Relative Grounds / Infringement

Question 1

What’s the test for identical marks?

Answer 1

Identical or differing only in immaterial details - LTJ Diffusion

Question 2

What about marks that haven’t been used yet?

Answer 2

Assume nominal use - Origins

Question 3

What are the factors for assessing similarity of marks?

Answer 3

Sabel v Puma: assess holistically, considering visual, aural, conceptual differences
Take into account dominant/distinctive components
From perception of average consumer of the relevant products

Question 4

Do people pay more attention to marks when it’s an expensive purchase?

Answer 4

Yes - Sabel v Puma

Question 5

There is interplay for the Sabel factors and they can offset each other. What’s the authority for this?

Answer 5

Canon

Question 6

What are the considerations when assessing similarity of goods/services?

Answer 6

British Sugar:

• their respective users
• uses
• trade channels
• physical nature
• whether they’re complimentary or in competition

Question 7

Marks with a reputation: where must the reputation be? What do you consider?

Answer 7

General Motors - in the territory concerned.
Consider:
- Market share / intensity
- Geographical spread
- Investment
- Duration

Question 8

For marks with a reputation - do the goods/services need to be similar?

Answer 8

No - Davidoff

Question 9

Is confusion necessary for marks with a reputation? If not, what should be shown instead?

Answer 9

Intel - no confusion, but need to show change in consumers’ economic behaviour

Question 10

What’s the leading case for ‘likelihood of confusion’?

Answer 10

Skykick: assess globally, from perspective of average consumer. Imperfect recollection; reasonably circumspect and observant

Question 11

For establishing likelihood of confusion, when can one refer to dominant/distinctive components of marks?

Answer 11

Thompson Life - when one element has ‘independent and distinctive role’