Trademarks - Trademark revision notes PDF

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Trademarks: Revision Notes:Rights conferred by a registered TMs. 9 TMA - exclusive rights conferred by a registered TM - effectfrom the date of registration (s. 40(3));s. 42 TMA - registration valid for 10 years since the date ofregistrations. 43 TMA - may be renewed for additional period of 10 y...

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Trademarks: Revision Notes:

Rights conferred by a registered TM  s. 9 TMA - exclusive rights conferred by a registered TM - effect from the date of registration (s. 40(3));  s. 42 TMA - registration valid for 10 years since the date of registration  s. 43 TMA - may be renewed for additional period of 10 years (indefinitely)  Caveat - the TM proprietor is under the duty to put its TM to genuine use (see revocation rules - s. 49 TMA)

3 requirements for a trademark: s1(1) TA 1994: In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. 1. The mark must be a sign, o Simple word marks (.e Rolls Royce and Tesco) o Phrases that have been registered include: Red Bull gives you wings. o Numbers, personal names and shape of packaging and goods. o Gestures – Asda arse slap. o Colours, sounds and smells o Not every sign will pass this hurdle – ECJ in Dyson v Registrar of Trade marks: Dyson case - a sign? (must be specific and unique) “The subject matter of the application in the main proceedings is capable of taking on a multitude of different appearances and is thus not specific.” [37] thus no trade mark – In relation to a transparent bin on a vacuum cleaner 2. The mark must be capable of being represented graphically, o General rule: to be capable of graphical representation the sign must pass the Seickmann 7:  

“[A] Trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is (1) clear, (2) precise, (3) self-contained, (4) easily accessible, (5) intelligible, (6) durable and objective.” Smells: Sieckmann case  Scent mark not registered for failure to meet the graphical representation requirement;  The scent represented by a chemical formula, described by words “balsamically fruity with a slight hint of cinnamon” and with a sample on the registration does not meet the criteria listed in this case.  John Lewis of Hungerford Ltd's Trade Mark Application (cinnamon smelling furniture)  Held: electronic representations of smell (electronic nose) not sufficient.  Chemical formula is not sufficient, and company wouldn’t disclose this info anyway.  Issues with trade marking smells: o Finding a descriptive phrase to describe smells accurately. o Subjectivity – people smell different things. Sounds: - Shield Mark case –  Sounds in principle registrable – but must meet the Sieckmann criteria;  C-283/01 Shield Mark BV v Joost Kist HODN Memex [2004] ETMR 33; 

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“Kukelekuuuuu” = Onomatopoeia – lack of consistency between way it is written and the actual sound; varies depending on where you come from Requirements were not met where the sound sign was represented by means of; a description such as the notes making up a musical works, an indication that it was the cry of an animal, a simple onomatopoeia and sequence of musical notes. However requirements were satisfied where the sign was represented by a stave divided into measures. - musical notes on musical lines.

Colours: Libertel: Colours in principle registrable – but must meet the Sieckmann criteria;  Libertel v Benelux Merkenburea (colour orange: sample and word ‘orange’ for telecommunication services)  No problem with its being graphic, but there is a problem with objectivity and durability.  Held – colour can have distinctive character within the meaning of Article 3. However, also had to satisfy the Seickman 7 test. Which in this was not satisfied.  Thus a sample itself is not durable, thus fails Seickmann 7.  Requirements to be registerable: Colour sample + description in words + internationally recognised colour code (Pantone number) likely to satisfy Seickmann 7.  Hiedelberger Bauchemie GmbH – registerability of two colours (blue and yellow) for a range of building products, like paint. But relationship between two colours was left undefined.  The mere juxtaposition of two or more colours without shape or contours or a reference to two or more colours ‘in every concievable form’ does not exhibit the [necessary] qualities of precision and uniformity.  However, colour combination without contours can be a trademark where:  In the context they are used, colours and combinations thereof represent a sign  Application for registration incudes a systematic arrangement associating the colours concerned in a predetermined and uniformed way. o Taste:  Eli-Lilly & Co Community Trademark application: artificial strawberry flavour used in pharmaceutical products. Refused on the grounds that it didn't meet the criteria for graphic representation (Seickmann 7). Also thought that consumers likely to see the taste as a means to disguise the unpleasant flavour a medicine rather than a trademark.  Unclear whether taste will give rise to a trademark. 3. The mark must be capable of distinguishing goods or services of one undertaking from those of another. o

Grounds for Refusal/Infringement: Absolute Grounds: Section 3 UK TM Act:  

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TMs that do not meet the definition of TMs (s. 3(1)(a)) Deficiencies in the distinctive character – can be saved under proviso (s. 3(1));  s. 3(1) 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. Functionality bars – shapes only (s. 3(2)) [reform] Immoral and misleading marks (s. 3(3)) Applications in bad faith (s. 3(6))

Section 3(1) Absolute Grounds: UK TM Act (the following shall not be registered) a) Signs which do not satisfy the requirements of section 1(1), a. E.g. Dyson b) Trade marks which are devoid of any distinctive character, a. Phillips electronics v Remington (ECJ): if a mark is distinctive by nature or nurture it must be capable of distinguishing goods and services. b. But can acquire distinctive character through use. c. (non-distinctive mark) 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, a. (a descriptive mark) b. C-191/01 P OHIM v Wrigley Junior Co (DOUBLEMINT); c. s. 3(1)(c) pursues an aim which is in the public interest, namely that descriptive signs or indications relating to the characteristics of goods or services in respect of which registration is sought may be freely used by all; d. Sign doesn’t need to be used descriptively at time of application to be barred enough if it could be used descriptively; e. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services concerned i.e., mark is descriptive if any of its meanings are descriptive (must consider future use as well). 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. a. (customary mark) BUT if the sign has obtained a distinctive character through use, before the application date then it can be a valid trademark.  Basic Rules distinctive character through use? o Always assessed against the goods/services the registration applied for; o Always assessed through the eyes of the average consumer (who is reasonably well-informed, reasonably observant, circumspect - Lloyd Schufabrik (C-342/97) [27])

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Can be saved for registration, if there is evidence of acquired distinctiveness (test in Windsurfing Chiemsee (C-108/97) [51]).: (sufficiently well-known sign in their market, but not customary)  the market share held by the mark;  how intensive, geographically widespread and long-standing use of the mark has been;  the amount invested by the undertaking in promoting the mark;  the proportion of the relevant class of persons who, because of the mark, identify goods as originating from a particular undertaking;  and statements from chambers of commerce and industry or other trade and professional associations  Examples of acquiring distinctiveness:  

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C-383/99 P Procter & Gamble Company v OHIM (BABY DRY) (BABY-DRY FOR NAPPIES) Not descriptive (i.e. it is inherently distinctive) because “Baby-Dry” is a syntactically unusual juxtaposition average English-speaking consumer wouldn’t view this as a normal way of referring to the goods or of representing their essential characteristics in common parlance. Gives rise to distinctiveness Slogans: o

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Registrable in principle, but may be harder to establish distinctiveness as a matter of fact for advertising slogans because consumers not used to making assumptions about origin from slogans and may view it merely as commending qualities of the product | No need for imagination /originality. ECJ has fond certain slogans to be registerable – Audi v OHIM – Vorsprung durchtechnik – slogan registerable. The fact a slogan has a number of meanings or constitutes a play on words or is seen as imaginative or expected can easily be remembered. Thus, it can have a distinctive character. Can be tested for acquired distinctiveness – Nestle v Mars (C-353/03) – “Have a Break” (acquired distinctiveness when used with “Have a Kit Kat”)

s. 3(2) Absolute Grounds: A sign shall not be registered as a trade mark if it consists exclusively of (applies even though mark acquires distinctiveness through use Functionality bars apply to shapes, and other characteristics - Article 4 TM Directive 2015/2436) a) the shape which results from the nature of the goods themselves, I. eg. Cant register a spoon as a trademark as it is part of its nature to resemble that shape. II. Hauck v Stokke (Tripp Trapp chair)]:

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Public interest in excluding the registration of shapes with essential characteristics which are inherent to the generic function or functions of the relevant goods. i.e stopping companies making a good/safe chair for babies is bad and monopolises the market. b) the shape of goods which is necessary to obtain a technical result, or I. Phillips electronics v Remington i. Philips registered a trademark for their three-headed rotary electric shaver. Cannot register a functionality aspect of a shape, because it would inhibit competitiveness and future developments in the market. ii. Signs performing a technical function should be freely used by all and not end up being reserved to one undertaking alone because they have been registered as trade marks iii.

Perpetual Patents – patent ends, thus trademark renewed every 10 years. This isn’t allowed. II. Lego v OHIM: i. Essential feature of lego was necessary to achieve a technical result (i.e. stacking of toy blocks) thus not protectable. c) the shape which gives substantial value to the goods. I. Example case: T-508/08 Bang & Olufsen v OHIM: Result = independently of the other i. characteristics of the goods at issue, the shape in respect of which registration was sought gives substantial value to the goods concerned [76]; a) Designer speakers will be an important element for the consumer. Increases the appeal of the product at issue that is to say its value. Thus, invalid II. Aesthetically appealing shapes III. Conflict with design rights IV. Again limited terms

s.3(3) TA 1994: Public Policy and Morality – Absolute Grounds of Refusal): s.3(3) TMA

1994: mark will not be registered if it is contrary to public policy and accepted principles of morality, or of such a nature to deceive the public.  Basic Trademark SA Trademark application – refusal to register the word JESUS – any objection on the grounds of public policy must relate to the intrinsic qualities of the mark, not to personal qualities of the applicant. Mere offence to the public is not enough either.  Deceptive marks: marks that suggest goods are made from material X, but are in fact made from material Y will be deceptive. o Orlwoola [1909] - application to register ‘Orlwoola’ for goods made from wool, where the goods are not in fact made from wool was rejected.  Application made in bad faith: (always refused) o Growmax Plasticulture v Don & Lowe Non-woven (Lindsay J): includes dishonesty, dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced people in the particular area being examined.  e.g. attempting to register a mark for where the applicant knows there is a competing claim, applicant is an employee, where there is an agreement to the contrary, application to register a trademark based on older trademark, which still has residual goodwill.  Harrison v Teton Valley (China white): nightclub discussed making a cocktail with China White as the name, Harrison attempted to register the name before the nightclub. Hence application was in bad faith.

Relative Grounds for Refusal: Relative Grounds of refusal  s. 5 TMA: (1) Double identity (2) Likelihood of confusion (3) Marks with reputation (dilution & unfair advantage) (4) Existing earlier rights (includes passing off)  Apparent symmetry with infringement actions (s. 10 TMA). Symmetry to Infringement  Tests of relative grounds (s. 5 TMA) and infringement (s. 10 TMA) are symmetrical;  Cases from both areas can be used by analogy;  But: relative grounds examined at the stage of registration (owner of an already registered TM will oppose to an application for TM registration based on relative grounds): compare registered TM with mark applied for;  At the stage of infringement we compare an earlier registered TM with the Defendant’s sign (used in the market) Infringement  S. 10 TMA (= exclusive rights conferred by a registered TM): (1) Double identity; (2) Likelihood of confusion; (3) Marks with reputation.  Infringement = engagement with exclusive rights without TM proprietor’s prior consent.  Basic Rules:  All infringement actions are to be assessed with the use of a global appreciation/assessment test;  All assessments in TM infringement cases are to be done through the eyes of the average consumer [who is reasonably well informed, reasonably observant and circumspect [Gut Springenheide ECJ [1998] ECRI-4657 (consumer protection case) – now well accepted in TM cases – i.e. Lloyd Schuhfabrik (C-342/97) [27]]

Relative Ground 1) Double Identity 

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s. 10(1) TMA: o A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered. Identical sign (defendant’s)/mark (claimant’s) Identical goods/services Tom owns Tom’s Tennis Rackets for providing tennis rackets and sells in Guildford Connor rocks up with identical name/sign of Tom’s Tennis Rackets providing identical service (selling rackets) o This is double identity infringement Examples: o Identity of Sign/Mark?  C-291/00 LTJ Diffusion v SADAS  ARTHUR (clothing) v ARTHUR ET FELICIE (clothing) – was is an identical sign?  “There is [] identity between the sign and the trade mark where the former reproduces, without any modification or addition, all the elements constituting the latter.”  Or where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer.” [54]  Idenitcal really means indeintcal  SHOCK HORROR  MIND = BLOWN o Identity of goods/services?  Reed Executive v Reed Business Information [2004] ETMR 56  Both were advertising employment services  No “identical sign” (because words added; LTJ Diffusion applied) - but signs similar; o However no infringement/double identity because TM’d word REED was used by RBI in conjunction with other words

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Double Identity I: Arsenal

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Arsenal Football Club Plc v Reed (C-206/01; 2002); D = operated a stall outside C’s stadium, selling “unofficial goods” bearing C’s trade marks (logos); with a notice stating that goods were not official club products In the end, no passing off, but there was TM infringement … Arsenal - essential function of TMs

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“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 […] 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” [48]  There will be double identity infringement if, …  “a third party's use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods.” [51]

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Double Identity II: Adam Opel

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Adam Opel AG v Autec AG (C-48/05, 2007)  OPEL LOGO (cars, toy cars) v D’s use of the logo on toy cars  The test = this use can be stopped, if it affects one of the functions of the trade mark;  “If, […] the relevant public does not perceive the sign identical to the Opel logo appearing on the scale models marketed by Autec as an indication that those products come from Adam Opel or an undertaking economically linked to it, it would have to conclude that the use at issue in the main proceedings does not affect the essential function of the Opel logo as a trade mark registered for toys.”  

The German court found no infringement. Consumers know that car labels are used on toy cars often and are not necessarily not likely affiliated with official car manufacturer

Relative Ground 2) Likelihood of Confusion  

s. 10(2) TMA A person infringes a registered trade mark if he uses in the course of trade a sign where because  The sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or  The sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,  There exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.

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Likelihood of Confusion Test;  Global appreciation test  Sabel v Puma (C-251/95, 1997) – Puma vs Pudel  Both parties in dispute used “logos of jumping cats”  The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case.” [22] 

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Through the eyes of the Average Consumer;  Reasonably well informed, reasonably observant and circumspect Lloyd Schuhfabrik (C-342/97) [27];  Has imperfect recollection;  Does not have the benefit of comparing trade marks side by side. Identity/similarity of sign (D’s) and TM (C’s) and (interdependence between 3 & 4)  Comparing (Sabel v Puma [23]):  Visual  Aural and  Conceptual similarity of marks. o Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] FSR 39 o 2 pigeons. o Even though clear differences between the two marks an average consumer would still be confused o Although there were many “bird” logo marks in the market already,

“None adorned with human accessories like the top hat, scarf and cane of Mr Wills” (Arnold J [50]) o Thus INFRINGMENET  Must be based on the overall impression of the marks; bearing in mind TM's distinctive and dominant elements; Identity/similarity of goods/services;  Canon Kabushiki Kais...