Trademarks Principles

Question 1

The Jif Lemon case taught us that a claimant must establish what in order to succeed in an action for ‘Passing Off’?

Answer 1

The claimant must establish 3 elements:

1. The claimant has ‘goodwill’
2. The defendant has made a misrepresentation that will likely deceive the public.
3. The misrepresentation damages the ‘goodwill’ of the claimant.

Question 2

What is an economic tort?

Answer 2

Common law rules on protecting the claimant’s interests against the infliction of economic harm in a given market.

Question 3

What is the rationale for the tort of Passing Off?

Answer 3

There are 3 main rationales:

1. Protecting the trader’s expectations
2. Protecting the consumer’s expectations
3. Ensuring competition is effective.

Question 4

What are the requirements for establishing ‘Goodwill’, in particular?

Answer 4

There are two:

• Claimant must be trading within the UK.
• A connection between a business and its customers.

Question 5

Why do businesses use trademarks?

Answer 5

It communicates the source of the services and/or goods to the consumer.

It allows the consumer to distinguish between competitors in the market.

Question 6

What is ‘goodwill’?

Answer 6

As stated in the IRC v Muller’s Margarine [1901] case:

• Goodwill is the benefit of the good name, reputation, and connection of a business.
• Goodwill is an attractive force that brings custom.

Question 7

Discuss the issues associated with demonstrating ‘goodwill’ in descriptive terms.

Answer 7

A balance must be struck: the courts are reluctant to allow one trader to obtain a monopoly on descriptive words that both competitors and consumers have an interest in; but, the courts must protect the good will of a trader.

As a result, the bar for demonstrating ‘goodwill’ for descriptive terms is higher: the claimant must demonstrate that these words have secondary meaning, AND that the secondary meaning is distinctive of the goods and/or services coming from one distinctive source.

Question 8

“Reputation and Goodwill are one and the same”. Discuss.

Answer 8

In the Starbucks v Sky case, the courts concluded that in order for ‘goodwill’ to be established, the claimant must demonstrate that they have customers within the jurisdiction. Having reputation alone is not sufficient. The public may know about your products due to frequent travel, for instance, but if they are not a customer, there is no established ‘goodwill’ and therefore no passing off.

Question 9

“If the public adopt a term for a product and/or service, the claimant can always bring a passing off action”. Discuss.

Answer 9

In order for a passing off action to be successful, the claimant must demonstrate that the words/term are indicative of a distinctive source. Thus, it is not necessarily enough for the public to know/reference the words/terms.

For instance, in the case of Linoleum vs Nairn [1878], the public had begun to use the term to refer to the product in a generic sense, irrespective of the manufacturer. The word ‘linoleum’, although well-known, was no longer indicative of a distinctive source.

Question 10

Discuss the issues associated with bringing a ‘passing off’ action for a product with the same shape of packaging as the claimant’s?

Answer 10

Whilst it is possible to demonstrate the goodwill has developed in association with the packaging or get-up of a product, the claimant would have to demonstrate that the shape is not a functional requirement, but is indicative of a distinctive source.

Question 11

Can ‘goodwill’ develop for a slogan?

Answer 11

Yes, in principle.

In the case of Cadbury’s Schweppes vs Pub Squash [1981], the claimant released a lemonade and launch as associate marketing campaign which used the slogan ‘ruggedly masculine and adventurous men’. The defendant produced a lemonade and marketed it using a similar advertising campaign.

The courts held that, in principle, the public may associate advertising style with a particular source.

Question 12

Is it possible to develop ‘goodwill’ before trading has begun?

Answer 12

Yes.

This was demonstrated in the BBC vs Talbot [1981] ‘Carfax’ case, in which the BBC had employed an extensive and high impact advertising campaign for their service.

However, traditionally, ‘pre-trading goodwill’ has not been found to exist by the courts. See the cases Chivers vs Chivers [1900], Maxwell vs Hogg [1867], and My Kinda Bones vs Dr Pepper’s Rib Shack [1984].

Question 13

Is it possible to retain and sustain ‘goodwill’ after trading ends?

Answer 13

Yes, in principle, but it is dependent on:

• Whether the public still associates the sign with a distinct trader; and
• Whether there is an intent for the trader to resume business. An actively abandoned business cannot own ‘goodwill’ as that is also abandoned.

The most relevant caselaw may be Maslyukov vs Diageo, but that ended up being classed as ‘bad faith’ rather than ‘passing off’, a controversial decision.

Question 14

Can foreign traders rely on passing off to protect their interests in the UK?

Answer 14

The caselaw on establishing ‘goodwill’ in this scenario is inconclusive. However, there are 3 general scenarios:

• Mere reputation is not enough. [Anheuser-Busch vs Budejovicky Budvar]
• There must be evidence of business activity in the jurisdiction. [Sheraton vs Sheraton]
• There must be customers in the jurisdiction. [Crazy Horse] [Athlete’s Foot]

Question 15

What are the requirements for ‘Extended Passing Off’?

Answer 15

During the Advocaat (Warninck vs Townend) case, the courts concluded that there were 5 requirements:

1. Misrepresentation
2. Made by a trade in the course of trade
3. To prospective customers and/or ultimate consumers of the traders goods/servers
4. Which is calculated to injure the business or goodwill of another trader and
5. Which causes actual damage to the claimant who brought the action, or who will probably bring the action.

Question 16

What’s the difference between ‘Passing Off’ and ‘Extended Passing Off’?

Answer 16

The difference between these two is that for the latter, the ‘goodwill’ refers to a relationship between consumers and a particular type of product. See the Advocaat and Champagne cases.

Question 17

What 3 types of damages can arise from ‘Extended Passing Off’?

Answer 17

• Loss of sales
• Damage to reputation
• Dilution

Question 18

What is misrepresentation?

Answer 18

Misrepresentation refers to a scenario in which the defendant says or does something to indicate that the product or service that they are offering derives from the claimant.

Question 19

Give examples of types of actionable misrepresentation.

Answer 19

There are a number of scenarios:

• When a customer asks a trader for someone else’s goods, but the trader supplies that customer with their own.
• When a trader makes their goods/services look similar to that of the claimant’s or describes them as such in the name of the goods/services to confuse the public about the source or quality of the goods/services. [Jif Lemon] [AG Spalding vs Gamage] [Extended: Champagne] [Extended: Advocaat] [Colgate-Palmovlive vs Markwell Finance]
• When a trader places their goods/services (or associated adverts) in close proximity to that of the claimant to confuse the public about the goods/services. [Associated Press vs Insert Media]
• Where a trader gives rise to the suggestion that their goods are controlled/signed off by the claimant. [Associated Press vs Insert Media]
• Cyber-squatting on the claimant’s name. [BT vs One in a Million]
• Comparative advertising wherein the defendant presents their goods/services as an improvement [MaccyDees vs BGK]

Question 20

Does the defendants state of mind matter in an assessment of ‘misrepresentation’?

Answer 20

No.

Intentional, unintentional, it’s all the same.

Question 21

Can a person open a business in their family name if there already exists a related/similar business in their family name?

Answer 21

No.

See Parker Knoll vs Knoll International, or Hotel Ciprani vs Bar Ciprani.

Question 22

If A resells the goods of B, is this misrepresentation?

Answer 22

Not necessarily.

If A is clear about the source/quality of the goods, then it would not be considered actionable misrepresentation. However if A attempts to claim to be the source, or to mix in their own products with B’s, then it would be.

Question 23

What’s the difference between Passing Off and Reverse Passing Off?

Answer 23

Passing Off is where the defendant suggests that their goods are in fact the claimant’s.

Reverse Passing off is where the defendant suggests that the claimant’s goods are in fact their own.

Question 24

How much of the public need to be deceived to demonstrate misrepresentation?

Answer 24

A ‘substantial’ portion of the relevant public. Although ‘substantial’ is unclear.

Question 25

How do the CJEU determine similarity between products?

Answer 25

Based on the [Wagamama vs City Centre Restaurants] decision, wherein the second half of the word was considered similar enough to suggest a link between the parties, especially when restaurant recommendations are given orally. Based on the Jif Lemon case, if the get-up is the same and only the labels show a difference, both products will be considered similar under passing off. A mere label on everyday-consumption goods is not enough to demonstrate distinction. Based on the Puffin vs Penguin case, the courts found that the general TM'd idea could be misrepresented if the defendant produced a competing product using the same idea in its name and get-up. In such a case, the defendant’s goods would be similar enough be considered under passing off.

Question 26

How does the UK law of Passing Off protect well-known personalities?

Answer 26

In the UK, the courts have concluded that the public will not necessarily assume that the personality has manufactured the goods/services themselves, but they would assume that the personality has authorised or endorsed the goods/services. An example of this is seen in the [Rihanna Fenty vs Arcadia Groups] case, wherein the defendant bought rights to an image of Rihanna in get-up associated with a particular album release and printed them on T-shirts for sale without Rihanna’s endorsement. Because Arcadia groups have publicly worked with the claimant before, and was in releasing that album, the claimant was able to argue that the public would have been led to believe that she had endorsed the product, and that this would be misrepresentation.

Question 27

How does the CJEU assess whether or not a mark has gained reputation?**

Answer 27

Article 4(3) of the 2008/95 directive relates to reputation. In the [Iron & Smith vs Unilever] case, the CJEU found that to demonstrate reputation, a mark must be “known by a significant part of the public concerned by the products or services covered by that trade mark,” as evidenced by “the market share, intensity, geographical extent and duration of its use” and the proprietor’s efforts in promoting the mark

Question 28

Explain the concept of dilution.

Answer 28

Dilution is a type of damage that relates to dilution or damage of the claimant’s acquired goodwill. This can happen for a single claimant and their TM’s or this can happen in extended passing off where multiple claimants employ a shared term that indicates source or quality in their TMs. [Advocaat: Incorrect Ingredients] [Champagne: Incorrect origin] [BT vs One in a million: marksandspencer.co.uk]. The courts found that in both cases the terms would have lost their value. NOTE: The courts did not find this for the [Harrods vs Harrodian School] case, wherein the judge held that Harrods would not have suffered damage. There are 2 flavours of dilution: tarnishment; and blurring

Question 29

The European Union TM Regulation requires that a trademark....

Answer 29

S1(1) of the TMA 1994 says a TM must be 3 things: 1. Is a sign 2. Can be represented adequately on the register in a manner that conveys the clear and precise protected subject matter 3. Is capable of distinguishing the goods/services of one undertaking from those of other undertakings A TM may be: words, designs, letters, numerals, colours, sounds, and shapes of goods and/or their packaging. The TMA 1994 also gives us abs grounds for refusal in S3(1) and relative grounds for refusal in S5(1).

Question 30

In what way did the 2015/2436 and 2018/825 directives amend the TMA 1994?

Answer 30

Removed the requirement that the sign must be represented graphically, and replaced in with a requirement that the sign must be capable of being represented on the register in a manner that is both clear and precise to the registrar, relevant authorities, and the public.

Question 31

What do we mean by 'an abstract assessment' of whether a not a sign is capable of any of the requirements set out by S1(1) of the TMA 1994?

Answer 31

An abstract assessment refers to one in which the particular goods/services aren't taken into account. The relevant caselaw: [Koninklijke KPN vs Benelux-Merkenbureau: words and letters] [Librtel vs Benelux-Merkenbureau & Heidelberger Bauchemie: Colour] [Sieckmann vs Deutsches Patent und Markenamt: Smell] [Shield ark BV vs Joost Kist: Sound] [Apple Inc vs Deutsches Patent und Markenamt: Store Layout]

Question 32

Are colours inherently distinctive trademarks?

Answer 32

No, colours may acquire distinctiveness through use. In abstract, they are capable of conveying commercial origin if represented as international colour codes.

Question 33

What principles did the Sieckmann case provide us with?

Answer 33

PRINCIPLES: A sign must be clear, precise, self-contained, easily accessible, intelligible, durable and objective. STORY: Dude tried to register a SMELL, like.

Question 34

What do we mean by a ‘graphical’ representation?

Answer 34

The representation manifests as lines, characters, and images.

Question 35

Can colours be registered as trademarks?

Answer 35

In abstract, yes. There are some requirements: for a single colour the applicant needs to provide the international colour code and demonstrate that it has acquired distinctiveness through use; for colour combinations, the applicant needs to specify the systematic arrangement of colours in a precise manner. The former corresponds to the Libertel case and the latter corresponds to the Heidelberger Bauchemie and Red Bull cases.

Question 36

Can sounds be registered as TMs?

Answer 36

Yes, but for the EUIPO, you need to provide sheet music, which can be universally recognised. The UKIPO accepts sound files. See the following cases [Shield Marks vs Joost Kist], [Metro Goldwyn Meyer]

Question 37

What are motion/movement marks?

Answer 37

Motion/movement marks refer to those that can be represented through a series of images. See [Sony Ericsson Mobile] case.

Question 38

What do you need in order to register Shape marks?

Answer 38

Pictorial representation required; up to six perspectives are allowed.

Question 39

S3(2) of the TMA 1994 defines preliminary obstacles for shape marks to overcome. What are these?

Answer 39

The preliminary obstacle in S3(2) of the TMA 1994 says no trademarks for things that are exclusively: 1. A shape or other characteristic arising from the nature of the goods themselves. 2. A shape or other characteristic required to obtain a technical result. 3. A shape that gives substantial value to the goods. Applications must be interpreted in light of public interest. Each obstacle here is independent and a valid ground for refusal.

Question 40

Why do we use the preliminary obstacle assessment for shape marks?

Answer 40

To ensure we protect public interest by: - Preventing monopolisation of technical solutions of functional characteristics of a given produce - prevent exclusive, permanent rights of a trademark extending the life of other rights indefinitely.

Question 41

How has the Lego Juris vs OHIM case affected the way we assess the registration of shape marks?

Answer 41

During the case the courts interpreted S3(2) of the TMA 1994 as relating to the essential characteristics of the device, concluding that a shape mark may not be registered if its essential characteristics consisted exclusively of the preliminary obstacles. The courts assess 3D signs from here on out in this way: - essential characteristics - via simple or detail examination (surveys, experts, other up rights) - case by case basis

Question 42

Can anything, in abstract, be a sign?

Answer 42

Everything except the word ‘trademark’, taste, and tactile marks. The first because you enter a loop, the last two because it can’t be registered under the Sieckmann criteria.

Question 43

What are the 4 functions of a TM?

Answer 43

Piece of QOAIC, it’s: - Advertising [Cosmetic Warriors v Amazon] - Origin/Quality [Arsenal case] - Investment [Cosmetic Warriors v Amazon] - Communication If any of these functions are impaired by way of 3rd parties actions, the courts are going to find 3rd-party infringement.

Question 44

Give 5 general reasons for denying an applicant registration of their TM.

Answer 44

- It’s imprecise and unclear - It wouldn’t function - It would limit competition - It’s immoral or deceptive - Applicant behaves like a dick.

Question 45

How did the Nice Agreement amend the TMA 1994?

Answer 45

It requires a common classification of TMs, wherein applications must come under class headings and must specify which of the services included under the class heading are being applied for.

Question 46

Can you classify a TM as being for ‘retail trade’ or ‘repair’?

Answer 46

An applicant needs to designate subject matter of trade too! ‘retail trade for XXXXX goods’ . Type of goods is required for clarity by the courts.

Question 47

What is a service TM?

Answer 47

It goes beyond the mere sale of goods and thus is not identical to goods TMs. Apple stores, for instance have workers in their stores explaining to customers how the products work, i.e. providing a service.

Question 48

What are the general qualities of each of the absolute grounds for refusal?

Answer 48

They: 1. Are separate and independent 2. Must be interpreted in light of underlying public interest 3. Must be assessed w.r.t. the specification 4. Must be considered from perspective of the average consumer

Question 49

What situations are covered by the absolute grounds for refusal?

Answer 49

1. Where the mark is not able to carry out its basic function. 2. Where the TM right would contravene public policy (monopolies, deception, immorality) 3. Where the TM right would interfere with other IP rights. 4. Where the application is made in bad faith.

Question 50

What is the purpose of the Nice Classification system?

Answer 50

The Nice Classification requires the applicant to specify the type of goods and services to allows the relevant authorities and economic opertators to determine the extent of the protection sought.

Question 51

What limits do we put on the assessment of sound TMs?

Answer 51

We need to follow the Sieckmann criteria, and we also need to be sure it can indicate a particular origin. It can't be too long/too short/contain only one note.

Question 52

What have we learned from the terms 'Aspirin' 'Linoleum' 'Escalator'?

Answer 52

If the TM'd term becomes the name associated with a type of product, rather than the source, the term is generic and does not function.

Question 53

Is it ok for someone to register the name 'Orwoola' for clothes products?

Answer 53

'Orwoola' may be refused on the basis that it is deceptive as it implies all of the products contain wool. Is this necessarily true?

Question 54

What is double identity?

Answer 54

Double ID refers to cases in which the same TM is used for identical goods/services as was used for earlier marks/goods. Also, if the differences wouldn’t be noticed by the average consumer that can be considered identical.

Question 55

When can it be said that one sign is identical to another?

Answer 55

When it reproduces, without modification or addition, all the elements constituting the original TM. OR When it contains insignificant differences that are likely to go unnoticed by the consumer.

Question 56

Which TMA 1995 sections correspond to relative grounds?

Answer 56

Section 5

Question 57

Relative grounds for refusal covers what?

Answer 57

Relative grounds for refusal covers scenarios in which there is a likelihood of confusion, including confusion of source or incorrect association with the earlier mark, due to the following combos (1)2[3]: the TM is (similar)identical[similar] and the goods/services are (identical)similar[similar] and the

Question 58

What are the qualities of the average consumer?

Answer 58

They are reasonably well-informed, observant and circumspect. They don't necessarily pay attention to details, especially with everyday consumption goods. They don't make direct comparisons of marks; rather they rely on imperfect recollection.

Question 59

What is the Global Appreciation Test?

Answer 59

It’s a test of *3* stages: 1. Legal test for the similarity of marks (visual, aural, conceptual) 2. Legal test for the similarity of goods (would they be marketed by the same companies? Method of use similar? In competition? Complementary? Channels of trade?) 3. Legal test of appreciating all relevant factors and the perspective of the average consumer (senior TM strength, may be noted in exam under reputation) Average consumer will then be considered, but this is not part of the test.

Question 60

What types of similarity can exist?

Answer 60

Aural, visual, and conceptual similarity.

Question 61

What are the modes of dilution?

Answer 61

Dilution by blurring or by tarnishment of senior mark. Blurring: The uniqueness of the mark is diluted an loses it’s distinctive character. [Intel and Environmental Caselaws show us how to assess this] Tarnishment: When the junior mark would associate the senior mark with unflattering characteristics. [Whiskey=senior, Pet Food=junior]

Question 62

What are the modes of free-riding?

Answer 62

Free-riding on the distinctive character or on the repute of the senior mark *by the junior TM*. Free-riding: If you have cultivated some advertising value, TM law will protect that value.

Question 63

How would you approach a relative grounds problem question?

Answer 63

Go through the Global Appreciation Test: similarity of marks, similarity of goods/services, strength. Define the average consumer and explain their reasoning. Consider dilution and consider free-riding with respect to caselaw. [DILUTION by blurring: Intel and Environmental manufacturing caselaw covered loss of sales, reduction in value of mark] [FREE-RIDING: Refer to the L’Oreal v Bellure case.] Comment on likelihood of confusion. (Confusion is not there is goods/services are totally dissimilar. However, dilution/free-riding may subsist.)

Question 64

When can one submit survey results to the courts to prove something like confusion?

Answer 64

- You’d need to get permission from the courts | - You’d also need to prove that the survey results are reliable because, for instance, the questions are not leading.

Question 65

What are the grounds for revocation of a TM?

Answer 65

Grounds for TM revocation are set out in the TM directive: [2 types of non-use, deception, and generic] - The TM has not been used for 5 years following the date of completion of the registration. - The use of the TM has been suspended for an uninterrupted period of 5 years - The TM has become generic in the trade - The TM has been used in such a way that it's liable to mislead the public as to its nature, quality, or geographic origin.

Question 66

Which requirements must be met in order to find infringement?

Answer 66

"You Win" - Use of the TM by a 3rd party - Without the proprietor's consent - in the course of Trade - in the relevant Territory - in relation to identical Goods/Services for which the TM is registered - wherein the use affects or is liable to affect the basic functions of a trademark.

Question 67

When is the 'origin' function of a trademark affected?

Answer 67

This may occur during TM infringement if the use of the 'infringing' TM does not enable the reasonably well informed, reasonably attentive user to ascertain whether the goods/services originate from the proprietor, a trader economically linked with the proprietor, or an unconnected 3rd-party altogether. [Cosmetic Warriors v Amazon]

Question 68

When is the 'advertising' function of a trademark affected?

Answer 68

In terms of infringement, the advertising function is affected wherein the claimant has built up a reputation with their consumers through the advertising use of a mark, and a 3rd party is using that mark and it's associated reputation to sell its own goods. That use by the 3rd party will have damaged the advertising power of the claimant's mark. [Cosmetic Warriors v Amazon]

Question 69

When is the 'investment' function of a trademark affected?

Answer 69

In terms of infringement, investment may represent the reputation/ethics/beliefs of the trader that the TM represents to the consumers. If a 3rd party was to use the TM without economic links to the proprietor and without those standards being upheld for the consumers, the 3rd party would damage the investment function. [Cosmetic Warriors v Amazon]

Question 70

On the subject of TM infringement, what do we mean by use of an earlier/senior mark in relation to goods/services of the claimant?

Answer 70

'Use in relation' refers to the 3rd party depict a link between the earlier mark and the goods/services used by the 3rd party. Such use includes comparative advertising and keyword/adword advertising, but does NOT include cases where a 3rd party uses a senior mark as their trade name.

Question 71

What are the characteristics of the average consumer with respect to Adword infringement?

Answer 71

The average consumer is reasonably well informed and reasonably observant.

Question 72

What's the difference between passing off and infringement?

Answer 72

Passing off deals with unregistered rights, whereas infringement deals with registered rights.

Question 73

What are the requirements for assessing whether or not there is due cause?

Answer 73

A finding of due cause would mean that a TM proprietor would need to tolerate a 3rd parties use of similar marks for identical goods/services. 1. How the public accepts the defendant's sign and perceives their reputation. 2. The degree of proximity between the goods/services the sign was originally used, and the goods/services registered for the mark with reputation 3. The economic and commercial significance of the use for that product of the similar sign. [RedBull v BullDog]

Question 74

When might a trademark be declared invalid?

Answer 74

If it was registered in breach of one of the absolute or relative grounds for refusal.

Question 75

Which activities count for 'genuine' use of a trademark and which don't?

Answer 75

Genuine use is the use of the TM in the market in relation to the sale/distribution/maintenance of the registered goods/services. Non-use includes tokenistic use, or uses purely for advertising/promotion.

Question 76

How can someone counter revocation?

Answer 76

They may be able to argue that their period of non-use arose due to: 1 - obstacles arising independently of the will of the TM proprietor. 2 - wherein the obstacles have a direct relationship with the failure to use the TM [regulatory board] 3 - wherein the obstacle made the the use of the mark impossible or unreasonable.

Question 77

What are the conditions for allowable comparative advertising?

Answer 77

In Art 14(1) of the TMD, it says that TM proprietor can't stop another trader from: (a) using the name or address of a 3rd party, where the 3rd party is a natural person (b) using indications concerning: kind, quality, geographic origin, time of production/rendering,or other characteristics of the goods/services (c) using the TM to identify/refer to goods/services of the proprietor of the mark, especially where the use of that TM is indicates the intended purpose of the goods/services (like spare parts) provided these comply with honest practice and marketing regulations.

Question 78

What are the limits applied n comparative advertising, and what is 'honest practice'?

Answer 78

----- According to the MCAD, that means: (a) it can't be misleading [Type=Honest Practice] (b) it compares goods/services for the same purpose [Type=Honest Practice] (c) the comparison in is objective and compares verifiable representative features of the goods (d) it can't discredit or denigrate the TMs or goods/services of a competitor [Type=Honest Practice] (f) it can't take unfair advantage of the reputation of a competitor [Specsavers v Asda; L'Oreal v Bellure] [Type=Honest Practice] (g) it doesn't present goods as imitations or replicas of goods bearing a protected TM [Type=Honest Practice] (h) it doesn't cause confusion

Question 79

Where does acquired distinctiveness need to be justified?

Answer 79

For EUTMs, it must be distinctive *throughout the EU* [Lindt], however this is difficult to acheive and some *extrapolation* exemptions have been met: a) you can demonstrate a homogeneous and thus comparable EU market b) you can demonstrate use in areas the extrapolation extends to. For word marks, the official language of the country must be considered.

Question 80

What type of supporting evidence might you need for demonstrating acquired distinctiveness?

Answer 80

Evidence of use in trade Surveys Advertising expenditure