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Trademarks - Trademark revision notes

INTELLECTUAL PROPERTY LAW (University of Surrey)

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Trademarks: Revision Notes:

Rights conferred by a registered TM

 s. 9 TMA - exclusive rights conferred by a registered TM - effect from
the date of registration (s. 40(3));
 s. 42 TMA - registration valid for 10 years since the date of
registration
 s. 43 TMA - may be renewed for additional period of 10 years
(indefinitely)
 Caveat - the TM proprietor is under the duty to put its TM to
genuine use (see revocation rules - s. 49 TMA)

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3 requirements for a trademark: s1(1) TA 1994: In this Act a “trade mark” means any sign
capable of being represented graphically which is capable of distinguishing goods or
services of one undertaking from those of other undertakings.

1. The mark must be a sign,

o Simple word marks (.e Rolls Royce and Tesco)
o Phrases that have been registered include: Red Bull gives you wings.
o Numbers, personal names and shape of packaging and goods.
o Gestures – Asda arse slap.
o Colours, sounds and smells
o Not every sign will pass this hurdle – ECJ in Dyson v Registrar of Trade
marks:
 Dyson case - a sign? (must be specific and unique)
 “The subject matter of the application in the main proceedings is
capable of taking on a multitude of different appearances and is
thus not specific.” [37] thus no trade mark – In relation to a
transparent bin on a vacuum cleaner
2. The mark must be capable of being represented graphically,
o General rule: to be capable of graphical representation the sign must pass the
Seickmann 7:
 “[A] Trade mark may consist of a sign which is not in itself
capable of being perceived visually, provided that it can be
represented graphically, particularly by means of images, lines or
characters, and that the representation is (1) clear, (2) precise, (3)
self-contained, (4) easily accessible, (5) intelligible, (6) durable
and objective.”
o Smells: Sieckmann case
 Scent mark not registered for failure to meet the graphical
representation requirement;
 The scent represented by a chemical formula, described by words
“balsamically fruity with a slight hint of cinnamon” and with a
sample on the registration does not meet the criteria listed in this
case.
 John Lewis of Hungerford Ltd's Trade Mark Application
(cinnamon smelling furniture)
 Held: electronic representations of smell (electronic
nose) not sufficient.
 Chemical formula is not sufficient, and company
wouldn’t disclose this info anyway.
 Issues with trade marking smells:
o Finding a descriptive phrase to describe smells
accurately.
o Subjectivity – people smell different things.
o Sounds: - Shield Mark case –
 Sounds in principle registrable – but must meet the Sieckmann
criteria;
 C-283/01 Shield Mark BV v Joost Kist HODN Memex [2004] ETMR
33;

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 “Kukelekuuuuu” = Onomatopoeia – lack of consistency between way it

is written and the actual sound; varies depending on where you come
from
 Requirements were not met where the sound sign was represented by
means of; a description such as the notes making up a musical works,
an indication that it was the cry of an animal, a simple onomatopoeia
and sequence of musical notes.
 However requirements were satisfied where the sign was
represented by a stave divided into measures. - musical notes on
musical lines.
o Colours: Libertel: Colours in principle registrable – but must meet the
Sieckmann criteria;
 Libertel v Benelux Merkenburea (colour orange: sample and word
‘orange’ for telecommunication services)
 No problem with its being graphic, but there is a problem with
objectivity and durability.
 Held – colour can have distinctive character within the
meaning of Article 3. However, also had to satisfy the
Seickman 7 test. Which in this was not satisfied.
 Thus a sample itself is not durable, thus fails Seickmann 7.
 Requirements to be registerable: Colour sample + description in
words + internationally recognised colour code (Pantone number)
likely to satisfy Seickmann 7.
 Hiedelberger Bauchemie GmbH – registerability of two colours (blue
and yellow) for a range of building products, like paint. But relationship
between two colours was left undefined.
 The mere juxtaposition of two or more colours without shape or
contours or a reference to two or more colours ‘in every
concievable form’ does not exhibit the [necessary] qualities of
precision and uniformity.
 However, colour combination without contours can be a
trademark where:
 In the context they are used, colours and combinations thereof
represent a sign
 Application for registration incudes a systematic arrangement
associating the colours concerned in a predetermined and
uniformed way.
o Taste:
 Eli-Lilly & Co Community Trademark application: artificial
strawberry flavour used in pharmaceutical products. Refused on the
grounds that it didn't meet the criteria for graphic representation
(Seickmann 7). Also thought that consumers likely to see the taste as
a means to disguise the unpleasant flavour a medicine rather than a
trademark.
 Unclear whether taste will give rise to a trademark.
3. The mark must be capable of distinguishing goods or services of one undertaking
from those of another.

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Grounds for Refusal/Infringement:

Absolute Grounds: Section 3 UK TM Act:
 TMs that do not meet the definition of TMs (s. 3(1)(a))
 Deficiencies in the distinctive character – can be saved under proviso (s. 3(1));
 s. 3(1) Provided that, a trade mark shall not be refused registration by virtue
of paragraph (b), (c) or (d) above if, before the date of application for
registration, it has in fact acquired a distinctive character as a result of the
use made of it.
 Functionality bars – shapes only (s. 3(2)) [reform]
 Immoral and misleading marks (s. 3(3))
 Applications in bad faith (s. 3(6))

Section 3(1) Absolute Grounds: UK TM Act (the following shall not be registered)
a) Signs which do not satisfy the requirements of section 1(1),
a. E.g. Dyson
b) Trade marks which are devoid of any distinctive character,
a. Phillips electronics v Remington (ECJ): if a mark is distinctive by nature or
nurture it must be capable of distinguishing goods and services.
b. But can acquire distinctive character through use.
c. (non-distinctive mark)
c) Trade marks which consist exclusively of signs or indications which may
serve, in trade, to designate the kind, quality, quantity, intended purpose, value,
geographical origin, the time of production of goods or of rendering of
services, or other characteristics of goods or services,
a. (a descriptive mark)
b. C-191/01 P OHIM v Wrigley Junior Co (DOUBLEMINT);
c. s. 3(1)(c) pursues an aim which is in the public interest, namely that
descriptive signs or indications relating to the characteristics of goods or
services in respect of which registration is sought may be freely used by all;
d. Sign doesn’t need to be used descriptively at time of application to be barred -
enough if it could be used descriptively;
e. A sign must therefore be refused registration under that provision if at least
one of its possible meanings designates a characteristic of the goods or
services concerned i.e., mark is descriptive if any of its meanings are
descriptive (must consider future use as well).
d) Trade marks which consist exclusively of signs or indications which have
become customary in the current language or in the bona fide and established
practices of the trade.
a. (customary mark)

BUT if the sign has obtained a distinctive character through use, before the application
date then it can be a valid trademark.
 Basic Rules distinctive character through use?
o Always assessed against the goods/services the registration applied for;
o Always assessed through the eyes of the average consumer (who is
reasonably well-informed, reasonably observant, circumspect - Lloyd
Schufabrik (C-342/97) [27])

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o Can be saved for registration, if there is evidence of acquired

distinctiveness (test in Windsurfing Chiemsee (C-108/97) [51]).:
(sufficiently well-known sign in their market, but not customary)
 the market share held by the mark;
 how intensive, geographically widespread and long-standing use
of the mark has been;
 the amount invested by the undertaking in promoting the mark;
 the proportion of the relevant class of persons who, because of the
mark, identify goods as originating from a particular undertaking;
 and statements from chambers of commerce and industry or other
trade and professional associations
 Examples of acquiring distinctiveness:
 C-383/99 P Procter & Gamble Company v OHIM (BABY
DRY) (BABY-DRY FOR NAPPIES)
 Not descriptive (i.e. it is inherently distinctive) because
“Baby-Dry” is a syntactically unusual juxtaposition -
average English-speaking consumer wouldn’t view this as
a normal way of referring to the goods or of representing
their essential characteristics in common parlance.
 Gives rise to distinctiveness
 Slogans:
o Registrable in principle, but may be harder to
establish distinctiveness as a matter of fact for
advertising slogans because consumers not used to
making assumptions about origin from slogans and
may view it merely as commending qualities of the
product | No need for imagination /originality.
o ECJ has fond certain slogans to be registerable
– Audi v OHIM – Vorsprung durchtechnik –
slogan registerable.
o The fact a slogan has a number of meanings or
constitutes a play on words or is seen as
imaginative or expected can easily be remembered.
Thus, it can have a distinctive character.
o Can be tested for acquired distinctiveness – Nestle
v Mars (C-353/03) – “Have a Break” (acquired
distinctiveness when used with “Have a Kit Kat”)

s. 3(2) Absolute Grounds: A sign shall not be registered as a trade mark if it consists
exclusively of
(applies even though mark acquires distinctiveness through use
Functionality bars apply to shapes, and other characteristics - Article 4 TM Directive
2015/2436)
a) the shape which results from the nature of the goods themselves,
I. eg. Cant register a spoon as a trademark as it is part of its nature to resemble
that shape.
II. Hauck v Stokke (Tripp Trapp chair)]:

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i. Public interest in excluding the registration of shapes with essential

characteristics which are inherent to the generic function or functions
of the relevant goods. i.e stopping companies making a good/safe
chair for babies is bad and monopolises the market.
b) the shape of goods which is necessary to obtain a technical result, or
I. Phillips electronics v Remington
i. Philips registered a trademark for their three-headed rotary electric
shaver. Cannot register a functionality aspect of a shape, because it
would inhibit competitiveness and future developments in the market.
ii. Signs performing a technical function should be freely used by all and
not end up being reserved to one undertaking alone because they
have been registered as trade marks
iii. Perpetual Patents – patent ends, thus trademark renewed every 10
years. This isn’t allowed.
II. Lego v OHIM:
i. Essential feature of lego was necessary to achieve a technical result
(i.e. stacking of toy blocks) thus not protectable.
c) the shape which gives substantial value to the goods.
I. Example case:
i. T-508/08 Bang & Olufsen v OHIM: Result = independently of the other
characteristics of the goods at issue, the shape in respect of which
registration was sought gives substantial value to the goods
concerned [76];
a) Designer speakers will be an important element for the
consumer. Increases the appeal of the product at issue that is
to say its value. Thus, invalid
II. Aesthetically appealing shapes
III. Conflict with design rights
IV. Again limited terms

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s.3(3) TA 1994: Public Policy and Morality – Absolute Grounds of Refusal): s.3(3) TMA
1994: mark will not be registered if it is contrary to public policy and accepted principles of
morality, or of such a nature to deceive the public.
 Basic Trademark SA Trademark application – refusal to register the word JESUS –
any objection on the grounds of public policy must relate to the intrinsic qualities of
the mark, not to personal qualities of the applicant. Mere offence to the public is not
enough either.
 Deceptive marks: marks that suggest goods are made from material X, but are in fact
made from material Y will be deceptive.
o Orlwoola [1909] - application to register ‘Orlwoola’ for goods made from
wool, where the goods are not in fact made from wool was rejected.
 Application made in bad faith: (always refused)
o Growmax Plasticulture v Don & Lowe Non-woven (Lindsay J): includes
dishonesty, dealings which fall short of the standards of acceptable
commercial behaviour observed by reasonable and experienced people in the
particular area being examined.
 e.g. attempting to register a mark for where the applicant knows there
is a competing claim, applicant is an employee, where there is an
agreement to the contrary, application to register a trademark based
on older trademark, which still has residual goodwill.
 Harrison v Teton Valley (China white): nightclub discussed
making a cocktail with China White as the name, Harrison
attempted to register the name before the nightclub. Hence
application was in bad faith.

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Relative Grounds for Refusal:

Relative Grounds of refusal

 s. 5 TMA:
(1) Double identity
(2) Likelihood of confusion
(3) Marks with reputation (dilution & unfair advantage)
(4) Existing earlier rights (includes passing off)
 Apparent symmetry with infringement actions (s. 10 TMA).

Symmetry to Infringement

 Tests of relative grounds (s. 5 TMA) and infringement (s. 10 TMA) are symmetrical;
 Cases from both areas can be used by analogy;
 But: relative grounds examined at the stage of registration (owner of an already registered
TM will oppose to an application for TM registration based on relative grounds): compare
registered TM with mark applied for;
 At the stage of infringement we compare an earlier registered TM with the Defendant’s
sign (used in the market)

Infringement

 S. 10 TMA (= exclusive rights conferred by a registered TM):

(1) Double identity;
(2) Likelihood of confusion;
(3) Marks with reputation.
 Infringement = engagement with exclusive rights without TM proprietor’s prior consent.
 Basic Rules:
 All infringement actions are to be assessed with the use of a global
appreciation/assessment test;
 All assessments in TM infringement cases are to be done through the eyes of the
average consumer [who is reasonably well informed, reasonably observant and
circumspect [Gut Springenheide ECJ [1998] ECRI-4657 (consumer protection case) – now
well accepted in TM cases – i.e. Lloyd Schuhfabrik (C-342/97) [27]]

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Relative Ground 1) Double Identity

 s. 10(1) TMA:
o A person infringes a registered trade mark if he uses in the course of trade a sign
which is identical with the trade mark in relation to goods or services which are
identical with those for which it is registered.
 Identical sign (defendant’s)/mark (claimant’s)
 Identical goods/services
 Tom owns Tom’s Tennis Rackets for providing tennis rackets and sells in Guildford
 Connor rocks up with identical name/sign of Tom’s Tennis Rackets providing identical service
(selling rackets)
o This is double identity infringement
 Examples:
o Identity of Sign/Mark?
 C-291/00 LTJ Diffusion v SADAS
 ARTHUR (clothing) v ARTHUR ET FELICIE (clothing) – was is an identical sign?
 “There is [] identity between the sign and the trade mark where the
former reproduces, without any modification or addition, all the
elements constituting the latter.”
 Or where, viewed as a whole, it contains differences so insignificant
that they may go unnoticed by an average consumer.” [54]
 Idenitcal really means indeintcal
 SHOCK HORROR
 MIND = BLOWN
o Identity of goods/services?
 Reed Executive v Reed Business Information [2004] ETMR 56
 Both were advertising employment services
 No “identical sign” (because words added; LTJ Diffusion applied) - but
signs similar;
o However no infringement/double identity because TM’d word
REED was used by RBI in conjunction with other words

 Double Identity I: Arsenal

 Arsenal Football Club Plc v Reed (C-206/01; 2002);

 D = operated a stall outside C’s stadium, selling “unofficial goods” bearing C’s trade marks
(logos); with a notice stating that goods were not official club products
 In the end, no passing off, but there was TM infringement …
 Arsenal - essential function of TMs

 “The essential function of a trade mark is to guarantee the identity of origin of the
marked goods or services to the consumer or end user by enabling him, without any
possibility of confusion, to distinguish the goods or services from others which have
another origin. For the trade mark to be able to fulfil its essential role in the system of
undistorted competition […] it must offer a guarantee that all the goods or services
bearing it have been manufactured or supplied under the control of a single undertaking
which is responsible for their quality” [48]
 There will be double identity infringement if, …
 “a third party's use of the sign affects or is liable to affect the functions of the
trade mark, in particular its essential function of guaranteeing to consumers the
origin of the goods.” [51]

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 Double Identity II: Adam Opel

 Adam Opel AG v Autec AG (C-48/05, 2007)

 OPEL LOGO (cars, toy cars) v D’s use of the logo on toy cars
 The test = this use can be stopped, if it affects one of the functions of the trade mark;
 “If, […] the relevant public does not perceive the sign identical to the Opel logo
appearing on the scale models marketed by Autec as an indication that those
products come from Adam Opel or an undertaking economically linked to it, it
would have to conclude that the use at issue in the main proceedings does not
affect the essential function of the Opel logo as a trade mark registered for
toys.”

 The German court found no infringement.

 Consumers know that car labels are used on toy cars often and are not necessarily not
likely affiliated with official car manufacturer

Relative Ground 2) Likelihood of Confusion

 s. 10(2) TMA
 A person infringes a registered trade mark if he uses in the course of trade a sign where because
 The sign is identical with the trade mark and is used in relation to goods or
services similar to those for which the trade mark is registered, or
 The sign is similar to the trade mark and is used in relation to goods or services
identical with or similar to those for which the trade mark is registered,
 There exists a likelihood of confusion on the part of the public, which includes
the likelihood of association with the trade mark.

 Likelihood of Confusion Test;

 Global appreciation test
 Sabel v Puma (C-251/95, 1997) – Puma vs Pudel
 Both parties in dispute used “logos of jumping cats”
 The likelihood of confusion must therefore be appreciated globally, taking into
account all factors relevant to the circumstances of the case.” [22]

 Through the eyes of the Average Consumer;

 Reasonably well informed, reasonably observant and circumspect Lloyd
Schuhfabrik (C-342/97) [27];
 Has imperfect recollection;
 Does not have the benefit of comparing trade marks side by side.
 Identity/similarity of sign (D’s) and TM (C’s) and (interdependence between 3 & 4)
 Comparing (Sabel v Puma [23]):
 Visual
 Aural and
 Conceptual similarity of marks.
o Jack Wills Ltd v House of Fraser (Stores) Ltd [2014] FSR 39
o 2 pigeons.
o Even though clear differences between the two marks an
average consumer would still be confused
o Although there were many “bird” logo marks in the market
already,

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o “None adorned with human accessories like the top hat, scarf
and cane of Mr Wills” (Arnold J [50])
o Thus INFRINGMENET
 Must be based on the overall impression of the marks; bearing in mind TM's
distinctive and dominant elements;
 Identity/similarity of goods/services;
 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (C-39/97, 1998)
 In assessing similarity of goods/services:
 "all the relevant factors relating to those goods or services themselves
should be taken into account. Those factors include, inter alia, [1] their
nature, [2] their end users and [3] their method of use and [4] whether
they are in competition with each other or are complementary." -
(Canon test [23].
 Must show likelihood of confusion;
 Definition: “the risk that the public might believe that the goods or services in
question come from the same undertaking or, as the case may be, from
economically-linked undertakings, constitutes a likelihood of confusion” (Canon
[29])

 “there may be a likelihood of confusion […] even where the public perception is
that the goods or services have different places of production” (Canon [30])
 More distinctive = greater likelihood of confusion - (Sabel, Canon, Lloyd
Schuhfabrik);
 Likelihood of association on its own does not constitute trade marks
infringement.
 Example case:
 Thomas Pink Ltd v Victoria’s Secret UK Ltd [2014] FSR 40 – yes
infringement
o using the PINK brand on garments and shop fronts by Victoria
Secret would give rise to a likelihood of confusion that goods
originate from same or related undertaking . – THIS IS
INFRINGMENT.
 Specsavers v Asda [2012] ETMR 17 at [52 - principles/test].
o SPECAVERS & logo (=CTM) v D’s sign and straplines “be a real
spec saver at Asda” and “spec savings at Asda”
o At 1st instance: no likelihood of confusion; but yes, taking unfair
advantage;
o ALL ELEMENT OF A TM MUST BE APPRECIATED
 EVEN DIFFERENT SHADES OF GREEN

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3) Expanded protection - marks with reputation: s. 10(3) TMA

 A person infringes a registered trade mark if he uses in the course of trade a sign which
 is identical with or similar to the trade mark, and
 is used in relation to goods or services which are not similar to those for which the trade
mark is registered, where the trade mark has a reputation in the United Kingdom and
the use of the sign, being without due cause, takes unfair advantage of, or is
detrimental to, the distinctive character or the repute of the trade mark.
 Test for protecting TMs with reputation:

 Ds sign is identical or similar to TM with reputation;

 Ds use was without due cause;
 Must show TM has reputation (MAINLY FAMOUS MARKS IE COCA-COLA)
 General Motors v Yplon (C-375/97, 1999)
 “CHEVY” mark for cars; Has reputation
 The mark must acquire reputation amongst the public concerned by the
trade mark - depending on the products/services marketed - either the
public at large or a more specialised public (i.e. traders in a specific sector
[24])
 The test of reputation does not on % of consumers that recognise the mark
[25] - instead it is a multi-factor test
 Required degree of knowledge = the mark is known by a significant
part of the public concerned [26];
 Whether this condition is met, must be assessed by taking into
account all relevant facts of the case, in particular [27]:
o The market share held by the TM;
o The intensity, geographical extent and duration of TM’s use;
o And the size of the investment made by the undertaking
[owner] in promoting the TM.
 Territorially: it is sufficient for TM to be known in “substantial part of
the Member State” [28] – note: for CTM – in EU territory.
 4 types of use can be stopped:
 Detrimental to the distinctive character (dilution by blurring);
 Intel Corp Inc v CPM United Kingdom Ltd (C-252/07, 2008):
1. Must be assessed with reference to the average consumer;
2. In order to show a detriment caused by the use of a later mark, the
proprietor of a well-known mark had to establish a link between the two
marks;
3. And also demonstrate a change in the average consumer's economic
behaviour, or a serious likelihood that such a change would occur in the
future.
4. “Thirdly, as was stated on [29] of this judgment, detriment to the distinctive
character of the earlier mark is caused when that mark's ability to identify
the goods or services for which it is registered and used as coming from the
proprietor of that mark is weakened, since use of the later mark leads to
dispersion of the identity and hold upon the public mind of the earlier
mark.” [76]

 Detrimental to the reputation (dilution by tarnishment);

 “As regards detriment to the repute of the mark, also referred to as “tarnishment” or
“degradation”, such detriment is caused when the goods or services for which the
identical or similar sign is used by the third party may be perceived by the public in

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such a way that the trade mark's power of attraction is reduced. The likelihood of
such detriment may arise in particular from the fact that the goods or services
offered by the third party possess a characteristic or a quality which is liable to have
a negative impact on the image of the mark.” (L’Oreal [40])

 Taking of Unfair Advantage of distinctive character/reputation (parasitism);

 L’Oreal v Bellure (C-487/07, 2009)
 C = owner of marks with reputation
 There must be a link between the sign and the mark with reputation (as before -
Intel)
 Two conditions:
1. Not with due cause;
2. Must be advantage, which must be unfair.
 “taking unfair advantage of the distinctive character or the repute of the trade
mark”, also referred to as “parasitism” or “free-riding”, that concept relates not
to the detriment caused to the mark but to the advantage taken by the third
party as a result of the use of the identical or similar sign. It covers, in particular,
cases where, by reason of a transfer of the image of the mark or of the
characteristics which it projects to the goods identified by the identical or
similar sign, there is clear exploitation on the coat-tails of the mark with a
reputation.” [41]

 Test of Unfair Advantage:

1. A global appreciation test of all relevant factors, which include [44]:
1. The strength of the mark's reputation and the degree of
distinctive character of the mark;
2. The degree of similarity between the marks at issue; and
3. The nature and degree of proximity of the goods or services
concerned.
 Unfair - when?
1. to exploit, without paying any financial compensation and without
being required to make efforts of his own in that regard,

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AdWords:

 AdWords - infringement?
 Interflora Inc v Marks and Spencer Plc [2015] ETMR 5
 Long case history (still on-going case); “INTERFLORA” a mark with reputation for
floral services; MS bought AdWords “interflora” for advertising its services online;
 The average internet user (with still the same attributes (3))
 Business model = a network of Interflora floral shops; option of ordering online
delivery
 Keyword Advertising - TM infringement?

 TM Infringement?
1. By the advertiser (MS)?
2. By The Internet Service Provider (Google)?
 Must consider all:
1. Double identity - any of the functions affected?
2. Likelihood of confusion - After referral to CJEU, CA reverses the HC reliance
on “initial interest confusion” (still litigated)
3. Marks with reputation - was there dilution or taking unfair advantage?
 Functions of Trademarks:
1. CJEU (C-323/09) - essential function
1. “depends in particular on the manner in which that advertisement
is presented. That function is adversely affected if the advertisement
does not enable reasonably well-informed and reasonably
observant internet users, or enables them only with difficulty, to
ascertain whether the goods or services referred to by the
advertisement originate from the proprietor of the trade mark or an
undertaking economically connected to it or, on the contrary,
originate from a third party.” [44 - applying Google France]
2. CJEU (C-323/09) - advertising function
1. “However, the mere fact that the use, by a third party, of a sign
identical with a trade mark in relation to goods or services identical
with those for which that mark is registered obliges the proprietor of
that mark to intensify its advertising in order to maintain or
enhance its profile with consumers is not a sufficient basis, in every
case, for concluding that the trade mark’s advertising function is
adversely affected.” [57]
2. “The selection of a sign identical with another person’s trade mark,
in a referencing service with the characteristics of “AdWords”, does
not, moreover, have the effect of denying the proprietor of that
trade mark the opportunity of using its mark effectively to inform
and win over consumers.” [58]

3. CJEU (C-323/09) - investment function

1. Investment function = “a trade mark may also be used by its
proprietor to acquire or preserve a reputation capable of attracting
consumers and retaining their loyalty.” [60]
2. Keyword advertising “adversely affects the trade mark’s investment
function if it substantially interferes with the proprietor’s use of its

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trade mark to acquire or preserve a reputation capable of attracting

consumers and retaining their loyalty.” [66]
4. Free competition still important
1. “However, it cannot be accepted that the proprietor of a trade mark
may - in conditions of fair competition that respect the trade
mark’s function as an indication of origin - prevent a competitor
from using a sign identical with that trade mark in relation to goods
or services identical with those for which the mark is registered, if
the only consequence of that use is to oblige the proprietor of that
trade mark to adapt its efforts to acquire or preserve a reputation
capable of attracting consumers and retaining their loyalty.
Likewise, the fact that that use may prompt some consumers to
switch from goods or services bearing that trade mark cannot be
successfully relied on by the proprietor of the mark.” [Interflora [64]]

5. Keyword Advertising – liability of ISPs?

 Google France - Joined Cases C-236/08, C-237/08 and C-238/08
(2010);
 A detailed analysis of TM functions (as followed and applied in the
Interflora case).
 The ISPs themselves are not using signs (TMs bought as keywords) in
the course of trade;
 Google’s use of trade marks in the AdWords service was not an
infringement;
 It is irrelevant that the AdWords service is paid for by advertisers
o “an internet referencing service provider which stores, as a
keyword, a sign identical with a trade mark and organises
the display of ads on the basis of that keyword does not use
that sign within the meaning of art.5(1) of Directive 89/104
or of art.9(1)(a) and (b) of Regulation 40/94” [99]

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DEFENCES TO INFRINGEMENT:
 Section 11 (2) A registered trade mark is not infringed by—
 (a)the use by [F3an individual] of his own name or address, - own name with
honest practices.
 (b)the use of [F4signs or indications which are not distinctive or which concern] the
kind, quality, quantity, intended purpose, value, geographical origin, the time of
production of goods or of rendering of services, or other characteristics of goods or
services, or – marks for description.
 (c)the use of the trade mark [F5for the purpose of identifying or referring to goods or
services as those of the proprietor of that trade mark, in particular where that use] is
necessary to indicate the intended purpose of a product or service (in particular,
as accessories or spare parts),
 provided the use is in accordance with honest practices in industrial or commercial matters: -
must be in accordance with honest practices

Own name or address defence subsection a:

Cipriani [2010] RPC 16 (a) defence.

 Action complained of = D used the sign “Cipriani London” for its restaurant
o Likely confusion – both high end cipriani establishments.
 Outcome = TM infringement & passing off - own name defence available, but failed …
Cipriani Test:
 Own name defence could be available in respect of a trading name, as well as the corporate
name of a company, but it would depend on:
(a)what the trading name was that had been adopted
(b)in what circumstances it had been adopted and
(c)depending on the relevant circumstances, whether the use was in accordance with honest
practices [72]
 The Court held that D could not rely on own name defence, “because their use took no
account of the legitimate interests of the owner of the trade mark.” [77]

Own name defence

 s11(2)(a)
 Newman v Richard T Adlem
o In years prior to registration Adlem sold funeral service (and goodwill)
o Restrictive covenant expired and recommenced name
o CoA did not allow ‘own name defence’
 Maier v Asos PLC
o ASSOS and ASOS names adopted independently
o Also was in honest practice (in industrial and commercial matters)
 Defendants never intended to confuse public
 Therefore in this case on the facts Defence upheld

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Marks for description: subsection b:

Descriptive Use C-2/00 Hölterhoff: (b)

 C = Freiesleben owner of two German registered TMs: SPIRIT SUN (for “diamonds for
further processing as jewellery”) & CONTEXT CUT (for “precious stones for further
processing as jewellery”)
 D = Hölterhoff sold two garnets to a jewellery business
 Action complained of = D referred to the trade marks SPIRIT SUN and CONTEXT CUT in
the course of sales negotiations and that the order was for two stones in the “Spirit Sun” cut
 Interpreting Article 5(1) TM Directive …
“Article 5(1) of the directive is to be interpreted as meaning that the proprietor of a trade mark cannot
rely on his exclusive right where a third party, in the course of commercial negotiations, reveals the
origin of goods which he has produced himself and uses the sign in question solely to denote the
particular characteristics of the goods he is offering for sale so that there can be no question of the
trade mark used being perceived as a sign indicative of the undertaking of origin. [17]” PURLEY
DESCRITIVE USE IS A VALID DEFENCE

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Necessary to designate the character of the good/service - subsection c:

Spare Parts?
 Case 228/03 Gillette Company v LA-Laboratories Ltd Case [2005] ETMR 67 - de
 C = Gillette Company (TMs for razors (including with replaceable blades) etc)
 D = LA Laboratories also manufactures razors with replaceable blades
 Action complained of = D’s use of the Gillette and Sensor marks on the packaging of its
products (“All Parason Flexor and Gillette Sensor handles are compatible with this
blade.”)
 Interpreting Article 6(1)(c) TM Directive
… necessary in order to indicate the intended purpose of a product
 Accessory & spare part only an illustration (not an exhaustive list) – Gillette [32]
 “Use of the trade mark by a third party who is not its owner is necessary in order to indicate
the intended purpose of a product marketed by that third party where such use in practice
constitutes the only means of providing the public with comprehensible and complete
information on that intended purpose in order to preserve the undistorted system of
competition in the market for that product.” [39]
… the only means to provide information?
Some factors to consider:
(1) the possible existence of technical standards or norms generally used for the type of product
marketed by the third party and known to the public for which that type of product is intended;
(2) those norms, or other characteristics, must be capable of providing that public with
comprehensible and full information on the intended purpose of the product marketed by
that third party in order to preserve the system of undistorted competition on the market for that
product. [36]

Necessary to designate the character of the good/service - subsection c:

Spare Parts: - designate the character of the product (c)

 Case 228/03 Gillette Company v LA-Laboratories Ltd Case [2005] ETMR 67 - de
o C = Gillette Company (TMs for razors (including with replaceable blades) etc), D =
LA Laboratories also manufactures razors with replaceable blades
o Action complained of = D’s use of the Gillette and Sensor marks on the packaging of
its products (“All Parason Flexor and Gillette Sensor handles are compatible with
this blade.”)
… necessary in order to indicate the intended purpose of a product
 Accessory & spare part only an illustration (not an exhaustive list) – Gillette [32]
 “Use of the trade mark by a third party who is not its owner is necessary in order to indicate
the intended purpose of a product marketed by that third party where such use in practice
constitutes the only means of providing the public with comprehensible and complete
information on that intended purpose in order to preserve the undistorted system of
competition in the market for that product.” [39]
… the only means to provide information?
Some factors to consider:

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(1) technical standards

(2) providing that public with comprehensible and full information on the intended purpose
of the product

Honest Practices?? The above defences must be carried out in accordance with
honest practices.
Gillette: NOT HONEST PRACTICES
Use of a TM will not be in accordance with honest practices in industrial and commercial matters if:
(1) it is done in such a manner as to give the impression that there is a commercial connection
between the third party and the trade mark owner; (BMW)
(2) it affects the value of the trade mark by taking unfair advantage of its distinctive character or
repute;
(3) it entails the discrediting or denigration of that mark;
(4) or where the third party presents its product as an imitation or replica of the product bearing
the trade mark of which it is not the owner [49].
Comparative Advertising: s10(6) TM Act.

“Nothing in the preceding provisions of this section shall be construed as preventing the use of a
registered trade mark by any person for the purpose of identifying goods or services as those of the
proprietor or a licensee.
But any such use otherwise than in accordance with honest practices in industrial or commercial
matters shall be treated as infringing the registered trade mark if the use without due cause takes
unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.”
 Comparative Advertising test under 10(6) must be interpreted under CAD requirements (O2
Holdings Ltd and O2 (UK) Ltd v Hutchison 3G Ltd [2006] EWHC 534 (Ch)).
C-533/06 O2 holdings v Hutchinson:
 Can competitors use other competitors’ TMs in advertising to compare their goods/services
with those of competitors (s. 10(4)(d) TMA)?
 In general yes - but must meet conditions of the Comparative Advertising Directive 2006/114
(see Article 4) - not in UK TMA
o Court seem generally in favour of comparative advertising where it is considered
honest by a reasonable audience
 Relationship between CAD and TM Directive?
 If comparative advertising permitted under CAD, it should not be stopped under TM
Directive (TMA) [O2 at [45]].

Due Caause? Eh?

Parody:

Lady Gaga v Lady Goo Goo:

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 Song “The Moshi Dance” (resembles “Bad Romance”) + imagery + application for TM Lady
Goo Goo
 Interim injunctive relief - discussed on “balance of convenience” not s. 12(3) HR Act -
successfully granted
 Confusion as to endorsement & harm to distinctiveness through confusion & unfair advantage
 Parody discussed [44-49] but discounted because the character “morphed from parody” and
was now entering into TM owner’s market - no longer pure parody – commercial product
that X is selling to others. Parodies are usually political
 Free speech not really discussed

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Revocation of an existing trademark:

Grounds to revoke: Non-Use, Common name, Mark liable to mislead the public, - s46(1) TM Act

 (a) that within the period of five years following the date of completion of the registration
procedure it has not been put to genuine use in the United Kingdom, by the proprietor or
with his consent, in relation to the goods or services for which it is registered, and there are no
proper reasons for non-use;
 (b) and that such use has been suspended for an uninterrupted period of five years, and there
are no proper reasons for non-use;
o Case C-40/01 Ansul BV and Ajax Brandbeveiliging BV (Minimax) [2003] ECR I-
2439, [2003] ETMR 85
 Ansul – meaning of genuine use?
 C = Ansul (owner of the Dutch Minimax TM for fire extinguishers &
associated products) - not sold under the mark since 1989 (but sells
component parts & maintains, checks and repairs equipment under
the mark)
 Stopped selling the product, but kept operating a business
relating to the product – so this is legitimate use, thus cannot
revoke.
 Ansul – genuine use:
 “use that is not merely token, serving solely to preserve the rights
conferred by the mark. Such use must be consistent with the
essential function of a trade mark, which is to guarantee the
identity of the origin of goods or services to the consumer or end user
by enabling him, without any possibility of confusion, to distinguish
the product or service from others which have another origin.” [36]
 Use on the market of goods/service the TM is registered for (not just
internal use) [37]

o Case C-259/02 La Mer Technology Inc v Laboratoires Goemar SA [2004] ETMR 47
 “Even minimal use can therefore be sufficient to qualify as genuine, on
condition that it is deemed to be justified, in the economic sector
concerned, for the purpose of preserving or creating market share for the
goods or services protected by the mark.” [21]
o Case C-149/11 Leno Merken BV v Hagelkruis Beheer BV [2012]
 Use in one MS will suffice genuine use requirement.
o Proper reasons for non-use:
 Case C-246/05 Armin Häupl v Lidl Stiftung & Co KG [2007] ETMR 61
 Genuine use of figurative mark “Le Chef DE CUISINE” - opening of
supermarkets in Austria delayed because of “bureaucratic obstacles”
 “Article 12(1) of the Directive must be interpreted as meaning that obstacles
having a direct relationship with a trade mark which make its use impossible
or unreasonable and which are independent of the will of the proprietor of
that mark constitute 'proper reasons for non-use' of the mark.” [55]
 Valid “non-use” because Claimant had genuine intention of use but was
precluded from action via external cicrumstances
o Overarching principle:

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 TM will continue exist so long as the essential function of the TM

continues. I.e to designate the origin of goods and services as distinct
from the goods or services of other undertakings
 (c) that, in consequence of acts or inactivity of the proprietor, it has become the common
name in the trade for a product or service for which it is registered ;
o Kornspitz: Case C-409/12 Backaldrin Österreich The Kornspitz Company GmbH v
Pfahnl Backmittel GmbH [2014]
 Did the TM “Kornspitz” registered for baking mix and baked goods become a
common name for a bread roll?
 Pfahnl filed for a revocation of the TM KORNSPITZ - Article 12(2)(a) TM
Directive
 TM no longer capable of fulfilling its function as an indication of origin
of the goods [19]
 … characterised by the loss of distinctive character of the trade mark
concerned from the point of view of the end users, that loss may result in
the revocation of that trade mark.
 If the traders knew of the common name origin it is irrelevant. If the end
consumer realises the mark as a common name – it can revoke the trademark.
 (d) that in consequence of the use made of it by the proprietor or with his consent in relation
to the goods or services for which it is registered, it is liable to mislead the public,
particularly as to the nature, quality or geographical origin of those goods or services.
o Case C-259/04 Elizabeth Emanuel v Continental Shelf 128 Ltd (2006)
 C = Ms Emanuel (fashion designer – wedding wear) \ D = CSL (clothing
manufacturer)
 Action complained of = opposition to registration of “ELIZABETH
EMANUEL” by CSL for clothing and revocation of “Elizabeth Emanuel” for
clothing, assigned to CSL (mark misleading, as it would lead to confusion)
o C-259/04 Elizabeth Emanuel:
 Assigning TM to X menas that public will likey be confused and mislead as
to a connection between the two parties. But this can be a legitimate
business strategy if assigned lawfully.
 Cannot assign, then revoke assignment because it ‘misleads the
public’.
 “for the trade mark to be able to fulfil its essential role in the system of
undistorted competition … it must offer a guarantee that all the goods or
services bearing it have been manufactured or supplied under the control of
a single undertaking which is responsible for their quality” [44]
 “the circumstances for refusing registration referred to in Article 3(1) (g) of
Directive 89/104 presuppose the existence of actual deceit or a sufficiently
serious risk that the consumer will be deceived” [47]

Invalidity: Declaring a mark to be invalid:

 Section 47(1) UK TM Act - absolute grounds (for example Case T-396/11, ultra air v OHIM
and Donaldson Filtration Deutschland (May 2013) - good faith of the applicant for
invalidation irrelevant
 Section 47(2) UK TM Act - relative grounds (for example Case T-642/13 Wolverine (October
2015) - cushe v she (earlier mark))
 Partial declaration of invalidity possible (for only some goods or services) - s. 47(5) UK TM
Act
Invalidity – BAD FAITH:

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Section 3(6) UK TM Act

 A trade mark shall not be registered if or to the extent that the application is made in bad faith.
Section 47(4) UK TM Act
 In the case of bad faith in the registration of a trade mark, the registrar himself may apply to
the court for a declaration of the invalidity of the registration.
 Case C-529/07, Chocoladenfabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH (11 June
2009)
C-529/07 Lindt:
 C = Lindt (Switzerland) - TM infringement suit of its 3D chocolate bunny TM (used since
1950s, in Austria since 1994; registered in 2000)
 D = Franz Hauswirth (Austria) - counterclaim for invalidity of C’s TM for filing in bad faith
(since 1962 in Austria)
 Article 51(1)(b) CTM Regulation
Test of Bad Faith:
 What? Bad faith = absolute ground for refusal.
 When? At the time of filing of the application for TM registration.
 Test = an overall assessment, taking into account all the factors relevant to the particular case
[37], in particular:
1.the fact that the applicant knows or must know that a third party is using, in at least one MS, an
identical or similar sign for an identical or similar product capable of being confused with the sign
for which registration is sought;
2.the applicant’s intention to prevent that third party from continuing to use such a sign
(marketing comparable products); and
3.the degree of legal protection enjoyed by the third party’s sign and by the sign for which registration
is sought [53].

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