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Trade Marks 2 Notes

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TRADEMARKS 2

Relative Grounds of Refusal TMD 1988 Article 4 TMA 1994 Section 5

1. The relative grounds of refusal concern either: i) earlier trade marks ii) earlier rights

2. Relative grounds of refusal 1) allow others to oppose registration of a mark by D 2) allow others to apply for a registered mark to be declared invalid

3. Only apply if invoked by someone challenging registration Relative Grounds of Refusal

4. For earlier trade marks, relative grounds of refusal are: 1) Double-identity (section 5(1)) 2) Identical goods/similar trade mark and vice-versa (section 5(2)) 3) Identical or similar marks, where earlier mark has a reputation (section 5(3))

5. For earlier unregistered rights, can be refusal if registration amounts to passing-off or breach of copyright.

EARLIER TRADE MARKS

i) ii)

Section 4(2)

6. Earlier trade marks which can justify opposition/cancellation include: Community Trade Marks (CTMs) Registered national trade marks 1) Double Identity Section 5(1)

7. Identical marks + identical goods or services

8. Here, is no need to prove D's mark will cause confusion i)

Identical Marks

9. 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

1. LTJ Diffusion SA [2003] (ECJ)

10. Test applied from viewpoint of average consumer

1. Thus insignificant differences between sign and mark do not prevent identity

2. LTJ Diffusion SA [2003]

ii) Identical Goods or Services

i) ii)

1. Court looks at specification of respective marks.

1. 'Specification': i.e. description of class of goods protected by mark

1. Extent of specification is determined at date earlier mark is registered

1. i.e. cannot evolve to cover other things over time

2. Reed Executive Plc v Reed Business Information [2004]

1. 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]
2) Confusing Similarities

2. Section 5(2)

1. Identical marks + similar goods, similar mark + identical or similar goods

2. Relative ground applies only if there is likelihood of confusion on part of public.

3. Likelihood of confusion appreciated globally

1. Sabel v Puma [1997] (ECJ)

4. Thus lesser degree of similarity between goods may be offset by greater degree of similarity between marks

1. and vice-versa.

2. Sabel v Puma [1997]
i)

i) ii)

Similar Marks

5. Court looks at marks as a whole

1. Sabel v Puma [1999]

6. Global appreciation requires court to look particularly at: aural, visual or conceptual similarities dominant and distinctive components of mark
- Sabel v Puma [1999]

1. Is no minimum threshold of similarity

1. i.e. if any similarity at all, likelihood of confusion must be considered

2. Esure Insurance [2008] (English Case) Aural, Visual & Conceptual Similarities

1. Which of these three aspects is most important depends on nature of goods in question a)

Aural 1) First syllable most important a. Where first syllables identical, often similarity

1. Jose Alejandro v OHIM [2003] ('budmen' similar to 'bud') b. if first syllables different, not likely to be similarity

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