Trademark law

Question 1

What are the functions of Trademarks?

5 Points

Answer 1

There are many functions of trademarks.

Trademarks serve as a badge of origin for the consumer to easily identify who, and where the product is coming from.

To distinguish goods/services bearing the mark from other similar goods/services from compettitors.

As a guarantee of the quality of the goods/services bearing the marks.

To reduce consumers search costs. I.E A consumer is more likely to purchase a good the less time they spend searching for it.

To allow consumers to make a lifestyle statement / Snob Appeal

Question 2

What are the three required steps for the tort of passing off?

Answer 2

1. Goodwill and Reputation.
2. A misrepresentation
3. Damages arising from the misrepresentation

Question 3

How would you prove goodwill and reputation?

Answer 3

Goodwill and reputation must be proved that consumers actually think a certain way about your brand. And that the public relies on the appearance of the goods to distinguish your product from another.

Question 4

How would you prove misrepresentation?

Answer 4

You have to prove that the defendant is actually attempting to represent (or misrepresent) your brand. It does not matter if this representation is accidental or not.

Question 5

How would you prove damages?

Answer 5

Damages can be proved through a loss in sales, downturn in profits. However, you must be able to prove that the downturn in sales directly correlates to the misrepresentation of the defendant.

Question 6

What is the correct way to say injunction?

Answer 6

Through the equitable remedy of an injunction.

Question 7

What is an injunction?

Answer 7

A court order, an equitable remedy.

Question 8

Why is an injunction considered equitable?

Answer 8

This is because damages can only be sought through the common law and regarding trademarks, if damages where the only remedy then the defendant would just continue to infringe on the trademark after paying the damages.

Question 9

Regarding the Trademarks act, Section 89 , 1 (a) what is required to declare that a trademark as been infringed on ?

Answer 9

Section (a) declares that a trade sign must be identical with the registered trademark in relation to any goods and services in respect to which the trademark is registered.

Question 10

Regarding the Trademarks act, Section 89 , 1 (b) what is required to declare that a trademark as been infringed on ?

Answer 10

Section (b) declares that the trade sign must be identical with the registered trademark in relation to any goods or services that are similar to any goods or services in respect of which the trademark is registered, if that use were likely to confuse or deceive.

Question 11

Regarding the Trademarks act, Section 89 , 1 (c) what is required to declare that a trademark as been infringed on ?

Answer 11

Similar to the registered trademark in relation to any goods or services that are identical with or similar to any goods or services in respect of which the trademark is registered, if that use would be likely to deceive or confuse.

Question 12

Define confusion?

Answer 12

Cause to wonder

Question 13

define deception?

Answer 13

which misleads, hides the truth, or promotes a belief, concept, or idea that is not true.

Question 14

What are the factors the must be considered when judges decide between two trademarks?

Answer 14

a) Look and sound of the marks
b) idea of the marks
c) the same or similar goods
d) type of goods
e) Nature and kind of customer
f) expert evidence
g) presence of actual confusion evidence.

Question 15

How much of a song must be copied for you to be eligable for copyright infringment?

Answer 15

A substantial portion of a song must be copied. I.E Theoreatically you could just copy the beat of the song as long as the rest of the song is different.

Question 16

What is an example of Judges making law regarding copyright infringemnet? (music)

Answer 16

Judges declared that a substantial portion of a song must be copied for it to violate copyright. There is no mention of this in the Trade Marks Act, so therefore, this is judge made law.

Question 17

Could you completely copy the base line of another persons song without suffering copyright infringement?

Answer 17

Yes, in theory you could

You could also copy some lyrics, or some guitar rift, as long as it is not a substantial amount.

This is an example of Judge made law as the statute does not mention any of these things. And Judges declared that you cannot infringe on a base line of a song.

In New Zealand, the precedent for this is mention in the National party V eminem case.

Question 18

What is delivering up ?

Answer 18

Where the defendant, if they lose the case will have to deliver up all the infringed goods to be destroyed.

Question 19

Using the example of a fake rolex watch, why could rolex not prove through the tort of passing off that theyre brand had been misreprestned?

Answer 19

This is because the type of consumer who is going to buy a rolex watch, typically isn’t going to be decieved or confused by a 40dollar, hawker store made watch. It is obviously fake to somebody who is going to purchase a $400,000 dollar watch.

Question 20

If you are selling a fake product and you admit through singage or words that your proudct is fake, can this save you from copyright infringment?

Answer 20

Yes, using the rolex example again, there cannot be a misrepresentation if the maker of the fake rolex watch is open that it is not a rolex product and is indeed a fake.

However, there can be the case of inconsistent recollection, where in Arsenel V Reeds, the court ruled that althought the defendant had sigage completely stating the prorudct was fake, when the product was purchased from the store and taken elsewhere, there was nothing that could differientaite the fake product from the real thing, therefore, the court ruled in Arsnenals favour.

Question 21

What happens if you are an honest trader, who has come up with a flash new brand, and there is no way to figure out if somebody is already using the brand?

Answer 21

It is likely that you could get in trouble through the tort of passing off. This caused the Government to introduce the trademarks act to set up a trademarks register so people could find out if a trademark is already being used.

Question 22

What did the Trade Marks act 2002 set out?

Answer 22

it set out the trade marks registery and it provided a way for indivudals to register a trade mark and a series of goods to go along with that trademark. This allowed for people looking to create a new brand to search the trademarks registery to find out if their idea had already been used or not, and if it had been used then you must change your idea.

Question 23

Did the common law provide for anything regarding trade mark laws?

Answer 23

No, through the common law it was all done by statute.
The trade marks act 2002 was an example of Parliament filling in gaps in the law (for the protection of brand owners) which is one of the functions of parliament.