Trademarks Caselaw Flashcards
What is the significance of the Reddaway v Banham [1896] case?
SIGNIFICANCE: The House of Lords held that a purely descriptive term for a product, such as ‘Camel Hair Belting’ can acquire a secondary meaning and have developed ‘goodwill’ in association with this.
STORY: Reddaway, the claimant, made machine belting under the descriptive term ‘Camel Hair Belting’, when a former employee, Banham, began trading machine belting, albeit made of camel hair, under the same name.
ISSUE: Reddaway sued Banham for passing off their descriptive trademark.
DECISION: Lord Herschell concluded that despite the term being descriptive, in this particular market, ‘Camel Hair’ was not an indication of belting being made of a particular material, rather it was an indication of the belting being made by a particular manufacturer.
What is the significance of the McCain v Country Fair Foods [1981] case?
SIGNIFICANCE: The claimant’s product/service must have been in the marketplace for a sufficient period of time to acquire a second meaning. If a descriptive term is used in conjunction with non-descriptive term that indicates the source of the product/service, the descriptive term cannot be said to have acquired secondary meaning.
ISSUE: McCain produced “McCain’s Oven Chips” and after only 1.5 years, Country Fair Foods produced “Bird’s Eye Oven Chips” and “County Fair Oven Chips”.
Country Fair argued that ‘oven chips’ was descriptive and had not acquired a second meaning in the 1.5 years.
DECISION: The court held that because the product was called “McCain’s Oven Chips”, the word ‘McCain’ denoted the source of the goods, whilst the descriptive term ‘Oven Chips’ denoted the nature of the goods. The court also noted that a secondary meaning is not typically acquired in 1.5 years.
What is the significance of the Starbucks v British Sky [2015] case?
SIGNIFICANCE: To establish ‘goodwill’ in a passing off action, the claimant must have customers within the jurisdiction; having mere reputation in the jurisdiction is insufficient.
Starbucks operated an online TV service called ‘Now TV’ in Hong Kong. Sky later announced they were launching ‘Now TV’.
The court found that although people in the UK couldn’t access it, Chinese speakers resident in the UK were aware of it. UK residents could also become acquainted with the claimants Now TV via 3 means: YouTube; their website; and video-on-demand airline services.
Despite this, the court held that the claimant must demonstrate that they have established ‘goodwill’ in the form of customers in the jurisdiction, not just people in the jurisdiction aware of their reputation.
What is the significance of the Reckitt & Colman vs Borden Inc [1990] case? It’s also known as the ‘Jif Lemon’ case.
STORY: Since the 1950s, the claimant had sold lemon juice in packaging that resembled a lemon in size, shape, and colour and achieved about 75% if UK sales by doing so. When the defendant launch their own lemon juice, sold in the same get-up (i.e. packaging that represented lemons), the claimant sought an injunction to stop the defendant selling the product.
SIGNIFICANCE: Here, the court held that the public had associated goodwill with the get-up of the product, thus the introduction of a competing product with the same get-up would be classified as ‘misrepresentation’. The court held that the name of the product being different was not sufficient to counter the claim because, given the low cost, the consumers looked at the get-up and did not closely inspect the labels.
What’s the significance of the Maxwell v Hogg [1867] and the Chivers v Chivers [1900] cases?
SIGNIFICANCE: These cases inform us of the traditional approach to pre-trading goodwill.
The courts considered whether reputation alone, due to, for instance, advertising before trading in the marketplace, was sufficient for generating ‘goodwill’ amongst the public.
The courts held that as the claimants were not trading, they had no customers and therefore could not demonstrate the establishment of ‘goodwill’.
Maxwell and Hogg produced magazines, whilst Chivers and Chivers produced table jelly.
What is the significance of the BBC vs Talbot [1981] case?
SIGNIFICANCE: The courts held that BBC had acquired pre-trading ‘goodwill’, a non-traditional decision.
The BBC had extensively advertised their new service, Carfax, before it was made available on the market. The courts found there to be ample evidence that the public knew that the name ‘Carfax’ was distinctive of a service provided by the BBC. As a result, the courts granted the BBC an injunction against the defendant, stopping them from selling spare car parts under the trade name ‘Carfax’.
It must be noted that this is a non-traditional decision, as it strays from the decisions of Maxwell vs Hogg [1867], and Chivers vs Chivers [1900]. This difference in judgement is likely due to the substantial/extensive impact of the BBC’s Carfax advertising campaign.
What is the significance of the My Kinda Bones vs Dr Pepper’s Stove [1984] case?
The courts held that in order to acquire pre-trading goodwill, the customers must have had the opportunity to acquire and assess the service/product. In this case, neither the claimant, nor the defendant had opened their restaurants.
STORY: The claimants advertised their new restaurant under the name “Chicago Rib Shack”, whilst the defendants had be planning to launch “Dr. Pepper’s Manhattan Rib Shack”. Neither restaurants had been opened.
What is the significance of the Maslyukov vs Diageo Distilling Ltd [2010] case?**
SIGNIFICANCE: Goodwill may sustain after a manufacturer stops manufacturing if the product continues to be sold by independent retailers (?)
STORY: The claimant sought to register the marks DALLAS DHU, PITTYVAICH, and CONVALMORE, for Scotch whiskey products he did not distill, but rather bought to re-brand and re-sell. The proposed marks corresponded to the names of Scottish distilleries that had permanently shut down and/or had their trademarks revoked. At the time of the application, independent stockists, including the defendant, held vintage bottles of scotch from these distilleries.
The Trademark Registry:
- Concluded that the claimant was attempting to springboard off of the reputation developed by the now inoperative distilleries; and thus
- Held that the 3 desired trademarks could not be registered on the grounds of ‘bad faith’ (an absolute grounds for refusal), under Sec. 3(6) of the TMA 1994.
Despite this win, the defendant appealed to the High Court for passing off, but was not successful; the high courts concluded that the ‘goodwill’ had been abandoned.
This decisionwas controversial as some others concluded that ‘goodwill’ is sustained by any further sales/re-sales, irrespective of the productive capacity of the original manufacturer. Thus, here, the claimant could be passing off using the defendant’s ‘goodwill’.
What is the significance of the Sheraton Corp of America vs Sheraton Motels [1964] case?
SIGNIFICANCE: It possible for a foreign trader to establish ‘goodwill’ in the UK without offering their product/service in the UK as long as customers in the UK are able to directly book their services from the UK.
STORY: The claimant ran a chain of ‘Sheraton Hotels’, but had none in England. The defendant tried to open hotels under the same name, so the claimant brought a passing off action.
What is the significance of the Alain Bernardin v Pavilion Properties [1967] ‘Crazy Horse’ and the Athlete’s Foot Marketing Associates v Cobra Sports [1980] case?
SIGNIFICANCE: The courts held that you need to have customers in the UK.
STORY for Crazy Horse: The claimant owned ‘The Crazy Horse Saloon’ in Paris. The defendants wanted to open a saloon under the same name in London. The claimants brought a passing off action, but the courts ruled that passing off had not occurred.
STORY for Athlete’s Foot: The claimant brought a passing off action against competitors in the UK who wanted to use the name ‘Athlete’s Foot’, but were not able to demonstrate that they had customers in the UK.
What is the significance of the Anheuser-Busch vs Budvar [1984] case?
SIGNIFICANCE: Mere reputation is not enough to establish ‘goodwill’. Two traders may have ‘honest concurrent’ goodwill in their respective trading territories, but only reputation outside of their trading territories.
STORY: The claimants had a US company that manufactured ‘Budweiser Beer’. The defendants wanted to sell ‘Budweiser Budvar’ in the UK. The claimants beer was not sold in the UK, but had reputation in the UK.
What is the significance of the Ciprani vs Ciprani [2009] case?
SIGNIFICANCE(2): (1) If the public are able to buy/book your products/services online, you have customers and therefore have established ‘goodwill’ in the jurisdiction of the customer. (2) Own-name defense is available but it depends on:
(a) when the trading name was adopted
(b) the circumstances in which it was adopted
(c) whether its use was in acordance with honest practice.
STORY: The claimant owned a bar in Venice under the family name ‘Ciprani’. The defendant, also a family member, wanted to open up a bar under the same name in London.
What is the significance of the Warninck vs Townend ‘Advocaat’ [1979] case?
SIGNIFICANCE: As with the Champagne case, the Court held that products/services whose name falsely suggests its character or quality can be prevented from selling the product/service under that name. In addition, the court held that 3 types of damages occured: lost sales, damaged reputation, and dilution.
STORY: The claimants, plus many more traders, had manufactured ‘Advocaat’ made using brandewijn, egg yolk, and sugar for many years. Over these years, the liquor gained a distinct reputation in the UK. The defendants wanted to trade a drink called ‘Keeling’s Old English Advocaat’, which had different ingredients.
The courts concluded that 5 things must be present to have a valid ‘Extended Passing Off’ action:
- Misrepresentation
- Made by a trader in the course of trade
- To prospective customers or ultimate consumers of their goods/services
- That is calculated to injure the business/goodwill of another trader and
- which causes actual damage to a business/goodwill of the trader by whom the the action is brought (or will probably bring).
What is the significance of the Bollinger vs Costa Brava Wine ‘Champagne’ [1961] and the Fage vs Chobani ‘Greek Yoghurt’ [2014] cases?
SIGNIFICANCE: As with the Advocaat case, the court held that products/services whose name falsely suggests its character or quality can be prevented from selling the product/service under that name.
CHAMPAGNE STORY: Consumers perceived the word ‘Champagne’ on a product as an indication that the product was made from grapes produced in the Champagne district of France. The defendants wanted to trade ‘Spanish Champagne’.
GREEK YOGHURT STORY: Greek yoghurt is the products of a process that involves straining, no preservatives and/or additions, all of which occurs in Greece. The defendant wanted to produce ‘Greek-style yoghurt’.
What did we learn during the Scandecor Development vs Scandecor Marketing [1999] case?
SIGNIFICANCE: The perception of the consumers is of great importance. The courts found that if the distributor had established and nurturing a relationship with the customers, the distributor, rather than the publisher, owns the ‘goodwill’.
STORY: The claimants supplied posters and the defendants sold those posters in the UK. When the commercial affiliation between the two parties ended, the claimant demanded that the defendant stopped using the name ‘Scandecor’ on their goods/services.
The courts initially found that goodwill was shared, but the court of appeal found that the goodwill belonged to the defendant, who had established and nurtured a relationship with the customers.
What did we learn from the AG Spalding vs Gamage [1915] case?
SIGNIFICANCE: Misrepresentation as to origin and quality of goods.
STORY: The defendants sold the defendants disused footballs as newly improved models of the claimant’s product.
What is the significance of the Colgate-Palmolive vs Markwell Finance [1989] case?
SIGNIFICANCE: Irrespective of the original who originally produced and sold a given product, it is misrepresentation to brand an inferior product with that of a superior product.
STORY: The claimants made toothpaste which sold all over the world. Externally, the products looked the same, but internally, the toothpaste varied from country to country. The claimants brought an action against the defendants to stop them from selling a lower quality version of the product in the UK.
The court looked at the AG Spalding vs Gamage case and concluded that this would be misrepresentation.
What did we learn (collectively) from the R Johnston & Co. vs Archibald Orr Ewing & Co [1882] and the Reckitt and Colman Products Ltd v Borden Inc [1990] (JIF) cases?
SIGNIFICANCE: The ‘cautiousness’ of the consumer shouldn’t be used by the defendant as a counter-argument for misrepresentation. The consumer’s level of sophistication varies with the type of goods/service. Everyday = low caution. Once in a lifetime = high caution.
What is the significance of the Associated Press vs Insert Media [1991] case?
SIGNIFICANCE: Actionable misrepresentation includes the defendant placing their goods in close proximity of the claimants.
STORY: The claimants manufactured newspapers and the defendants inserted advertisements into the newspapers before they were delivered to the newsagents. The courts held that this misrepresented the source of the advertisements, making it appear that the newspaper had produced/signed off on the advertisements.
What is the significance of the BT vs One in a Million [1998] case?
SIGNIFICANCE: Cyber-squatting counts as actionable misrepresentation.
STORY: The defendant secured and sold domain names, but these domain names were registered without the consent of the business that owned goodwill in the name.
What is the significance of the Harrods vs Harrodian School [1996]case?
SIGNIFICANCE: The courts placed limits on the scope of passing off based on the understanding of the public. Especially in the case where the goods/services of each party are different. To be successful in a passing off action, the claimant needs to demonstrate that the consumer would believe that the claimant sponsored/produced the goods/services of the defendants.
STORY: The claimants applied for an injunction to stop the school using the term ‘Harrodian’. The courts concluded that the public would not assume that Harrods had sponsored a school.
What’s the significance of the Bristol Conservatories vs Custom Built [1989] case?
SIGNIFICANCE: Reverse Passing Off is where the defendant claims that the goods/services of the claimant is in fact their own.
STORY: The defendant represented the claimant’s goods as their own, but subsequently supplied their own goods to the customer. Using photographs of the claimant’s work, they led the customers to believe that the claimant’s conservatories were in fact the work of the defendant’s.
The court of appeal held that the defendant misrepresented the quality of their goods as the same as the claimant’s. The damage manifested as a loss/diversion of sales from the claimant.
What is the significance of the Elvis Presley [1997] decision?
SIGNIFICANCE: The courts held that the public are indifferent as to the source of a product bearing the name of a famous person or a fictional character. They do not typically believe that the famous personality made the goods.
STORY: The defendants produced toiletries branded using the names ‘Elvis’, ‘Elvis Presley’, and ‘Elvisly Yours’. The courts held that the public would not assume that the Elvis estate manufacture the goods and rejected the Passing Off action.
What’s the significance of the Robyn Rhianna Fenty vs Arcadia Groups [2013] case?
SIGNIFICANCE: Misrepresentation via Personality Merchandising. The courts will consider whether the consumer’s have been made more likely to believe a misrepresentation based on the context/actions of the defendant.
STORY: A 3rd party photographer snapped a shot of Rhianna whilst she was recording for an album. Topshop bought copyright for the image and sold a top displaying the image. Topshop had previously publicised their authorised business/publicity stunts with Rhianna, who was able to argue that consumers would think that the product was authorised by her, which it wasn’t.
What is the significance of the MaccyDees vs BGK [1986] case?
SIGNIFICANCE: Misrepresentation via comparative advertising occurs when the defendant claims their goods and services are improved in comparison to the claimant’s.
STORY: BGK released a burger with the slogan ‘It’s not just a Big Mac’, suggesting their own product was an improved version/competitor.
What is the significance of Och-Ziff Management vs Och Capital EWHC [2010]?
STORY: An asset management group registered ‘Och-Zif’ and ‘Och’ for financial services. The defendant were an investment bank that used ‘Och’.
SIGNIFICANCE: Even if the consumer realises the misrepresentation by the time of the transaction, the initial confusion and misrepresentation is sufficient to demonstrate passing off. Controversial decision! See [Moroccan Oil Israel vs Aldi Superstores]
What is the significance of M&S vs lnterflora [1995]?
SIGNIFICANCE: To gain evidence proving confusion due to misrepresentation, the claimant may conduct a pilot survey:
- without requiring permission
- at their own cost
The courts may permit further surveys. The court must also evaluate the integrity of the survey.
STORY: The defedants sold flowers under ‘Interflora’, but M&S created adds that popped up when a consumer searched for ‘Interflora’ or a reasonable misspelling thereof. The defendants wanted a survey to prove evidence of confusion, but M&S said that survey evidence wold be unreliable.
What is the significance of the Moroccan Oil Israel Ltd v Aldi Stores Ltd [2014] case
SIGNIFICANCE: The courts said that if the consumer had realised a misrepresentation occurred at the point of transaction, then there is no damage and no passing off. This is contra to the decision on the Och-Zif vs Och-Capital case.
STORY: Defendant produced a lookalike ‘Miracle Oil’ product which looked like the claimants ‘Moroccan Oil’ product.
What is the significance of Mirage Studios vs Counter-Feat Clothing [1991]?
SIGNIFICANCE: Damage to reputation AND licensing value may occur if the consumer associates the good/services with the creator when the goods/services are displayed on inferior goods.
STORY: The claimants brought an action against the defendants to stop them making and selling Teenage Mutant Ninja Turtle clothing.
What is the significance of the L’Oreal vs Bellure [2007] case?***
SIGNIFICANCE(3): (1) Similar sounding names may allude to the claimant’s product but not confuse or deceive them. No misrepresentation, damage, nor unfair competition was found. They found that “passing off cannot and should not be extended into some general law of unfair competition”. (2) Unfair advantage defined but not found. (3) 4 functions of a trademark clarified, but none found to be affected,
STORY: The claimants made perfumes under their TM. The smells were not TM’d but the names and packaging were. The defendants made smell-alike perfumes marketed and packaged as ‘similar to’ the claimants products. They even made lists/tables comparing the smells to reputable for perspective customers. The claimants raised passing off, infringement and unfair competition actions.
ISSUES:
Unfair Advantage: Where a trader attempts to ‘free-ride on the coat tails’ of their competitor’s reputation/marketing effort to benefit from it’s power and exploit it without paying the TM proprietor or making any efforts of their own, that constitutes the trader gaining unfair advantage via an ecomic ‘link’ perceived in the minds of the average consumer. However, here, Bellure did not technically free-ride with the use of their comparison lists because they were clear about the different origins for each of the products listed.
What is the significance of the Imperial Group plc vs Phillip Morris Ltd [1984] case?
SIGNIFICANCE: Similar to the L’Oreal vs Bellure case. Whilst the get up and name was similar, and made to conjure up the imagery of the claimant’s goods, no misrepresentation nor damage was found.
STORY: Black cigarette packaging with gold lettering. was initially made and used by the claimant, but the defendant made their own.
What is the significance of Wagamama vs City Centre Restaurants [1995]?***
SIGNIFICANCE: Oral confusion based on imperfect recollection is likely. The similarity of the two names may lead consumers to think they are run by the same business.
STORY: Indian restaurant opened with a similar name to Wagamama.
What is the significance of the Kloninklije KPN and Benelux case?
SIGNIFICANCE: Demonstrates an abstract assessment of whether a word sign is capable of distinguishing the goods and services of one undertaking with from those of other undertakings. Distinctiveness must be assessed with respect to the goods/services and their context!
STORY: KPN applied for the word ‘Postkantoor’, which translates into ‘Post Office’. The EU 2015/2436 and 2018/825 directives says that words and letters may be types of signs, so ‘Postkantoor’ may be appropriate for protection, in abstract, at least.
What is the significance of the Irvine vs Talksport case?
SIGNIFICANCE: Passing of for false endorsement can be successful with no requirement for the claimant and defendant to be engaged in a common field of activity.
STORY: Talksport had the rights to a picture of racing driver Irvine, but doctored the picture to make it appear that Irvine was listening to, and thus endorsing, Talksport’s good/services.
Discuss the Libertel Groep vs Benelux Markenbureau case.
SIGNIFICANCE (2):
(1) Demonstrated that in abstract - no particular product a single colour may be capable of distinguishing goods/services (inherently or over time). However, a colour MUST be represented as an international colour code.
(2) Underlying public policy is that there is limited colour availability and limited human perception of similar shades of colour.
STORY: Libertel wanted to register the colour orange as a trademark for their goods/services. The courts found that although colours can’t communicate specific information, and although they tend to be simple properties of things, they may be able to indicate the source/origin of goods/services. The courts also considered the power granted in offering a particular trader monopoly over a colour.
Discuss the Heidelberger Bauchemie case.
SIGNIFICANCE: To register a plurality of colours as a trademark, the applicant needs to specify not only the colour codes, but also the systematic arrangement of the colours with certainty and durability.
STORY: The courts considered whether two colours, blue in yellow, used in combination, could be registered as a trademark. This differed from the Libertel case in that it related to more than one colours. In addition the claimants applied for any combination of the two colours, which the courts concluded would given them an unfair competitive advantage.
Discuss the Sieckmann vs Deutsches Patent und Markenamt case.
SIGNIFICANCE: The ‘representation’ requirement is met if the representation is: clear, easily accessible, self-contained, precise, intelligible, durable and objective.
STORY: Sieckmann wanted to register a smell, methyl cinnamate. For his representation, he submitted:
- An odour sample [not sufficiently durable]
- Which labs can obtain the sample [not easily accessible]
- Chemical formula [not sufficiently intelligible]
- Written description of the smell [not objective]
Discuss the Sheild Mark BV vs Joost Kist case.
SIGNIFICANCE: In abstract sounds, like single colours, can be registered, if they are represented as sheet music, which meets the Sieckmann criteria.
STORY: Claimant wanted to register sounds as trademarks. At the time, the S1(1) of the TMA 1994 required graphical representations for all marks. The used onomatopoeic words, (alphabetic) musical notes,sheet music, and written language as forms of graphical representation.
The court found that unless represented as sheet music, a sound mark would not meet the Sieckmann criteria.
Under new law, sound files are acceptable.
Discuss the Dyson vs Registration of TMs case.
SIGNIFICANCE: Properties of products are not trademarkable.
STORY: Dyson attempted to register a ‘transparent bin/collection chamber forming part of the external surface of their bagless vacuum cleaner’. The courts concluded that a transparent bin was simply a property of a product, and a concept rather than a sign. They concluded it would provide the proposed proprietors with unfair competitive advantage, referencing the Heidelberger Bauchemie case.
What is the significance of the Eden SARL vs OHIM and John Lewis of Hungerford cases?
Eden SARL tried to TM the ‘smell of ripe strawberries’ and John Lewis tried to TM ‘the smell, aroma, or essence of cinnamon’.
None of these met the Sieckmann criteria for lack of precision and objectivity.
What is the significance of the Societe des Produits Nestle vs Cadbury UK 2013 case?
SIGNIFICANCE: Relative words like ‘predominant’ reduce clarity and objectivity in an application for a TM.
STORY: The claimants tried to register the colour purple, providing the international Pantone colour code. They described it as being the ‘predominant colour’ applied to the visible surface of the packaging.
Discuss the Red Bull vs EUIPO cases.
SIGNIFICANCE: Applying for TMs with colour combinations need to specify specific systematic arrangement to define the scope of the protection sought after.
STORY: Over two cases, Red Bull submitted an application for blue and silver colours and, in addition to providing the colour codes, they provided two different descriptions of the the ratio between them: 50/50, and juxtaposed in equal proportion.
Red Bull argued that they improved upon Heidelberger’s case in that they specified a ‘juxtaposition’ rather than ‘any combination’. However the courts found that ‘juxtaposition’ was open to interpretation as any of a number of arrangements. Red Bull also argued discrimination, but the courts said higher precision was required because colours are intrinsically less precise.
