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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TRADEMARKS 2
Relative Grounds of Refusal
TMD 1988 Article 4
TMA 1994 Section 5
The relative grounds of refusal concern either:
earlier trade marks
earlier rights
Relative grounds of refusal
allow others to oppose registration of a mark by D
allow others to apply for a registered mark to be declared invalid
Only apply if invoked by someone challenging registration
Relative Grounds of Refusal
For earlier trade marks, relative grounds of refusal are:
Double-identity (section 5(1))
Identical goods/similar trade mark and vice-versa (section 5(2))
Identical or similar marks, where earlier mark has a reputation (section 5(3))
For earlier unregistered rights, can be refusal if registration amounts to passing-off or breach of copyright.
EARLIER TRADE MARKS
Section 4(2)
Earlier trade marks which can justify opposition/cancellation include:
Community Trade Marks (CTMs)
Registered national trade marks
Double Identity
Section 5(1)
Identical marks + identical goods or services
Here, is no need to prove D’s mark will cause confusion
Identical Marks
C and D’s mark ‘identical’ only where D’s sign reproduces, without any modification or alteration, all the elements constituting the earlier trade mark
LTJ Diffusion SA [2003] (ECJ)
Test applied from viewpoint of average consumer
Thus insignificant differences between sign and mark do not prevent identity
LTJ Diffusion SA [2003]
Identical Goods or Services
Court looks at specification of respective marks.
‘Specification’: i.e. description of class of goods protected by mark
Extent of specification is determined at date earlier mark is registered
i.e. cannot evolve to cover other things over time
Reed Executive Plc v Reed Business Information [2004]
Thus e.g.:
‘UNITED AIRWAYS’ is identical to ‘UNITED AIRLINES’
United Airlines v United Airways [2011]
‘COMPASS LOGISTICS’ is not identical to ‘COMPASS’
i.e. addition of extra word is enough to remove identity
Compass Publishing v Compass Logistics [2004]
Confusing Similarities
Section 5(2)
Identical marks + similar goods, similar mark + identical or similar goods
Relative ground applies only if there is likelihood of confusion on part of public.
Likelihood of confusion appreciated globally
Sabel v Puma [1997] (ECJ)
Thus lesser degree of similarity between goods may be offset by greater degree of similarity between marks
and vice-versa.
Sabel v Puma [1997]
Similar Marks
Court looks at marks as a whole
Sabel v Puma [1999]
Global appreciation requires court to look particularly at:
aural, visual or conceptual similarities
dominant and distinctive components of mark
Sabel v Puma [1999]
Is no minimum threshold of similarity
i.e. if any similarity at all, likelihood of confusion must be considered
Esure Insurance [2008] (English Case)
Aural, Visual & Conceptual Similarities
Which of these three aspects is most important depends on nature of goods in question
Aural
First syllable most important
Where first syllables identical, often similarity
Jose Alejandro v OHIM [2003] (‘budmen’ similar to ‘bud’)
if first syllables different, not likely to be similarity
Les Éditions Albert Réné v OHIM [2008] (‘Asterix’ and ‘Starix’ not similar)
Courts sometimes carry out quantative assessment
relevant factor is whether two signs have more syllables in common than not
Mystery Drinks [2003]
Visual
Is most important element for e.g. clothes
e.g. Philips-Van Heusen v OHIM [2003] (BASS and PASH)
Visual similarity of words also relevant.
Conceptual
Conceptual differences may make marks dissimilar even aural and visual similarities between signs.
E.g. where earlier mark/new sign is such that it has meaning independent of goods in relation to which trade mark is sought
Picasso v OHIM [2006]
This only case where at least one of the two signs has a ‘clear and specific meaning’
Picasso v OHIM [2006]
Similar Goods or Services
All relevant factors must be taken into account when determining similarity.
Canon v MGM [1998]
Relevant factors include:
Nature of goods
End users of goods
Manner in which goods are used
Extent to which goods are in competition or complementary
Canon v MGM [1998]
Complementary Goods
Some goods are ‘complementary’ to others which have established trade marks
E.g. a perfume marketed under mark ‘French Connection’ (clothes and perfume are complementary)
Are conflicting approaches as to when goods will be ‘similar’:
Some cases take narrow approach
only similarity if one good ‘indispensable or important’ for use of other
Muhlens v OHIM [2007] (Perfume and clothes not similar)
Others take broad approach
El Corte Ingles [2007] (CFI) (Bags and clothes are similar)
Likelihood of Confusion
Confusion arises where average consumer of relevant product might believe that goods or services in question come from:
Same undertaking
Or economically-linked undertakings
Canon v MGM [1998]
‘Likelihood of association’ not an alternative to likelihood of confusion
Sabel v Puma [1998]
Average consumer is ‘reasonably observant and circumspect’
Lloyd Shuhfabrik [1999]
Level of attention of average consumer varies depending on goods in question:
where characteristics of goods means average consumer only purchases after detailed examination, less likely to be confusion
e.g. if good is expensive or technical
Picasso v OHIM [2006]
Time of Confusion
‘Post-Sale Confusion’
Seems that post-sale confusion suffices.
i.e. where purchaser of D’s goods is under no confusion when buying the goods
but confusion arises when people later see the goods away from their point of sale
Datacard v Eagle Technologies [2011] (Ch.)
Likelihood of post-sale confusion is assessed in same manner as likelihood of confusion
i.e. must still be case that an average consumer of good in question would be likely to be confused
Arsenal FC v Reed [2004] (ECJ)
Datacard v Eagle Technologies [2011] (Ch.)
‘Initial Interest Confusion’
Can be ‘confusion’ where this is only at the...
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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