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1

Describe the test for passing off established in Warnink v Townend [1979] A.C. 731, HL(Lord Diplock’s definition in the “Advocaat” decision).

i) misrepresentation

ii) by a trader in the course of trade

iii) to prospective customers of his or ultimate consumers of goods or services supplied by him

iv) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence)

v) which causes actual damage to the business or goodwill of the trader bringing the action or will probably do so

Damage can be:
* Loss of sales
* Damage to reputation
* Dilution of the mark

2

To what extent does the U.K. law of passing off protect well–known personalities? Explain briefly your answer, using case authority by way of illustration.

UK common law does not recognise the ‘right of personality’ to control the use that is made of their image and/or name.



Lyngstrad v Annabas Products



* Products that bore the name and image of the group (ABBA).
* No real likelihood of confusion among the public.

* The defendants were not doing “anything more than catering for a popular demand among teenagers for effigies of their idols”.

* There is no reason for public to believe that products came from the personality himself or from his beneficiaries.


* First, claimant must show he had a significant reputation or goodwill, and


* Second that there was a misrepresentation to a significant proportion of the public the impression the products were endorsed, recommended or approved of by the claimant.


* Third that there was damage to claimant, usually in lost licensing revenue.



E.g Irvine v Talksport – successful! (apparent radio station endorsement which appeared to mislead the public)



Rihanna v Topshop – successful! (Rihanna’s photo from album cover shoot used on t–shirt bearing Rihanna’s name on label).

3

Describe the test for passing off established in Reckitt & Colman Ltd v Borden Inc [1990] (the “Jif Lemon” decision). (aka Provide Lord Oliver’s definition of passing off.)

* Goodwill – in relation to the product or service in question
* Misrepresentation – that the defendant’s goods or services are derived from (or are otherwise economically linked with) the claimant.
* Misrepresentation takes advantage of the goodwill of the claimant.
* Misrepresentation must be operative – it must actually deceive the relevant section of the public
* Damage – the claimant must show that he has suffered, or is likely to suffer, damage as a result of the defendant’s misrepresentation

4

Discuss briefly whether it is possible to have goodwill in advertising techniques and themes under the law of passing off in the U.K.

Cadbury Schweppes v Pub Squash:



• Defendant marketed their lemon–flavoured soft drink with similar adverts to claimant.



• The claimant’s passing off claim was rejected



• But judge said it is possible to have acquired goodwill associated with a particular advertising style
.

• In that an intangible property right can be acquired owing to a distinctive character recognised by the market from the advertising.

5

Can goodwill exist in relation to a foreign trader, where the trading activity takes place outside the UK? Explain your answer.

Foreign Traders must show established communication mechanism of goodwill within the UK. Mere reputation is not enough.



• Sheraton Corp of America v Sheraton Motels [1964] – Existence of goodwill can be shown on the grounds bookings made through an office the plaintiff maintained in the UK.



• Alain Bernardin v Pavilion Properties Limited [1967] – A trader cannot acquire goodwill in this country without some sort of user in this country. Merely advertising here is not enough.



Anheuser– Busch Inc. v Budejovicky Budvar [1984]:


• Not every activity in this country which might loosely be called a “business” activity that qualifies as the carrying on of a business here.



• Sporadic and occasional sales do not constitute business in this country. (e.g. embassy bars, US air force bases)



• Ordinary member of the public must be able to consider himself a customer in this country




• Starbucks v British Sky Broadcasting Group PLC [2015]– For businesses carried on abroad, insufficient to show there are people in the UK who happen to be its customers when they are abroad

6

Describe the meaning and the purpose of the “sign” requirement, as established by ECJ in Dyson Ltd. v. Registrar of Trade Marks, [2007].

* ECJ considered that idea of a transparent collecting bin for a vacuum cleaner, irrespective of shape, appeals only to the imagination.
* It is not capable of being perceived by one of the five senses.

* If registered, Dyson would obtain a monopoly in the concept and would be able to prevent competitors from incorporating the feature of a bagless bin in their own vacuum cleaners.

* This is not the purpose of trade mark law.


* For these reasons, the ECJ held: the "idea" of incorporating a particular feature in goods is not a “sign”.


* I.e. A concept cannot be registrable.


* However, if Dyson had applied to register a particular form of bagless bin it might have been successful in obtaining some protection.

7

Are sounds registrable as trade marks in the U.K.? Explain your answer.

ECJ in Shield Mark BV v Joost Kist



• A trademark may consist of a sign that is not in itself capable of being perceived visually (e.g. a sound), on the condition that it may be represented graphically.



• Consequently, the Member States cannot preclude such registration as a matter of principle provided that:'
1. it can be represented graphically
2. its representation fulfils the Sieckmann criteria.


ECJ found that sounds mayconstitute a mark if they can be represented graphically· Onomatopoeiasare not allowed (not precise orobjective)
· Music with full musical notation(such that it is objective, is allowed)

8

Are scents registrable as trade marks in the UK? Explain your answer.

Ralf Sieckmann v Deutsches Patent und Markenamt C273/00


* Sieckmann's application for a scent was refused on the grounds that it couldn’t be represented graphically.
* ECJ set out the ‘Sieckmann requirements’ for graphical representation.

* It said that a trade mark could consist of a sign which is not capable of being percieved visually, but could be represented graphically.

* Such a representation had to be capable of representing the sign in a visual manner by using images, lines or characters and also had to be:


1– Easily accessible,

2– Precise,

3– Self–contained,

4– Objective,

5– Durable,

6– Intelligible,

7– Clear,

9

Are colours registrable as trade marks in the UK? Explain your answer.

Libertel
* Colour cannot be presumed to be a sign, but colour can be a sign.
* Colour sample is not a graphical representation, since it is not precise or durable.

* But if combine a colour sample with a written description and an internationally recognised ID code, this may constitute a graphical representation


* Colour can in some circumstances distinguish the goods or services of one undertaking from those of other undertakings (but does not do this inherently)


* Colour is probably not distinctive (from the viewpoint of the average consumer) without prior commercial use


* But colour can acquire distinctive character

* When considering applications to register colours, need to take into account the public interest relating to unjustified monopolies on colour to the detriment of competitors as number of distinguishable colours is limited.
* On the other hand: if the number of g/s is very restrictive and market is specific, colour can be registered.

10

Are combinations of colours registrable as trade marks according to the ECJ? Explain your answer.

Heidelburger Bauchemie

* ECJ held that a colour combination which isn't spatially delimited is not a registrable trade mark, because it is not sufficiently precise that competitors can see from the register exactly what is protected.

* This type of mark would encompass too many possible combinations and interpretations.
* Impossible to say that a consumer would be able to remember each one with certainty.

* Arrangement of colours in a colour combination mark must be systematic, predetermined and uniform.

11

Are shapes registrable as trade marks in the UK? Explain your answer.

Section 3(2) TMA 1994:



A sign shall not be registered as a trade mark if it consists exclusively of



(a) the shape which results from the nature of the goods themselves



(b) the shape of goods which is necessary to obtain a technical result, or



(c) the shape which gives substantial value to the goods


Can lack distinctive character:




• Mag Instruments (torches) – fact that shape enjoys broad international recognition as a design is NOT material for determining whether design has origin indicating functions

• Bongrain S.A’s application (cheese wheel) – Fancy shape not enough. Must be used in trade to acquire a distinctive character.

• August Storck (Werther’s Originals) – shape must distinguish product immediately and with certainty from those of competitors’ products.

12

Are geographical names registrable as trade marks in the UK? Explain your answer.

s.3 (1)The following shall not be registered—….(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the … geographical origin ....

WindsurfingChiemsee:

* ECJ held: if there is (or is likely to be in future) an established connection between the place and the g/s, then registration will normally be refused.
* The connection could be belief that goods were manufactured OR conceived/ designed in that place.

* In the public interest to keep geographical names freebecause they: 1.may serve to indicate quality or othercharacteristics 2. may influence customer tastes associating g/s with a place which givesa favourable response.

13

Describe briefly the test applied by the CJEU for determining identity between signs.

LTJ Diffusion


a sign is identical with the trade mark where it



* reproduces, without any modification or addition, all the elements constituting the trade mark or
* where, viewed as a whole, it contains differences so insignificant that they may go unnoticed by an average consumer

* Average consumer: deemed to be reasonably well informed, reasonably observant and circumspect.

14

Describe briefly the test applied by the E.C.J. for determining similarity between signs.

Sabel BV vPuma AG


i) when assessing the similarity of two marks, the court should take into account:


* the degree of aural, visual, or conceptual similarity, as well as

* the inherent or acquired distinctiveness of the mark

ii) attention is given to the distinctive and dominant components of the mark


iii) the comparison is made from the point of view of the average consumer


iv) the average consumer has imperfect recollection so insignificant differences may go unnoticed.

15

Explain when goods are 'similar’, as defined by the ECJ in Canon Kabushiki Keisha vMetro–Goldwyn–Mayer

Factors to be taken into account:


Distribution channels, Intended use,
whether Complementary
End users


Physical nature of the goods,
Location in supermarkets and whether in Competition with each other



Take into account earlier sign distinctiveness. Global assessment of likelihood of confusion.

16

Describe briefly the “proportionality test” as established by the E.C.J. in Canon v MGMC39/97.

In order to prove confusion:

A lesser degree of similarity between the g/s can be offset by a greater degree of similarity between the marks.

AND VICE VERSA

17

Describe briefly the test applied by the E.C.J. for determining confusion.

Sabel v Puma



The likelihood of confusion must be appreciated globally taking into account all factors relevant to the circumstances of the case i.e. it must be based on:



* overall impression created by the marks
* visual, aural or conceptual similarity of the marks, and

* distinctive and dominant components of the marks...

It is up to the national court to assess the degree of visual,aural or conceptual similarity between the marks ...




E.g: it is possible that mere aural/ mere visual/ mere conceptual similarity between the trade marks may create a likelihood of confusion...

18

Discuss briefly the importance of the decision of the E.C.J. in Windsurfing Chiemsee (Joined Cases C–108/97 and C–109/97) regarding acquired distinctiveness

A trade mark acquires distinctivecharacter following the use which has been made of it where the markhas come to identify the product in respect of which registration isapplied for as originating from a particular undertaking and thus todistinguish that product from goods of other undertakings. If a significant proportion of therelevant class of persons identify goods as originating from aparticular undertaking because of the trade mark, it must haveacquired distinctive character.

* Up to national courts to assess


* National opinion polls may beused


SLIMPIG

19

Describe briefly the distinctiveness requirements for obtaining a trade markregistration in the USA.

A generic term cannot serve as a TM as it is notdistinctive at all


A descriptive term can serve as a TM only if it hasacquired a secondary meaning


A suggestive, arbitrary or fanciful term is inherently distinctive

20

Describe the test devised by the ECJ for establishing that a trade mark enjoys reputation for the purposes of S.10(3) of the UK Trade Marks Act 1994

GeneralMotors v.Yplon (the "Chevy‟ case)


Involves some kind of knowledge threshold if it was known by a significant part of the publicconcerned by the product or services covered by that mark.
In determining the above, anational court must take into account all the relevant facts, in particular the:


a) market share held by the trade mark,


b) intensity, geographical extent and duration of itsuse, and


c) size of the investment made in promoting it.


* A trade mark need not have a reputation throughout the territory.

* It was sufficient for it to be known by a significant part of the public concerned in a substantial part of that territory,

* This might consist of a part of one of the countries comprising that territory.

21

Whatis the meaning of an “earlier trade mark” as defined in the Trade Marks Act1994?

S6: (1) –


(a) a UK registered trademark, CTM, international trade mark (UK or EC), which has an earlier priority date


(b) a CTM or internationaltrade mark (EC) which has a valid claim to seniority from an earlier UK registered trade mark or international trade mark (UK),


(ba) a UK registered trademark or international trade mark (UK) which–


(i) has been converted from a Community trade mark or international trade mark (EC) which itself had a valid claim to seniority within paragraph (b) from an earlier trade mark,


(c) an trade mark, which was entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark at its priority date.


(2) References in the Act toan earlier trade mark also include any TM application which would if granted become one of (1)(a) or (b) above.


(3) A trade mark within subsection (1)(a) or (b) whose registration expires shall continue to be taken into account for a period of one year after the expiry unless the registrar is satisfied that there was no bona fide use of the mark during the two years immediately preceding the expiry.

22

Describe the nature of the search for prior rights conducted by the U.K. Trade Mark Office.

* Registrarwill perform the prior rights search only for notification purposes – there is no objection to registration on relative grounds [brings UK into line with OHIM].

* Applicant will be given results and allowed 2 months to proceed, amend or withdraw.

* If published, owner of the earlier mark will then be automatically notified.

* Owners of CTMs must requestand pay for notification service.

23

Explain the priority system for trade mark applications under the Paris Convention.

S.35 TMA 1994


Priority can be claimed to an earlier application, providing the (later) application covers


(a) the same mark and
(b) some or all of the goods andservices covered by the earlier application.


* Priority application must be a filing in a state party to the Paris Convention,

* Later application must be filed within six months.

* Effect of priority claim:

(1) filing date of the earlier application counts as the date offiling of the later application.


(2) rights of the application take precedence over any rights arising from a trade mark filed after the priority date.

24

What are the consequences of failure to record the assignment of a trade mark registered in the U.K. under the UK Trade Marks Act 1994?

s.25 (3) Until (application received for) registration of assignment —
(a) the transaction is ineffective against a person acquiring a conflicting interest in or underthe registered trade mark in ignorance of it, and
(b) a person claiming to be alicensee by virtue of the transaction does not have the protection of s.30 or s.31 (rights and remedies of licensee in relation to infringement).


s. 25 (4) Where a person becomes an assignee (orlicensee), then unless—
(a) he applies forregistration of that assignment (or license) within 6m of the date on theassignment (or license), or
(b) the court is satisfiedthat it was not practicable to meet that 6m deadline and an application wasmade as soon as practicable afterwards,
he is not entitled to damages or an account of profits in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the date of registration of the transaction.

25

Describe the effect of a registration obtained under the Madrid Agreement/ System/ Protocol.

* An IR is essentially a bundle of national rights
* applied for and administered centrally,
* designated countries becomepart of the IR
* registrability, validity,property rights and infringement are determined at the local level in thedesignated countries.
* No ‘unitary character’ as with a CTM.
* WIPO grants an International Registration (NB this is NOT the same as a confirmed grant of registered rights), publishes it in the WIPO Gazette and then forwards the application to the countries designated in the application

26

Describe theeffect of a successful central attack under the Madrid Agreement and the Madrid Protocol.

Madrid System:
If within five years from the date of international registration,the mark is declared invalid or otherwise lost in the country of origin (i.e.the country of the national basis), all the national registrations based on theinternational registration are also lost.


Madrid Protocol(but not Madrid Agreement):
* If the national basis is lost it is possible to transformthe international registration into a series of national or regionalapplications.

* Applicant of the international registration may file anapplication for the registration of the same mark for the same goods/serviceswith the national trade mark office in any of the designated countries orregions

* Must be filed within 3 months of loss of basis

* Transformed applications retain date of filing of international registration.

27

Martinis a German national. He lives in the U.K. and owns a factory producing leathergoods in the United States. Martin plans to use the Madrid Protocol and seeksyour advice as to which country he can use as the base of his application.

To use a national TM registration or application for a TMas the base
Martin can either:
1. Havea ‘real and effective commercial establishment’ in that nation; and/or
2. Bedomicile in that nation; and/or
3. Bea national of that nation.


NB: Under the Protocol, any one of the above is ok. Under the Agreement the cascade doctrineapplies, i.e. the qualification is in that strict order.

28

Expalain the concept of seniority in the context of a Community Trade Mark Registration.

* Seniority ≠ Priority

* A proprietor of a national registration (or designated IR) in one or more of the EU member states may claim seniority for a CTM application

* Must be same proprietor, same sign, and same goods and services (triple identity).
* Seniority can be claimed on filing CTM application or within 2m of its filing or anytime after registration of the CTM.


* SOLE EFFECT OF SENIORITY CLAIM: If the CTM proceeds to registration, the national registration may be surrendered or allowed to lapse without the proprietor losing the national rights under it.

29

Explain the principle of co–existence in the context of the Community Trade Marksystem.

In the EU, two different trademark systems have coexisted in parallel: the European system and the national system.


Within the EU, identical Community andnational trademarks may coexist.



Formula One Licensing v OHIM


* Neither OHIM nor the General Court can call into question the validity of a national trade mark used to oppose the registration of a CTM.

* Validity of national trade marks can only be questioned in national cancellation proceedings in the Member State where the trade mark is registered.

* In CTM opposition proceedings,it cannot be found that a sign identical to a national trade mark is devoid of distinctive character as to do so would effectively eliminate the protection which national trade marks are supposed to provide.

* It is necessary toacknowledge a certain degree of distinctiveness in any registered nationaltrade mark used as the basis for a CTM opposition.

* The CJEU emphasized that CTMs do not replace national trade marks in Member States and the two types of trademarks must co–exist in the EU.

30

Describebriefly the importance of the decision of the CJEU in Hauck v Stokke, CaseC205/13, (TrippTrapp children’s chair).

The case relates to the interpretation of Article 3(1)(e) TMD, under two of the indents.Sets out that the indents of Art 3(1)(e) are independent, and separate to the question of consumer perception.


Firstly, regarding the shape which results from the nature of the goods themselves.


* A sign is not registrable as a three dimensional shape mark simply because it exhibits characteristics which do not arise from the nature of the goods. One or more essential characteristic essential to the generic function of that product will lead to the mark being caught.


Second, regarding the shape which adds substantial value to the goods.


* Similarly, a sign will not be registrable in relation to a product whose substantial value derives from its shape merely because there are other characteristics of the product that also give substantial value. If several characteristics give it value, it may still be caught.


* However, the ruling provides minimal guidance on the thresholds for satisfying the Article 3(1)(e) grounds and this seems to be left to the national courts to decide.