#19702 - 14. Relative Grounds For Refusal - Intellectual Property Law

IP week 14

Bently and Sherman 6^th Ed: 1039-1089

WEEK 14

RELATIVE GROUNDS FOR REFUSAL

Section 5 of the Trade Marks Act 1994 lays out relative grounds for denying an application to register a trade mark as well as for the cancellation of a mark that has been registered

These grounds apply where an applicant or proprietor is at a relative disadvantage, since their sign conflicts with someone else’s prior rights.

• In contrast with absolute refusal where there is something inherently objectionable about the sign or the manner of its registration

2 general categories

1. Those concerned with ‘earlier trade marks’

2. Those concerned with ‘earlier rights’

Earlier trade marks

section 5(1)–(3) of the 1994 Act.

A trade mark shall not be registered if, when compared with an earlier mark, it is found that:

1. The marks are identical and the goods or services are identical;

   1. TMA 1994, s. 5(1).

2. The marks are identical, and the goods or services are similar, and there is a likelihood of confusion, which includes the likelihood of association, with the earlier mark;

   1. TMA 1994, s. 5(2)(a).

3. The marks are similar, and the goods or services are either identical or similar, and there is a likelihood of confusion, which includes the likelihood of association, between the marks; or

   1. TMA 1994, s. 5(2)(b).

4. The marks are either identical or similar, the earlier trade mark has a reputation, and use of the applicant’s mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark (irrespective of whether the goods or services are similar or not)

   1. TMA 1994, s. 5(3).

These mirror the provisions dealing with TM infringement - section 5(1)–(3) corresponds to section 10(1)–(3).

They enable an owner of an earlier mark (A) to prevent the registration of a sign by another (B) where the use of the sign would infringe A’s rights.

• Consequence of this – a lot of the case law on infringement is relevant to relative grounds of refusal.

• The principal difference is that relative grounds analysis is ‘paper based’ whereas infringement analysis can take into consideration ‘real world use’ of the claimant or defendant’s marks.

Preliminary questions

1. What is an earlier trade mark?

2. Does the opponent (applicant for cancellation) have an appropriate interest on which to base a challenge?

3. Has the earlier mark been used?

‘earlier trade mark’ is quite complex.

• Covers earlier UK trade marks and earlier international trade marks (designated ‘UK’)

• After 31 December 2020, earlier European Union Trade Marks (EUTMs) are excluded from the scope of recognized earlier trade marks

  • Except where these have been converted into comparable trade marks in the United Kingdom

• the concept of ‘earlier trade marks’ includes ‘earlier trade mark applications’ with priority over the application under scrutiny

The provisions also include earlier ‘well-known’ marks

• protected under the Paris Convention –

• even though these marks may not have been registered

the specific list of earlier marks

1. under section 6(1)(a), a registered British mark, or an international trade mark (UK)—that is, a mark registered under the Madrid Protocol designating the United Kingdom - which has a priority date earlier than the trade mark in question;

2. under section 6(1)(aa) and (ab), comparable trade marks (both based on EUTMs or international registrations (IR) designating the EU), registered under Schedule 2A of the 1994 Act;

3. under section 6(1)(ba), prior to 31 December 2020, a registered trade mark or international mark (UK) that had been converted from an EUTM or international trade mark (EU), which itself had a valid claim to seniority from an earlier registered trade mark or international mark (UK) and accordingly has the same claim to seniority;

4. under section 6(2), an application for a mark, which, when registered, would be an earlier trade mark; and

5. under section 6(1)(c), a trade mark that is entitled to protection as a well-known trade mark.

An appropriate interest on which to base a challenge

Needs to have a relevant interest in an earlier mark for an opposition (or application for cancellation) to commence.

Neither the Registrar nor other third parties may object if the same or a similar mark is registered for the same or similar goods—however much confusion this might produce; it is only the proprietor of the earlier trade mark who can bring proceedings.

Nevertheless, a cancellation action can be brought by the proprietor or a licensee of an earlier mark (or, in the case of a certification mark, an authorized user).

• Rationale: a cancellation action may be by way of a counterclaim to infringement

Has the earlier tm been used?

The applicant can demand that the opponent produce evidence of use of the trade mark in the previous five years or proper reasons for non-use (TMA 1994, ss. 6A, 47(2A)–(2E)); If the opponent fails to do so, the opposition will be rejected (TMA 1994, s. 6A(2)–(7)).

If the mark has not been used but this is within the five-year grace period, fair and notional use of the marks will be assumed when conducting relative grounds analysis

• Similar approach taken in infringement proceedings (Roger Maier v. ASOS [2015] EWCA Civ 220, [2015] FSR (20) 509, [78])

  • Court must ‘consider a notional and fair use of that mark in relation to all of the goods or services in respect of which it is registered’

s.5(1) Double identity– grounds for refusal

Where the mark is identical to earlier trade mark and goods/services to which the application relates are identical to the goods/services for which the earlier tm is protected.

Earlier trade marks are protected unconditionally

• No need to prove confusion

However, if the applicant can demonstrate the registration wont adversely affect any of the functions of the TM, the later application may be registrable.

3 questions arise:

1. When are marks identical?

2. When are the goods and services identical?

3. When will registration of the later mark be, nevertheless, regarded as legitimate?

Are marks identical?

Need to bear in mind the rules that a word mark represents that word in any form

• Global appreciation approach

The comparison is made between the earlier trade mark (as registered) and the sign in the applicant’s application in contrast with the position on infringement (deciding on the decide parameters of the defendant’s sign)

• The two marks are considered as a whole

• Nothing in the applicant’s mark is ignored.

Slight difference may nonetheless be treated as identical

Courts have construed section 5(1) narrowly

• SA Société LTJ Diffusion v. SA Sadas - the Court of Justice concluded that the criterion ‘must be interpreted strictly. The very definition of identity implies that the two elements should be the same in all respects.’

• There is identity where a sign reproduces ‘without any modification or addition, all the elements constituting the [trade mark]’ [51].

• Where one mark was subsumed (included or absorbed) within the other but alongside additional elements, the implication is that double identity was not satisfied.

• The test is to be applied from the viewpoint of the average consumer and that such a person will usually assess two signs globally, looking at the overall impression - ‘insignificant differences between the sign and the trade mark may go unnoticed by the average consumer’

Lewison J has held that consumers of computer software would not notice the difference between websphere and web-sphere (Websphere Trade Mark [2004] EWHC 529 (Ch), [2004] FSR (39) 796)

But Hart J held that KCS Herr Voss was not identical to Herr-Voss (Blue IP v. KCS Herr-Voss [2004] EWHC 97 (Ch), [49].)

When are goods and services identical?

There are two possible exceptions to this rule

1. Where the terminology is identical, but the products belong to different Nice classes—for example, (industrial) robots in class 7 and (toy) robots in class 28.

2. Where unauthorized third parties provide a service (e.g. repairs) in relation to the specific goods (e.g. cars) of the trade mark owner

   1. (rather troubling and narrowly construed exception)

   2. CJEU- ‘in such a case, that sign is used to identify the origin of the goods that are the subject matter of those services and there is a specific and indissociable link between the goods bearing the trade mark and those services’ such that they may be considered identical.

   3. Since such situations would arguably fall under similar or related goods, this broad understanding of identity may not be followed in the future by British courts.

If the category of goods or services protected by an earlier trade mark is broader than, but includes, the category of goods or services to which the application relates, then the applicant’s goods are identical to those of the earlier mark.

In some cases the language of the trade mark specification may need to be interpreted to determine whether an earlier mark may encompass the later one.

• Consequently, dictionary definitions, Nice classes, and commercial usage are interpretative aids.

• The dominant approach today seems to be that the words used in a specification should be given their ‘natural’, ‘ordinary’, ‘usual’, or ‘core’ meaning

• Ie. tribunals may have to decide whether ‘vermin’ includes insects, or whether ‘cosmetics’ includes ‘skin-lightening cream’

• General class headings should likewise be given their natural and ordinary meanings (CIPA v. Registrar of Trade Marks (IP Translator), Case C-307/10, EU:C:2012:361.)

Registration of the later mark will not adversely affect the functioning of an earlier mark.

Difficult to envisage...