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LPC Law Notes Commercial and IP Notes

Rights Protecting Brands Notes

Updated Rights Protecting Brands Notes

Commercial and IP Notes

Commercial and IP

Approximately 100 pages

A collection of the best LPC Commercial and IP notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through twenty-nine LPC samples from outstanding students with the highest results in England and carefully evaluating each on accuracy, formatting, logical structure, spelling/grammar, conciseness and "wow-factor".

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Rights protecting brands - Trademarks and Passing off

Right

Trademarks

Sources

3 x systems: UK, EU, International

Admin of Register: IPO

Statutory: Trade Marks Act 1996 (‘TMA’), EU Legislation

What is a TM?

  • badge of origin

  • Offers distinctiveness - distinguishes trader from his competitors

  • Monopoly right

  • Elements of TM registration:

  • representation of mark itself and

  • specific of goods and services in relation to which the owner has exclusive rights to use the mark

Stage 1 - Registrability

Overview

  1. s.1 TMA - does mark fall w/in definition [see above]

  2. S.3 TMA - are there absolute grounds for refusal? [see below]

  3. S.5 TMA - relative grounds for an existing TM owner to object to registration of mark? [see below]

S.1(1)

S.1(1) 3 part definition

  • a sign, which is

  • Capable of being represented graphically and

  • Capable of distinguishing goods or services of one undertaking from those of other undertakings

Sign =

An easy hurdle to clear.

Second para of s.1(1) gives examples

Capable of being represented graphically =

 CJEU has held such a representation must be ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’

Capable of distinguishing goods =

  • Any signs can be distinctive naturally or by nurture (ie distinctiveness via use)

  • No real difference between capability of distinguishing and distinctiveness

S.3 absolute grounds for refusal

  • s.3(1)(a) compliance w/s.1 - mark must fall w/in that stat definition

  • S.3(1)(b)(c) and (d) [objections not mutually exclusive, any 1/more than 1 can be proved]

  • S.3(1)(b) devoid of any distinctive character the more striking and fanciful the mark, the more likely it will not fall @ this hurdle

  • S.3(1)(c) descriptive marks if a mark consists exclusively of a sign indicating type of goods and/or services it will not be registered. Q is whether the mark can be read as having a descriptive meaning which is not its only meaning. Eg doublemint not allowed

  • S.3(1)(d) customary in the language or practices of trade q of fact, needs to be some evidence. Eg not being able to register green for a type of mint as is commonly used

  • Proviso to s.3(1) applies to (b)(c) and (d), effect is to save marks which are distinctive thr/time as a result of its use as a TM ie acquired distinctiveness. IPO must be persuaded that

  1. mark is used as a TM (not as eg a decorative or descriptive feature)

  2. Consequence of such use if that public has learned ot read it as a TM (and not just as eg simple deco)

  • s.3(2) additional hurdle for shape marks 3D mark must not simply consist of shape resulting from nature of goods or a shape which is necessary to obtain a technical effect/result or gives substantial value to goods

  • S.3(3) public policy, morality, deceptiveness

  • S.3(6) applications made in bad faith

Applying s.3

Think about s.3 before advising a client who is making a new mark.

If client already has a weak mark:

  • is evidence of acquired distinctiveness available; and/or

  • Could client give its existing mark a slightly different and more distinctive form eg. By incorporating an extra name or adding visual mark

S.5 - Relative grounds for refusal

Section

Factor

Compare mark applied for (the sign) against already registered

Compare goods/services applied for against already registered

5(1)

 Double identity Identical Identical

5(2)(a)

 Likelihood of confusion Identical Similar

5(2)(b)

 Likelihood of confusion Similar Identical/similar

5(3)

 Reputation in UK and unfair advantage or detriment Identical/similar -

5(4)

 Earlier unreg’d right (eg in passing off) “ Varies - not always applicable (depending on nature of earlier right)

Notes

S.5(2) is a global test, not a step-by-step one. Correct approach is to address all 3 factors systematically, but recognise they are interdependent and take into account all facts and circumstances on a case-by-case basis.

S.5(3) is basically for famous marks and applies where sign is used w/o due cause and one or more of the 3 specified consequences may follow:

  1. ‘blurring’ of famous mark

  2. ‘tarnishing’ of famous mark

  3. ‘freeloading’ - taking unfair advantage of famous mark’s goodwill

Advantages of registration

  • r’ion gives notice of rights to world - warns others off

  • Reg’d TM infringement easy to prove (don’t have to establish your right other than Reg’ion cert)

  • EU wide protection available via TM reg’ion (even if you’re not using you mark you know you have 5 yrs to bring your use)

  • Not expensive to obtain reg’ion

Duration ss.42 and 43

  • can be indefinite but must be renewed every 10 yrs

  • Property rights ss.2, 9 and 22 - once reg’d TM is property right of owner. Can be assigned and security can be granted over it

Revocation and invalidity - ss.46 and 47

  • can be revoked if hasn’t been used for continuous 5 yr period

  • Also if owner has let it become generic

  • Can be invalidated if it is proved it should have been reg’d in 1st place

Stage 2 - Infringement

Ss.9 and 10(4)

S.10(4) lists infringing acts - non-exhaustive list

S.9(1) tm must be used w/o owner’s consent to be infringement

Stage 3 Comparison

Compare

 Cl’s mark/spec as registered against D’s mark/goods as used

Section

Infringing act

Other factor(s)

Marks

Goods/services

10(1)

 Use in course of trade - Identical Identical

10(2)(a)

 Use in course of trade Confusion likely identical Similar

10(2)(b)

 Use in course of trade Confusion likely Similar Identical/similar

10(3)

 Use in course of trade Reputation in UK and detriment or unfair advantage Identical/similar -

The court will form its own view as to whether or not there is a likely hood of confusion on behalf of the customer. There is no need to prove consumers have actually been confused but obvi it helps if such evidence exists.

Stages 4 and 5

Defences

Stat in s.11:

  • S.11(1) bona fide use of D’s own name/address

  • S.11(2)(b) use of a mark simply as an indication of characteristics of goods or services eg ‘BABY-DRY’ TM...

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