Trade Marks

Intellectual Property LLM

Notes

Table of Contents

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).

Function of Trademark Protection

Indicator of Origin

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.

Advertising Function

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?

TMs and Brands

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.

What is the Difference Between a TM and a Brand?

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....

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