Trademark Notes .docx

Trademark Notes .docx

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  9 Infringement S9 (Rightsof the trademark owner) The proprietor of a registered trademark has exclusive rights in the trademark which are infringed by use of the trademarks in the United Kingdom without its consent S10(1)-(3) TMA (Infringement acts) S10(1) – The double identity ground A person infringes a registered trademark if he uses in the course of trade a sign which is identical with the trademark in relation to goods or services which are identical with those for which it is registered S10(2) – Confusing similarities A person infringes a registered trademark if he uses in the course of trade a sign where because – (a) The sign is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered, or (b) The sign is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, (c) There exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trademark S10(3) – Marks with a reputation A person infringes a registered trademark if he uses in the course of trade a sign which – (a) Is identical with or similar to the trademark, and where the trade has a reputation in the UK and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark Infringement acts - relative grounds The grounds for infringement of S10(1)- (3) mirror the relative grounds for refusal in S5(1)(3)  No requirement of knowledge or intention on the part of the defendant. Liability is strict  No need to demonstrate damage  Possibility to commence an action for infringement even though the mark has not been used Two main differences: 1. Need to identify the defendant’s sign 2. In order to infringe, it must be shown that the defendant used the mark “in the course of trade” What is the defendant’s sign? Compare the sign as registered by the claimant with the sign used by the defendant  British Sugar v Robertson (TREAT) – ROBERTSON’S TOFFEE TREAT and TREAT are considered as being identical  SA Societe LTJ Diffusion v SA Sadas – ARTHUR and ARTHUR ET FELICIE are considered non-identical - There is identity where a sign reproduces “without any modification or addition, all the elements constituting the trademark”
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  - The courtswill only be justified in ignoring extraneous matter if it would, in the eyes of the average consumer, not be regarded as being part of the sign What is “use in the course of trade”? Prerequisite for all grounds of infringement  Euromarket Designs v Peters – In order to sustain an action for infringement of a British TM, the infringing act must take place in the UK. Here, anyone visiting the website from anywhere other than Ireland would understand that the site was not directed at them Rationale of the requirement: - to restrict the scope of protection given to TM owners - to minimize the impact that TMs have upon non-commercial uses of the sign S10(4) – What kind of uses are covered? 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 orexports goods under the sign; or (d) uses the sign on business papers or in advertising  Trebor v Football Association – To “affix a sign”, the mark must be used directly rather than indirectly on the goods. It is not enough if a mark incidentally appears on the defendant’s goods. Here, it was held that T's act of publishing and marketing the cards bearing photographs of players wearing the England football strip including the "Three Lions" logo did not in any sense amount to using the logo in respect of the cards on which the photographs appeared, and certainly did not amount to using the logo as a sign in respect of the cards - “Trade” includes any business or profession - “Trade” does not cover social or domestic uses - Use of a sign in art or music?  Arsenal v Reed – Uses “in the course of trade” are uses which are in the context of a commercial activity with a view to economic advantage and not as a private matter. Here, R's defence was that the signs had not been used as trademarks indicating trade origin, but were merely a sign of affiliation to A's football club but court ruled in favour of A as a substantial number of customers would find otherwise …but the question whether they would infringe would depend upon whether they affect one of the essentials functions of the mark, and whether they are covered by a defence 1) Use as a trademark – the use of a sign as a trademark, ie as a badge of origin will constitute a relevant use, and therefore will infringe
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  2) Use asa description – for purely descriptive purposes are non- infringing because they do not jeopardise the essential function of the mark  Holterhoff v Freiesleben - that it had been accepted by the German court that H had used the terms SPIRIT SUN and CONTEXT CUT solely in order to describe the type of cut of the precious stones offered for sale and the description was not meant to suggest that the stones originated from F 3) Use as a trade name – use as trade name in not in itself use in a trademark sense. However, a shop might use a trade name in a way that was perceived as distinguishing the goods of the shop from those of other traders. In such case use would be infringing  Celine SARL v Céline SA S10(5) – Secondary infringement A person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, shall be treated as a party to any use of the material which infringes the registered trade mark if when he applied the mark, he knew or had reasons to believe that the application of the mark was not duly authorised by the proprietor or a licensee 10 Invalidity and Revocation S47 – Invalidity A trademark may be declared invalid if it was registered in breach of one of the absolute or relative grounds for refusal S46 – Revocation 4 grounds for revocation: 1) The trademark has not been used for five years following the date of the completion of the registration (non-use) 2) The use of the trademark has been suspended for an uninterrupted period of five years (suspension of use) 3) The trademark has become the “common name in the trade” (generic) 4) The trademark has been used in a way so that it is liable to mislead the public (deceptive) S46(2) – Genuine use For a mark to be kept on the register, it has to be shown that it has been put to genuine use in the UK Two possible understandings of genuine use: - Any use which is not artificial, fictitious or merely to retain the mark - Need for real substantial use in the marketplace  Ansul BV v Ajax BV o Use as a trademark o Use via associated marks o Use by a licensee  Place of use  Proper reasons of non-use – existence of obstacles to use S46(1)(c) – Generic marks The registration of a trademark may be revoked because as a consequence of the acts or inactivity of the proprietor, it has become the common name in the trade
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  for a productor service for which it is registered  Re Gramaphone Company’s Application S46(1)(d) – Misleading Uses (deceptive marks) The registration of a trademark may be revoked where as a consequence of the use made of it by the proprietor or with his consent in relation to goods or services for which it is registered, it is liable to mislead the public, particular as to their: - Nature - Quality - Geographical origin  Orwoola Trade Mark 11 Defences Defences are available where a person has been charged with trademark infringement Defences balance the interests of the trademark owner and honest competitors S10(6) – Comparative advertising Nothing in the provision dealing with infringement shall be construed as preventing the use of a registered trademark for the purpose of identifying goods or services as those of the proprietor or a licensee Elements of defence: - The TM is used for the purpose of identifying goods or services as those of the proprietor or licensee - The use is in accordance with “honest practices” - The use does not “without due cause, take unfair advantage of, and is not detrimental to, the distinctive character or repute of the mark  O2 Holdings v Hutchison – The TMA must be interpreted as permitting comparative advertisement, so long as it is conducted in accordance to honest practices, as those practices have been defined for the purpose of the Directive Article 4 CAD Comparative advantage shall… be permitted [if] a) Nor misleading b) Compares goods or services meeting the same needs or intended for the same purpose; c) Objectively compares one or more material, relevant, verifiable.. d) Does not discredit or denigrate the trademarks e) For products with designation or origin.. f) It does not take unfair advantage of the reputation of a trade mark g) It does not present goods or services as imitations or replicas of goods or services bearing a
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  protected trademark ortrade name h) It does not create confusion among traders S11(1) – Use of a registered trademark A registered trademark is not infringed by another registered trademark in relation to goods or services for which the latter is registered Registration provides a defence to an action for infringement S11(2)(a) – Own name defence Defence to a claim of infringement where a person uses their own name or address, on condition that the use is in accordance to honest practices in industrial and commercial matters  Nichols’ trademark Application S11(2)(b) and (c) – Descriptive use and intended purpose A registered trademark is not infringed where the mark is used to indicate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of service, or other characteristics of goods or services A registered TM is not infringed where the def finds it necessary to use the TM to indicate the intended purpose of a product or service (in particular accessories and spare parts) This is subject to the condition that the use is in accordance to honest practices in industrial and commercial matters  Gerolsteiner Brunnen GmbH v Putsch GmbH What is an honest practice?  The Gilette Company v LA- Laboratories – Honest practices constitute a duty to act fairly in relation to the legitimate interests of the trademark owner The use of a trademark would not be in accordance with the test where: - It is done in such a manner that it may give the impression that there is a commercial connection between the reseller and the trademark proprietor - Where the use would affect the value of the trademark by taking unfair advantage of its distinctive character or repute - If the use discredits or denigrates that mark - The third party presents its product as an imitation or replica of the product bearing the trademark of which is is not the owner S12 – Exhaustion of rights A registered trademark is not infringed by the use of the trademark in relation to goods which have been put on the market in the EEA under that trademark by the proprietor or with his consent, unless the proprietor has legitimate reasons to oppose further dealings in the goods Legitimate reasons: 1) Altering the goods  Sony Computer Entertainments v Tesco Stores 2) Repackaging  Bristol-Myers v Paranova 3) Rebranding  Bristol-Myers v Paranova 4) Advertising the goods
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   Parfums ChristianDior SA v Evora BV As a general rule, a trademark owner has a right to object to the marketing of repackaged goods. However, if a number of conditions are met then the trademark owner will not be able to exercise that right The exact conditions and their scope can vary depending on the type of goods and the type of repackaging in question Examples of conditions:  the repackaging is necessary in order to market the product in the Member State of importation  the repackaging cannot adversely affect the original condition of the product  the presentation of the repackaged product is not such as to be liable to damage the reputation of the trademark and its owner  Silhouette – There is no international exhaustion  Zino Davidoff – Right to oppose parallel importation from outside the EEA cannot be used where the trademark owner has consented to such importation