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Law Notes Intellectual Property Law Notes

Trade Marks 2 Cases

Updated Trade Marks 2 Cases Notes

Intellectual Property Law Notes

Intellectual Property Law

Approximately 1014 pages

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).

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TRADE MARKS 2

Similarity of Goods

Muhlens v OHIM [2007]

Perfume and clothes are not similar.

Two different but complementary goods are only similar if one is “indispensable or important” for use of the other.

El Corte Ingles [2007] (CFI)

Bags and clothes are similar.

This is because they are sufficiently complementary to be regarded as similar.

Likelihood of Confusion

Ruiz-Picasso v OHIM [2006]

D sought to register French trade mark ‘Picaro’ in relation to vehicles; C, estate of Pablo Picasso, sought to block registration, on grounds that earlier TM ‘Picasso’ already existed in respect of vehicles – and that thus marks and goods were similar, and would cause confusion amongst relevant public. Held:

See notes.

Is true that members of public viewing D’s mark post-purchase would pay far less attention to it than purchaser (and therefore be likely to be confused)

However this does not mean there is confusion

Facts

Relative ground of refusal rejected

Two reasons:

  1. Nature of goods means that consumer will inspect them closely before buying

  • i.e. goods in question (cars) are highly technological

  • thus aural/visual differences are less important

  1. Conceptual differences outweigh aural and visual similarities between signs

  • Picasso is well known painter, whereas Picaro has no meaning outside Spain

  • Reputation of Picasso means consumers will inevitably think of him when looking car

Datacard v Eagle Technologies [2011] (English Case)

C (Datacard) was supplier of printers; owned trade mark ‘DATACARD’. D (Eagle Technologies) was seller of card printers. D used C’s trade mark on its website, and also on labels applied to packaging of printer products sold by D. C sued for infringement of trade mark. Held:

Was infringement under Article 5(1)(b)

On basis of ECJ authority, post-sale confusion suffices to show infringement.

Even if consumer is not confused about origin when purchasing goods on website, may be confused later upon delivery of products

i.e. consumer might not, when buying printer, have any belief at all that that printer is connected to Datacard

but when printer then arrives with ‘DATACARD’ on product label, consumer may only at that point form incorrect belief they are connected to Datacard

Protection of Non-Origin Function

When Does Provision Apply?

Davidoff v Gofkid [2003]

Question was referred to ECJ whether section 5(2) also applied where the good in respect of which earlier and later mark are registered are not similar or identical (despite the wording in Trade Mark Directive itself). Held:

Section also applies to protect reputation of an earlier mark where the later good or service is similar or identical to goods or service for which earlier mark was registered.

Would be bizarre if non-similar goods got wider protection than similar goods

32Red plc v WHG (International) [2011]

C ran online casino called ‘32Red’ which had high reputation. D created website called ‘32Vegas’ which was also an online casino. C sued for infringement. Held:

Is no need for direct evidence of change in economic behaviour as result of similarity.

Here, similarity between two marks mean consumers would be much more prepared to switch allegiance form 32Red to 32Vegas, or to play with 32Vegas in first place, than if there had been no similarity.

Thus there is change in economic behaviour.

Reputation

Hollywood Case [2002]

D sought to register mark ‘HOLLYWOOD’ for tobacco. C, owner of earlier identical mark in relation to chewing gum, opposed registration on grounds this would damage reputation of earlier mark. Held:

Registration of ‘HOLLYWOOD’ for tobacco would harm reputation of C’s trade mark.

I.e. manufacturer of confectionary does not want his products to be associated with those that cause death

Sheimer’s Trade Mark Application [2000]

C not permitted to use mark ‘VISA’ on condoms: this would reflect negatively on VISA card services

Interflora v Marks and Spencers [2011]

Google ran an ‘AdWords’ service, whereby economic operators could pay to have a link to their website com up in event that a certain keyword was entered into search bar. Under this service, advertiser could pay to have his advert featured more prominently upon search of keywords by paying a ‘maximum price per click’.

D, Marks and Spencer, paid to have a link to their flower delivery service come up when people entered term ‘Interflora’. C sued for infringement of its trademark. Relevant issues were whether D’s actions constituted infringement under Article 5(2) of Trade Mark Directive. Held:

Detriment to Distinctive Character

Use of sign identical/similar to an earlier trade mark is detrimental to distinctive character where it turns that mark into a generic term.

However use of sign identical/similar to trade mark in keyword search does not necessarily make that term generic

i.e. provided that average internet user looking at the advert realises that goods being advertised do not originate from trade mark owner, distinctiveness of trade mark has not been reduced

Unfair Advantage

See notes

L’Oreal v Bellure [2007-2011]

D produced 3 “smell-a-likes” of 3 perfumes made by C (L’Oreal). The names of each of the perfumes imitated was protected by a trade mark. C claimed that its trade marks relating to the 3 perfumes were infringed by:

  1. D’s packaging, which sought to imitate that of C; however this claim dropped.

  2. “Comparison lists” used by D (i.e. lists on the back of packages indicating which of D’s perfumes smelled like which of C’s)

  • E.g. “Stitch No 7 smells like Trésor”

Held:

ECJ (2009):

Article 5(1)(a)

See notes.

Facts

In present case, use of trade mark was not descriptive (as in Arsenal FC)

Rather it was for comparative purposes

Thus was used for purpose of advertising

Court of Appeal (2010):

Jacobs LJ

Article 5(1)(a)

“I have real difficulty” in dealing with the communication/advertisement/investment functions

Is nothing in legislation about them

Are conceptually vague and ill-defined

Appears to be that any comparative...

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