TM Case - Brief notes PDF

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Essential Function of trade mark Arsenal v Reed The essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality..’

Other functions of trade marks • guarantee of quality • communication function • investment function • advertising function (branding) – L’Oréal SA v Bellure NV

---------------------------------------------Absolute Grounds (Section 3) Section 3. UK TM Act 1994 (1) The following shall not be registered— (a) signs which do not satisfy the requirements of section 1(1) [Definition of a TM] (b) trade marks which are devoid of any distinctive character, (c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, [Descriptive] (d) trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade: [Customary/Generic/commonly used] Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it. (2) Shapes – special provisions (3) Contrary to Public Policy or Morality; or Deceptive (4) Prohibited by any enactment or rule of law or by EC law.

(5) Specially protected emblems (e.g. national flags). (6) If the application is made in bad faith.

What is a sign? Sign: Any symbol which is a carrier of meaning

Dyson Ltd v Registrar of Trade Marks Transparent bin is a property of the product, not a sign within the meaning of the Directive. Application relates to a non-specific subject matter which would result in unfair competitive advantage to Dyson.

Graphical Representation? (TMA 1994 Section 3(1)(a)) Olfactory mark (smell)-- Sieckmann Application of an olfactory mark, includes odour sample of the sign in a container, chemical formula and description in written words. No way to adequately represent a smell or taste. Not accessible by/ not certain to the public/competitors. Set out critieria to constitute GR: 1. 2. 3. 4. 5. 6. 7.

Clear Precise Self-contained Easily accessible Intelligible Durable Objective and unequivocal

Gustatory mark (taste)-- Eli Lilly & Co's Gustatory mark for the taste of strawberries in pharmaceutical products, also failed Sieckmann test. Sound mark -- Shield Mark

A tune written in musical notation was acceptable, but sequence of notes without indication of duration or reference to the name of the tune failed Sieckmann test. Colour mark Libertel (Single colour) Application for colour orange, drawn on the form but without reference to any colour code. Colour per se is not presumed a sign, but may constitute a sign depending on the context which it is used in. Verbal discription may not satisfy Sieckmann test, but with a ref to recognised colour-matching system (e.g. Pantone) may constitute GR. Heidelberger (Combination of colour) GR must include “a systematic arrangement associating the colours in a predetermined and uniformed way.” Nestle v Cadbury (Single colour + other material)  Application for a purple colour applied to the whole visible surface, or being the predominant colour applied to the whole visible surface of chocolate products  Nestle argument: registration of a shade of colour “plus” other material  Sign not graphically represented or verbally described in the specific, certain, self-contained and precise manner (per Sieckmann), against the principle of certainty  Give competitive advantage to Cadbury and disadvantages to competitors (following Dyson, non-specific subject mstter)

 Held: trademark for the purple used on the relevant goods (Libertel)

Article 4, EUTM Regulation 2015 Include colours and sound in addition to types of signs mentioned in TMA 1994

Devoid of distinctive character (TMA 1994 Section 3(1)(b))  Distictiveness is a factual question  Sign perform Essential Function (EF) of distingushing trade origin?  Inherent Distinctiveness (ID): e.g. apple for computer

 Acquired Distinctiveness (AD): intially not distinctive, acquired through actual use

Develey Sauce Bottle Distinctive character of a mark means the mark makes it possible to identify the origin of a product from an undertaking and distininguish it from those of other undertakings. DCEF

Distinctive Character Test Linde By reference to the g/s and the perception of relevant persons (i.e. “presumed expectations of an average consumer of that type of g/s, who is reasonably well-informed and observant and circumspect.”) Mag Instruments Average consumer perceives a mark as a whole, the overall impression must be considered to assess distinctive character.

Descriptiveness (TMA 1994 Section 3(1)(c))  Designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services (extirely descriptive) Postkantor Case & Biomild ECJ laid down test 1. Based on the g/s: a sign APPLE may be descriptive for apples but not for computers 2. Perception of relevant persons (same as distinctive character test in Linde) 3. Sign merely bringing descritptive elements together without any unusual variation  descriptive mark.  A sign is made up of two descriptive words (eg, 'bio' and 'mild') does not necessarily make the sign descriptive, but will tend to  Neologism comprised of descriptive elements not descriptive if there is a perceptible difference because the combination

creates an impression which is sufficiently far removed from that of a simple combination of those elements (visual and aural assessment). Baby-Dry Case  Although the word components discribe function of diapers, their “syntactically unusual juxtaposition” was uncommon in the English language, the mark was distinctive.

Doublemint Case Sign with more than one possible meaning, one of which being descriptive: a sign must be refused registration if at least one of its possible meanings designates a characteristic of the goods or services concerned.

Customary Mark (TMA 1994 Section 3(1)(d))  Customary in the current language or in the bona fide and established practices of the trade’ British Sugar plc “TREAT” for dessert sauces and syrup is commonly used

Acquired Distinctiveness Through Use (s3(1) proviso)  Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it. Windsurfing Chiemsee  Falls under Section 3(1)(C) – Geographical Origin.  “Chiemsee” for sports clothing.  Geographically descriptive marks are not unregistrable, if registrant can show that consumers associate the mark with the registrant’s products (distinctiveness) instead of geographical origin.

Nestle v Mars

 Nestlé owns the registered trade mark ‘Have a Break …Have a Kit Kat’. Later, Nestlé applied to register the phrase ‘Have a Break’ as a separate trade mark. Mars argued devoid of DC  ECJ: distinctive character could be acquired through use as part of, or in conjunction with, another mark.  5 Factors to determine AD: 1.market share 2.Scope and time in use 3. investment in advertising 4. consumer recognition 5.trade recognition

(Product) Shape Mark? (TMA 1994 Section 3(2)) a) Shape from the nature of the goods (e.g. spherical shape of footballs) b) Shape necessary to obtain technical result c) Shape giving substantial value to the goods

Technical result Philips v Remington The exclusivity in the mark would limit competitors’ freedom of choice regarding technical solution used to obtain a function in their products, even if that technical results can be achieved by other shapes. Lego Would result in a monopoly on technical solution. Substantial value B&O Shape increases the appeal of the goods and so its value. Held: Aesthetic element is a design law subject matter.

Contrary to Public Policy/Morality (TMA 1994 Section 3(3) (a)) Ghazilian‘s Application  In the shoes of the ‘right-thinking’ member of the public, trademark that would cause great offence to a significant section of the public should not be registered.

Decpetion (TMA 1994 Section 3(3)(b)) Elizabeth Emanuel  Even if the average consumer might be influenced by imagining that Elizabeth Emanuel was involved in the design of the goods, the characteristics and the qualities remain guaranteed.  The mark can not be regarded as to deceive the public as to the nature or quality of the product  Criticizm: Elizabeth Emanuel lost the use of her own name (WTF)

Special Protected Emblems (TMA 1994 Section 3(5)) Specially Protected Emblems (Section 4) Section 4. Specially protected emblems (1) A trade mark which consists of or contains— (a) the Royal arms, or any of the principal armorial bearings of the Royal arms, or any insignia or device so nearly resembling the Royal arms or any such armorial bearing as to be likely to be mistaken for them or it, (b) a representation of the Royal crown or any of the Royal flags, (c) a representation of Her Majesty or any member of the Royal family, or any colourable imitation thereof, or (d) words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation, shall not be registered unless it appears to the registrar that consent has been given by or on behalf of Her Majesty or, as the case may be, the relevant member of the Royal family. (2) A trade mark which consists of or contains a representation of— (a) the national flag of the United Kingdom (commonly known as the Union Jack), or (b) the flag of England, Wales, Scotland, Northern Ireland or the Isle of Man, shall not be registered if it appears to the registrar that the use of the trade mark would be misleading or grossly offensive. Provision may be made by rules identifying the flags to which paragraph (b) applies. (3) (4) (5) A trade mark which consists of or contains a controlled representation within the meaning of the Olympic Symbol etc. (Protection) Act 1995 shall not be registered unless it appears to the registrar— (a) that the application is made by the person for the time being appointed under section 1(2) of the Olympic Symbol etc. (Protection) Act 1995 (power of Secretary of State to appoint a person as the proprietor of the Olympics association right), or (b) that consent has been given by or on behalf of the person mentioned in paragraph (a) above.

Olympic (Section 4(5)) 7. Rights over the Olympic Games and Olympic properties

8. The Olympic symbol 9. The Olympic flag 10. The Olympic motto 11. Olympic emblems 12. The Olympic anthem 13. The Olympic flame, Olympic torches 14. Olympic designations

Bad Faith (TMA 1994 Section 3(6))  A trade mark shall not be registered if or to the extent that the application is made in bad faith. KNOWLEDGE! Twinsectra Ltd  Dishonesty requires knowledge by the defendant that what he was doing would be regarded as dishonest by honest people. Lindt 3 Factors in determining bad faith: 1. The applicant knows or must know that a third party is using an identical or similar sign for an identical or similar product capable of being confused with the applicant’s sign. 2. The applicant's intention is to prevent that third party from continuing to use such a sign. 3. The degree of legal protection enjoyed by the third party's sign and by the applicant’s sign.

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Relative Ground (Section 5) Section 5 Relative grounds for refusal of registration. (1)A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected. (Double Identity) (2)A trade mark shall not be registered if because—(a)it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or (b)it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. (Confusing Similarity) (3) A trade mark which— (a)is identical with or similar to an earlier trade mark, and (b)is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected, shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. (Dilution)

Earlier Trade Mark Meaning (Section 6) Section 6: ‘Earlier Trade Mark’ “(a)a registered trade mark, international trade mark (UK) or Community trade mark which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks, (b)a Community trade mark which has a valid claim to seniority from an earlier registered trade mark or international trade mark (UK), or (c)a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark.”

Relative Ground & Infringement RG & Infringement are related, “Relative Grounds” provision mirrors the “Infringement "provision: – Trade Mark Act: Section 5 ≈ Section 10

Section 5(1)/10(1): Double Identity    

Marks identical + G/S identical – Confusion is presumed – No need to prove likelihood of confusion – Restricted to ‘counterfeit’ g/s

LTJ Diffusion SA (Identical Marks)  Strict interpretation  “without any modification or addition or viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.”  Followed by Websphere TM Application Identical g/s

 RG: look at g/s in the application  Infringement: look at the use in the market

Section 5(2)/10(2): Confusing Similarity (a) Identical Marks + Similar G/S (b) Similar Marks + Identical/Similar G/S  Likelihood of Confusion Likelihood of confusion Test  Assessed from the point of an average consumer viewing the mark as a whole  Reasonably well informed  Reasonably observant and circumspect Sabel v Puma (Similar marks)  Confusion as to trade origin of the goods  Factors to consider in determining likelihood of confusion: 1. Visual (e.g. word mark), aural (important for word mark, e.g. rhythm) or conceptual similarity (important for figurative mark) 2. Distinctiveness of the earlier mark – the more distinctive, the more likelihood of confusion Canon v MGM (Similar G/S)  Factors to determine likelihood of confusion caused by similar G/S: (i) nature & compositionof g/s (ii) end users (iii) method of use (iv) in competition or complementary? (v) trade channels used to reach market

Section 5(3): Dilution  Identical/Similar Marks  Former trademark has a reputation  Without due cause, takes unfair advantage of detrimental to the DC or the repute of the earlier TM

 Identical/Similar Marks + Identical/Similar / Dissimilar G/S/+ Reputatuon + Advantage/Detriment  Dilution (no need to prove likelihood of confusion) (TMD 2015 Art 5(3)(a))

FI Schechter ‘The Rational Basis of Trademark Protection’  Preservation of the uniqueness of a trademark is the only rational basis for its protection  Harm of dilution lies in the gradual dispersion of identity General Motors v Yplon (Reputation)  Mark would have reputation where it was known by a significant part of the public concerned by the g/s covered by the trademark Davidoff (Dilution under TMD 2008 only covers dissimilar g/s, but Davidoff changed this)  Fact: Similar marks + similar products, but no likelihood of confusion on the fact (No Confusing Similarity)  Held: Dilution also covers identical/similar g/s  Mark with reputation must enjoy protection as at least as extensive as where a sign is used for dissmilar g/s (although not covered under TMD 2008. But now dilusion also covers identical/similar g/s after TMD 2015) Intel v CPM (Art 10(2)(c), TMD 2015; Rights conferred by TM)  Revocation claim based on RG of dilution  Dilution when the mark’s ability to identify the g/s is weakened (blurring)+ change in economic behaviour of average consumer  Change in economic behaviour of average consumer: assessed objectively, cannot be deduced solely by subjective elements e.g. consumer perceptions.  Change in economic behavious – pay less or buy fewer  detriment Loreal v Bellure (Unfair advantage in dilution)  Unfair advantage taken by exploitating the previous trademark’s reputation without paying financial compensation/own effort  All free-riding is unfair  Essential function: guarantee origin of g/s

 Non-essential function: guarantee quality, investment/advertising

--------------------------------------------Revocation of registration (Section 46(1)(c)) S46 (1) The registration of a trade mark may be revoked on any of the following grounds— (a) ... (b) ... (c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered; (d)......