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Trademark Infringement And Defences Notes

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INFRINGEMENT PROVISIONS Art 5(1) / s10(1)-(3)-

Same 3 categories as Art 4/s5 o Double identity o Confusing similarity o Dilution Similar analysis applies: must apply the global approach o Infringement more likely if the mark is more distinctive Difference: pre-ambulatory part o "A person infringes a registered trade mark if he uses in the course of trade ..."

USE OF A SIGN Non-exhaustive list in s10(4) / Art 5(3)Affixes it to the goods or packaging Offers goods for sale or puts them on the market under the sign Imports or exports under the sign Uses the sign on business papers or advertising

ARSENAL V REED [2002] ECR I-10273-D sold merchandise outside C's stadium, which carried C's trade marks o D's store had a notice stating that his goods were not 'official' merchandise o D argued that his use was not infringing as it was not trade mark use but was use as a badge of allegiance or loyalty CJEU: C can only prohibit use which can "affect his own interests as proprietor of the mark, having regard to its functions" o The notice is immaterial, since customers may come cross the goods away from the stall where the notice is and interpret the signs as designating C as the undertaking of origin of the goods NOTE (Sunroy and Badger): " trade mark use is not a necessary element of infringing use" CA (Aldous LJ): Affirmed the CJEU decision o "ECJ is not concerned with whether the use complained about is trade mark use" o The issue is whether it affects the "functions of the trade mark" o It is "immaterial that ... the sign is perceived as a badge of support for or loyalty or affiliation to the proprietor of trade" o In any case, D was using the marks as trade marks since some of his customers would understand them as denoting origin

IMPLICATION: Indication of origin is not the only function of the trade mark

LOUIS VUITTON V GOOGLE [2010] ECR I-2417Issue of keyword advertising: Was Google using trade marks by selling keywords to advertisers that consisted of these trade marks (AdWords service)?

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CJEU: Google was not using the trade marks by storing the keywords o Use "implies, at the very least, that that third party uses the sign in its own commercial communication", so the referencing service provider isn't using o Art 5(3) is a "non-exhaustive" list, especially since it was "drawn up before the full emergence of electronic commerce", which gives rise to different uses

L'OREAL V EBAY [2011] ECR I-6011D registered C's marks as keywords with Google, so that sponsored links directing users to its site appeared in searches C's marks also appeared on D's websites because they were displayed by sellers CJEU: Keyword advertising was use, but seller displays were not o Using keyword advertising is an infringement of Art 5(1) if it does not enable average internet users "to ascertain whether the goods concerned originate" from the proprietor or a 3rd party without difficulty o Use requires that the 3rd party "uses the sign in its own commercial communication"
? "enabling its customers to display on its website" the signs is NOT use

USE IN THE COURSE OF TRADE Arsenal v Reed [2002] ECR I-10273CJEU: Use in the course of trade must be "in the context of commercial activity with a view to economic advantage and not as a private matter"

Louis Vuitton v Google [2010] ECR I-2417CJEU: The advertisers were using the marks in the course of trade but Google wasn't o Since the keyword is the "means used to trigger the ad display ... the advertiser indeed uses it in the context of commercial activity and not as a private matter"

L'Oreal v eBay [2011] ECR I-6011CJEU: Individual sellers are not usually acting "in the context of a commercial activity" o If "owing to their volume, their frequency or other characteristics, the sales made on such a marketplace go beyond the realms of a private activity, the seller will be acting 'in the course of trade'"

USE IN RELATION TO GOODS OR SERVICES Louis Vuitton v Google [2010] ECR I-2417Comparative advertising or keyword advertising to offer goods/services is use in relation to the competitor's goods or services

alternative

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Use in relation to goods or services where the sign is used "in such a way that a link is established between that sign and the goods marketed or services provided"

Where does the use occur?
L'Oreal v eBay [2011] ECR I-6011CJEU: Use is within the UK even if the website and server are from a Third State, as long as it is "targeted at consumers within the EU" o For the national courts to determine this o "the mere fact that a website is accessible from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in that territory"

Affected by factors such as domain name, language, currency, delivery and follow up services

DOUBLE IDENTITY AND FUNCTIONS The reference to functions in Arsenal v Reed isn't limited to the indication of origin

L'OREAL V BELLURE [2009] ECR I-5185CJEU: Art 5(1)(a) prevents 3rd party use which "affects or is liable to affect the functions of the trade mark" o "These functions include not only the essential function ... which is to guarantee to consumers the origin ... but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising" o Proprietor cannot rely on Art 5(1)(a) "if that use is not liable to cause detriment to any of the functions of that mark"
? Wouldn't be "use" within the provision if not affecting any of these interests and "purely descriptive" o Infringement under Art 5(1)(b) requires confusion "and accordingly the possibility that the essential function of the mark may be affected"
? Art 5(1)(a) gives "broader" protection that that

LOUIS VUITTON V GOOGLE [2010] ECR I-2417CJEU: Origin function is "adversely affected if the ad does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor or an undertaking economically connected to it or, on the contrary, originate from a third party" o The use of the keyword to trigger the ad "is liable to create the impression that there is a material link in the course of trade" between the goods and C o If the ad suggests an economic link, there is an adverse effect on the origin function o Even if there is no economic link suggested, if reasonably attentive internet users cannot determine if the advertiser is a 3 rd party, there is adverse effect

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