WS1 – TRADEMARKS AND PASSING OFF

STRUCTURE FOR IP QUESTIONS THE NOTES: 1. 2. 3. 4. 5. 6. 7. 8. Identify items, which attract IP rights Identify relevant IP rights Do items qualify for protection? Ownership and duration. Infringement? Defences or exceptions? Remedies available? Appropriate remedy? FROM WORKSHOP: What is Protected? Eg names / goodwill Is it registered? – If trademarks / RDR / Patents Are there any monopoly rights? Trademarks / Patents Who owns it and for how long? Indefinitely / Renewal Is it infringed? If yes, defences / exceptions? If none, remedies? Infringement Subsistence

In exam the question will be subsistence OR infringement?? Use the P(rincipal) E(xplain) R(elate) C(onclude) approach

What is protected by which IP right? Product/invention Process Name Logo Shape/appearance Works 3D shapes Goodwill New Designs 2D shapes Information Trademarks patent, passing off Patent Trademark, passing off, copyright? Trademark, passing off, copyright? design rights copyright, moral rights design rights passing off Registered design rights Registered design rights confidentiality, database right, (the best way of protecting goodwill)

A trade mark is a brand name and a highly commercial right that is best protected by registration. Note: Unregistered trade marks can only be protected by the law of passing off. Registration of trade marks; What can one register? Trade Marks Act 1994

One can register a trade mark which is, per section 1(1) TMA, ‘any sign capable of being represented graphically which is capable of distinguishing the goods or services of one undertaking from those of other undertakings.’ Can therefore register: music, sounds, combinations of colours, words, designs, letters, numerals, shape of goods and their packaging.

When will registration be refused? The absolute grounds:

Section 3 TMA – absolute grounds for refusal of registration Section 5 TMA – relative grounds for refusal of registration

3(1)(a): signs that do not meet requirements of 1(1). For example, a mark which cannot be described in written form and thus is not capable of ‘graphical representation.’

Surname or Forename:

3(1)(b): marks that are devoid of any distinctive character, an example of which may be the name of someone, eg does the mark make you think of the manufacturer.

Characteristics of the goods:

3(1)(c): merely describes the characteristics of the goods, too descriptive names, kind, quality, quantity, intended purpose value, e.g. ‘cornflakes,’ ‘orange juice’

i. laudatory words (e.g. magic safes) is not registrable ii. geographical names as they must be left available for other traders who are
actually located there. If name did not indicate origin of goods it would be deceptive and hence unregistrable, exception: e.g. Parma ham – can register a geographical name if are a group of traders located there iii. two normal being put together in a novel can be acceptable eg Baby- Dri but if the two words are not used unusually then NOT allowed eg Doublemint.

3(1)(d): mark has become customary in current language, e.g. launderette.

Mark consists purely of shape of goods or their packaging:

3(2)(a): There is therefore nothing to distinguish the goods from others. Must ‘immediately strike the eye as different and therefore memorable’ to be registrable. 3(2)(b): mark is purely shape of goods necessary to obtain a technical result. Philips Case re shaver heads (unregistrable) N.B. Shapes should be registered as design rights yet Coca Cola Bottle was registrable (much goodwill though)

Public Interest:
• •

3(3)(a): 3(3)(b):

mark is contrary to public policy or morality. E.g. ‘Tiny Penis’ was not registrable mark is likely to deceive the public. Where mark is misleading Deception re nature, quality or origin of goods. E.g. Orlwoola would deceive as would think goods are completely of wool. Remember check how word sounds as well as how is spelt Nb – this could also under s.3(1)(c) for sounding like other words description wise

3(6): application is made in bad faith. E.g. stockpiling marks to sell in future would involve applications made in bad faith

Overcoming the grounds of absolute refusal.

The absolute grounds can be overcome by evidence of use. Basis is that the lack of distinctiveness can be overcome by use and building up of goodwill in product. (the ‘s.3(1) proviso’ is the authority) The applicant must show that it has built up a reputation, ie by using it the product may have acquired distinctiveness in FACT through use and it can be registered. The applicant will establish reputation in the product by sending a statutory declaration to the Trade Mark Registry (TMR) with evidence of advertising spend, turnover and length of use (minimum length of use is 5 years).

The relative grounds:

Involves a conflict with an existing registered trade mark which is identical or similar to the one being applied for. For the purposes of section 5, what is an earlier trade mark? Section 6 – 6(1)(a) registered trade mark including a Community trade mark MARK Identical Identical GOOD / SERVICES identical similar EXTRA LIMB PROHIBITED UNDER SECTION x TMA ‘94 section 5(1) section 5(2)(a)

likelihood of confusion of public (includes likelihood of association with earlier mark) likelihood of confusion of public (includes likelihood of association with earlier mark) likelihood of confusion of public (includes likelihood of association with earlier mark) unfair advantage of or detrimental to earlier trade mark unfair advantage of or detrimental to earlier trade mark unfair advantage of or detrimental to earlier trade mark unfair advantage of or detrimental to earlier trade mark unfair advantage of or detrimental to earlier trade mark

Similar

identical

section 5(2)(b)

Similar

similar

section 5(2)(b)

Identical Similar Similar identical Similar

similar identical similar dissimilar dissimilar

section 5(3) section 5(3) section 5(3) section 5(3) section 5(3)

An application can also be refused on the grounds that it is likely to be the subject of a passing off action under section 5(4). Answering a question 1. What is Discuss S1(1) TMA apply to facts.

2. If new mark – discuss which of the absolute grounds will apply (under s.3 which grounds apply.)
Inherent problem with trade mark If new mark and there is existing mark – discuss the relative grounds (under S.5) Conflict with existing trademark 3. Discuss how the grounds can be overcome – explain s.3(1) proviso / stat decl / evidence needed

Infringement of a registered trade mark Section 10 TMA 94 Situation is very similar to section 5. Yet TMA indicates four types of infringement: Grounds Trade Mark Identical Identical Goods Similar Goods Dissimilar Goods Trade Mark Similar X (10(2)(b) or Y (10(3)(a) X (10(2)(a) or Y (10(3)(a) Y (10(3)(a)

NO X (10(2)(a) or Y (10(3)(a) Y (10(3)(a)

X = likelihood of confusion – s.10(2) (a) the sign is identical and is used in relation to goods or services similar (b) the sign is similar and is used in relation to goods or services identical with or similar Y= unfair advantage or detriment – s.10(3) (a) is identical with or similar to the trade mark NB: any use of a trade mark which is not in accordance with honest practices in industrial or commercial matters – 10(6) - Covers comparative advertising

Revocation of a trade mark / Opposite can also be answers to how to protect TM once registered. Section 46 specifies the circumstance in which the mark may be revoked. 1. 2. 3. Period of non-use for five years under 46(1)(a) mark has become the generic / common name for goods/services under section 46(1)(c) the mark has become misleading to the public, under 46(1)(d), through way proprietor has used it or allowed it to be used (if licence it need quality control provisions) A trade mark can effectively last forever. BUT MUST BE renewed every 10 years. Defences to infringement 1. The Counter Claim Argument that many defendants raise: Earlier trade mark is not validly registered and should be removed from the register s.47 S.47. Grounds for invalidity of registration (1) trade mark was registered in breach of section 3 (absolute grounds for refusal of registration). (2) trade mark was registered in breach of section 5 (relative grounds) (4) bad faith in the registration of a trade mark, 2. 3. 4. Honest use is of a person’s own name or address [section 11(2)(a)] Honest use for purposes of indicating nature of goods or services [section 11(2)(b)] Honest use by an independent business to use other TM’s [section 11(2)(c) ]eg supplies parts for BMW cars

Answering a question on INFRINGEMENT: EXAM STRUCTURE 1 Is the Mark identical or similar to the Trade Mark? Are the goods / services identical or similar or dissimilar?

a) Nature of the product. Fundamentally different nature?
2 b) Use c) Users d) Outlet e) Substitutability Based on 1 & 2 which infringement test applies?? Look at the table above X or Y etc Where s.10(2) applies: Likelihood of confusion Apply the Bass v Boss judgement factors, (when applying factors only apply / rely on what’s given in the question, do not speculate on ‘get up’ eg if only given two words DO NOT speculate regards the shape of the packaging). The factors:
(a) the likelihood of confusion must be appreciated globally,

3

(b)

judged through the eyes of the average consumer of the goods/services in question; who is reasonably well informed and reasonably circumspect and observant – but must rely upon the imperfect picture of them he has kept in his mind; the average consumer perceives a mark as a whole and does not proceed to analyse its various details; the visual, aural and conceptual (what the word means / stands for) similarities of the marks must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient for the purposes of Section 5(2) the reputation of a mark does not give grounds for presuming alikelihood of confusion simply because of a likelihood of association in the strict sense; but if the association between the marks causes the public to wrongly believe that the respective goods come from the same or economically linked undertakings, there is a likelihood of confusion within the meaning of the section;

(c) (d)

(e) (f) (g) (h) (i)

Conclude: Often inconclusive because of lack of information. “more information is needed to be certain” is frequent conclusion Where s.10(3) applies: Unfair Advantage or Detriment Run through following questions: 1. Is it in course of trade? 2. does the original trade mark has a reputation in the trade? 3. is there an unfair advantage gained by the mark from the trade mark? OR / AND

3.

detriment to the (i) repute or (ii) distinctiveness of the original trade mark? (i) If the mark is of inferior quality then it will be to detriment. (ii)Is it detrimental to the distinctiveness of the Trade Mark? (does it dilute the brand distinctiveness)

Conclude: often applies as dilutes the brand strength. Passing Off Background

Common law right enabling a business to defend itself from someone whom is trying to rip off the trading reputation of that business. A common law tort, which aims to stop someone else selling his goods/services on the back of another’s reputation. It protects the goodwill of a product and, arising automatically, lasts indefinitely. Lord Halsbury – ‘nobody has any right to represent his goods as the goods of somebody else.’ Must be in relation to a commercial activity. An action concerning the name of a political party did not succeed.

Note:

Elements of a passing off claim: EXAM STRUCTURE 1. Goodwill/Business Reputation Must be among customers of prospective customers and relate to a distinguishing feature of the good Distinguishing feature? Name, logo, packaging, presentation, shape of product, colour, get up Proving goodwill: • • • sales figures advertising expenditure advertising methods trading history / longevity turnover fan mail


• • 2. Misrepresentation

Must be : • a representation • made by the defendant • in the course of trade • which leads to confusion of customers or potential customers • at the point of sale or before it When discussing this use the ‘identical’ and ‘similar’ language from S.10. Note: Not enough that there is confusion between claimant and defendant’s product. Customers must believe that defendant’s products are associated with the claimant. Evidence of confusion is a question of fact;
• • • • • •

Survey evidence (viewed sceptically by courts) Witness evidence / complaints Confuse judge is best way type of goods/services / Get Up geographical area / point of sale Price (No confusion if public view good as a cheap rip-off)

Removal of a distinguishing feature can result in an unintentional misrepresentation.

3. Damage

Can be actual or potential.


Loss of profits Loss of reputation (if inferior quality) Loss of opportunity (an inability to now expand into a new market.)

Is harder to show damage if defendant is in a different field of activity. Proved with: • Sales Dropped • Complaints • Standard of other product If no actual damage been caused eg because new product effects have not been felt yet, then conclude with ‘No actual case at present but there is a potential so could lead to damage. Remedies available: Injunction – interim (prohibitory to immediately stop selling) and then full (after judgement Damages (loss of rep / profits / opport) OR account of profits Order for delivery up of offending items – impractical in practice. Company wont want lots of other product. Order for destruction of offending items – Unlikely if food. Differentiation of offending items – erasure of trademark infringment Defences available: Claimant’s mark is not distinctive, or is descriptive/generic Claimant and defendant have concurrent rights Defendant is honestly using his own name Claimant’s right is exhausted Claimant consented to/acquiesced in defendant’s conduct Claimant delayed in commencing proceedings Claimant abandoned the mark

Comparison of the Actions: TM INFRINGEMENT GOOD – strong protection once registered and easier to prove BAD – formalities and expensive (£200 and £50 every renewal) BAD – no protection for Get Up PASSING OFF BAD – difficult and expensive to prove

GOOD – no formalities or expenses but building up goodwill is expensive GOOD – Protects general Get Up