Trade Marks Notes

IP RIGHTS AVAILABLE

STEP 1: WHAT ARE THE BASIC REQUIREMENTS FOR A TRADE MARK?

Statutory Definition: TMA94 s1(1) – “any sign capable of being represented graphically which is capable of distinguishing goods/services of one undertaking from those of others”

Can the sign be graphically represented?

• TM rules requirements – sign must be capable of being clearly reproduced on 8cmx8cm square in TM journal

• Problematic but not impossible for certain distinctive features:

• Sounds = wavelength, musical notation, duration

• Smells = difficult, formula doesn’t evoke scent (insufficient). Ideally require a sample (L’Oreal v Bellure)

Can sign distinguish the goods/services of the applicant from those of other undertakings?

• Mark as a whole needs to be distinctive, rather than particular features within it

• E.g. word mark “deliberately innovative” lacked distinctive character – Interactive Intelligence Inc’s Registration

Anything that falls within definition is registered unless there are contrary grounds for refusing registration:

WHY RIGHTS AVAILABLE

STEP 2: WHAT ARE THE ABSOLUTE GROUNDS OF REFUSAL – NATURE OF THE MARK

s.3(1) – following shall not be registered:

1. Signs which don’t satisfy requirements of s1(1) (see above)

2. TM devoid of distinctive character

3. TM that consists solely of signs or indications which designate kind, quality, quantity, purpose, value, geographical origin, time of production or of rendering of services, other characteristics of goods/services

4. TM which have become customary in current language or bona fide established trade practices

TM can be registered despite falling within bars of (b), (c), and (d) above, if over time customers come to associate mark with product (for at least 5 years (Trade Mark Guidelines), and distinctiveness has therefore been acquired.

APPLY TO FACTS

STEP 3: WHAT ARE THE RELEVANT GROUNDS FOR REFUSAL

s.5 – A conflict with an existing registered TM belonging to someone else, which is identical or similar to one(s) being applies for.

Likely that C will bring multiple grounds hoping that one will stick.

1. IDENTICAL Trade Mark and IDENTICAL Goods/Services (s5(1) TMA 1996)

Advantage – nothing more needs to be established to prevent registration.

Identical Trade Mark

Court puts itself in the position of a reasonable, well-informed and alert customer seeing the trade mark and having all the usual imperfections of recall of earlier trade marks. It will be identical if without much modification, the essential elements of the earlier trade mark are reproduced in the latter one.

Identical Goods/Services

Goods falling within the same registration class (p261) is not enough to establish identical goods or services. There also needs to be a considerable similarity in terms of what the goods or services are in their essence, as well as with respect to what customer expects to obtain from such goods or services.

2. IDENTICAL Trade Mark and SIMILAR Goods/Services (s5(2)(a) TMA 1996)

Identical Trade Mark

Court puts itself in the position of a reasonable, well-informed and alert customer seeing the trade mark and having all the usual imperfections of recall of earlier trade marks. It will be identical if without much modification, the essential elements of the earlier trade mark are reproduced in the latter one.

Similar Goods/Services

There must be a demonstrable confusion and wrong association of the trade source of the goods/services to be marketed under the sign for which registration is sought – essentially, what the users might expect to find on offer under the registered trade mark.

The test for similar goods and services is contained within British Sugar v James Robertson.

Likelihood of confusion

There must also exist a likelihood of confusion on the part of the public, which includes the likelihood of association with an earlier trade mark.

The test for confusion is contained within BOSS v BASS.

3. SIMILAR Trade Mark and IDENTICAL/SIMILAR Goods/Services (s5(2)(b) TMA 1996)

Similar Trade Mark

The approach the court takes is to consider the overall impression of the visual, aural and conceptual similarities of the mark (Sabel v Puma). If the distinctive and dominant features of the prior registered mark are still discernible enough to lead to confusion in the mind of the customer, causing them to associate the mark with a different trade source, the trade mark will be regarded as similar.

The test for similar trade marks is contained within BOSS v BASS.

Identical Goods/Services

Goods falling within the same registration class (p261) is not enough to establish identical goods or services. There also needs to be a considerable similarity in terms of what the goods or services are in their essence, as well as with respect to what customer expects to obtain from such goods or services.

Similar Goods/Services

There must be a demonstrable confusion and wrong association of the trade source of the goods/services to be marketed under the sign for which registration is sought – essentially, what the users might expect to find on offer under the registered trade mark.

The test for similar goods and services is contained within British Sugar v James Robertson.

Likelihood of confusion

There must also exist a likelihood of confusion on the part of the public, which includes the likelihood of association with an earlier trade mark.

The test for confusion is contained within BOSS v BASS.

4. Taking UNFAIR ADVANTAGE of earlier trade mark’s reputation (s5(3) TMA 1996)

Where a trade mark is identical/similar and goods are identical/similar/dissimilar and the earlier trade mark has built up a reputation in the UK (or in the case of a Community trade mark, the EU) and the use of it would be taking unfair advantage of it or be detrimental to its reputation.

5. If there is GOODWILL then a passing off action could be brought

Check earlier rights in passing off by doing a common law search (telephone directories/journals).

Buy the full version of these notes or essay plans and more in our International Intellectual Property Notes.