A more recent version of these Unit 3 – Trade Marks notes – written by Cambridge And Oxilp And College Of Law students – is available here.
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Unit 3 - Consolidation IP - TRADE MARKS MS = member state What is protected?
A brand name and/or a logo or goods or services (also, in limited circumstances, shapes) What is the benefit of protection?
Exclusive right to the use of the trade mark with statutory protection
How is it obtained?
How long does it last?
TMA 1994 - implemented various EU Directives (TM rules almost identical through all MS - heavy harmonization) [more so than other rights]
What is it?
Consequen ces of registratio n
Registratio n system
- A badge/indication of trade origin of goods or services from a particular supplier TMA94 s.1 - "any sign capable of being represented graphically which is capable of distinguishing goods/services of one undertaking from those of others" Adv over passing off:
- Once registered, no need to prove goodwill or misrep
- Gives monopoly and exclusive right to use TM for which its registered
- TM is on register for anyone to see free of charge via IP office
- Can last indefinitely (in contrast to other IP rights) What can be registered?
- Anything that falls within definition above o Shapes and sounds (jingle for Direct line) o Picture (Alliance & Leicester registered a jester tapping the side of his nose) o Smells (been attempted - litigation over this point) Main functions of registered TM's: a) To indicate trade origin of goods/services with particular supplier - s.1 b) Indication of quality of product associated with that supplier c) Measure of ongoing and changing value of particular brand image d) Useful and commercially exploitable piece of property in itself Duration
- 10 year, renewable for subsequent 10 year periods
- Provided mark doesn't lose its ability to distinguish particular goods/services in question and is kept in use, can remain in registration Exclusive rights:
- S.9(1) - proprietor of registered TM has exclusive rights in the TM which are infringed by use of the TK in UK without his consent
- s.10/11 - sets out the infringing acts Other reasons: a) easier to sue for infringement of TM compared to passing off (initial presumption of validity and no need for C to prove rep of mark) b) You can register a TM before you start using it c) There is a public record (able to search existing names, warning others off) d) Dangers that somebody else will register
- TM has to be registered in relation to named goods/services, in that class(es) must be chosen Vienna agreement:
- Hierarchal system that divides all figurative elements into divisions and sections Adv - filing figurative elements of marks with ref to a single classification
system Only 28 contracting states
OUTCOME 1 - Analyse client's situation and decide whether it is appropriate to apply for registration of a TM Can the TM meet the statutory definition?
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: o Sounds = wavelength, musical notation, duration o 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. work mark "deliberately innovative" lacked distinctive character - Interactive Intelligence Inc's Registration
Absolute grounds for refusal
Anything that falls within definition is registered unless there are contrary grounds for refusing registration: s.3(1) - following shall not be registered: a) signs which don't satisfy requirements of s.1(1) b) TM devoid of distinctive character c) TM consist solely of signs or indications which designate kind/quality/quantity/purpose/value/geographical origin/time of production/rendering of services/other characteristics of goods/services d) TM which have become customary in current language or bona fida established trade practices
- TMs can be reg despite falling within bars to reg above if over time customers come to associate mark with product (for at least 5 years) Use of names as TMs: s.11(2) - any person entitled to use own personal business name and address BUT many names are common and can't be reg on their own - need a distinguishable feature
- Philips v Remington - ECJ approach: individual assessment of each case facts taking into account likely scope, area of use, range of products and likely customers of mark
- El Du Pont de Nemours v ST Dupont - even common names can acquire distinctiveness through use Aspects of the goods/services themselves within s.3(1)(c)
- This para strikes out TMs which consist exclusively of indications which are terms common in the trade
- If descriptive aspect combined with distinctive feature this is okay
- Signs only serving to describe the type of goods not okay
- Words of quality or value unregistrable by themselves "magic or supreme" Bostik v Henkel - hyper glue was allowed as hyper wasn't synonymous with super
- Proctor and Gamble v OHIM - baby dry was allowed despite being descriptive as it's an uncommon combination -> widening definition?
- DKV Deutsche Krankenversicherung v OHIM - "company line" too
generic Easynet Group v Easygroup IP - correct approach is an overall assessment of the composite expression as to whether it is descriptive or not. If it is not, it is distinctive and registrable
Marks suggesting geographical origin:
- Usually not registrable as TMs
- Windsurfing Chiemsee v Boots - geographical names have to be left available for other traders to use in future
- Geographical names not indicating origin are unregistrable as they are deceptive
- Objection for deceptiveness can't be overcome by any amount of use of mark
- Peek and Cloppenburg v OHIM - CTM's more relaxed approach for small geographical locations
- If not exclusively geographical then more likely to be registrable
- Collective marks registrable under s.49 and Sch1 - marks which show goods/services provided by member of particular trade association, distinguishing them from other organization/persons e.g. Melton Mowbray
- Certificate marks registrable under s.50 and Sch2 - to show highly descriptive characteristics of goods/services which would normally be caught by s.3(1)(c) e.g. woolmark for textiles and stilton for cheese
- Protected designs for origin (PDO) and protected geographical indications (PGI) protection or EU and WIPO appellations of origin at international level o Conzorzio del Prosciutto di Parma v Asda Stores - Parma ham protected by a PDO
- Art 7 Paris convention - requires signatories to accept for filing and to protect collective marks belonging to associations, even if such organizations do not possess industrial or commercial establishment s.3(2) - Possible to register for shape of goods/packaging as long as it doesn't consist exclusively of: a) shape which results from goods themselves b) shape of goods necessary to achieve technical result; or c) shape which gives substantial value to the goods
- High threshold as dangerous to allow monopoly on shapes
- Only shape that is a badge is likely to be able to be reg
- Must be distinctive, eye catching and memorable, and raise association with particular trade source
- s.3(1) - distinctiveness by use could apply to marks comprising in part by matters restricted by s.3(2), this is how coca cola bottle was reg a) Shape of goods themselves
- Philips v Remington - shape of razor head not reg as shape determined by technical function
- Purpose of s.3(2) - The shape of products is reg as a RDR if innovative. TM not appropriate
- Dyson v Reg of TM - infinitely variable shapes could not be graphically represented so as to constitute a distinctive TM, not a sign in first place. Easier to reg shape of package (cola bottle)
- Society des produits nestle v Unilever - shape of Vienetta resulted from nature of product itself so not reg b) Shape of goods which is necessary to achieve a technical function:
- As long as shape is important to the technical outcome, that is likely to prevent reg
c) Shape which gives substantial value to the goods:
- Shapes which make goods more valuable to user but which is protected by way neither of patent nor RDR is not registrable Public interest objections s.3(3) and bad faith apps s.3(6)Not registrable if contrary to public policy or morality (s.3(3)(a)), is likely to deceive (s.3(3)(b)) or is made in bad faith (s.3(6)
Likely to deceive:
- E.g. Otto Seligman for Registration of a Trade Mark - "instant dip" refused - some of the materials were not dips
- Phones4u v Phone4u.co.uk Internet - limitation - the use of a similar mark in different colours may not be deceptive Bad faith apps:
- Jules Rimet Cup v FA - claimant had acted in bad faith seeking to register "World Cup Willie" logo and words as TMs C knew here was valuable residual goodwill in UK for such a familiar mark
Evidence of use to overcome absolute grounds
Relative grounds for refusal
Public policy or morality:
- Ghazilian's Trade Mark Application - application to register "tiny penis" failed
- French Connection's Trade Mark Application - FCUK TM held valid
- Lack of distinctiveness can be overcome by publically recognized use - building up goodwill in the mark
- Applicant must establish rep ion UK by sending stat dec to TM registry giving evidence of advertising spend, turnover in the goods and length of time
- Length of time (informal) = 5 years
? For colours, must be a combination not a single shade, however in BP Amoco v John Kelly, a single colour registration was successful. The colour must have distinctive character
? For slogans, Society des Produits Nestle v Mars - long use and recognition of the mark (or even part of a slogan), in association with a registered TM can give necessary distinctiveness o The more curious and less related to the particular goods/services, the greater the likelihood of registration 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
- s.5(1) - both the mark and the goods/service s are identical to earlier TM
- s.5(2)(a) - mark is identical and goods/services similar to earlier TM
- s.5(2)(b) - mark is similar and goods/services identical to earlier TM
Advantage - nothing more needs t be established to prevent registration
AND there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with an earlier TM Show confusion likely - BOSS (see handout in folder) "Boss Bass" "Hi Spirits international limited"Doctrine of imperfect
s.5(3) - an earlier TM has built up a rep and the use of it would be taking unfair Adv of it or be detrimental to the rep Also (even dissimilar goods) Mark has a reputation in UK Use takes unfair advantage or detrimental to mark
s.5(4)(a) - if there is enough goodwill that a passing of action could be brought
recollection Identical goods = more likely to be confusion (and vice versa)
Pg. 235 (Night Nurse and Nit Nurse case)
Check earlier rights in passing off by doing common law search (telephone directories/journa ls) Starting point for relative grounds is to show an identical or similar pre-existing mark Identical
- Approach: court puts itself in position of reasonable, well informed, alert marks customer seeing the mark and having all the usual imperfections of recall of earlier marks
- Identical if - without much modification, the essential elements of the earlier mark are reproduced in the later one
- Difficulties arise where part of an earlier mark is used or the whole of an earlier mark is used in a larger composition o Doing the later would infringe the earlier mark as it has reproduced it in its entirety - Decon Labs v Fred Baker Scientific
- Stylising the word in a different way may still amount to using an identical mark Identical
- Same registration class is not enough goods/servi
- Need to have considerable similarity in terms of what they are as well as ces with respect to what customer expects to obtainTo avoid relative grounds for refusal conduct a TM search or instruct a TM agent Look for TM's in same type of goods/services (relevant classes)
Similarity of marksSimilarity of goods/servi ces-
Relative grounds, registration and specific examplesSabel v Puma - court should take overall impression of visual, aural and conceptual similarities of the marks (and scents/smells) If distinctive and dominant features of the prior reg mark are still discernible enough to lead to confusion in mind of customer and cause him to associate mark with different trade source it will be similar Alticor v Nutrigreen - Nutrilife not similar enough to Nutrilite because word was split onto different lines and linked by other graphic imagery (differences far outweighed similarities) 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 (what likely users might expect to find on offer under the reg TM) The closer the range and type of goods/services to be marketed under the new app, where they to be marketed, and the closer the marketing techniques used to those under existing reg, more likely to be similarity British Sugar v James Robertson - relevant factors for similarity o A comparison of the use, users and physical nature of the goods o The way in which the goods are sold; and o The extent to which the goods are competitive Tying to reg coca cola for "dissimilar goods" would be obtaining unfair adv of existing TM , potentially detrimental to existing TM s.5(3) Intel v Sihra - "Intel-Play" took unfair advantage of/detrimental to the existing mark "Intel" under s.5(3) Enterprise Rent-a-car v Eurodrive Car Rental - no likelihood for confusion for the TMs beginning with "E" under s.5(2)(b) S.5 relative grounds similar to s.10 for infringement
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