Intellectual Property Law Notes

Law

Infringement - Rights Conferred Development: Rights of TMOs have expanded to such an extent that it could be said that they now confer a form of quasi-copyright protection which protects traders rather than consumers. + Lemley: The 'death of common sense'.

Circumstances in which a mark may be infringed: Mirror relative grounds for refusal in s.5(1)-(3).

(i) (ii) (iii) (iv)

Double identity (s.10(1)); Marks identical, goods/services similar, and likelihood of confusion/association (s.10(2)(a)); Marks similar, and goods/services are either identical or similar, and confusion (s.10(2)(b)); Marks identical or similar, and registered TM has a reputation in UK, and use of D's mark would take unfair advantage of, or be detrimental to, distinctive character or reputation of unregistered TM (s.10(3)).

Two differences between action for infringement and relative grounds for refusal:

1. Need to identify D's mark (a task that in context of relative grounds for validity the applicant for the later mark carries out);LTJ Diffusion; Determining exactly what D's sign is can prove problematic. ECJ held s.10(1) only covers only identical reproduction of signs without addition or modification. Implied there was no doctrine of 'added matter' or 'ineffective addition'. Gives no guidance on how cts are meant to define parameters of D's mark.

2. To establish infringement it is necessary to show that the mark was 'used in the course of trade'.

1

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