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Trade Marks 2 Cases

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TRADE MARKS 2 Similarity of Goods Muhlens v OHIM [2007]

1. Perfume and clothes are not similar.

2. Two different but complementary goods are only similar if one is "indispensable or important" for use of the other. El Corte Ingles [2007] (CFI)

1. Bags and clothes are similar.

2. 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:

1. See notes.

2. 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)

1. However this does not mean there is confusion Facts

1. Relative ground of refusal rejected

2. 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 2) 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:

1. Was infringement under Article 5(1)(b)

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

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

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

2. 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:

1. 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.

2. 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:

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

2. 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.

3. Thus there is change in economic behaviour. Reputation Hollywood Case [2002]

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