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Trade Marks Intellectual Property LLM Notes
Table of Contents
LLM IP Lecture Notes
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
1. 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 selfperpetuating 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.
2. 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 Nestle 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?
3. 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.
How Much Proprietor Control?
Burberry became the favourite brand of football hooligans and Chavs - Met Police 'Operation Burberry' and pubs refusing entrance. Nike becomes the brand most associated with sweatshops. Lonsdale contains the letters NSDA, which are the Nazi party initials, such that if you wore a t-shirt with a jacket, that's what it showed. Lonsdale struck back and responded directly, using lots of colours, Muhammad Ali and directly funding LGBT groups.
Issues in Trade Mark Law Trademark and the Public Domain TMs are indefinite (only IPR to do so), and give a monopoly to a firm over a particular trademark in a particular area. How much protection do we want to give? In the UK and Germany, common view is that there should always be limits. Best example - Coca Cola bottle  - CA refused to register the iconic bottle shape. Argued that if you give indefinite protection to functional shapes, you're impoverishing the public domain. Under the TM directive, you can now register any sign, as long as it's acting as a TM (an indicator of origin) to the market.
Extrinsic Qualities Benelux - extrinsic qualities protected even when there was no confusion, as long as the public makes a conection between the two products, which makes the TM look bad or dilutes it. Claeryn / Klarein - Gin and cleaning product use very similar name, makes the gin less distinctive, and perhaps tarnishes the brand What if it was the other way round? Gin makes the cleaning product seem better?
Unfair advantage - trader gets an unfair advantage:
L'Oreal v Bellure Perfume Manufacturers (L'Oreal very high quality, Bellure very cheap), Bellure marketed itself as being better value. No confusion over the two but Bellure free riding on the TM.
Registration Domestic Need to make an application to the trademark registry, sending a representation to the UK. IP Translator Case - Class 41 (education) was a big area, did they need to be more specific? In some classes, you don't need to be specific, because people understand the meaning of the words, but here, it was not so obvious that it was to fall into that class. Sleeping bags fall into furniture, for example. Open question, but a very important one. Date of filing is important. On registration, your rights are backdated to the date of filing. Examination of TM is contested. If there is no opposition, or if it succeeds, it will be registered for cycles of 10 years. There are still TMs protected since 1880s
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International Protection CTM Can make an application directly to OHIM - it will advertise the mark and then register it. In cases of infringement, can designate a national court to hear the case over the infringement. If there is a mark in any of the countries of the EU, then the CTM will fail.
Madrid Protocol 29 countries have signed up to it - single application through a national TM office via WIPO. It will be examined in each country, and will succeed in some, if not all.
The Definition of a TM
1. Any Sign Very open ended definition, can include sounds, smells etc. Starting point is the non-exhaustive list in s1 of the Act. The benefit of this open-endedness is that it panders to consumers who are maybe not literate - don't want them not to benefit from the benefits of trade mark protection (search costs)
- Dinwoodie. Maybe the additional costs from this are not justified by the benefits that they confer on their owners (Elias (1992)). Dyson v Registrar of Trade Marks (2007) Dyson wanted to register 'a transparent bin forming part of the external surface of a vacuum cleaner' as a trade mark. It illustrated its application with pictures of 2 transparent bins, but it wanted the trade mark to cover all conceivable transparent bins. CJEU held that the bin was a concept, not a sign, so could not be registered. The subject matter of the application was not a particular type, but all the conceivable shapes. It was a property of the product, and not the sign itself. To allow the registration would prevent other traders from competing in the market. Probably better to see this case as Dyson applying for a category of signs, rather than an individual application.
2. Capable of Graphic Representation Needs to be 2D - traders must be able to see what has been registered. What about non-traditional marks? Tastes, Smells, Sounds, Colour?
Sieckmann German company wanted to register a smell for computing. Does 'capable of graphic representation' require that they can be produced directly in graphic form? Or does it include indirect reproduction? If the latter, what is the necessary depiction? Company gave the chemical formula for the smell, a description and a sample of the smell. The representation must be 'clear, precise, self-contained, easily accessible, intelligible, durable and objective'. The formula wasn't the smell, the description wasn't precise, and the smell wasn't durable. The CJEU said that even a combination was not clear and precise enough. Court appeared to feel uncomfortable with registering a smell, so while in principle it is possible, in practice, it is impossible. Eli Lilly Company sought to register an artificial strawberry taste for medicine. Not graphically representable, so could not be a trade mark. Shield Mark BV
6 Wanted to register the first 9 notes of Fur Elise, with a description and a graphical representation. Also, a Cock Crowing, which they described as 'cock-a-loo-la-loo'. The notes were precise enough, but the cock crowing didn't meet the Sieckmann criteria with regard to graphic representation. For musical tunes, the requirements are satisfied where the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals (Case C-283/01- Shield Mark/Kist, para 64). No ECJ decision so far has dealt with sonograms as a means of graphical representation of sounds. Sonograms of sounds not represented by musical notes are accepted by OHIM in accordance with Rule 3 of the Implementing Regulation, if filed in the form of a graphic representation plus a sound file representing the sound itself. Colour is okay, as long as it's described by reference to a Panatone scheme, or equiva. Libertel v Benelux Libertel wanted to register the colour orange for phone services. Simply reproducing the colour on a piece of paper is insufficiently precise, but you could identify it using an internationally recognised code eg Pantone. Colour combinations must be systematically arranged by associating the colours concerned in a predetermined and uniform way (Case C-49/02 - Heidelberger Bauchemie/DPMA, para 33). The CJEU in this case provided little in the way of analysis on how colour can be a sign - it could be a sign, but wasn't on the facts. How is this different to 'not devoid of distinctive character'?
MPI Survey A broad majority of user associations consulted in the course of the Study expressed the view that the requirement of graphical representation of signs was outdated, and that the wording of the law should be changed so as to allow for a more liberal practice regarding representation of nontraditional signs. However, it was also stressed that this should not detract from the exigencies of legal security, as set forth in the Sieckmann decision. There is still considerable uncertainty with regard to some categories of nontraditional marks, like mere sounds (by contrast to musical tunes), smells, tastes, or haptic marks. Furthermore, in cases such as musical tunes and sound marks, representation by other than graphical means (e.g. by sound recordings) may even be preferable to mere graphical representation, if it allows for a more precise identification of the mark and thereby serves the aim of enhanced legal certainty. Apart from that, however, to allow for more flexibility with regard to the means of representation should not grant dispense from the basic concept underlying the list of criteria enunciated in the Sieckmann case. Whereas they do not have to be repeated literally, those principles should be expressed in the law in a general form.
3. Capable of Distinguishing The Goods and Services of One Undertaking From That of Other Undertakings All of these signs could potentially be capable of distinguishing one trader from another trader. Whether it can be registered depends on whether in practice it distinguishes one from another in the eyes of the consumer. Compare Kodak to Orange (on fruit), or North Pole (on bananas) to Caribbean (on bananas). This was the ground of challenge in the Phillips v Remington case - consumers would not see that this was a distinguishing mark - it didn't operate as an indicator of origin or brand.
Absolute Grounds for Refusal of Registration For public interest reasons, there are some marks that shouldn't be registrable, or the protection should at least be very limited in scope. For this, we can see s3 of the TMA 1994.
1. Signs that don't satisfy Art 2 (See Dyson case) (s1(1))
2. Marks which must satisfy the proviso a. Non-Distinctive, Descriptive and Generic Marks. b. Functional Shapes c. Marks Registered in Bad Faith
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3. Marks that are against the public interest
1. Signs that don't satisfy Art 2 No sign that is incapable of acting as a TM. Philips v Remington Philips wanted to TM the three-headed equilateral triangle electric shaver, just as the patent on it expired. Remington started selling a shaver just at the same time. Philips sued Remington and Remington argued that the TM was invalid. Parties agreed that the registration should be treated as a 3D representation of the head of the shaver. High Court held the TM was invalid - devoid of distinctive character. CA said it didn't satisfy under s3(1)(a). The public in general associated the 3 headed shaver with Philips, but the fact that Philips had had a monopoly does not mean that they saw it as a TM. Philips still had to establish that it had features that distinguished it from competitors' similar goods on the market. Because it had the Philips name on it, that made the head less of a TM. This means that there will be some things that are never distinctive, and so can never be registered. It was held that it was irrelevant that there was a monopoly, unless that meant that the public came to associate that mark with that trader. It is the job of the registrar to determine whether it has acquired that distinctiveness.
2. Marks which must satisfy the proviso There are three categories of marks that need to satisfy the proviso: a. Non-Distinctive Marks, b. Descriptive Marks, and c. Generic Marks There is a strong public interest for the refusal of each one.
a. Marks Devoid of Distinctive Character (s3(1)(b)/Art 7(1)(b) CTMR) In Linde AG's Trade Mark Application, the CJEU held that there was no public interest in registering signs that were not fulfilling their function as a badge of origin. Marks can be distinctive either by nature or nurture, but they must enable members of the public to distinguish the product from those that have a different trade origin, and to conclude that the products or services that it designates have been manufactured, marketed or supplied under the control of the owners of the mark. There is no de minimis approach here - a minimal degree of distinctive character suffices for the absolute ground not to apply.
Shapes Linde AG Linde sought to register the shape of its trucks. The question is whether there is distinctiveness ab initio without evidence of use? The mark was held to be lacking in distinctive character at first instance. The ECJ held that it's not impossible, but as a practical matter you need to establish distinctiveness, because consumers don't expect shapes to be TMs. No public interest in registering signs that are not fulfilling their essential function. Test is whether it significantly departs from the norm or customs of the sector - Henkel. This is necessary, but not sufficient - shape must also be one that the average consumer would view as indicating trade origin, not decorative, or merely there 'just to do a job'. Was allowed in Chrysler Corp v OHIM - public had come to realise that grilles were a badge of origin, so it could be distinctive. August Storck - Werther's Originals shape. Not distinctive.
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