This is an extract of our Tm Infringements document, which we sell as part of our Intellectual Property Law Notes collection written by the top tier of Cambridge And Oxilp And College Of Law students.
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Section 9 TMA - TM are exclusive rights, infringed by w/in UK without his consent
Use of the Senior Mark
L'Oreal v Ebay - Operator of online marketplace does not 'use' signs appearing on its website when its customers sell goods bearing the mark
Cosmetic Warriors v Amazon - When an online marketplace uses senior marks (lush bath bombs) as keywords to promote goods sold through its online platform (their own amazon bath bombs), then online marketplace 'uses' these marks.
Use in Course of Trade - Arsenal v Reed - "take place in the context of commercial activity with a view to economic advantage and not as a private matter"
In relation to Goods/ Services
A link must be made between mark used and the other goods/ services offered by the third party. Such link exists when the mark is used by a third party to distinguish its own products/
services in some way:
o E.g. comparative advertising: distinguishing one's own products by comparing their characteristics
E.g. keyword advertising: distinguishing one's own products as alternatives of the goods marketed by the trade mark proprietor
Section 10(1) TMA - identical goods in identical sector
Celine - In order for a junior use to constitute an infringing use:
Plaintiff's mark must be 'used' by defendant
In the course of trade
Without Plaintiff's consent
In related to goods/ services
Use must affect or be liable to affect the essential function of TM (origin of goods) - but has been extended by L'Oréal v Bellure
Hoelterhoff - if one applies double identity literally the exclusion rights would be too broad and harm competition. Proprietor entitled to only protect those who use the TM
and not those who offer it only for reference points.
Adam Opel v Autec - scale model toy manufacturers using the Opel logo. Strictness of double identity can lead to undesired results. Have to look at whether there was damage to the TM. Scale model toys are there for many toys without these companies having to do with those companies. Public would not be confused or think there was an economic link between the two.
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