Trade marks: Relative grounds (infringement) Flashcards
What must the P show in order to make out infringement
- Infringing conduct; AND
2. Ds mark is within the scope of Ps registration
What sections list infringing conduct
10(4) and (5)
When can action for infringement be brought
Celine: Only if use is:
- In the course of trade
- Without consent
- In respect of goods and services
- Liable to affect one or more of Ps TM functions
Definition of in the course of trade
Travelex: In the course of commercial activity whereby goods / services are manufactured and supplied in a market
Example of use not in the course of trade
Electrocoin: Use of mark as a winning symbol on a fruit machine
Definition of in respect of goods and services
RxWorks: being used for goods
What did Arsenal v Reid say about in respect of goods and services
Look to the end user’s perception
Example of incidental use, not in respect of goods and services
FA
Use of TM on invoice IS in respect of goods and services
Beautimatic
How to judge whether use affects trademark functions (2 cases)
Consumer thinks it indicates approval: Opel
Consumer thinks there is a link between the advertiser and the TM owner: Google France v Louis Vuitton
What section says that infringing use must be in the UK
s9(1)
Which case says that there is no need for confusion in a s10(1) infringement (identical + identical) case
Holterhof
3 things to note about the application of s10(1)
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
What is the test for whether signs atre identical
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
What is the test for identity where the junior mark is contained within the senior mark
Reed v Reed: Is the extra content trade mark matter (anything which sends a TM message)? If not, ignore it
What is the test for identity of goods
Reed v Reed: Look to the core activities. Do not interpret widely
What is the test for similarity of signs
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.
Example of marks found to be similar on aural grounds
Lloyd Schufabrik: Lloyd and Loint
Example of marks found not to be visually similar
IKEA / IDEA - the junior mark had extra TM matter (considered purchase)
Example of conceptually similar marks
Neutralia / Neutrogena (impulse buy)
Test for similarity of goods
Canon: Nature of goods, end users, method of use, competitive, complementary
3 types of confusion
Direct, indirect or association (nb association goes to define scope of confusion, is not a separate test - Sabel v Puma)
3 tests for confusion in correct order
- Sabel v Puma: Global test - the more distinctive the senior mark, the more likely there will be confusion
- Canon: The reputation of the senior mark has a bearing - the consumer may think there is some sort of trade connection
- Lloyd: The more similar the goods, the more likely there will be confusion
What case says that there is no need for confusion in 10(3) (similar/identical + reputation + detriment) cases
Davidoff
4 questions to address in s10(3) cases
1, Is the mark similar/identical
- Does the mark have a reputation
- Is the use without due cause
- Does the use take unfair advantage or cause harm
What is the lowest threshold for similarity n 10(3) cases
It is sufficient that the public makes a link: Intel
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
What is due cause for the purposes of s10(3)
Necessity or entitlement in their own right: Premier Brands
3 types of unfair advantage / harm for purposes of s10(3)
- Disppersion of identity: Premier Brands
- Tarnishment: Quorn for hunting
- Free riding: L’Oreal
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
Example of suvccessful free riding case
Viagra / Viagrene
Example of unsuccessful tarnishment case
Ty.phoo / typhoon
What section contains the provisions on groundless threats
s21
Defences to TM infringement (7)
- Consent (see S9)
- Use of own TM (s11(1))
- Descriptive use / use of own name / advertising spares (s11(2))
- Acquiescence (s48)
- Comparitive advertising (CAD)
- Non trademark use
- Ps mark is invalid
Example of successful use of consent defence
Northern and Shell v Conde Nast
What must you rememeber about defence of use of own TM
That it must be in the form registered: Neutrogena
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
Example of successful use of own name defence
Celine
Example of descriptive use defence
BMW v Deenik
Example of dishonest descriptive use
Volvo v Heritage - use of large font for Volco was dishonest
When does the spare parts defence operate
Only where therez is no other way to communicate the information: Gillette v LA
When will the spare parts defence not work
Where used on products of inferior quality
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
What does Scandecor say
The test for honest practice is objective
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
Who is the burden on under the CAD
Mark owner, to prove non-compliance by D
3 points to cover in the non trademark use defence
- Is it a guarantee of origin (Arsenal)
- Does the consumer think the mark indicates endorsement or merely that it is decorative: Opel / Adidas
- Is the use in relation to goods and services (even if not affixed to the goods): Celine
When can an actio nfor infringement be brought
Post registration date s9(3)
Starting point for a defence of invalidity of Ps mark
s72 - Registration is prima facie evidence of validity
What section outlines the grounds for invalidity
s47(1) - Does not comply with s3 requirements - void ab initio
What section outlines grounds for revocation
s46 - Removal because of failure to protect / inactivity
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
Who is the burden on in an action for non use
The mark owner, to prove use
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
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
