Law Notes Intellectual Property Law Notes
IP law notes fully updated for recent exams at Oxford and Cambridge. These notes cover all the LLB Intellectual Property law cases and so are perfect for anyone doing an LLB in the UK or a great supplement for those doing LLBs abroad, whether that be in Ireland, Hong Kong or Malaysia (University of London).
These were the best IP Law notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through dozens of LLB samples from outstanding law students with the highes...
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Trade Marks
Intellectual Property LLM
Notes
Function of Trademark Protection 4
1. Indicator of Origin 4
2. Advertising Function 4
3. TMs and Brands 4
What is the Difference Between a TM and a Brand? 4
How Much Proprietor Control? 5
Issues in Trade Mark Law 5
Trademark and the Public Domain 5
Extrinsic Qualities 5
Registration 5
Domestic 5
International Protection 6
CTM 6
Madrid Protocol 6
The Definition of a TM 6
1. Any Sign 6
2. Capable of Graphic Representation 6
3. Capable of Distinguishing The Goods and Services of One Undertaking From That of Other Undertakings 7
Absolute Grounds for Refusal of Registration 7
1. Signs that don’t satisfy Art 2 8
2. Marks which must satisfy the proviso 8
a. Marks Devoid of Distinctive Character (s3(1)(b)/Art 7(1)(b) CTMR) 8
Shapes 8
Simple Signs 9
Colours 9
Names 9
Get-up and Trade Dress 10
Slogans 10
b. Descriptive Marks 10
c. Generic or Customary Signs 11
Relationship between Art 3(1)(a) and Arts 3(1)(b-d) 11
How do we assess acquired distinctiveness? 11
Marks Against the Public Interest (art 3(1)(e-g), art3 (2)(d) TMD; (s 3(2)-3(6) TMA) 12
1. Prohibited Shapes 12
4. Marks Contrary to Public Policy 15
5. Deceptive Marks 16
6. Registration in Bad Faith 16
No intention to use the mark 16
Where there is an abuse of a relationship 16
Applicant aware that a Third Party had some sort of claim to the Mark’s goodwill 16
Relative Grounds for Refusal of Registration 17
Identical marks on identical goods and services 17
When are Goods and Services Identical? 17
Identical marks on similar goods and services and similar marks on similar or identical goods and services + Proviso applies 17
The early UK interpretation of the proviso in ss5(2)(a-b)(Art4(1)(b)) 18
Benelux 18
Court of Justice 18
Marks With a Reputation – s5(3) TMA / Art 4(3) 20
Reputation 20
Dilution 20
Tarnishment 20
Unfair Advantage 21
‘Without due cause’ 22
Assessing damage 22
Conflicts with earlier rights 22
Infringement 23
Use must be in the course of trade 23
Need use of the mark be as a trade mark to infringe? 23
Trademarks and the Internet 24
Honest Concurrent Use – Overlapping Registration 25
Use of Own Name 25
Purely Descriptive Marks 25
Intended Purpose 25
Comparative Advertising 26
Ways to lose a Registered Trade Mark 27
1. Revocation 27
Non-Use (Art 12(1) TMD) 27
Generic Use (art 12(2)(a) TMD) 28
Misleading marks (art 12(2)(b) TMD) 28
2. Invalidity (arts 3 & 4 TMD) 28
Defence 28
Licences and Assignments 29
Remedies 29
Trade Marks of the European Union 29
Exhaustion of rights and changing the ‘condition’ of the goods 29
(Arts 7(1) & 7(2) TMD; s 12(1)&(2) TMA) 29
Rebranding and repackaging 30
Re-selling which changes the ‘mental’ condition of the goods 30
Trademarks
Trademarks are the most harmonised of the Intellectual Property rights, since they all stem from a directive (1989 - consolidated in 2008). They are also the most variable. There is now a community trademark - 2009 regulation (final word goes to the ECJ).
Sets out the origin of the trademarked product to the consumer. Posner and Landes say that the TM reduces customer search costs, and ensures the quality of the goods. The TM means that when you buy the product, you can guarantee it will be of the same quality as last time. This encourages the producer to strive towards uniform quality, and good quality (see Box). The value of a TM is self-perpetuating in this way – the TM owner wants consumers to keep buying their product for standardised and high quality. These benefits would be lost if someone was allowed to free ride on TMs.
Are there any costs? Ponser and Landes say no, but others disagree – some products are the same (e.g. Bleach) regardless of what brand one purchases. This means that producers waste money establishing and maintaining a TM, when it is not relevant, and pass those costs onto the consumer. Another example of this is Open-Source Software.
Apple, Coca-Cola etc. The growth in the licensing of TMs has meant that the indicator of origin function has diminished, and the advertising function has increased. P&G, Unilever and Nestlé own the majority of the brands in UK supermarkets, and so the indicator of origin is much less relevant. Previously, TMs established safety of products but this is no longer an issue, so the function has changed.
Schecter argues that the advertising functions of a trademark should also be protected. The mark encourages consumers to buy TMd goods regardless of their quality. The advertising function arises when the quality of goods in a market is pretty much the same. By protecting the advertising function, competitors can’t take advantage of the investment that the producers have made in the trademark.
Others argue that protecting more than the badge of origin means that entry into a market is very costly. Moreover, the way in which we see a product is more than just the product of what the proprietors do. The public invests values in a brand as well. Should Tottenham Hotspur get all of the benefit of what the supporters of the team invest in its TM?
There is an argument that the TM itself has become the brand – you are not buying the t-shirt or the trainers, you are buying the Nike ‘swoosh’. Quote in ‘No Logo’ (Klein) – Nike is now a marketing company, not a producer of shoes.
The TM Directive defines a TM as a graphic representation that is capable of distinguishing one traded good from another. There is no equiva definition for brands, but we can define it as an ‘aggregation of assets which includes, but is not limited to a TM’. It may also include marketing strategies, people, but most importantly, it is transferable – see Virgin (started in music, now money, aeroplanes etc).
Coca-Cola’s strong brand (formerly the most valuable in the world) came from ‘building consumer connections, iconic advertising’ etc....
Buy the full version of these notes or essay plans and more in our Intellectual Property Law Notes.
IP law notes fully updated for recent exams at Oxford and Cambridge. These notes cover all the LLB Intellectual Property law cases and so are perfect for anyone doing an LLB in the UK or a great supplement for those doing LLBs abroad, whether that be in Ireland, Hong Kong or Malaysia (University of London).
These were the best IP Law notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through dozens of LLB samples from outstanding law students with the highes...
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