proper reason for non-use - obstacles beyond the control of the proprietor: Magic ball
55
An example which shows that revocation will only be in respect of those classes where the mark has not been used
Thompson v Norweigan Cruise

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