Defences

Question 1

What is the difference between defending and defence?

Answer 1

defending = challenging validity of original mark by a counterclaim / making out s10 infringement not made out

defences - s.11 comparative advertising / and s.12 exhaustion of rights

Question 2

What is one of the main defences used?

Answer 2

Use must be as a trademark

Question 3

What two forms of use would not be considered as a trademark? Case

Answer 3

decorative / nominative use

Pepsico Australia v Kettle Chip Co - this was held to be a nominative use, because “kettle” chips refers to the method of the chips being made. It is a description.

Question 4

What is one way of arguing that infringement is not made out?

Answer 4

arguing that infringement is not made out, because use is is not as a trademark, but merely decorative / nominative

Question 5

what is nominative use?

Answer 5

use that describes the nature / content / function of the goods or service

Question 6

Which cases concern nominative use? (4)

Answer 6

Irvings Yeast-Vite v Horsenail
Top Heavy v Killin
Hölterhoff v Freisleben
Arsenal v Reed

Question 7

describe Irvings Yeast-Vite case

Answer 7

C had trademark yeast-vite

D described his goods as a “substitute for yeast-vite”

this was held to be merely a dsecription - it does not indicate source of origin. Simply description that the goods are a substitute.

Question 8

Describe Top Heavy v Killin

Answer 8

C owned trade mark “Chill Out” for clothing

D printed this phrase on t shirts - the average consumer would have viewed this as a command to relax, rather than as a source of commercial origin

therefore use held to be descriptive and not as trademark

Question 9

Describe Hölterhoff v Freisleben

Answer 9

c designed gemstone shape and registered as a TM

this gemstone shape was known in the market and called “spirit sun”

held that the name “spirit sun” was a means of describing that particular gemstone - use was not as a TM

Question 10

Describe Arsenal v Reed

Answer 10

D sold Arsenal football merchandise

an arsenal scarf would only indicate that the wearer was a fan of arsenal - NOT that it was a source of origin

Question 11

Which case concerns comparative advertising and what does it state?

Answer 11

02 Holdings v Hutchinson

TM owner not entitled to prevent use by third party, if signs are identical / similar, in a comparative advertisement that meets the requirements of the comparative advertisement directive