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TRADE MARKS
Trade marks are a diverse and familiar feature in both industrial and commercial markets and have long been used by
manufacturers and traders to identify their goods and distinguish them from goods made and sold by others.
As with the other areas of intellectual property, the purpose of legal intervention is to protect information. However,
while design law protects the appearance, and patent law protects the functioning, of a product, trade marks and
service marks act principally as identification symbols (words, devices, etc.), which, generally speaking, are used in the
course of trade.
There are three essential roles played by trade and service marks:
 to indicate the connection between a trader and his goods or services (the ‘origin’ function) – corollary
principle: a TM must be used or intended to be used;
 to indicate the qualities of the goods or services (the ‘quality’ function) – protect the public from purchasing
inferior goods/services in the mistaken belief that they are provided by another trader;
 to assist in advertising.
In view of the multi-national and multi-portfolio nature of many corporations today, trade and service marks assist
the consumer to ‘distinguish between’ different brands; provides a vehicle for investment. There also are important
issues regarding the valuation of brands as corporate assets.
The psychological basis of brand imitation - Why imitate?
 individuals generalise
 consumer buying behaviour is conducted subconsciously
 shoppers are ‘lazy’ in perception
 association of designs, and in particular, colour
THE EVOLUTION OF STATUTORY TRADE MARK LEGISLATION
 No statutory system of registration in the U.K. pre-1875
 Trade Marks Registration Act 1875
- Registration
- Proceedings for infringement
- Bass Ale red triangle – first mark registered – still registered and used
today
 Eleven Acts were passed in sixty-two years:
o Consolidation occurred in the Trade Marks Act 1938 – now repealed and replace by
Trade Mark Act 1994
o Trade Marks (Amendment) Act 1984
o Patents, Designs and Marks Act 1986
o C.D.P.A. 1988


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TRADE MARKS ACT 1994
Represented a milestone in trade mark law and contains the most radical changes since the first trade mark
legislation.
 prompted by the need to facilitate the free movement of trade in the E.U.
 implemented First Council Directive 89/104/EEC: to harmonise domestic state trade mark rights (Directive
has been repealed and replaced by Directive 2008/95/EC)
 EC Regulation 40/94: creation of a unitary Community Trade Mark (‘CTM’) (Regulation has been repealed and
replaced by Council Regulation (EC) No 207/2009)
o administered by the Community Trade Marks Office *‘OHIM’ – in Alicante, Spain]
o Community Trade Marks Courts
REGISTRATION
To register a trade mark the following must be submitted [s.32 TMA 1994]:
Request for registration;
 Name and address of the applicant
 a statement of the goods or services in relation to which it is sought to register the trade mark
 a representation of the trade mark
 a statement that the trade mark is being used, by the applicant or with his consent, in relation to those goods
or services, or that he has a bona fide intention that it should be so used;
 payment of the application fee and such class fees as may be appropriate
Ss.37-41 TMA 1994
1. File application
2. Examination – The registrar will examine the application and conduct a search of earlier trade marks. If the
requirements of registration are not met the applicant is informed at the earliest opportunity. The applicant
is given an opportunity to make representations and/or amend the application.
3. Acceptance – if all the requirements for registration have been met, the application will be accepted
4. Publication – Published in the Trade Marks Journal
5. Opposition – Proprietor of earlier mark or right may oppose the registration of the later mark. The grounds
must be specified and made within 3 months of the date of publication.
6. Registration – application is accepted and there is no opposition. Date of registration of trade mark is the
date of filing the application (s.40(3))


TRADE MARKS IN THE UK
DEFINITION OF A TRADE MARK
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TMA 94 s. 1(1))
“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. A trade mark may, in particular, consist of words
(including personal names), designs, letters, numerals or the shape of goods or their packaging.
There are three elements that need to be satisfied:
 Sign
 Graphically represented
 Capable of distinguishing goods or services
If a sign can be represented graphically and can serve the function of distinguishing the goods and services from one
another => prima facie registrable.
1. SIGN
The definition of a sign is wide. The second part of the definition provides examples of the many varieties of signs that
could exist.
E.g. Tesco, Asda, Waitrose
Case C-321/03 Dyson Ltd v Registrar of Trade Mark [2007] 2 CMLR 14
Q: Whether ‘a transparent bin or collection chamber forming part of the external surface of the vacuum cleaner’
came within the scope of the meaning of a sign?
ECJ:. mark was not specific; abstract concept; not capable of being perceived by the 5 senses.
WORD MARKS
 ‘A Mars a day helps you work, rest and play’ UK TM No. 1438989
 ‘Have a break-have a Kit Kat’ UK TM No. 1104711 – note on the file that the phrase is protected but not the
phrase ‘have a break’
 ‘Every little helps’ UK TM No. 2004858, Tesco
COLOUR MARKS
It will not suffice to simply describe a colour vaguely by a verbal description because it lacks precision and makes it
difficult for others to predict whether their use of colour is likely to infringe such a trade mark.
Orange UK TM 2007850
 Mark limit: The applicant claims the colour orange Pantone No 151 as an element of the mark.
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 Owner: Orange Personal Communications Services Limited
 Proceeding because of distinctiveness acquired through use and survey evidence
Case C-104/01 Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-3793 – application to register the colour
orange as a trademark for telecommunications goods and services; application submitted in form of rectangle of
colour with nor other indication of the colour such as reference to a colour coding system.
ECJ: A single colour, not spatially limited, may be acceptable if an internationally recognised colour code is used, but
simply reproducing the colour on paper does not satisfy the requirement of being capable of graphical
representation.
Heidelberger Bauchemie GmbH – sign applied for was on a rectangle piece of paper, the top half being blue and the
bottom half yellow, both colours referenced by codes. Large number of goods sold for the building trade and ‘the
mark constitutes the colours of the applicant’s enterprise which are utilised in all conceivable forms, in particular in
packaging and labels.’
ECJ: A representation showing two colours on a piece of paper, the top half being one colour, the bottom half being
the other colour may satisfy the requirement of being capable of graphical representation, even if the colours are
acclaimed in the abstract without contours.
Single colours and colour combinations are, in principle, capable of graphical representation if referenced through an
internationally recognised colour coding system such as the Pantone system. BUT Absolute grounds of refusal and
public interest in not restricting availability of colours.
Ty Nant Spring Water Ltd’s Trade Mark Application – description of blue bottle of certain thickness and including
references to spectrophotometer readings was rejected as unsatisfactory representation.
SOUND MARKS
Conventional musical notation appropriate for representing music used as trade marks (e.g. Direct Line Insurance
telephone jingle) – confirmed by the ECJ in Shield Mark BV v Joost Kist[2003] BUT still unclear how other sounds may
be represented graphically.
Facts: A whole range of sounds in issue: first nine notes of ‘Fur Elise’ by Beethoven, descriptions of music,
onomatopoeia and a sound mark consisting of a cockcrow.
ECJ: provided guidance on what could satisfy the Sieckmann criteria. Art.2 of the Directive permits registration of
sound marks in principle as long as it complies with the requirements for graphical representation: clear, precise, self-
contained, easily accessible, intelligible, durable and objective. This could be achieved through conventional musical
notation, but could not be met by a description in words of the sound or by means of a simple onomatopoeia,
without more.
Issues and implications: Serious doubts over previously registered marks: ‘The mark consists of the sound of a dog
barking’ belonging to Imperial Chemical Industries, reg. in 1995. This is too vague and inevitable leads to subjective
interpretation (what breed? How loud? Is it friendly or aggressive?). It fails the single test ‘Is the graphical
representation clear and unambiguous?’ In addition, it would be virtually impossible to prove infringement.
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Would it be acceptable to file a sound mark in digital form in the future, especially now that the Trade Marks Journal
is available electronically? The ECJ in Shield Mark did not rule out other means of graphical representation. However,
this could mean the requirement for graphical representation would need to be relaxed for digital sound and music
because they cannot be reproduced on paper. Secondly, a sound mark may not be the same when played on every
audio system. For now, the only option appears to be conventional musical notation.
SMELL – OLFACTORY MARKS
The registration of smells, odours and fragrances has met with very little success. Nevertheless, a small number of
registered olfactory marks exist in the UK:
 ‘The mark comprises the strong smell of bitter beer applied to flights for darts’
 ‘The trade mark is a floral fragrance/smell reminiscent of roses applied to tyres’
An application to register ‘the smell of fresh cut grass’ for tennis balls was accepted – the only
registered CTM though an appeal is pending in the case of ‘the smell of lemon’.
ECJ rejected ‘the smell of ripe strawberries’ – confirmed in Eden SARL v OHIM.
A written description on its own is not sufficient to fulfil graphical representation requirements for olfactory marks.
John Lewis of Hungerford’s Trade Mark Application – ‘…comprising smell, aroma or essence of cinnamon’ applied for
in respect of furniture. Applicant submitted evidence from an ‘electronic nose’ analysis which gave a graphical profile
or ‘fingerprint’ of the smell of cinnamon. Geoffrey Hobbs QC argued that, as the accepted practice was to name
colours by reference to Pantone chart numbers and to represent sound by musical notations, the same could be used
for smells: ‘the smell of cinnamon as emitted by X’ where X is clearly and unambiguously defined and thus, used as a
benchmark.
ECJ: This was rejected as it permits too much subjectivity. Similar approach in:
Ralf Sieckmann v Deutsches Patentund Markenamt – the most authoritative case on graphical representations and
olfactory marks;
Facts: Fruity smell, which included cinnamon-like smell, described as ‘balsamically fruity with a slight hint of
cinnamon’ and complemented by a patented chemical formula.
ECJ: Confirmed purpose of Art.2 of the Directive – trade mark may consist of a sign which is not capable of being
perceived visually, as long as it can be represented graphically. In the case of olfactory marks, this cannot be satisfied
by a chemical formula, by a description in written words, by the deposit of a sample or by a combination of those
means. Difficult to ascertain which form of representation would suffice. ‘. . . few people would recognise in such a
formula the odour in question. Such a formula is not sufficiently intelligible’. A chemical formula cannot inform the
reader of the smell. Similarly, samples deteriorate over time. The written description comes nearest, but is not
enough on its own.
Eden SARL v OHIM – ‘the smell of ripe strawberries’ accompanied by colour image of a strawberry.
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ECJ: combining a description with an image of the ‘benchmark’ will not satisfy the requirement of graphic
representation.
SHAPE MARKS
The ECJ made it clear shape marks are to be treated no differently than other types of signs for
the purposes of fulfilling the requirements under Art.2 of the Directive – Phillips v Remington.
Triomed Ltd v Beecham Group Plc – South African High Court revoked shape mark used for pharmaceuticals because
the description was unclear: representation consisting of plan and side elevation, while the description was that the
mark consisted of the ‘shape and configuration of a tablet substantially as shown in the representation’.
Swizzels Matlow Ltd’s Trade Mark Application – ‘trade mark application to register a ‘chewy sweet on a stick for non-
medicated confectionary’; not capable of registration as lacking precision and ambiguous.
A sign will not be registered if it consists exclusively of the shape which gives substantial value to the goods, is
necessary to obtain a technical result or results from the nature of the goods themselves – Phillips v Remington –
even if there exists more than one shape to achieve a particular technical result.
Interlego AG’s Trade Mark Applications - application to register a brick as a trade mark failed because there was no
real evidence that the public recognised the bricks or the raised knobs or studs as trade marks.
2. CAPABLE OF BEING REPRESENTED GRAPHICALLY
Under s.32(1), a representation of the mark must be contained in the application to register a trade mark. The
purpose of this provision is threefold:
1. Defines the scope of the TM owner’s rights
2. Information
3. Administrative
Swizzels Matlow’s Trade Mark Application [1998] RPC 244 - trade mark application to register a ‘chewy sweet on a
stick for non-medicated confectionary’.
Case C-273/00 Ralf Sieckmann v Deustsches Patent und Markenamt [2002] ECR I-11737, clarified the criteria to be
met for non-visual signs:
‘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 clear,
precise, self-contained, easily accessible, intelligible, durable and objective.’ (the Sieckmann Criteria).
ECJ reasons for this:
 The precise subject of protection afforded by registration can be determined;
 Competent authorities must know with precision what the sign is so they can fulfil their obligations;
 Economic operators must also be able, by consulting the register, to find out about registrations and
applications made by current and potential competitors and receive information about rights of third parties.
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 Legal certainty – nature and scope of rights can only be determined if representation is precise and complete
on its face.
Issues and limitations: A graphical representation complying with the Sieckmann criteria, together with the
description of the goods and services for which the trade mark is to be used fully defines the true extent of the
monopoly as provided for in accordance with the Trade Mark Act 1994. However, the ECJ held that musical notation is
an acceptable way of representing a sound mark graphically, even though the sign is not capable of being perceived
visually and most people cannot read music (Shield Mark). Persons consulting the register should not have to
undertake detective work to find out just what the trade mark is.
It is not yet possible to submit a computer file that reproduces moving images or a hologram as a representation of
the sign for which registration is sought.
3. CAPABLE OF DISTINGUISHING
Focus: To be capable of distinguishing goods or services of one undertaking from those of other undertakings, the sign
must say, or be capable of saying, on its face, that these goods or services come from X rather than from Y or Z or any
other; distinguishing between undertakings (‘origin’) as a basic function (a question of fact).
The tenth recital of the Directive provides that the function of a registered trade mark is ‘…to guarantee the trade
mark as an indication of origin’. If the sign cannot do this, then it is not registrable. Signs that cannot be trade marks
cannot be registrable. It is fundamental to trade mark law that a trade mark must act as an indicator of origin,
denoting from whom goods or services come from rather than what the goods or services are. Confirmed by the ECJ
in:
Canon Kabushiki Kaisha v Metro Goldwyn Mayer [1998]: “the essential function of the trade mark is to guarantee the
identity of the origin of the marked product to the consumer or end user by enabling him, without any possibility of
confusion, to distinguish the product or service from others which have another origin.”
Q: Would consumers, in relation to the trader’s goods or services, be able to distinguish them from goods or services
from another source?
Koninklijke Philips v Remington [2002] ECR I-5475
‘. . . there is no class of marks having a distinctive character by their nature or by the use made of them which is not
capable of distinguishing goods or services within the meaning of Art 2 of the Directive’.
Debate: Is the requirement ‘capable of distinguishing’ under s.1(1) the same or different from ‘devoid of distinctive
character’(s.3(1)(b) TMA 1994)?
DISTINCTION BETWEEN SIGN AND TRADE MARK
The terms ‘sign’ and ‘trade mark’ are not interchangeable and there is a distinction between them. ‘Sign’ is not
defined and has a very wide meaning, but in this context can be said to be a mark, symbol, device or indicator. Trade
marks are included within the meaning of a sign, but are but a sub-species, graphical representations of origin. They
are graphical representations indicating origin. Unless they are trade marks within the basic definition, signs are not
registrable (Art. 3(1) (a)). Also, the registration of a sign consisting exclusively of the shape which results from the
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nature of goods is not registrable as such a sign could never act as a trade mark, as a badge of origin. This was evident
in Philips v Remington, where the ECJ held that even if used extensively, such a sign cannot operate as a trade mark as
it cannot distinguish between goods from different undertakings.
Jeryl Lynn Trade Mark – mark registered in relation to medicinal and pharmaceutical preparations and use for mumps
vaccines; name chose in honour of Jery Lynn Hilleman, from whom her father isolated the original mumps virus.
ECJ: Mark declared invalid as it was the name by which the virus had become known and served as a technical name,
so it became overwhelmingly generic.
GENERAL PRESUMPTION OF REGISTRABILITY
There is a general presumption of registrability once the three factors under s.1 have been satisfied UNLESS refusal is:
1. ‘specific’ or ‘absolute’ grounds *s. 3]
2. specially protected emblems [s. 4]
3. ‘relative’ grounds, namely, conflicts arising from the existence of earlier rights [s. 5]
Duration - 10 years initially; 10-year renewal periods [ss. 42 and 43]
Conditions for securing registration
Absolute grounds – objection to the sign itself on the basis of falling outside the scope of the statutory definition of a
sign, or a lack of distinctiveness or on grounds of public interest
Relative grounds - conflict with an earlier TM .
1. ABSOLUTE GROUNDS [TMA 1994 S. 3]
3. — ABSOLUTE GROUNDS FOR REFUSAL OF REGISTRATION
(1) The following shall not be registered—
(a) signs which do not satisfy the requirements of section 1(1).
(b) trade marks which are devoid of any distinctive character. [Distinctiveness]
(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 use]
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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.
[Proviso]
These grounds can be justified on the basis of public interest, as it is not in the public interest to have signs and marks
registered as trade marks which do not serve the primary function of indicating trade origin. Also, this precludes
registration of trade marks which would prejudice the rights of other undertakers to use ordinary language to
describe their products. Conversely, a mark that may have otherwise lacked distinctiveness may have become
distinctive through continual and extensive use by one particular undertaker. In such cases, it is not in the public
interest to deny registration, especially since sufficient goodwill may have been built for the mark to be protected by
the law of passing off.
NOT A TRADE MARK – ART. 3(1) (A)
If a trade mark is distinctive as a matter of fact, whether through use or otherwise, it is arguable whether it can be
tested against Ast.3(1)(a), at least to the extent that it is capable of distinguishing the products of one undertaker
from those of others.
Phillips v Remington – ECJ considered whether there was a class of marks that were de facto distinctive which were
nevertheless incapable of being distinctive de jure on the basis of art. 3(1)(a). Remington argued that signs caught by
art.3(1)(a) could never be registered, regardless of evidence of distinctiveness. ECJ rejected this and stated there was
no class of marks which are distinctive as a result of the use made of them which his not capable of distinguishing
goods or services within art.2.
DEVOID OF DISTINCTIVE CHARACTER - S.3(1)(B)
 Simple geometric shapes, single colours and descriptive or laudatory words (e.g. ‘soap’, ‘luxury’,
‘wholesome’)
Test of distinctiveness in assessing whether a mark is devoid of distinctive character – reference should be made to
the goods and services for which registration is sought ad to the perception of the relevant public, being average
consumers of the goods and services in question, who are reasonably well-informed, observant and circumspect.(has
also been used in relation to shape marks)
Distinctiveness = capable of distinguishing the goods or services from those of another trader (Philips v Remington
[2002])
Average consumer = ‘reasonable well-informed and reasonably observant and circumspect’ Joined Cases C-53/01, C-
54/01, C-55/01 Linde AG and Others v Deutsches Patent- und Markenamt [2003] E.C.R. I-3161 [para 41]
British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 – ‘TREAT’ devoid of distinctive character. Jacob L: The
requirement that the mark is ‘capable of distinguishing’ did not add anything to the equivalent provision to art.
3(1)(b) and (3) which ‘bars the registration of a mark which is devoid of distinctive character unless it has in fact
acquired a distinctive character’. If a mark was, on its face, non-distinctive (e.g. descriptive or laudatory word) but was
shown to have distinctive character in fact, then it must be capable of distinguishing.
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Thus, for a trade mark to be caught by art. 3(1)(b) it must be potentially capable of distinguishing the goods or
services of one undertaking from those of others but, because of lack of use, it is not perceives as a badge of origin.
Where the mark’s inherent distinctiveness is an issue, the mark must perform the function of indicating origin even
before the relevant public has been educated it is to be used for that purpose. In this context, art. 3(3) provides a
means for escaping that prohibition by showing the relevant public has been so educated.
AD2000 Trade Mark – difference between an inherently distinctive mark and one that acquires distinctiveness has
been described by Geoffrey Hobbs QC as the difference between nature and nurture.
The burden of proof, to show that the mark has acquired distinctive character as a result of the use made of it, lies on
the applicant to register the mark. It is uncertain whether this can be satisfied without evidence of actual use. There
needs to be a causal link between that use and the fact that a significant proportion of the relevant public perceive
the trade mark as indicating the origin of the goods and services in question.
Koninklijke Philips v Remington [2002] ECR I-5475 – three headed rotary shaver was
devoid of distinctiveness.
Colours - Libertel Groep BV v Benelux-Merkenbureau [2003] ECR I-3793 – application to
register the colour orange in the abstract to be used in relation to telecommunications;
a single colour per se may be found to be distinctive.
Shapes – in many cases, the public will not perceive them as trade marks;
Henkel KGaA v Deutsches Patentund Markenamt [2004] ECR I-1725 – whether the
shape ‘significantly departs from the norm or customs of the sector and thereby fulfils
its essential original function’; average consumers do not normally make assumptions
about the origin of goods based on the shape of their packaging, absent any graphic or
word element. The test for distinctiveness was modified for cases where the trade
mark consisted of the shape of packaging for goods packaged in the trade for purposes connected to their character
(e.g. liquid or powder): still based on the average, reasonably well-informed and reasonably observant and
circumspect consumer but additionally, such a consumer must be able to distinguish the product from those of other
undertakings without conducting an analytical or comparative examination and without paying particular attention.
Mere use is not enough; it must be shown that the public actually perceive the shape as being a trade mark.
Bongrain SA’s Trade Mark Application [2005] RPC 14 (CA) – application to register a 3D shape for cheese - a floral
shape, with six lobes;
‘an average consumer, surveying the myriad of cheeses on display in a good supermarket or on a restaurant cheese
platter, would, I think, be astonished to be told that one of the shapes was a trade mark. Consumers do not expect to
eat trade marks or part of them. A consumer may indeed, when looking for a cheese he has had before, recognise
the shape. He might even say: “this looks like the one I had before. I suppose it could be what I want.” But, without
established use and recognition it cannot be said that he would, without more, regard shape alone as giving him a
guarantee of origin – the essence of what a trade mark is.’ *para 29, per Jacob LJ+
Level of attention of average consumer is likely to vary depending on the product.
- shape and colour of washing machine and dishwasher tablets: low level (Procter & Gamble)
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- striped toothpaste: low level of attention (Colgate-Palmolive Trade Mark Application);
Chocoladefabriken Lindt & Sprüngli AG v OHIM, Judgment of the General Court of 17 December 2010 - concerned an
application for registration as a Community trade mark of a three-dimensional sign consisting of the shape of a
chocolate rabbit with a red ribbon.
Names
Test of distinctiveness of a trade mark which is a surname is no different to that for any other form of trade mark:
goods and services in specification + consumers perception.
Nichols Plc v Registrar of Trade Marks [2004] ECR I-8499 – Could the name ‘Nichols’ be registered as a trade mark for
products such as vending machines and for food and drink sold through vending machines? The fact that there is a
limitation to the rights of a trade mark under Art.6(1) so that a third party may not be prevented from using his own
name in the course of trade is of no relevance.
Elvis Presley Trade Marks [1999] RPC 567 (CA) – No exclusive right for a celebrity to use his own character to
merchandise products.
DESCRIPTIVE OF CHARACTERISTICS, ETC. OF GOODS AND SERVICES – ART.3(1)(C)
 No registration if the mark consists exclusively of ‘characteristics’, e.g., quantity, quality, intended purpose,
value, etc.
 Purpose of the provision to maintain the stock of words that can be used freely BUT there is nothing to
suggest that the Directive prohibits such a registration
 The ground can be overcome by showing distinctiveness through use.
Windsurfing Chiemsee v Attenberger [1999] ECR I-2779 – Geographical name, CHIEMSEE used for sportswear, which is
the name of the largest lake in Bavaria; ECJ confirmed Directive did not prohibit registration of geographical names as
trade marks where the geographical name is associated in the minds of the consumers as designating trade origin
with the category of goods concerned. Where there is no such association currently, as assessment must be made
whether it is reasonable to assume that such a name is capable of designating geographical origin of the goods in
question, taking into account:
 Degree of familiarity of the relevant class of persons with the name – ‘relevant class of persons’ meaning
persons in the trade and average consumers of the category of goods in the territory for which registration is
sought; in addition, all other average consumer presumed expectations as in Phillips v Remington;
 Characteristics of the place designated by the name; and
 The category of goods concerned.
It is not necessary for the goods to be made in a particular location to be associated with it.
Use of common words in combination
‘Day by day’ – Besnier SA’s Trade Mark Application – would naturally be used by other traders to describe delivery =>
not permissible.
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‘Baby dry’ – Procter v Gamble Co v OHIM [2001] – although the word combination alluded to the function the goods
were supposed to fulfil, the syntax/combination of words was not used in English language => distinctive;
A neologism comprising two descriptive words is unlikely to be registrable in the absence of acquired distinctiveness
through use: ‘mildsoap’, ‘cleanfresh’, ‘easytalk’ or ‘quickshine’ BUT there are a number of registrations for
‘speakeasy’. To be registrable, it must be more than the sum of its parts e.g. ‘websphere’. If it has more than one
possible meanings, may still be unregistrable if one of those meanings is descriptive of characteristics of goods and
services.
‘BIOMILD’ – Campina Melkunie BV v Benelux-Merkenbureau [2004] - goods which included foodstuffs and milk
products; ECJ held: a neologism made up of elements which were themselves descriptive was itself descriptive unless
there was a perceptible difference between the neologism and the sum of its parts. Even if the word may not have
been used, it is sufficient for the ground of refusal to apply if it could be used to describe the qualities or
characteristics of other products. An unusual combination must create an impression sufficiently removed from that
produced by the mere combination with the result that the word was more than the sum of its parts. Existence of
synonyms was not relevant.
‘Doublemint’ – OHIM v Wm Wrigley Jr Co [2004] –Registration refused if one of its meanings designates a
characteristic of the goods concerned; two meanings: if one designates a characteristic of the goods – no registration.
ECJ applied test was whether it was capable of being used by others to designate characteristics of their products.
Court in Wrigley noted that the word in question does not have to be in current use to preclude registration, but
there should be a reasonable apprehension that it may be used descriptively by other in the future.
EUROLAMB – EUROLAMB Trade Mark – the word for lamb meat would be understood as lamb from Europe =>
descriptive of the kind and geographical origin of the goods; irrelevant that other similar marks already registered:
EUROCOOK, EURODOG, EURO-CELL.
CUSTOMARY SIGNS OR INDICATIONS – ART. 3(1)(D)
No registration if the mark is in ‘customary usage’. These may have been signs used to distinguish between goods and
services at one time but the term(s) used in the sign are now in common use in trade, or in the bona fide and
established practices. This has been interpreted as applying only to products for which registration is sought.
Examples: ‘Sofa Sale’, ‘Bargain Booze’, ‘Grandma’s Home Cooking’.
Merz v Krell GmbH – word ‘Bravo’ to be used for writing implements; held: it is immaterial whether the signs or
indications actually describe the characteristics of the products.
British Sugar – the word ‘TREAT’ for dessert sauces and syrups fell within this ground as it was a word that had
become customary in the current language as lots of people use it in their advertisements and on their goods.
PROVISO – ART. 3(3)
‘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.’
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First consider representation of the trade mark, on its face and in the abstract, without any consideration to its use.
Only after that analyse evidence of acquired distinctiveness to see if the relevant ground(s) for refusal can be
overcome.
Factors taken into account in support of a claim through use - Windsurfing Chiemsee v Attenberger [1999] – overall
assessment of the evidence:
 market share of the mark
 how intensive, geographically widespread and long-standing use of the mark has been
 amount invested by the undertaking in promoting the mark
 proportion of the relevant class of persons who, because of the mark, identify goods as originating from a
particular undertaking
 statements from chambers of commerce and industry or other trade and professional associations
Question: whether the relevant class of persons, or at least a significant proportion thereof, can identify goods as
originating from a particular undertaking because of the trade mark.
British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 – TREAT – consumer research showed that 60% of the
public recognised TREAT as a mark. Registration declared invalid
‘. . . the question is whether British Sugar have shown that the mark now has a DISTINCTIVE CHARACTER. Is my
finding that to some but not most people “Treat” has some trade mark significance enough? This depends on what is
meant by a DISTINCTIVE CHARACTER. Neither the Directive nor Act throw any light on this. So I have to use what I at
least regard as my common sense. Take a very descriptive or laudatory word. Suppose the proprietor can educate
10% of the public into recognising the word as his trade mark. Can that really be enough to say it has a DISTINCTIVE
CHARACTER and so enough to let the proprietor lay claim to the word as a trade mark altogether? The character at
this stage is part distinctive but mainly not. I do not think it would be fair to regard the character of the word as
DISTINCTIVE in that state of affairs. But if the matter were the other way round, so that to 90% of people it was taken
as a trade mark, then I think it would be fair so to regard it. This all suggests that the question of factual DISTINCTIVE
CHARACTER is one of degree. The proviso really means “has the mark acquired a sufficiently distinctive character that
the mark has really become a trade mark.” In the case of common or apt descriptive or laudatory words compelling
evidence is needed to establish this, and in particular mere evidence of extensive use is unlikely to be enough on its
own. Of course the power of advertising may be able to turn almost anything (save a pure description) into a trade
mark, but it must be shown in a case of this sort that the mark has really become accepted by a substantial majority
of persons as a trade mark - is or is almost a household word.’ *per Jacob J+
Case C-353-/03 Société des Produits Nestlé SA v Mars Ltd [2005] 3 C.M.L.R. 12 – HAVE A BREAK – Nestle successfully
argued this mark had acquired distinctiveness due to use through association and in conjunction with KIT KAT and
HAVE A BREAK … HAVE A KIT KAT. Acquired distinctiveness may come about even if the mark in question has not been
previously used on its own but as part of a trade mark.
SHAPES – S. 3(1)(E); S.3(2) TMA 1994
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Shape marks are treated in the same way as other forms of trade marks with one important exception:
A sign shall not be registered as a trade mark if it consists exclusively of—
(a) the shape which results from the nature of the goods themselves,
(b) the shape of goods which is necessary to obtain a technical result, or
(c) the shape which gives substantial value to the goods.
Rationale: Certain types of shapes can never be sufficiently distinctive to serve as indicators of origin, capable of
distinguishing products. In addition, potentially unlimited protection could otherwise be afforded to shapes that
ought to be protected by design law, patent law or, in some countries though not at present in the UK, utility model
law.
Shapes excluded can be described as natural, functional or ornamental. For shape marks, art. 3(1)(e) is preliminary
ground for refusal. Acquired distinctiveness under art. 3(3) does not apply to art. 3(1)(e), but it may be relevant where
a shape mark is not fully within one of the grounds for refusal.
All the grounds relate to the shape of goods => no application to shapes used where they are not also applied to
goods. The questions is whether the shape is capable of distinguishing the product of the trade mark proprietor from
those of other undertakings, so guaranteeing the origin of the product (Phillips v Remington).
SHAPES RESULTING FROM THE NATURE OF THE GOODS THEMSELVES
Phillips Electronics NV v Remington Consumer Products Ltd [1998] – three headed shaver was not caught by this
exception;
The addition of some stylised feature may overcome ground of refusal – Dualit Ltd’s (Toaster Shapes) Trade Mark
Applications: possession of certain styling features to the shape of toasters prevented them consisting exclusively of
shapes resulting from the nature of the goods themselves.
Henkel – three-dimensional trade marks consisting of the packaging of goods which are packed in the trade for
reasons linked to the very nature of the goods (liquid or powder), the packaging must be assimilated with the shape
of the goods so that the shape of the packaging may constitute the shape of the goods within the meaning of art.
3(1)(e). The shape of the packaging imposes itself on the shape of the goods cf. where the goods have their own
intrinsic shape (e.g. nails)
SHAPE OF GOODS WHICH IS NECESSARY TO OBTAIN A TECHNICAL RESULT
Issue: focuses on whether the shape is necessary to obtain a technical result.
Phillips Electronics NV v Remington Consumer Products Ltd [2002] – Phillips registered a drawing of a three-head
drawing. registration is not permitted where the essential functional characteristics of a shape are attributable solely
to the technical result.
Lego Juris A/S v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), unreported 14
September 2010 – Lego brick cannot be registered as a trade mark because its shape is ‘necessary to obtain a
technical result’.
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SHAPE WHICH GIVES SUBSTANTIAL VALUE TO THE GOODS
Phillips Electronics NV v Remington Consumer Products Ltd [1999] Jacob J. said that s.3(2)(c)
‘. . . was aimed at preventing a trader from monopolising by way of a trade mark registration shapes which added a
substantial value to the goods over other shapes, e.g. a lampshade, a telephone designed to appeal to the eye. Such
designs should be protected as registered designs or the like protection, not by trade mark registration. . .
There may be overlap between [s.3(2)(c)] and the [s.3(2)(b)] which excludes shapes necessary to obtain a technical
result, but the purpose is different. The latter is intended to exclude functional shapes and the former aesthetic-type
shapes. Thus the fact that the technical result of a shape is excellent and therefore the article can command a high
price does not mean that it is excluded from registration by subsection (c).’
Benetton Group SpA v G-Star International [2008] ETMR 5
G-Star launched the "Elwood", a pair of jeans with various stitching. G-Star filed two shape marks in which these
characteristics are described in detail. Similar jeans were sold by Benetton. G-Star brought an infringement action
against Benetton
CONTRARY TO PUBLIC POLICY OR ACCEPTED PRINCIPLES OF MORALITY
A. s. 3(1)(f) and s. 3(3)(a) TMA 1994
Ghazilian’s Application [2002] RPC (33) 628 – mere offence to a section of the public is not sufficient
“Each case must be decided on its own facts. The dividing line is to be drawn between offence which amounts only to
distaste and offence which would justifiably cause outrage or would be the subject of justifiable censure as being
likely significantly to undermine current religious, family or social values. The outrage or censure must be amongst an
identifiable section of the public and a higher degree of outrage or censure amongst a small section of the community
will no doubt suffice just as lesser outrage or censure amongst a more widespread section of the public will also
suffice.” Appointed Person Simon Thorley QC *para 30+
Basic Trademark SA’s Trade Mark Application [2005] RPC 611 – application to register ‘JESUS’ rejected.
Sportwetten GmbH Gera v OHIM [2005] ECR II-3247 – focus on the intrinsic qualities of the mark.
French Connection v Sutton [2000] ETMR 341 – FCUK was registered as a TM. FCUK does not have a phonetic or visual
equivalent to ‘fuck’

DECEPTIVE MARKS – ART. 3(1)(G)
It is of such a nature as to deceive the public – s. 3(3)(b)

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USE PROHIBITED BY LAW
Use of the trade mark prohibited by law in the UK or under Community law – s.3(4)
PRTECTED EMBLEM
`The mark is a specially protected emblem – s.3(5) and see also s.4 – includes flags, signs connected with the Royal
family
APPLICATION IS MADE IN BAD FAITH – ART. 3(2)(D)
The application is made in bad faith – s. 3(6)
Gromax Plasticulture v Don & Low Nonwovens [1999] RPC 367 -
“I shall not attempt to define bad faith in this context. Plainly it includes dishonesty and, as I would hold, includes also
some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and
experienced men in the particular area being examined. Parliament has wisely not attempted to explain in detail what
is or is not bad faith in this context; how far a dealing must so fall-short in order to amount to bad faith is a matter
best left to be adjudged not by some paraphrase by the courts (which leads to the danger of the courts then
construing not the Act but the paraphrase) but by reference to the words of the Act and upon a regard to all material
surrounding circumstances.” per Lindsay J. [emphasis added]
Note
s.32(3) TMA 1994 - “The application shall state that the trade mark is being used, by the applicant or with his consent,
in relation to those goods or services, or that he has a BONA FIDE intention that it should be so used.”
DEMON ALE Trade Mark [2000] RPC 345 – application to register DEMON ALE which was an anagram of lemonade.
This registration was not permitted because there was no intention to use the mark


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RELATIVE GROUNDS [TMA 1994 S. 5]
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.
(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 of the part of the public, which
includes the likelihood of association with the earlier trade mark.
(3) A trade mark which—
(a) is identical with or similar to an earlier trade mark, 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 [or international trade mark
(EC)], 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.
Focus: conflicts between marks and ‘earlier’ marks or rights
‘Earlier’ trade marks [see s.6 TMA 1994]
Three types:
1. British and Community marks with an earlier registration date [s. 6(1)(a)]
2. Community trade marks with a claim to seniority from an earlier registered mark [s.6(1)(b)]
3. earlier ‘well-known’ marks within the meaning of Art.6bis of the Paris Convention
i.e., the mark is so ‘well-known’ in the U.K. (or E.C.) (even in the absence of any trade there) that the use of
a similar or identical mark in relation to similar or identical goods can be enjoined.
In the situation where the applicant is faced with opposition to registration on relative grounds of refusal – the
applicant can demand that the person who is opposing the registration has to prove that the mark has been in use in
previous 5 years. Normally, if the trade mark has not been in use for 5 years then the trade mark may be revoked.

IDENTICAL MARKS ON I DENTICAL GOODS OR SERVICES – S.5(1) TMA 1994
Where the marks and the goods/services are identical – there is no need to show likelihood of confusion
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Identical marks
Compare earlier mark with the trade mark being applied for. Examine earlier mark’s registration certificate.
What if there is a slight difference?
Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799
Diffusion produced and sold various items of clothing and the like under the trade name “Arthur” – in stylized form
which looked like a signature – registered in France for clothing. Sadas, a company which ran a mail order business,
sold clothing for children under the name “Arthur et Félicie” - registered in France as a word trade mark for goods in a
number of classes, including clothing. “Arthur et Félicie” did not employ the handwritten form of “Arthur”.

ECJ explained how the test of identity was to be interpreted.

“50. The criterion of identity of the sign and the trade mark must be interpreted strictly. The very definition
of identity implies that the two elements compared should be the same in all respects. . .
51 There is therefore identity between the sign and the trade mark where the former reproduces, without
any modification or addition, all the elements constituting the latter.
52 However, the perception of identity between the sign and the trade mark must be assessed globally with
respect to an average consumer who is deemed to be reasonably well informed, reasonably observant and
circumspect. The sign produces an overall impression on such a consumer. That consumer only rarely has the
chance to make a direct comparison between signs and trade marks and must place his trust in the imperfect
picture of them that he has kept in his mind. Moreover, his level of attention is likely to vary according to the
category of goods or services in question.
. . .
54. . . . a sign is identical with the trade mark where it reproduces, without any modification or addition, all
the elements constituting the trade mark or where, viewed as a whole, it contains differences so insignificant
that they may go unnoticed by an average consumer.”
Who is the average consumer? ‘deemed to be reasonably well informed, reasonably observant and circumspect’.

Goods or services identical?

Reed Executive Plc and Another v Reed Business Information [2004] - Is REED identical to "REED ELSEVIER" and "REED
BUSINESS INFORMATION"?
Case C-323/09 Interflora Inc and Interflora British Unit v Marks & Spencer plc and Flowers Direct Online Limited,
judgment dated 22 September 2011 (not yet reported)
Judgment of the Court:
“1. Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the
Member States relating to trade marks and Article 9(1)(a) of Council Regulation (EC) No 40/94 of 20
December 1993 on the Community trade mark must be interpreted as meaning that the proprietor of a trade
mark is entitled to prevent a competitor from advertising – on the basis of a keyword which is identical with
the trade mark and which has been selected in an internet referencing service by the competitor without the
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proprietor's consent – goods or services identical with those for which that mark is registered, where that use
is liable to have an adverse effect on one of the functions of the trade mark. Such use:
– adversely affects the trade mark's function of indicating origin where the advertising displayed on
the basis of that keyword does not enable reasonably well-informed and reasonably observant
internet users, or enables them only with difficulty, to ascertain whether the goods or services
concerned by the advertisement originate from the proprietor of the trade mark or an undertaking
economically linked to that proprietor or, on the contrary, originate from a third party;
– does not adversely affect, in the context of an internet referencing service having the
characteristics of the service at issue in the main proceedings, the trade mark's advertising function;
and
– adversely affects the trade mark's investment function if it substantially interferes with the
proprietor's use of its trade mark to acquire or preserve a reputation capable of attracting
consumers and retaining their loyalty.”
CONFUSI ON AND SIMILARITY – S.5(2) TMA 1994
s. 5(2) - where the marks or the goods/services are similar – ‘a likelihood of confusion on the part of the public which
includes the likelihood of association with the earlier trade mark’ must be shown to prevent registration.
Confusing similarities – global assessment
Case C-39/97 Canon Kabushiki Kaisha v Metro Goldwyn Mayer [1998] ECR I-5507
“A global assessment of the likelihood of confusion implies some interdependence between the relevant
factors, and in particular a similarity between the trade marks and between these goods or services.
Accordingly, a lesser degree of similarity between these goods or services may be offset by a greater degree
of similarity between the marks, and vice versa” *para 17+
Assessing the similarity between the marks
Factors to be taken into consideration when assessing similarity between the marks:
Case C-251/95 Sabel BV v Puma AG [1997] ECR I-6191
“. . . global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the
overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components . . .
perception of marks in the mind of the average consumer of the type of goods or services in question plays a decisive
role in the global appreciation of the likelihood of confusion. The average consumer normally perceives a mark as a
whole and does not proceed to analyse its various details.
In that perspective, the more distinctive the earlier mark, the greater will be the likelihood of confusion. It is therefore
not impossible that the conceptual similarity resulting from the fact that two marks use images with analogous
semantic content may give rise to a likelihood of confusion where the earlier mark has a particularly distinctive
character, either PER SE or because of the reputation it enjoys with the public.”
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Case C-342/97 Lloyd Schuhfabrik Meyer & Co GmbH v Klisjen Handel BV [1999] ECR I-3819 – Marks considered:
LLOYD’S and LOINT’S.
ECJ: The aural similarity between the signs could create a likelihood of confusion. In making an assessment the
“national courts must determine degree of visual, aural or conceptual similarity between them and, where
appropriate, evaluate the importance to be attached to those different elements, taking account of the category of
goods or services in question and the circumstances in which they are marketed”.
POLACLIP Trade Mark [1999] RPC 282 – POLAROID objected to the registration of POLACLIP for clip-on sunglasses, on
the ground of likely confusion with their earlier trade mark POLAROID, registered in respect of identical goods.
POLAROID owned TM registered in other classes incorporating the prefix POLA and claimed that POLACLIP would be
seen as a reference to POLAROID clip-on sunglasses.
Specsavers International Healthcare Ltd v Asda Stores Ltd [2010] EWHC 2035 (Ch)



Asda marketing: ‘Be a real spec saver at Asda’; ‘Spec savings at Asda’
Case comment: Smith and Southerden, ‘UK: trade marks – infringement and unfair advantage’ *2010+ EIPR 105
Are the goods similar?
A comparison will have to be made between the goods or services of the earlier mark and the goods or services for
the mark for which registration is sought.
British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281 – British Sugar registered ‘TREAT’ as a trade mark.
Robertson produced a spread known as ‘Robertson’s Toffee Treat’. BS claimed TM infringement.
Jacob J. took into account the following factors which had been devised in Jellinek’s Application (1946). This list was
aimed at merely providing general guidance in the assessment of likelihood of confusion
(a) The respective uses of the respective goods or services;
(b) The respective users of the respective goods or services;
(c) The physical nature of the goods or acts of service;
(d) The respective trade channels through which the goods or services reach the market;
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(e) In the case of self-serve consumer items, where in practice they are respectively found or likely to be,
found in supermarkets and in particular whether they are, or are likely to be, found on the same or
different shelves;
(f) The extent to which the respective goods or services are competitive. This inquiry may take into
account how those in trade classify goods, for instance whether market research companies, who of
course act for industry, put the goods or services in the same or different sectors.
“Turning to the present case, the two products to some extent have the same use, but broadly in practice have
different uses. They are hardly in direct competition and consumers will find them in different places in supermarkets.
Their physical nature is somewhat different, the Robertson product being hardly pourable and really needing
spooning out of the jar whereas the British Sugar product is meant to be poured out of the small hole in the plastic
top. Moreover it seems that for the purposes of market research the two products are regarded as falling within
different sectors. Taking all these things together, I think the spread is not to be regarded as SIMILAR to the dessert
sauces and syrups of the registration. I therefore think there is no infringement.” *per Jacob, J.+
Case C-39/97 Canon Kabushiki Kaisha v Metro Goldwyn Mayer [1998] ECR I-5507
Metro-Goldwyn-Mayer (“MGM”) applied for registration in Germany of the world trade mark CANNON. The Japanese
company Canon opposed the application on the ground that it infringed its earlier world trade mark CANON
registered in Germany in respect of still and motion picture cameras and other similar devices. A preliminary
reference was made to the ECJ.
Q: whether the distinctive character of the earlier trade mark (CANON), and in particular its reputation, must be taken
into account when determining whether, for the purpose of Article 4(1)(b) of Directive 89/104, the similarity between
the goods or services covered by two trade marks was sufficient to give rise to the likelihood of confusion.
ECJ confirmed :
“the distinctive character of the earlier trade mark, and in particular its reputation, must be taken into account when
determining whether the similarity between the goods or services covered by the two trade marks is sufficient to give
rise to the likelihood of confusion.” *para 24+
Factors to consider when assessing similarity of goods or services:
“In assessing the similarity of the goods or services concerned . . . all the relevant factors relating to those goods or
services themselves should be taken into account. Those factors include, INTER ALIA, their nature, their end users
and their method of use and whether they are in competition with each other or are complementary.” *para 23+
Pfizer v. Eurofood Link (UK) [2000] ETMR 896 – Pfizer owned the trade mark VIAGRA (tablets for treating male
impotence). Eurofood launched VIAGRENE aphrodisiac drinks. Pfizer brought an infringement action against Eurofood
under s.10(2) TMA 1994.
If there is no similarity, are you left without an action?
LIKELIHOOD OF CONFUSION
Lloyd Schuhfabrik Meyer & Co GmbH v Klisjen Handel BV [1999] ECR I-3819
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“For the purposes of that global appreciation, the average consumer of the category of products concerned is
deemed to be reasonably well-informed and reasonably observant and circumspect. However, account should be
taken of the fact that the average consumer only rarely has the chance to make a direct comparison between the
different marks but must place his trust in the imperfect picture of them that he has kept in his mind. It should also be
borne in mind that the average consumer’s level of attention is likely to vary according to the category of goods or
services in question.” [para 26]
Likelihood of association
The wording in s.5(2) refers to ‘likelihood or confusion . . . which includes a likelihood of association’
Case C-251/95 Sabel BV v Puma AG [1997] ECR I-6191
Sabel applied to register in Germany a trade mark consisting of a figure of a “bounding feline” in respect of certain
classes of goods. Puma had however previously registered a mark in Germany, in respect of identical or similar goods,
which also included a figure of a bounding feline. It therefore opposed registration of Sabel’s mark.
“. . . criterion of likelihood of confusion which includes the “likelihood of association with the earlier mark” . . . is to be
interpreted as meaning that the mere association which the public might make between two trade marks as a result
of their analogous semantic content is not in itself a sufficient ground for concluding that there is a likelihood of
confusion within the meaning of that provision.” *para 26+ *emphasis added+
C-425/98 Marca Mode CV v. Adidas AG [2000] ETMR 723
ECJ endorsed the approach in Sabel towards likelihood of association.
Summary


Mark


Identical

Similar

Similar

Goods or services

Similar


Identical

Similar

Likelihood of
confusion?

Yes, no registration

Yes, no registration

Yes, no registration
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(inc. likelihood of
association)


No. Unregistrable


No. Unregistrable

No. Unregistrable

2.3 Marks with a reputation – s.5(3) TMA 1994
s. 5(3) - registration will be refused where the marks are identical or similar, and the earlier mark has a reputation in
the U.K. (or the E.C.), and if use without due cause by the later mark would take unfair advantage, etc., of the earlier
mark’s distinctive character or reputation.
Wide application of s.5(3)
Case C-292/00 Zino Davidoff v Gofkid [2003] ECR I-389 – C used the TM DAVIDOFF for high class products. D based in
HK used the mark DURFFEE for goods which were identical and similar to Davidoff. C claimed that their reputation
would be damaged because the goods from HK.
Case C-408/01 Adidas-Salomon AG v Fitnessworld Trading Ltd [2003] ECR I-12537 - No need to show any likelihood of
confusion
Daimler Chrysler v. Alavi (‘Merc’ Case) [2001] RPC 813 [para 88]
Factors to consider under this section:
 Does the mark have a reputation?
 Is the Ds sign similar to the earlier trade mark?
 Is the use of the mark (a) taking an unfair advantage of the earlier mark, or (b) being detrimental to the
reputation or to the distinctive character of an earlier TM?
 Is the mark is used without due cause?
Reputation
Case C-375/97 General Motors Corp v Yplon SA [1999] ECR I-5421 - C proprietor of TM ‘CHEVY’ for motor vehicles.
Yplon was the registered proprietor of the TM ‘CHEVY’ for detergents and cleaning fluids.
ECJ reputation threshold is based on ‘certain degree of knowledge of the earlier trade mark among the public . . . It is
only where there is a sufficient degree of knowledge of that mark that the public, when confronted by the later trade
mark, may possibly make an association between the two trade marks, even when used for non-similar products or
services, and that the earlier trade mark may consequently be damaged.’
In ascertaining the reputation several factors need to be taken into consideration:
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 Market share
 Intensity, geographical extent and duration of the use of the earlier mark
 the size of the investment made by the undertaking in promoting the earlier mark
Similarity between the marks
No requirement to examine likelihood of confusion.
Case C-408/01 Adidas-Salomon AG v Fitnessworld Trading Ltd [2003] ECR I-12537
‘It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect
that the relevant section of the public establishes a link between the sign and the mark.’ *para 31+
Case C-252/07 Intel Corp v CPM UK Ltd [2009] ETMR 13 - INTEL (the computer chip makers) sued CPM (a marketing
and telemarketing company) over the registered trade mark INTELMARK.
ECJ: Assessment of the link between marks:
“62 … Article 4(4)(a) of the Directive must be interpreted as meaning that whether "there is a link, within the
meaning of Adidas-Salomon and Adidas Benelux, between the earlier mark with a reputation and the later
mark must be assessed globally, taking into account all factors relevant to the circumstances of the case.
63 The fact that for the average consumer, who is reasonably well informed and reasonably observant and
circumspect, the later mark calls the earlier mark with a reputation to mind is tantamount to the existence of
such a link, within the meaning of Adidas-Salomon and Adidas Benelux, between the conflicting marks.
64 The fact that:
– the earlier mark has a huge reputation for certain specific types of goods or services, and
– those goods or services and the goods or services for which the later mark is registered are dissimilar or
dissimilar to a substantial degree, and
– the earlier mark is unique in respect of any goods or services,
does not necessarily imply that there is a link, within the meaning of Adidas-Salomon and Adidas Benelux,
between the conflicting marks.”
UNFAIR ADVANTAGE
Case C-487/07 L’Oreal v Bellure [2009] E.T.M.R. 55
L manufactured perfumes including TRESOR, MIRACLE, ANAIS ANAIS and NOA – fine fragrances. These were
registered TMs. D sold perfumes that were intended to smell like, and whose packaging resembled, L’s perfumes.
Proving unfair advantage?
“44 In order to determine whether the use of a sign takes unfair advantage of the distinctive character or
the repute of the mark, it is necessary to undertake a global assessment, taking into account all factors
relevant to the circumstances of the case, which include the strength of the mark's reputation and the degree
of distinctive character of the mark, the degree of similarity between the marks at issue and the nature and
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degree of proximity of the goods or services concerned. As regards the strength of the reputation and the
degree of distinctive character of the mark, the Court has already held that, the stronger that mark's
distinctive character and reputation are, the easier it will be to accept that detriment has been caused to it. It
is also clear from the case-law that, the more immediately and strongly the mark is brought to mind by the
sign, the greater the likelihood that the current or future use of the sign is taking, or will take, unfair
advantage of the distinctive character or the repute of the mark or is, or will be, detrimental to them (see, to
that effect, Intel Corporation (C-252/07) *2009+ E.T.M.R. 13 at *67+ to *69+).”
What is unfair advantage?
“50. . . . art.5(2) of Directive 89/104 must be interpreted as meaning that the taking of unfair advantage of
the distinctive character or the repute of a mark, within the meaning of that provision, does not require that
there be a likelihood of confusion or a likelihood of detriment to the distinctive character or the repute of the
mark or, more generally, to its proprietor. The advantage arising from the use by a third party of a sign similar
to a mark with a reputation is an advantage taken unfairly by that third party of the distinctive character or
the repute of the mark where that party seeks by that use to ride on the coat-tails of the mark with a
reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and
to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of
the mark in order to create and maintain the mark's image.”
L’Oréal SA, Lancôme Parfums et Beauté & Cie and Laboratoire Garnier & Cie v Bellure NV, Malaika Investments Ltd
(trading as Honeypot Cosmetic & Perfumery Sales) and Starion International Ltd [2010] RPC 23
Specsavers International Healthcare Ltd v Asda Stores Ltd [2010] EWHC 2035 (Ch)
Detrimental to the reputation
 Daimler Chrysler v. Alavi (‘Merc’ Case) [2001] RPC 813
Detrimental to the distinctive character
 Case C-252/07 Intel Corp v CPM UK Ltd [2009] ETMR 13 - To show detriment to the distinctive character of
the TM:
“Proof that the use of the later mark is or would be detrimental to the distinctive character of the earlier
mark requires evidence of a change in the economic behaviour of the average consumer of the goods or
services for which the earlier mark was registered consequent on the use of the later mark, or a serious
likelihood that such a change will occur in the future.”
Without due cause
 Premier Brands UK v Typhoon [2000] FSR 767

2.4 Conflict with earlier rights
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2.5 Caveat: Consent and ‘honest concurrent use’
“5 (5) Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier
trade mark or other earlier right consents to the registration.”

Section 7 TMA 1994



5 (4) A trade mark shall not be registered if, or to the extent that, its use in the
United Kingdom is liable to be prevented—

(a) by virtue of any rule of law (in particular, the law of passing off)
protecting an unregistered trade mark or other sign used in the course
of trade, or

(b) by virtue of an earlier right other than those referred to in
subsections (1) to (3) or paragraph (a) above, in particular by virtue of
the law of copyright, design right or registered designs.

A person thus entitled to prevent the use of a trade mark is referred to in this
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Exclusivity of rights conferred by registered trade marks [s. 9]




Disposition of registered trade marks [TMA 1994 ss. 22 - 31]

 personal property [ss. 2(1) and 22]

 co-ownership permitted – two or more owners jointly are each entitled to an equal undivided share [s. 23]

 a registered trade mark is transmissible by assignment or testamentary disposition [s. 24]
9.— RIGHTS CONFERRED BY REGISTERED TRADE MARK
(1) The proprietor of a registered trade mark has exclusive rights in the trade mark
which are infringed by use of the trade mark in the United Kingdom without his
consent.

The acts amounting to infringement, if done without the consent of the proprietor,
are specified in section 10.

(2) References in this Act to the infringement of a registered trade mark are to any
such infringement of the rights of the proprietor.

(3) The rights of the proprietor have effect from the date of registration (which in
accordance with section 40(3) is the date of filing of the application for registration):

Provided that—

(a) no infringement proceedings may be begun before the date on which the
trade mark is in fact registered; and

(b) no offence under section 92 (unauthorised use of trade mark, &c. in
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 the following acts to be entered in the trade mark register [s. 25]:

o an assignment
o the grant of a licence
o the granting of any security interest
o the making by personal representatives of an assent
o a court order transferring trade mark rights

 no notice of any trust shall be entered in the register [s. 26]

 a licence to use a registered trade mark may be general or limited [s. 28], but must be in writing

 exclusive licenses [s. 29]

 general provisions as to rights of licensees in case of infringement [s. 29]

 discretion regarding the rights and remedies provided for in an exclusive licence [s. 31]



Losing the trade mark

1. Surrender – s.45 TMA 1994

2. Revocation – s.46 TMA 1994
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 non-use
 mark has become generic
 mark has become descriptive

3. Breaches any of the absolute grounds for refusal – s.47

4. Earlier registered TM

5. Bad faith


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Revocation

A. Non-use – s.46(1)(a)-(b) TMA 1994
Initial grant of monopoly right is 10 years from date of registration - s.42(1) TMA 1994


Genuine Use
Case C-40/01 Ansul v Ajax [2003] ECR I-2349

“38. . . . when assessing whether there has been genuine use of the trade mark, regard must be had to all the
facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in
particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a
share in the market for the goods or services protected by the mark.

39. Assessing the circumstances of the case may thus include giving consideration, INTER ALIA , to the nature
of the goods or service at issue, the characteristics of the market concerned and the scale and frequency of
use of the mark. Use of the mark need not, therefore, always be quantitatively significant for it to be deemed
genuine, as that depends on the characteristics of the goods or service concerned on the corresponding
market”


Proper reasons for non-use
Revocation may not occur if there are ‘proper reasons for non-use’. Onus is on the registered proprietor to prove that
there are proper reasons for non-use.


B. Generic – s.46(1)(c) TMA 1994

Examples of generic marks:

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 GRAMAPHONE
 THERMOS
 BACH FLOWER REMEDIES
 ESCALATOR



C. Descriptive – s.46(1)(d) TMA 1994
The mark will be revoked if it is liable to mislead the public as to the nature, particularly as to the nature, quality or
geographical origin of those goods or services.


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Infringement (TMA 1994 s. 10(1)(2)(3))

Who can bring an infringement action?

 an infringement action may be brought by the proprietor [s. 14(1)], or by the exclusive licensee [s. 31(1)]


1. Primary act











Use in course of trade

s.103(2) TMA 1994 defines ‘use’

‘use (or any particular description of use) of a trade mark, or of a sign identical with, similar to, or likely to be
mistaken for a trade mark, include use (or that description of use) otherwise than by means of a graphic
representation.’

10.— Infringement of registered trade mark.
(1) 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.

(2) A person infringes a registered trade mark if he uses in the course of trade a sign where
because—

(a) 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

(b) 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
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s.103(1) TMA 1994 : “trade” includes any business or profession

What amounts to use?


















Incidental use?
Trebor Bassett Ltd v Football Association Ltd [1997] FSR 211 – Photographs of England football players wearing
England shirts, which had the ‘Three Lions’ logo on them. The photographs were used on cards which were included
in packets of sweets.

Rattee J. said:
10 (4) For the purposes of this section a person uses a sign if, in particular, he—

(a) affixes it to goods or the packaging thereof;

(b) offers or exposes goods for sale, puts them on the market or stocks them for
those purposes under the sign, or offers or supplies services under the sign;

(c) imports or exports goods under the sign; or

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‘Trebor Bassett is not even arguably using the logo, as such, in any real sense of the word “uses”, and is
certainly not, in my judgment, using it as a sign in respect of its cards.’




Use as a trade mark
Is use restricted to trade mark use?

Case C-206/01 Arsenal Football Club Plc v Reed [2002] ECR I-10273





Cases after Arsenal v Reed
R v Johnstone [2003] 1 WLR 1736 (HL)
J sold bootleg CDs of well known bands, including BON JOVI and ROLLING STONES which are registered TMs.
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HLs: Lord Nicholls said:

“the essence of a trade mark has always been that it is a badge of origin. It indicates trade source: a
connection in the course of trade between the goods and the proprietor of the mark. That is its function.
Hence the exclusive rights granted to the proprietor of a registered trade mark are limited to use of a mark
likely to be taken as an indication of trade origin. Use of this character is an essential prerequisite to
infringement. Use of a mark in a manner not indicative of trade origin of goods or services does not encroach
upon the proprietor's monopoly rights”



Case C-48/05 Adam Opel AG v Autec AG [2007] ETMR (33) 500

FACTS: Opel registered mark for cars and toys; wanted to prohibit Autec from using their sign on their replica model
car, preventing them from offering them for sale, importing and exporting; in response, Autec said they’re not using
the trademark as such. They want to depict that it is a true replica vehicle, but this does not amount to use in the
trademark sense.
Question referred to the ECJ: was there infringing use of the mark? Did it affect the essential function of the
trademark, in particular the trade origin. Any use which effects the essential function of the trademark is infringing
according to the Arsenal case. Did the average consumer think the toys came from Opel or were economically linked
to it? If a link is being made, then its use will affect the function of the trademark. If not, then there is no infringing
use.
Held: these cars were to be viewed as a mere replication of the modal car. There was no real link being made by the
average consumer.
It could be argued that the toy cars were targeted at children, so they’re being commercialised in a different market
area.



Use of a company name: is that the same as use in the course of trade?

Case C-17/06 Céline SARL v Céline SA [2007] E.T.M.R. 80
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Céline SA – registered the French word trade mark “Céline” for clothes and shoes. Céline Sàrl has traded under the
name “Céline” since 1950 when its trading name was entered into the local trade register. Celine brought
infringement proceedings based on the use of ‘Celine’ alone. Does the use of company name amount to the use of
the mark within the course of trade? It is for the national courts whether Celine SARL was able to affect the
trademark.

ECJ: “The purpose of a company, trade or shop name is not, of itself, to distinguish goods or services . . . The purpose
of a company name is to identify a company, whereas the purpose of a trade name or a shop name is to designate a
business which is being carried on. Accordingly, where the use of a company name, trade name or shop name is
limited to identifying a company or designating a business which is being carried on, such use cannot be considered as
being “in relation to goods or services” within the meaning of Art.5(1) of the Directive.

Conversely, there is use “in relation to goods” within the meaning of Art.5(1) of the Directive where a third party
affixes the sign constituting his company name, trade name or shop name to the goods which he markets (see, to that
effect, Arsenal at [41], and Adam Opel at [20]).

In addition, even where the sign is not affixed, there is use “in relation to goods or services” within the meaning of
that provision where the third party uses that sign in such a way that a link is established between the sign which
constitutes the company, trade or shop name of the third party and the goods marketed or the services provided by
the third party.

In the main proceedings, it is for the national court to determine whether the use by Céline Sàrl of the Céline sign
constitutes use in relation to those goods for the purposes of Art.5(1) of the Directive.”

- Mere use of the trade name itself would not be an infringement; BUT
- If the trade name is used to distinguish between goods – use is prohibited – link between mark of
goods/services.
- It is possible to use company names that are similar:
S. 69 Companies Act 2996 – right to object to misleading company names;
(1) A person may object to a company’s registered name on the ground –
a. that is the same as a name associated with the applicant in which he has goodwill, or
b. that it is sufficiently…
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Optional reading: ‘A tale of two Celines’ *2008+ 30(2) E.I.P.R. pp 71-74


COMPARATIVE ADVERTISING
 is permissible so long as (TMA 94 s. 10(6)) it is not for



- purpose: to permit comparative advertising
- allows another trader to use another trade mark in a legitimate way.
-
02 Ltd. v. Hutchinson 3G UK Ltd. [2006] EWHC 534; RPC 29


British Airways v. Ryanair Ltd. [2001] FSR 541
Ryanair ran adverts, which made comparisons of the fares offered on specified routes, were containing the heading
‘EXPENSIVE BA . . . . DS!’ and ‘EXPENSIVE BA’. BA claimed that the first headline was offensive and the price
comparisons in the adverts were unfair. The statute provides that any comparison must be done according to honest
practices and not detrimental to the distinctive character and repute of the trade mark. Case dismissed by Jacob J. He
considered that the first one was vulgar and should be dealt with by the standards advertising authority. Looking at
the prices, it was cheaper to fly by Ryanair. What does the average consumer normally take in?
“. . . I do not think that the average consumer would find the price comparison misleading. He would expect there to
be some sort of conditions (and indeed the small print makes that clear). In substance the advertisements were true.
The fact that no-one has complained, not even travel agents who might perhaps have lost commission and thus [be]
keen to complain, confirms me in my view.”
Jacob J continued:
any such use otherwise than in accordance with honest practices in industrial or
commercial matters shall be treated as infringing the registered trade mark if
the use without due cause takes unfair advantage of, or is detrimental to, the
distinctive character or repute of the trade mark.
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‘. . . the use was honest comparative advertising. I suspect the real reason BA do not like it is precisely because it is
true.’
The average consumer will expect a slight amount of exaggeration, but it must not be misleading. Ultimately, as a
consumer looking at an advert, you would not expect all the terms and conditions to be set out in the advert. Even
though BA didn’t like it.
Vodafone v Orange - Orange claimed that consumers save on average £20/month to Vodafone users; the advert thus
suggested either that Vodafone users had to pay £20/month for the same service or that you could save £20/month if
you switched to Orange. Vodafone claimed that was a dishonest use of their trade mark.
ECJ: public are used to exaggeration in advertising so they expect ‘a certain amount of hyperbole’. Test: ‘Whether a
reasonable man would take the claim being made as one made seriously, the more precise the claim the more it is
likely to be so taken – the more general or fuzzy the less so’. Very pragmatic approach, taking into account what the
average consumer would think.
O2 v Hutchinson 3G – what amounts to use of the trade mark in the trade mark sense; O2 brought an action against
Hutchinson for infringement of its trade mark; used in a televison campaign in a comparison advert that used the
term O2 and moving pictures of the bubbles and an animated picture of 3. It implied that 3G is cheaper than O2. O2
didn’t approve the use of the bubbles to make the comparison. O2 said the use of the bubbles was not indispensable,
they could’ve used the sign on its own.
Issue: Had the essential function of the trade mark jeopardised when the sign is used to compare goods and services
with those of the trade mark owner?
ECJ: Infringing use depended upon whether the essential function of the trademark was affected. The Court had to
consider that if a similar sign is being used and it does not affect the essential function of the TM, then it is not
infringing => cannot assume automatic infringement. If there is something similar and there is no likelihood of
confusion, then there will be no confusion. Not clear if this has broadened the scope of non-infringing use. In the
context of comparative advertising, must also take into account Council Directive 84/450 EEC on Misleading
Advertising, amended by Directive 97/55.
L’Oreal v Bellure – key issue was whether the use of the word marks in a comparison list against the fake perfumes
was an infringement. A trade mark has other functions: guaranteeing quality of goods or services in question and
those of communication, investment or advertising. What status do these functions have? Arguably, they are
secondary but when you start to look at what a trade mark is about, it is about protecting the owner of the TM. Far
broader approach than experienced previously. Comparison lists are permissible only if they don’t jeopardise the
other functions of the TM. This reinforces the fact that the proprietor has exclusive rights. Highlighted the essence of
the purpose of the Directive:
- Ensure fair competition;
- Must be lawful – must not take unfair advantage of the reputation of the mark;
If the goods are expressively or implicitly advertised as imitations of other brands, then it is unlawful. Jacobs LJ set out
the basic facts and asked the relevant questions:
Does trade mark law prevent the Ds from telling the truth?
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Potential restriction on competition - when it comes to areas like generic drug manufacturers or replacement
cartridges. Jacob LJ expressed discomfort about the potential implications of the judgment: where do you draw the
line. The ECJ seem to have noticed a shift from protecting trade origin to a far-wider brand protection.
If the use of a TM does not affect the essential function of a trade mark => no infringement. The essential function of
a TM is affected if there is confusion.
INFRINGEMENT OF IDENTICAL MARKS - S.10(1)
Is the sign used in the course of trade? If yes, then there is a potential infringement.
Are the signs identical?
Case C-291/00 LTJ Diffusion SA v Sadas Vertbaudet SA [2003] ECR I-2799 – Arthur is not identical to Arthur et Felicie –
strict approach:
 Identical - reproduces, without any modification or addition, all the elements constituting the trade mark or
where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average
consumer
 Perception of the average consumer
 Average consumer - reasonably well informed, reasonably observant and circumspect
 Overall impression
 Strict interpretation – if TM is similar then action lies under s.10(2); insignificant differences ok
INFRINGEMENT OF SIMI LAR MARKS - S.10(2)
Marks are identical or similar, and used for identical or similar goods or services. There must be a likelihood of
confusion (includes likelihood of association) on the part of the public.
Are the marks similar?
Sabel BV v Puma AG [1997] ECR I-6191
 Global appreciation - visual, aural or conceptual similarity of the marks in question, must be based on the
overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant
components; acquired or inherent distinctiveness.
Canon Kabushiki Kaisha v Metro Goldwyn Mayer [1998] ECR I-5507
 Global assessment - some interdependence between the relevant factors, and in particular a similarity
between the trade marks and between these goods or services. Accordingly, a lesser degree of similarity
between these goods or services may be offset by a greater degree of similarity between the marks, and vice
versa
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 Picasso v OHIM- Picasso and Picarro, Picasso estate argued Picasso enjoyed a certain level of distinctiveness
and it is so well known by everyone. The ECJ did a factual assessment: when confronted to the sign Picarro,
the relevant public immediately associates it with the painter and that, given the painter’s renown with that
public, that particularly right reference is such as greatly to reduce the resonance with which in this case, the
sign is endowed as a mark, among others, of motor vehicles.
Other factors to note:
 Confusion? Average consumer is confused as to the origin of the goods or services. What is the origin of the
goods or services?
 Greater the similarity of the marks and the good or services – infringement
 Distinctive TM – protection is stronger where likelihood of confusion may arise (Sabel).
When it comes to goods, a global assessment must be done, taking into account (Canon):
 Nature of goods, end users, method of use, are they in competition?
British Sugar – TREAT (desert sauces and syrups) and ROBERTSON’S TOFFEE TREAT (jam and preserves) – the
proximity in the supermarket, the nature of the goods themselves;
INFRINGEMENT OF MARKS WITH A REPUTATION – S.10(3)
 Applies to identical, similar or dissimilar goods - Case C-292/00 Zino Davidoff v Gofkid [2003] ECR I-389
 s.10(3) is not based on assessing confusion - Case C-292/00 Zino Davidoff v Gofkid [2003] ECR I-389
 Purposive approach in interpreting this section - Case C-408/01 Adidas-Salomon AG v Fitnessworld Trading
Ltd [2003] ECR I-12537
 Dilution of a mark: applies where the marks identical or similar. There must be a link or association between
the marks in the mind of the public, appreciated globally, taking into account all factors relevant to the
circumstances: - Case C-408/01 Adidas-Salomon AG v Fitnessworld Trading Ltd [2003] ECR I-12537
o No need to prove actual damage but must provide evidence of future risk
REQUIREMENTS UNDER S.10(3)
 Does the mark have a reputation?
 Is the D’s sign similar to the earlier trade mark?
 Is the use of the mark (a) taking an unfair advantage of the earlier mark, or (b) being detrimental to the
reputation or to the distinctive character of an earlier TM?
 Is the mark is used without due cause?
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 Is there a link between the goods or services?
SECONDARY INFRINGEMENT
Secondary acts of infringement require knowledge (TMA 1994 s. 10(5)):
‘. . . if when he applied the mark he knew or had reason to believe that the application of the mark was not
duly authorised by the proprietor or a licensee.’


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3. Limitations on infringement - s. 11 TMA 1994





















Overlapping registrations - s.11(1) TMA 1994

Normally used where there is a challenge to the validity of the defendant’s registration of a TM under s.47(6).

11.— LIMITS ON EFFECT OF REGISTERED TRADE MARK.
(1) A registered trade mark is not infringed by the use of another registered trade
mark in relation to goods or services for which the latter is registered (but see
section 47(6) (effect of declaration of invalidity of registration)).

(2) A registered trade mark is not infringed by—

(a) the use by a person of his own name or address,

(b) the use of indications concerning 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, or

(c) the use of the trade mark where it is necessary to indicate the intended
purpose of a product or service (in particular, as accessories or spare
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Proviso: honest practices – s.11(2) TMA 1994

Defences provided for under s.11(2) have to be considered in conjunction with the issue of ‘honest practice in
industrial and commercial matters’.

Case C-100/02 Gerolsteiner Brunnen GmbH & Co v Putsch GmbH [2004] RPC 761 – duty to act fairly in relation to the
legitimate interests of the trade mark owner’. *para 24+ In assessing this issue ‘it is for the national court to carry out
an overall assessment of all the relevant circumstances’.




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Use of own name or address – s.11(2)(a) TMA 1994

Case -245/02 Anheuser-Busch v Budvar [2004] ECR I-10989

ECJ: Guidance was provided on factors to consider when assessing ‘honest practice’.

“83 In assessing whether the condition of honest practice is satisfied, account must be taken first of the
extent to which the use of the third party’s trade name is understood by the relevant public, or at least a
significant section of that public, as indicating a link between the third party’s goods and the trade-mark
proprietor or a person authorised to use the trade mark, and secondly of the extent to which the third party
ought to have been aware of that. Another factor to be taken into account when making the assessment is
whether the trade mark concerned enjoys a certain reputation in the Member State in which it is registered
and its protection is sought, from which the third party might profit in selling his goods.”




Descriptive use – s.11(2)(b) TMA 1994

Mirrors s.3 grounds for refusal. Descriptive term can only be registered if it has acquired a secondary meaning.


Case C-100/02 Gerolsteiner Brunnen GmbH & Co v Putsch GmbH [2004] RPC 761
Bottles of mineral water were marketed in Germany - ‘GERRI’ (German Co), and the other ‘KERRY SPRING’ an Irish
mineral water (name refers to the geographical location of the water).

ECJ: Appeared to accept the use of a geographical location for spring water, went on to say

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“24. … the only test mentioned in Article 6(1) of Directive 89/104 is whether the indication of geographical
origin is used in accordance with honest practices in industrial or commercial matters. The condition of
‘honest practice’ constitutes in substance the expression of a duty to act fairly in relation to the legitimate
interests of the trade mark owner (BMW, cited above, paragraph 61).

25. The mere fact that there exists a likelihood of aural confusion between a word mark registered in one
Member State and an indication of geographical origin from another Member State is therefore insufficient
to conclude that the use of that indication in the course of trade is not in accordance with honest practices.
In a Community of 15 Member States, with great linguistic diversity, the chance that there exists some
phonetic similarity between a trade mark registered in one Member State and an indication of geographical
origin from another Member State is already substantial and will be even greater after the impending
enlargement.”



Case C-48/05 Adam Opel AG v Autec AG [2007] ETMR (33) 500













Intended purpose – s.11(2)(c) TMA 1994
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Case C-228/03 Gillette Company v LA-Laboratories Ltd Oy [2005] ECR I-2337
Gillette had registered TM for GILLETTE and SENSOR for razors. The defendant made razors and blades under the TM
PARASON FLEXOR. They sold these razors with a sticker on the packaging ‘All Parason Flexor and Gillette Sensor
handles are compatible with this blade’.


ECJ: Court considered whether it was necessary to use GILLETTE to indicate the intended purpose of the blades.

“39. Use of the trade mark by a third party who is not its owner is necessary in order to indicate the intended
purpose of a product marketed by that third party where such use in practice constitutes the only means of
providing the public with comprehensible and complete information on that intended purpose in order to
preserve the undistorted system of competition in the market for that product.

It is for the national court to determine whether, in the case in the main proceedings, such use is necessary,
taking account of the nature of the public for which the product marketed by the third party in question is
intended.”

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ECJ in Gillette also provided further guidance on what would not amount to honest practice:

“49. . . . the condition of ‘honest use’ within the meaning of Article 6(1)(c) of Directive 89/104, constitutes in
substance the expression of a duty to act fairly in relation to the legitimate interests of the trade mark owner.

Use of the trade mark will not be in accordance with honest practices in industrial and commercial matters if,
for example:

- it is done in such a manner as to give the impression that there is a commercial connection between the
third party and the trade mark owner;

- it affects the value of the trade mark by taking unfair advantage of its distinctive character or repute;

- it entails the discrediting or denigration of that mark;

- or where the third party presents its product as an imitation or replica of the product bearing the trade
mark of which it is not the owner.

The fact that a third party uses a trade mark of which it is not the owner in order to indicate the intended
purpose of the product which it markets does not necessarily mean that it is presenting it as being of the
same quality as, or having equivalent properties to, those of the product bearing the trade mark. Whether
there has been such a presentation depends on the facts of the case, and it is for the referring court to
determine whether it has taken place by reference to the circumstances.

Whether the product marketed by the third party has been presented as being of the same quality as, or
having equivalent properties to, the product whose trade mark is being used is a factor which the referring
court must take into consideration when it verifies that such use is made in accordance with honest practices
in industrial or commercial matters.”


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Remedies – ss.15-21 TMA 1994

 Damages – s.14(2)
 Injunctions – s.14(2)
 Account of profits – s.14(2)
 Order for erasure of offending sign – s.15
 Delivery-up – s.16
 Disposal – s.19
 Groundless threats for infringement proceedings – s.21
Offences - ss. 92 – 96, 101 TMA 1994

 a person is guilty if the offence is committed with a view to gain, or with intent to cause loss to another, and
without the consent of the trade mark proprietor [s. 92]

 a person is not guilty under s. 92 unless

1. the goods are goods in which the trade mark is registered, or

2. the trade mark has a reputation in the U.K. or E.C., and the use of the sign would take unfair
advantage, etc., the distinctive character of the mark [s. 92(4)]

 on summary conviction, possible imprisonment not exceeding 6 months and/or a fine not exceeding the
statutory maximum [s. 92(6)(a)]

 on conviction on indictment, a fine and/or imprisonment for a term not exceeding 10 years [s. 92(6)(b)]

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R. v. R.A. Johnstone, et al. [2002] EWCA Crim 194 (s. 92(5) defence)


 offences committed by partnership/bodies corporate [s. 101]

1. brought against a partnership (in the name of the firm)
2. fines to be paid from partnership assets
3. ignorant partners or those trying to prevent the offence are to be deemed
innocent
4. body corporate is guilty as well as any officer conniving in the offence