Trade Marks

Question 1

What is a trade mark?

Answer 1

A means of one party distinguishing themselves from another

Question 2

What does a TM provide in the business world?

Answer 2

Trade mark provides a product or organisation with an identity which cannot be imitated by others.

Question 3

Give a common example of a trade mark.

Answer 3

• Mcdonalds golden arches (logo)

- Mcdonalds slogan “I’m lovin’ it”

Question 4

Why was the Trade Marks Act 1994 significant?

Answer 4

First piece of legislation since the 1930’s to significantly extend protection to trade mark holders within UK.

Question 5

How did Anthony Mosawi describe the legislation prior to 1994?

Answer 5

• “extremely limited” in its protection of trade marks.

- In dire need of modernisation.

Question 6

What were the most significant changes of the TMA 1994?

Answer 6

• Made it possible for registration of any mark which was capable of graphical representation - recently updated by TMR 2018
• Extended protection to shapes, logos slogans etc.
• Addressed issues under s.3 of TMA 1938 - which required for registration to be for particular goods falling within one of the 42 international standards of goods
• Traders wishing to register goods in different classes were required to fill out numerous applications.
• 1994 Act requires only a single application therefore easier for Tm owners to register marks for different classes of goods

Question 7

How has Lord Neuberger described the development of trade marks?

Answer 7

“From being bodyguards to being kings”

- Referencing that TM’s are not only growing in protection but also becoming brands in their own right

Question 8

What did s.92 provide for?

Answer 8

That it is a criminal offence to sell a product which is likely to be mistaken for a registered trade mark.

Question 9

Why is s.92 likely to deter any potential misuses of trade marks?

Answer 9

• Liable to imprisonment

Question 10

What did R v Keane 2001 establish?

Answer 10

• That the TM holder did not have to establish that the defendant knew of the infringement as this would render s.92(5) redundant.

Question 11

How did the Proceeds of Crime Act 2002 increase protection for TM holders?

Answer 11

• If a successful prosecution was led under s.92 of TMA 1992 then TM owners could, under the POCA, apply for confiscation and recovery of any assets or profits that resulted from IP crime.
• Valuable protection for IP holders profits and reputation.

Question 12

What is the criminal courts valuable protection for TM owners?

Answer 12

• Threat of imprisonment likely to deter any potential infringers.
• Potential for larger financial recovery than using the civil courts.

Question 13

What did the Trade Mark (Relative Grounds) Order 2007 introduce?

Answer 13

• The removal of automatic refusal of TM application by the registry at the application stage that would potentially conflict with an earlier trade mark or right.

Question 14

If a right is no longer automatically refused by the UKIPO on relative grounds, when will it be rejected?

Answer 14

• only at a time when the earlier applicant objects to the TM application in opposition proceedings.

Question 15

What was the law prior to the Trade Marks (RG) Order 2007?

Answer 15

• A person applying for a TM which may have conflicted with an earlier right was objected to by the Registry.
• Application could only proceed if the applicant could overcome the objection.

Question 16

What will the UKIPO do now after implementation of the Trade Marks (RG) Order 2007?

Answer 16

• UKIPO will notify applicant of potential conflict with earlier TM.
• Up to applicant whether to proceed.

Question 17

If an applicant choose to proceed with registration of TM after notification from UKIPO of earlier TM, what will the UKIPO then do?

Answer 17

• Application will be publish in TM Journal.
• Simultaneously UKIPO will:
• Automatically notify earlier owners or registered UK mark, or international mark which covers UK of application
• only notify owners of international marks where the cover the EC community or are ECTM if they are signed up to notifications from the UKIPO.

Question 18

What can an earlier owner of a TM do once notified by UKIPO of potentially conflicting application for registered trade mark by another party?

Answer 18

• Has 3 months to lodge an opposition to the application.

- If successful, the UKIPO will refuse the application

Question 19

How does the Trade Marks and (Relative Grounds) Order 2007 provide more protection for trade marks?

Answer 19

• More protection for those wishing to register potentially conflicting TM as there is no longer automatic refusal by the UKIPO on relative grounds.
• Far greater protection for competitors as onus is on the earlier applicant to take action to prevent registration within strict time restraints.

Question 20

What does the Business Protection from Misleading Market Regulations 2008 seek to prohibit?

Answer 20

• Misleading business to business advertising.

- Impose more restrictions on how businesses compare their products to rival goods from other companies.

Question 21

If the conditions under the BPR 2008 relating to comparative advertising are not met, what will happen?

Answer 21

If any of these conditions are not met, the comparative advertising is prohibited even if it does not deceive anyone or alter economic behaviour.

Question 22

How does the BPR 2008 extend trade mark protection?

Answer 22

• By preventing distortion to the reputation trade marks through misleading or comparative advertising.

Question 23

What does the Consumer Protection from Unfair Trading Regulations 2008 seek to achieve?

Answer 23

• That consumers are protected against misleading or unfair advertisements which may cause confusion between a trade marked product and a competitors product.

Question 24

How does the BPR and CPUTR 2008 seek to afford more protection under trade mark law?

Answer 24

• Taking in to account many stakeholders interests.
• Consumers protected from potential purchases of products they associated with reputable TM
• TM owners protected from having their reputation distort by false or misleading advertisements.

Question 25

What was the most significant change of the Trade Mark Regulations 2018?

Answer 25

Altering the definition of TM.

• No longer requirement to represent a mark graphically
• Opens of vast array of new protection potentially even sound and smells.
• UKIPO already advancing software to start accepting mp3 and mp4 registrations.

Question 26

What is the relevance of Sieckmann v Deutsches Patent und Markenamt 2002?

Answer 26

Adopted by Trade Mark Regulations 2018

• Words “clear” and “precise” were adopted by TMR 2018
• In Sieckmann the court stated that a smell could not be trade marked because it was not capable of being graphically represented.

Question 27

What is the clear distinction between the definition of trade mark before and after the 2018 Regulations?

Answer 27

That the graphic representation requirement prior to the act is repealed, not extended to include new technologies, which effectively lays the path for a whole host of new development in trade mark law.

Question 28

Why may the new definition be deemed “more restrictive” than the previous definition.

Answer 28

General Court in Red Bull
- That this new wording, or rather the equivalent wording is intended to reinforce legal certainty and is more restrictive than the previous wording.

Question 29

What did the 2018 Regulations change in relation to agents and representatives?

Answer 29

• Where an agent or representative registers, or attempts to register, a mark without consent of the proprietor it will be refused unless the agent or representative can justify their action per s.5(6) of 1994 Act.

Question 30

What new protections has the 2018 Regulations provided to proprietors where an agent registers a trade mark in his or her new name?

Answer 30

• Unlike prior law, where there was a case of misappropriation by the agent the proprietor could only object on grounds of bad faith.
• New law means that proprietor has a choice of actions.
• Can “prevent” application being registered through objection.
• If already registered he or she can apply for rectification of the register and have the agents name substitute with his/her own name - per s.10B

Question 31

How has the new law afforded better protection over trade marks in respect of the 2018 Regulations?

Answer 31

• Broader definition which encapsulates potentially more diverse form of registrable tm’s = potentially more restrictive time will tell
• In respect of agent’s misappropriation, TM holder now has wide array of protection and no longer has to satisfy the ‘bad faith’ tests
• This means less worry of losing a mark and an easier burden of proving the misappropriation.