Defences Flashcards
What’s the case for pre-existing local rights?
Caspian Pizza - local goodwill is a defence to TM infringement
What’s honest concurrent use?
Not a statutory defence, but possibly a common law one? In Victoria Plumb and Budweiser, said it could be a defence to D’s use of his own mark.
Suitable for if there may be some confusion, but it’s justified, or D has built up his own expectations
How are ‘honest business practices’ assessed?
Objectively - D’s legitimate interests (Budweiser)
What is the authority from Tadcaster?
D has a duty to act fairly. If use implies infringement, it’s unlikely to be fair. In particular, is D competing with C? Did D take legal advice? Did it check? Should it have checked the register?
Is D:
- Discrediting/deingrating
- Presenting oneself as an imitation or replica
- Implying connection etc
Name a successful case of ‘own name defence’. Would it work now?
Assos v ASOS
Wouldn’t work now - has to be name of a natural person!
D should have checked the register, but its use was honest and there was no confusion in practice.
What was the outcome of the Datacard case?
Use was necessary to indicate the purpose of a product or service, but it was not honest as implied a commercial connection
What’s the leading case for saying comparative advertising can still infringe?
L’Oreal v Bellure (took unfair advantage and presented as imitation/replica)
List the BMS questions
- Was repackaging necessary (either for regulatory or market access reasons)?
- Does the repackaging affect the condition of the product?
- Are the manufacturer and importer identified?
- Does the presentation damage the reputation of the mark/its owner?
- Has the importer given notice to the owner?
When can somebody not use a TM to sell second-hand goods?
If it implies a business connection/affiliation - Portakabin
When is unboxing an infringement?
If damage has occurred - L’Oreal v eBay
