Trademarks Principles Flashcards
The Jif Lemon case taught us that a claimant must establish what in order to succeed in an action for ‘Passing Off’?
The claimant must establish 3 elements:
- The claimant has ‘goodwill’
- The defendant has made a misrepresentation that will likely deceive the public.
- The misrepresentation damages the ‘goodwill’ of the claimant.
What is an economic tort?
Common law rules on protecting the claimant’s interests against the infliction of economic harm in a given market.
What is the rationale for the tort of Passing Off?
There are 3 main rationales:
- Protecting the trader’s expectations
- Protecting the consumer’s expectations
- Ensuring competition is effective.
What are the requirements for establishing ‘Goodwill’, in particular?
There are two:
- Claimant must be trading within the UK.
- A connection between a business and its customers.
Why do businesses use trademarks?
It communicates the source of the services and/or goods to the consumer.
It allows the consumer to distinguish between competitors in the market.
What is ‘goodwill’?
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.
Discuss the issues associated with demonstrating ‘goodwill’ in descriptive terms.
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.
“Reputation and Goodwill are one and the same”. Discuss.
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.
“If the public adopt a term for a product and/or service, the claimant can always bring a passing off action”. Discuss.
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.
Discuss the issues associated with bringing a ‘passing off’ action for a product with the same shape of packaging as the claimant’s?
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.
Can ‘goodwill’ develop for a slogan?
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.
Is it possible to develop ‘goodwill’ before trading has begun?
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].
Is it possible to retain and sustain ‘goodwill’ after trading ends?
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.
Can foreign traders rely on passing off to protect their interests in the UK?
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]
What are the requirements for ‘Extended Passing Off’?
During the Advocaat (Warninck vs Townend) case, the courts concluded that there were 5 requirements:
- Misrepresentation
- Made by a trade in the course of trade
- To prospective customers and/or ultimate consumers of the traders goods/servers
- Which is calculated to injure the business or goodwill of another trader and
- Which causes actual damage to the claimant who brought the action, or who will probably bring the action.
What’s the difference between ‘Passing Off’ and ‘Extended Passing Off’?
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.
What 3 types of damages can arise from ‘Extended Passing Off’?
- Loss of sales
- Damage to reputation
- Dilution
What is misrepresentation?
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.
Give examples of types of actionable misrepresentation.
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]
Does the defendants state of mind matter in an assessment of ‘misrepresentation’?
No.
Intentional, unintentional, it’s all the same.
Can a person open a business in their family name if there already exists a related/similar business in their family name?
No.
See Parker Knoll vs Knoll International, or Hotel Ciprani vs Bar Ciprani.
If A resells the goods of B, is this misrepresentation?
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.
What’s the difference between Passing Off and Reverse Passing Off?
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.
How much of the public need to be deceived to demonstrate misrepresentation?
A ‘substantial’ portion of the relevant public. Although ‘substantial’ is unclear.
How do the CJEU determine similarity between products?
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.
How does the UK law of Passing Off protect well-known personalities?
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.
How does the CJEU assess whether or not a mark has gained reputation?**
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
Explain the concept of dilution.
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
The European Union TM Regulation requires that a trademark….
S1(1) of the TMA 1994 says a TM must be 3 things:
- Is a sign
- Can be represented adequately on the register in a manner that conveys the clear and precise protected subject matter
- 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).
In what way did the 2015/2436 and 2018/825 directives amend the TMA 1994?
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.
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?
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]
Are colours inherently distinctive trademarks?
No, colours may acquire distinctiveness through use.
In abstract, they are capable of conveying commercial origin if represented as international colour codes.
