Deck 3 - TM 002 Flashcards
Lego v. OHIM
2010 – correct application of provision requires:
1) Essential char’ics of shape identified – i.e. most important elements of sign;
2) Authoriy may base assessment on OVERALL impression produced by sign or examine each component in turn;
3) Once the sign’s essential Char’ics are Id’d, authority has to determine the technical function of the goods
Considered easier approach than lego;
S.3 (3) (a) TMA
Contrary to public policy or morality
Ghazillian’s App
2002 – TINY PENIS – refused reg’ion;
Unacceptable to social & family values;
Correct anatomical terms for parts of genitals shld be reserved for serious use, not smutty clothing;
FCUK
2007 – TM is only objectionable under TMA 3(3)(a) if its use contravened generally accepted moral principles by reason of its intrinsic qualities – intrinsic qualities of FCUK ≠ objectionable
S.3 (3) (b)
Deceptive MKs
TMs which deceive the public
Wine OH! V OHIM
2006 - Wine OH! Refused for mineral waters b/c of difference between water & wine in terms of nature & quality;
Portakabin v OHIM
2002 - TITAN refused for portable buildings b/c would have deceived relevant public as to nature of goods
s.3 (6)
BAD FAITH – Tm shall not be reg’d if application nis made in bad faith;
3 types:
1) No intention to use Mk – Mickey Dees
2) Abuse of relationships;
3) Knowledge of 3rd party claim – lindt 2009
Mickey Dees 1998
Employee at nightclub tried to reg’Mickey Dees = bad faith b/che didn’t own a club & had no intention to use it
Justification – prevents stock piling
S.5 TMA 1994
Relative Grounds – mks which conflict w/ and earlier mk are not reg’bl.
s. 6 (3) TMA
Has earlier Mk been used? Where appl’t faced with opposition on s. 5 grounds – the appl’t can demant opponent produce evidence of TM use w/in past 5 years or proper reasons for non-use – otherwise opposition = rejected;
s. 5 (1)
Identical mks – Double Identity test =
1) Is the TM applied for identical to earlier mk?;
2) Are the g&s identical with earlier mk?
If yes – no need to prove further as TM protected – assumed confusion on part of consumers;
LTJ diffusion
LTJ diffusion
Websphere
2004 – Web-sphere and Websphere = identical
CANON
1999 – TEST for similar G&S –
Factual comparison b/twn G&S taking into account all relevant factors – including:
1) End users
2) Method of use;
3) Are mks in competition or complementary
Strength in one category can outweigh weakness in another – ECJ ‘low lvls of similarity btwn goods might be offset by high lvl of similarty b/twn mks.
Vedial
Contrast w/ canon – ECJ indicated 3 req’mnts (similarity of goods, similarity of mks & confusion) are cumulative
SABEL
Similarity of MKS – Global approach – Crt compares Mk as avg. Cnsmr would – as a whole;
Attention will be paid to dominant components;
Aural, visual, conceptual similarity shld be compared;
Mks = two leaping cats – conceptual similarity may be enough if earlier mk was well known or image particularly imaginative;
Il Ponte
2008 – visual/conceptual differences can offset aural similarities
Inter ikea
Visual similarity important for 3D mks & certain kinds of goods – clothes, furniture etc
Mystery drinks v OHIM
AURAL SIMILARITY – 2004 – phonetics of wine important as will be heard in restaurants & recommendations passed by word of mouth – mystery & mixery = similar
L’Oreal v OHIM
2009 – SPALINE ≠ successful reg’ion
New Look
2004 – appl’ion for NLSport/NLJEANS etc rejected b/c customers associate NL with New Look –
CRITICSM – could lead to monopoly
Reed v reed
2004 – JACOB J – where mk = descriptive, small difference may = sufficient to avoid confusion
Medion v Thompson
2005 – ECJ – b/c earlier mk had independent, distinctive role, origin of G&S covered by composite sign is attributed by public to owner of that MK.
(Thompson LIFE ((M had TM LIFE)) )
