Trademarks

Question 1

Describe the “average consumer” as defined by the ECJ in Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV, Case C-342/97

Answer 1

Average consumer is:

• reasonably well-informed
• reasonably observant and circumspect
• rarely has the chance to make a direct comparison between the different marks so must depend on imperfect recollection in their mind
• level of attention is likely to vary according to goods or services in question

Question 2

Briefly describe the necessary elements for successful action under the law of passing off as set out in Jif Lemon

Answer 2

The classical trinity are:

• Goodwill - “the benefit and advantage of good name, reputation and connection of a business” (IRC v Muller’s Margarine)
  
  • Plaintiffs need to show goodwill or reputation attached to their goods or services has been communicated to the public (e.g. through brand) and that communication mechanism of good will has been interfered with by third party
• Misrepresentation - plaintiffs must also show that consumers have or are likely to be deceived as to commercial source of goods/services being offered by defendant
• Damage - Must show there has been damage as a result of the defendant’s action in the form of:
  
  • loss or potential loss of trade;
  • damage to the plaintiff’s reputation as a provider of those goods or services, or
  • dilution of the term incoprortating the goodwill of the product or service-type provided by the plaintiff

Question 3

Briefly describe the test devised by the ECJ in Ansul BV v Ajax (C-40/01) for what constitutes ‘genuine use’ of trade mark.

Answer 3

• use that is not merely token, serving solely to preserve the rights conferred by the mark
• use consistent with essential function of a trade mark, i.e. to guarantee identity of the origin of the goods or services for which it is registered as to create or preserve an outlet for those goods or services
• use of mark must relate to goods or services already marketed or about to be marketed and for whichpreparation by the undertaking to secure customers are under way
• regard must be all the relevant facts and circumstances, in particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark, the nature of those goods or services, the characteristics of the market and the scale and frequency of use of the mark

Case related to whether servicing fire extinguishers and supplying component parts (but no longer selling them) was genuine use. Didn’t make final ruling but ECJ indicated that components and after-sales servicing ‘related to’ the goods.

Question 4

Are shapes registrable as trade marks in the UK?

Answer 4

S1(1) of the TMA states that a trade mark may consist of any signs capable of being represented graphically, including the shapes of goods or their packaging, provided that they are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

However, S(3)(2) of the TMA excludes shapes from registration that:

• result from the nature of the goods
• are necessary to obtain a technical result
• give substantial value to the goods

Signs including shapes must not be devoid of distinctive character (TMA 3(1)(b)). In Henkel, it was established that for this to be the case, the product must depart significantly from the norm or customs of the shapes used for simular products in the sector.

Question 5

Describe the procedure for obtaining a registration under the Madrid Agreement

Answer 5

• Applicant must have a trade mark registered in its country of origin, which must be a contracting state of the agreement
• Applications must be completed in English, French and Spanish
• May only be used by an applicant that has a ‘real and effective commercial establishment’ in a country party to the Madrid agreement
• IB in Geneva examines applications for formalities
• IB sends to national offices nominated by applicant
• Local registry must confirm or refuse protection
• Registration lasts 20 years and is renewable for further periods of 20 years

Question 6

Describe the basis for a registration obtained under the Madrid Protocol.

Answer 6

• Application must been made in a country party to the protocol
• Existing registration or application provides national basis
• Applications must be filed at same office as national basis mark
• Holders of EUTMs can apply by filing international application under protocol with OHIM

Question 7

Describe the scope of section 9 of the TMA 1994

Answer 7

• Refers to rights conferred by a registered trademark
• Proprietor has exclusive rights in the trade mark which are infringed by the use of the trade mark in the UK without their consent
• Rights have effect from the date of registration (which is the date of filing) provided:
  
  • no infringement proceedings may be brought before the TM is registered
  • no offence under S92 is committed if done before date of publication

Question 8

What is the test for determining identity between signs given by CJEU?

Answer 8

The test is set out in LTJ Diffusion v Sadas Vertbaudet C-291/00 (ARTHUR ET FELICIE)

• A sign is identical with the trade mark where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by the average consumer
• Average consumer as defined in Lloyd Schufabrik: reasonably well informed, reasonably observant and circumspect, imperfect recollection, level of attention differs depending on nature of goods/services concerned
• Important that test for identity is strictly interpreted as identity protection is absolute unlike other types
• Factual background:
  
  • LTJ Diffusion had mark ‘Arthur’ and sold children’s clothing under, Sadas registered and started selling children’s clothing under the mark, ‘Arthur et Facile’

Question 9

Describe the test devised by the ECJ for establishing that a trade mark enjoys a reputation

Answer 9

Reputation defined in General Motors v Yplon (Chevy case)

ECJ held that in order to determine the reputation of a mark, national courts should consider:

• market share
• intensity, geographical extent and duration of use
• size of investment made by undertaking promoting it

The ECJ also added that the reputation should exist in a substantial part of the Member State, or region. Reputation does not need to exist throughout the territory!

Question 10

Explain briefly the concept of dilution by tarnishment.

Answer 10

Defined in L’Oreal v Bellure:

Tarnishment is damage to to the repute of the mark, it is caused when:

• the goods or services for which the identical or similar sign is used by the the third party may be perceived by the public in such a way that the trade mark’s power of attraction is reduced
• likelihood of such detriment may arise from fact that goods/services offered by third party have characteristic/quality that is liable to have negative impact on the mark

Example from ‘Azumi Ltd v Zuma’s Choice Pet Products Ltd.’ (IPEC):

Use of ‘Zuma’ in relation to dog food would tarnish high-end restaurant of same name’s trade mark.

Question 11

Discuss very briefly the concept of “use in the course of trade” as defined by the ECJ in Arsenal v Reed C206/01

Answer 11

• Reed ran defence that there was no “user in the course of trade” (see Article 10(2) of the TMD) at their stall (which indicated that they were not official and consumers were not confused) as it was an expression of loyalty towards the football club
• ECJ held such use did infringe Arsenal’s trade mark and immaterial where use of signs was badge of support, loyalty or affiliation
• Based on fact that there was a possibility that consumers would come across goods after their sale and believe Arsenal FC was origin of the goods so still impaired essential function of trade mark

Question 12

Describe briefly the importance of the decision of the ECJ in Libertel Groep v Benelux Markenbureau, Case C-104/01

Answer 12

In Libertel, the ECJ established that a colour per se could, in certain contexts, constitue a sign, and that such a sign could be capable of distinguishing the goods or services of one undertaking from others. To be registered, a graphical representation fulfilling the Sieckmann criteria must be given. Internationally recognized colour codes fulfil these criteria. A sample of colour and/or a written description were deemed not to.

Question 13

Are sounds registrable as trade marks in the UK? Explain your answer.

Answer 13

S(1)(1) of TMA 1994 states that a trade mark may consist of any sign capable of being represented graphically, provided that it is capable of distinguishing the goods or services of one undertaking from another.

In Shield Mark, court confirmed that sounds signs can be used to distinguish the origin of goods or services, and may constitute a trade mark provided they can be represented graphically. The graphical representation must meet the Sieckmann criteria. Musical notation meets this requirement.

Question 14

When would a junior use affect the advertising function of an earlier trade mark?

Answer 14

A junior use will affect the advertising function where that use damages the quality of attracting custom (Cosmetic Warriors v Amazon). In C v A case, quality was damaged by using Lush mark to attract attention of customers without informing them that they didn’t sell and attempting to sell them competitors products. In Google France, defined as situations where use of mark adversely use adversely affects the proprietor’s use of its mark as a factor in sales promotion or as an instrument of commercial strategy.

Cosmetic Warriors v Amazon (Lush case)

Lush relied on

Question 15

List four defences that are available to the infringement of a trade mark registered under the Trade Marks Act 1994.

Answer 15

Section 11(2) of the TMA 1994

• the use by a person of his own name or address
• use of indications concerning quality, kind, quantity, intended purpose, value, geographical originic, time of production of goods or rendering of services, or other characteristics
• necessary to indicate the intended purpose (e.g. accessories/spare parts)

Section 11(3) of TMA 1994:

• Use in a particular locality of earlier right which applies only in that locality
  
  • earlier right is an unregistered trade mark or other sign used in relation to same goods/services before earlier of use or registration by proprietor (or predecessor in title)
  • protected in locality if, or to the extent that, its use is protected by virtue of any rule of law (esp. passing off)

Question 17

Briefly discuss the decision of the ECJ in Dyson Ltd v. Registrar of Trade Marks (Case C-321/03

Answer 17

In TMA 1994 S1(1) & TMD Art. 3 (Art. 2 of old directive), established that trademark must be a sign capable of being represented graphically and capable of distinguishing the goods and services of one undertaking from those of others.

Dyson made an application for abstract and general concept of a transparent collecting bin to be registered as a trade mark.

ECJ held that the subject-matter of the application did not constitute a sign. General abstract concept of transparent collecting bin is not a sign capable of being perceived visually as ‘a concept is conceived by the mind and cannot be perceived by one of the five physical senses of human beings’ (from AG opinion).

Question 18

What are the consequences of failure to record the assignment of a trade mark registered in the UK?

Answer 18

• You are not awarded costs in infringement proceedings Unless registration is carried out within 6 months of transaction. Or court is satisfied it wasn’t practical to make an application for assignment within that period, but it was made asap afterwards
• Assignment is ineffective against a person acquring a conflicting interest in or under the registered trade mark in ignorance of the assignment.
• Quote from TMA 1994 s25:

(3) Until an application has been made for registration of the prescribed particulars of a registrable transaction—
(a) the transaction is ineffective as against a person acquiring a conflicting interest in or under the registered trade mark in ignorance of it, and
(4) Where a person becomes the proprietor or a licensee of a registered trade mark by virtue of a registrable transaction and the mark is infringed before the prescribed particulars of the transaction are registered, in proceedings for such an infringement, the court shall not award him costs unless—
(a) an application for registration of the prescribed particulars of the transaction is made before the end of the period of six months beginning with its date, or
(b) the court is satisfied that it was not practicable for such an application to be made before the end of that period and that an application was made as soon as practicable thereafter.

Question 19

What is the meaning of an “earlier trade mark” as defined in the TMA 1994?

Answer 19

Section 6 of the TMA 1994 defines an earlier trademark as:

• a registered trade mark, international trade mark, or EU trade mark having a date of application earlier than that of the trade mark in question (taking account of any priorities claimed)
• an EU trade mark with a valid claim to seniority from an earlier registered trade mark or international trade mark (UK)
• a well known trade mark under the Paris Convention or the WTO agreement

Subsection 2 states that this includes applications that, if sucessfully registered would fulfil the above criteria.

Subsection 3 states that a trade mark whose registration expires will continue to be taken into account for a period of one year after expiration provided that there was no bona fide use of the mark during the two years preceding expiry.

Question 20

Describe the effect of a successful central attack under the Madrid Protocol

Answer 20

• If successful central attack then possible to transform the international registration into a series of national or regional applications
• Within three months of cancellation, person who was holder of international registration can file registration for mark at any of the designated territories and it it will be treated as being filed on date of international registration

Question 21

What factors indicate, according to the case law of the CJEU, that a mark has been registered in bad faith?

Answer 21

Set out Chocoladefabriken Lindt & Sprüngli v Franz Hauswirth (Lindt Bunny Case)

The criteria are:

• the applicant knew or must have known at the time of filing the application that the third party was using, in at least one member state, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration was sought:
  
  • particularly if that use was substantial and longstanding and enjoyed a degree of legal protection, and if the nature of the sign was dictated to some extent by technical or commercial constraints
• the applicant intended to prevent this third party from continuing to use such a sign
• the third party’s and applicant’s sign enjoyed a degree of legal protection
• exception: above would not necessarily be in bad faith where:
  
  • applicant had had similar or greater legal protection
  • use it in such a way, to such an extent and over such a time that use by others could be considered to derive unjustified benefit from the applicant’s sign
  • provided those others were not constrained in their ability to choose dissimilar signs

Question 23

Describe the effect of revocation under the TMA 1994

Answer 23

Section 46 of TMA 1994 states that when a trade mark is revoked, the rights of the proprietor shall deemed to have ceased as from:

• the date of the application for revocation
• if the registrar or court determine that the grounds existed at an eariler date then that date

Question 24

To what extent does the U.K. law of passing off protect well-known personalities? Explain briefly your answer, using case authority by way of illustration.

Answer 24

• Passing off does not create ‘quasi-copyright’ in name/images, only can protect in cases of ‘false endorsement’ - Irvine v Talksport
• Principles from Irvine v Talksport for succeeding in a case of false endorsement, claimant had to prove:
  
  • they enjoyed significant reputation or goodwill at the time the acts were complained of were committed
  • the defendant’s actions had created a false message which would be understood by a not insignificant section of its market that its goods had been endorsed, recommended or approved of by the claimant
• Principles from Rihanna v Arcadia - to succeed claimant had to show:
  
  • application of name/image to goods told a lie
  • that lie was material and had an effect on buying decisions
• General point from R v A - personality merchandising not synonymous with endorsement
• Goodwill can be hard to establish if trader does not offer endorsements
  
  • However, ‘promotional goodwill’ may exist where celebrity never gave endorsements but had siginificant, and commercially exploitable reputation in a sphere of sporting/artistic endeavour (Irvine v Talksport)

Background

• Misrepresentation is of ‘endorsement by relevant personality’:
  
  • Irvine v Talksport - friend had asked Irvine for radio believing that there was a commercial relationship
  • Rihanna v Arcadia - use of photo associated with previous album and Rihanna’s prior collaboration with Topshop would lead consumers to believe she endorsed the products

Question 25

Explain the principle of priority as it relates to trade marks

Answer 25

Section 35(1) of TMA 1994 states person who has filed application in a Convention country, or successor in title, has right to priority for purposes of registering same trade mark for some or all of same goods or services for period of six months.

Section 35(2) of TMA 1994 states if such an application for registration is made within the six-month period, the date of establishing which rights take precedence shall be date of filing of first convention application.

Question 26

Descrive the nature of searches for prior rights conducted against an EUTM application

Answer 26

EUIPO examines only on absolute grounds for refusal but searches provided to relevant third parties and applicants.

EUIPO searches community register for similar marks and, if requested by applicant, asks member states to do the same. National searches returned to EUIPO within three months which returns a cumulative search report to the applicant. Results are also sent to owners of rival registrations that are found. However, no relative examination is performed by EUIPO and it is left to holders of prior rights to bring opposition proceedings or, if registered, cancellation proceedings.

Question 27

What are the criteria for assessing whether a geographical term is descriptive according to the decision of the CJEU in Windsurfing Chiemsee?

Answer 27

• whether a geographical name in respect of which application for registration as a trade mark is made designates a place which is currently associated in the mind of the relevant class of persons with the category of goods concerned, or whether it is reasonable to assume that such an association may be established in the future?
• does not in principle preclude the registration of geographical names which are unknown to the relevant class of persons — or at least unknown as the designation of a geographical location — or of names in respect of which, because of the type of place they designate (say, a mountain or lake), such persons are unlikely to believe that the category of goods concerned originates there (though could believe that it was conceived/designed there so care must be taken).

Question 28

Are scents registrable as trade marks in the UK?

Answer 28

S1(1) of the TMA 1994 does not exclude the possibility that a scent may constitute the trademark.

However, in Sieckmann, it was established that to do so, the scent must be capable of being represented graphically in a way that is:

• clear
• precise
• self-contained
• easily accessible
• intelligible
• durable
• objective

These criteria were not satisfied by:

• a chemical formula - not sufficiently intelligible, clear or precise (and formula represents the substance as such and not its odour)
• odour sample - not graphic representation, and not sufficiently stable or durable
• written description - not sufficiently clear, precise or objective
• combination - still not sufficiently presice or clear

a written description or a deposit of an odour sample so it is unlikely that a scent could be registered in the UK currently.

Question 29

Describe the effect of invalidity under the TMA 1994

Answer 29

If the registration is declared invalid to any extent:

• the registration to that extent shall be deemed never to have been made
• provided that this shall not affect transaction past and closed

Proprietor of invalid/revoked trademark cannot object to any acts that would constitute an infringement

Question 30

Explain the principle of coexistence in the context of the European Union Trade Mark system.

Answer 30

• The principle of coexistence means that both the European Union trade mark system and the national laws exist and operate side by side.
• The same sign can be protected by the same proprietor as an EUTM and as a national trade mark in one (or all) of the Member States.
• The principle of coexistence further implies that the EUTM system actively acknowledges the relevance of national rights and their scope of protection.
• Where conflicts arise between EUTMs and national trade marks or other national rights, there is no hierarchy determining that one system prevails over the other; instead, these conflicts apply the principle of priority.
• If the respective requirements are met, earlier national trade marks or other earlier national rights can prevent registration of, or invalidate a later EUTM.

Question 31

Are colour combinations registrable in the UK? Explain your answer.

Answer 31

• Heidelberger Bauchemie GmbH sets out that colour combinations may constitute a trade mark for the purposes of Art. 2 (TMA 1994 s1(1))of the directive where:
  
  • it has been established that, in the context in which they are used, those colours or combinations of colours in fact represent a sign; and
  • the application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way.
  • N.B. each of the colours must be specified with reference to international colour classification system
• Heidelberger makes clear though that even where these criteria are satisfied, the combination in question must meet all other criteria for registrability including distinctiveness (which in the case of colours/colour combinations is only likely to be inherent in exceptional cases but may more commonly be acquired through use) and this examination must take into account of the public interest in not unduly restricting availability of colours to other traders for these goods and services
• Background:
  
  • Heidelberger attempted registration of shades of blue/yellow in every conceivable form, in particular on packaging and labels

Question 32

Explain briefly in what circumstances may a trade mark owner oppose further dealings in goods which she has put on the market in the European Economic Area?

Answer 32

Section 12 of the TMA 1994 states registered trade mark is not infringed by use of trade mark in relation to goods put on the market in the EEA by the trade mark proprietor or with their consent.

This does not apply where there exist legitimate reasons for proprietor to oppose further dealings in the goods.

Legitimate reasons for proprietor to oppose further dealings in goods may arise where:

• the condition of the goods has changed or been impaired (Viking Gas A/s v. Kosan - refilled gas cannisters, infringement unless made clear that gas was from another source)
• de-packaging (where essential information removed or damages image of product) - Ebay
• Repackaging - Bristol-Myers v Paranova (where doesn’t lead to artificial partitioning of market)
• Rebranding - Pharmacia v Paranova
• Advertising - mark has been advertised in way that could damage reputation of trade mark (Christion Dior v Evora)

Question 33

When would a junior use affect the investment function of a mark?

Answer 33

Set out in Interflora v M&S (ECJ):

• Investment function is use of a mark by its proprietor to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.
• Investment function is adversely affected when a junior use affects that reputation and jeopardises its maintenance\

Interflora v M&S (EWCA):

• if a third party’s keyword advertising adversely affects the reputation of a trade mark, as for example where the image the trade mark conveys is damaged, then there is an
  adverse affect on the investment function

Cosmetic Warriors V Amazon:

• Amazon’s use of Lush in keyword advertising implied that their products were available on Amazon which in their eyes was liable to damage their reputation for ethical trading (as they viewed Amazon’s practices as unethical)

Question 34

Under what circumstances would it be possible for a trade mark proprietor to maintain his registration if the sign he had actually been using differed in some respects from the sign actually registered?

Answer 34

‘Genuine use’ to the extent that the differences between the form in which that trade mark is used and that in which it was registered do not change the distinctive character of that trade mark as registered.

Question 35

Describe the effect of a successful central attack under the Madrid Agreement

Answer 35

• If within five years, the mark is declared invalid or lost in the country of origin then all national registrations based upon it are lost
• The opportunity for central attack ends after five years and the fate of each national registration becomes independent

Question 36

Describe briefly the importance of the decision of the ECJ in Intel Corporation Inc. v CPM UK Ltd (C-252/07).

Answer 36

Article 10(2) of the TMD (Art. 5(2) old directive & TMA 1994 s10(3)) provides that trademark proprietor is entitled to prevent third parties not having his consent from:

• using identical or similar mark
• in relation to dissimilar goods
• where mark has reputation
• the use of sign without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of their trademark

In Intel, ECJ held that in circumstances above, it must be proved that:

• third party’s use of that mark has caused change in economic behaviour of average consumer
• or that there is a serious likelihood that such a change will occur in the future
• merely establishing a mental link is not enough

Also, the distinctive character or the repute of the earlier mark must be assessed globally, taking into account all factors relevant to the circumstances of the case.

Question 37

Explain the principle of seniority in the context of the European Union Trade Mark system.

Answer 37

• Article 39 EUTMR 2017
• Proprietor of an earlier trade mark in a member state (or international mark having effect in that member state) may claim seniority from it when applying for EU mark
  
  • earlier mark must be identical to EU mark
  • earlier mark must be for identical goods/services or contain those of the EU mark
• Seniority has effect that where the proprietor of the EU trade mark surrenders the earlier trade mark or allows it to lapse, he shall be deemed to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered.
• Relevant national law - TMA 1994 section 6(1)(b)
• For example:
  
  • UK TM A registered by Bob
  • UK TM B ​registered by Alice which is confusingly similar to A
  • EU TM C registered by Bob claiming seniority from A
  • A lapses
  • Bob can use TM C to invalidate B because of Seniority claim (however, this only maintains Bob’s rights in previous UK mark, does not give him general earlier priority date/date of registration and for purposes of UK marks only claims to seniority to other UK marks/ International(UK) marks matter

Question 38

Are colours registrable as trade marks in the UK?

Answer 38

In Libertel, it was established that:

• colours may constitute a sign capable of distinguishing one undertaking from those of others
• the graphical representation must meet the Sieckmann criteria
• internationally recognized colour identification code is an example of this

Question 40

Are advertising slogans registrable in the UK? Explain your answer.

Answer 40

Advertising slogans are registrable in the UK.

OHIM v Erpo Möbelwerk established that:

• it was incorrect to apply to slogans criteria which were stricter than those for other types of signs (esp. in regard to distinctiveness)
• it may be difficult to establish distinctiveness in relation to advertising slogans but these do not justify laying down specific criteria supplementing or derogating from the criterion of distinctiveness
• Different wrong criterion not to be applied:
  
  • Court of first instance stated that a slogan was not devoid of distinctive character unless “the phrase concerned is commonly used in business communications and, in particular, in advertising”
  • slogans need to display “imaginitiveness” or “conceptual tension which would create surprise” (given by BoA, struck out by GC, upheld by CJEU)

Audi AG v OHIM:

• Mere perception of mark as a promotional formula (and possibility that in principle it could be used by other firms because of its laudatory nature) was not sufficient in itself to support conclusion that mark was devoid of distinctive character
• Mark could be perceived as both promotional formula and indicator of commercial origin
• Being capable of having a number of meanings, being a play on words, and perception of being imaginitive, surprising or unexpected were indicative of distinctiveness but not decisive
• Mark did not lack distinctiveness just because it conveyed an objective message

Question 41

Describe the test for passing off established in Warnink v Townend [1979] A.C. 731, HL (the “Advocaat” decision)

Answer 41

Five characteristics must be present to create a valid cause of action for passing off:

• misreprentation
• made in the course of trade
• to prospective customers or ultimate consumers of goods or services
• which is calculated (i.e. reasonably foreseeable consequence) to injure the business or goodwill of another trader
• which cause actual damage to business or goodwill of trader bringing action or will probably do so.

Question 42

Describe the meaning and the purpose of the “sign” requirement, as established in Dyson Ltd. v. Registrar of Trade Marks, Case C-321/03.

Answer 42

• Under TMA 1994 s1(1) and Art. 2 of Directive, the mark for which registration is sought in fact represents a ‘sign’.
• Purpose of this requirement is to prevent use of TM law to obtain unfair competitive advantage
• An abstract concept is not a sign as it cannot be perceived by the five senses but only by the mind
• Concepts (incl. functional features) can be perceived by humans in so many diverse ways that they cannot constitute an indication to the consumer so cannot fulfil a trade mark’s distinguishing function.

Additional Notes

• Facts:
  
  • Dyson attempted to obtain a trade mark over general concept of transparent collecting bin (in abstract, not for a particular shape/embodiment)
  • Rejected as not constituting a sign for reasons above

Question 43

How is infringement of a registered trade mark defined by section 10 of the TMA 1994?

Answer 43

• Section 10 (1) - using in the course of trade, a sign which is identical with the trade mark in relation to goods or services which are identical with those for which the mark is registered
• Section 10(2) - identical or similar sign, idential or similar goods or services, and likelihood of confusion (including likelihood of association)
• Section 10(3) - applies to marks with a reputation in UK only, identical or similar sign, dissimilar goods/services, where a person, without due cause, takes unfair advantage of, or is detrimental to, the distintive character or repute of the trade mark

Question 44

List the transactions that are registrable under section 25 of the TMA 1994.

Answer 44

• Assignment of a trade mark or any right in it
• Grant of license under a trade mark
• Grant of a security interest over a trade mark or any right in or under it
• Assent (i.e. permission) in relation to trade mark or a right under it
• Court order (or other competent authority) transferring trade mark or any right under it

Question 45

Describe the basis for a registration obtained under the Madrid Protocol.

Answer 45

• Must have national basis to ground application
• File at office where national basis was filed
• National office forwards to WIPO after formalities examination
• IB places the mark on the international register, advertises the mark and passes on details to designated countries
• Local registry must confirm or refuse protection of a designation within 18 months:
  
  • can only refuse based on grounds which would apply under the Paris Convention
  • No time limit if opposition filed
• Registration under Madrid protocol lasts 10 years with the possibility of being renewed for further 10 year periods

Question 46

What is the public interest in excluding descriptive terms?

Answer 46

• Set out in Koninklijke KPN Nederland v Benelux-Merkenbureau:
  
  • Public interest is enabling signs or indications for denoting the characteristics of goods or services to be freely used by all
  • To achieve that must prevent them being registered as trade marks so terms not reserved to one undertaking
  • That public interest requires all such signs or indications (or signs/indications that may become such in future) must be free to use, it does not matter if there are more usual ways or other ways of designating these characteristics
  • Does not matter how many competitors there are which want to use the sign/indication as current or future operators must be able to use these to describe their competing goods

Question 47

Can the UK law of passing off be used to protect fictitious characters from imitation? Explain briefly your answer using case authority by way of illustration.

Answer 47

Decision in Mirage Studios v Counter-Feat Clothing Company suggest that fictitious characters may be protection.

Judge held that:

• public would expect that a reproduction of a famous cartoon or television character on goods would be a result of a license from the copyright owner/holder of rights
• public would assume goods are genuine and produced with copyright owner’s consent
• if use has not been approved by copyright owner, then misrepresentation made to public that goods are genuine
• potential for damage to copyright holder: loss of licensing revenue & damage if applied to poor-quality goods

Therefore. passing off protects imitation of fictitious characters, provided that:

• goodwill exists in fictitious character
• substantial part of purchasing public would assume goodwill could not be exploited without consent of owner
• damage would and has occurred as a result of exploitation of the character made without the owner’s consent

Question 48

Describe briefly the importance of the decision in of the ECJ in L’Oreal SA v Bellure NV, Case C-487/07?

Answer 48

The ECJ established that under Article 10 (2) (a) of the TMD, the propreitor is entitled to prevent the use by a third party, in a comparitive advertisement that does not meet the criteria set out in the misleading and comparitive advertising directive, even where such use does not jepardized the essential function of the mark; provided that such use affects or is liable to affect one of the other functions of the mark.

The other functions of the mark include:

• guaranteeing quality
• communication
• investment
• advertising

Question 49

Discuss briefly the importance of the decision of the CJEU in L’Oreal SA v Bellure NV, Case C-487/07 in relation to the concept of taking ‘unfair advantage’.

Answer 49

• L’Oreal v Bellure established that taking unfair advantage of the distinctive character or repute of the mark:
  
  • did not require a likelihood of confusion or detriment to its repute or distinctive character
  • occurred when a third party sought to ride on the coat-tails of the mark in order to benefit from the power of attraction, the reputation and pristige of the mark, and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark in order to create and maintain the mark’s image
  • could be determined by a global assessment of relevant factors which were:
    
    • the intention to take advantage for promotional purposes of the distinctive character and repute of the markt
    • the strength of the mark’s reputation
    • the degree of its distinctive character
    • the degree of similarity between the signs at issue
    • the nature and degree of proximity of the goods or services concerned

Question 50

Discuss briefly the importance of the decision of the ECJ in Windsurfing Chiemsee (Joined Cases C-108/97 and C-109/97) regarding acquired distinctiveness

Answer 50

ECJ held the following may be taken into account when assessing whether a mark had acquired a distinctive character:

• market share held by the mark
• intensive, geographically widespread and long-standing use of the mark has been
• amount invested in promoting the mark
• proportion of the relevant class of persons who (because of mark) identify goods as originating from a particular undertaking
• and statements from chambers of commerce, industry, trade/professional associations etc.

If on the basis of those factors, the competent authority finds that the releveant class of persons, or a significant proportion thereof, identify the goods as originating from a particular undertaking because of the trademark, it has acquired distinctiveness (Art 4(4) TMD 2015)

Question 51

Discuss briefly the importance of the decision of the ECJ in Gillette Group Finland Oy v LA Laboratories Ltd Oy (Case C-228/03)

Answer 51

Under Article 14(1)(c) of TMD (old directive Article 6(1)(c)), a trade mark shall not entitle the proprietor to inhibit third party from using, in the course of trade, the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories/spare parts, provided he uses it honestly.

In Gillette, Finnish courts were unsure whether competitor’s blades marketed as being compatible with Gillette handles constituted ‘spare parts’. Referred to ECJ.

ECJ said:

• unnecessary to dermine whether blades were ‘spare parts’
• key issue was whether it was ‘necessary’ to refer to Gillette marks to indicate intended purpose of blades
• ECJ concluded this would be the case if it was only way in which intended purpose (incl. compatibility) could be completely and comprehensibly conveyed to the public
• narrow interpretation of ‘necessary’ given - must be only way of conveying the relevant information

Question 52

What does a trade mark proprietor need to demonstrate in order to establish that there are ‘proper reasons for non-use’ within the meaning of Section 46(1)(a)-(b) Trade Marks Act 1994 and Article 51(1)(a) EUTMR respectively?

Answer 52

Determined in ‘Armin Häupl v. Lidl Stiftung & Co. KG, Case C-246/05’

• The proprietor needs to demonstrate that:there were obstacles having a direct relationship with a trade mark which make its use impossible or unreasonable and which are independent of the will of the proprietor of that mark constitute “proper reasons for non-use” of the mark
• Decision emphasises that unreasonable is enough, it need not be impossible. Example given is that it would be unreasonable to expect a trade mark proprietor to sell its goods in a competitor’s outlet.
• Not reasonable to expect proprietor to change whole corporate strategy just to use the mark.

Question 53

Explain the concept of “global appreciation” as it applies to the assessment of confusingly similar uses

Answer 53

• Actual use of the mark
• Strength of the distinctive character/reputation of the mark
• Canon v MGM - assessment on all factors - greater similarity of goods/services can offset less similar marks, and vice versa

If, therefore, a logo registered in black and white has acquired, through use, a particular and distinctive character, in, for example, the colour green, that would seem to me to be a matter which ought to be taken into account in the global appreciation analysis.

“where a Community trade mark is not registered in colour, but the proprietor has used it extensively in a particular colour or combination of colours with the result that it has become associated in the mind of a significant portion of the public with that colour or combination of colours, the colour or colours which a third party uses in order to represent a sign alleged to infringe that trade mark are relevant in the global assessment of the likelihood of confusion or unfair advantage under that provision” - Specsavers v Asda

Question 54

Describe briefly the scope of protection of a mark with reputation under the Trade Mark Directive.

Answer 54

• Art 5(2)(c) TMD
• Proprietor can prevent all third parties not having consent from using any sign identical to or similar to the trade mark in relation to goods or services, which are not similar to those for which the trade mark is registered.
• This is provided:
  
  • the mark has a reputation
  • takes unfair advantage of or is detrimental to the distinctive character or repute of the trade mark

Question 55

Describe briefly the test applied by the E.C.J for determining confusion

Answer 55

• Likelihood of confusion between two marks must be appreciated globally, taking account of all relevant factors .Visual, aural, concepual similarities assessed by overall impression bearing in mind distinctive and dominant components. Average consumer perceives mark as a whole and does not analyse its various details. [Sabel]
• Viewed through eyes of average consumer. Average consumer is deemed to be reasonably well-informed, observant and circumspect but rarely has the chance to make direct comparisons and instead relies on imperfect recollection. Level of attention varies according to character of goods/services in question. [Lloyds]
• Where a mark consists of a composite mark and includes a component consisting of an earlier trade mark, likelihood of confusion may exist if earlier mark retains an independent distinctive role. There may be confusion as to whether the business associated with earlier mark is economically linked to business associated with the composite mark. {Medion]
• Likelihood of confusion may still exist if, despite there being a lesser degree of similarity between the goods or services, there is a greater degree of similarity between the marks. This is particularly the case where earlier mark has a highly distinctive character per se or because of the use that has been made of it. {Canon v MGM]