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LPC Law Notes International Intellectual Property Notes

Unit 3 – Trade Marks Notes

Updated Unit 3 – Trade Marks Notes

International Intellectual Property Notes

International Intellectual Property

Approximately 135 pages

A collection of the best International Intellectual Property notes the director of Oxbridge Notes (an Oxford law graduate) could find after combing through dozens of 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". In short these are what we believe to be the strongest set of International Intellectual Property notes available in the UK this year. This...

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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? Registration
How long does it last? Indefinitely

TMA 1994 – implemented various EU Directives (TM rules almost identical through all MS – heavy harmonization) [more so than other rights]

What is it?

- 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

  • Shapes and sounds (jingle for Direct line)

  • Picture (Alliance & Leicester registered a jester tapping the side of his nose)

  • Smells (been attempted – litigation over this point)

Main functions of registered TM’s:

  1. To indicate trade origin of goods/services with particular supplier – s.1

  2. Indication of quality of product associated with that supplier

  3. Measure of ongoing and changing value of particular brand image

  4. Useful and commercially exploitable piece of property in itself
Advantages/ Consequences of registration

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:

  1. 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)

  2. You can register a TM before you start using it

  3. There is a public record (able to search existing names, warning others off)

  4. Dangers that somebody else will register
Registration system

  • 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:

  • 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. work 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:
Absolute grounds for refusal

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

  • ...

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