#19703 - 15. Trademark Infringement - Intellectual Property Law

Reading: Bently and Sherman 6^th Ed: 1118-1145 & 1161-1166

WEEK 15

TRADEMARK INFRINGEMENT

Outline –

1. The non-exhaustive list

2. How C and D’s marks may be identified for comparison purposes

3. Range of situations for which a claim is viable

   1. When a mark is used in a relevant manner

   2. In the course of trade

   3. Within the territory of the UK

   4. Re goods and services

4. The functions of a tm

   1. Origin of function

5. Secondary/accessory liability for tm infringement

   1. Relevance in internet platforms.

Infringement proceedings will often be brought by the owner of the mark, but it is also possible for an action to be brought by an exclusive licensee. TMA 1994, s. 31.

• Where they are not entitled to bring proceedings in their own right, they can call on the proprietor to take proceedings on their behalf (s.30)

Proceedings can be brought as soon as the mark is registered.

The rights of the proprietor are enforceable against third parties re acts done after the date of registration

The rights continue for 10 years from registration and may be renewed for 10 year periods, possibly indefinitely (s.42 and s.43)

Infringing acts

Infringing acts are set out in sections 10(1)-(3) of the Trade Marks Act 1994

• Non-exhaustive list - such as:

  • affixing the sign to the goods or to the packaging;

  • importing or exporting goods under the sign; or

  • using the sign on business papers or in advertising.

To infringe, there is no requirement for knowledge, intention, or derivation on D’s part. Liability for tm infringement is strict, it is an absolute legal monopoly.

• In contrast w/passing off – no need for proprietor to demonstrate damage.

Can commence an action for infringement even though the mark has not been used

S.10(1)–(3) clearly provides that, in order to infringe, it must be shown that the defendant ‘uses in the course of trade’ the registered mark or one similar to it.

Relevant time reference for evaluating infringement is ‘the date that the [unauthorized] use of the sign was commenced.

Comparing the registered mark with the alleged infringing sign, s.10(1)-(3) set out the circumstances in which the mark may be infringed mirror the grounds for refusal in s.5(1)-(3). A mark falling foul to s.5(1)-(3) can amount to an infringement under s.10(1)-(3) – the tests and concepts used are the same; albeit some key differences exist between an action for infringement and the relative grounds of refusal.

• (i) the marks are identical and the goods or services are identical

• (ii) 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 registered mark;

• (iii) 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

• (iv) the marks are either identical or similar, the registered trade mark has a reputation in the United Kingdom, and use of the defendant’s mark would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the registered trade mark.

Contrast to relative grounds – focus is on a real life specific situation rather than speculative analysis.

• For infringement ‘the assessment must be limited to the circumstances characterising that use, without there being any need to investigate whether another use of the same sign in different circumstances would also be likely to give rise to a likelihood of confusion’

• Infringement has a tighter focus than relative grounds.

Section 3(4)(e) -- clarifies that comparative advertising which does not comply with the stipulations in the Business Protection from Misleading Marketing Regulations 2008 counts as relevant use in advertising.

Section 10A extends the application of exclusive rights to goods transiting through the United Kingdom, even when they will not be placed on the market in the United Kingdom.

• Section 10A(4) recognizes that the proprietor’s right will lapse where the defendant establishes, under customs proceedings, that the trade mark owner is not entitled to prohibit the placing of goods bearing the mark on the market of the country of final destination.

section 99A TMA – compels publishers of dictionaries, encyclopaedias, and other reference works to ensure that where an entry refers to a trade mark as a generic term, this must be ‘accompanied by an indication that it is a registered trade mark’ in a timely manner, upon the request of the trade mark proprietor.

• Reference work can acknowledge generic usage while simultaneously acknowledging the mark remains registered.

3 principle categories of infringement – each having a structured analytical approach by the courts

1. Double identity

2. Likelihood of confusion

3. Dilution

Steps.

1. Necessary to first identify the scope of the TM owner’s property

2. Identify D’s mark

   1. Specific use of the mark by D

3. Has the mark been

   1. ‘used’

   2. ‘in the course of trading’

   3. ‘in the United Kingdom’

   4. ‘in a way which affects the relevant functions of the mark’? most controversial

What is C’s trade mark?

Starting point – register (via graphic rep) and specification (identifying the core of the good/service)

If the registration is 5+ years, the specification of goods have to be reformulated

• Common for the infringer to challenge the scope of registration esp if it is 5+ years old through a counterclaim for revocation for non-use

How the mark is used

• Court of Justice - attention can be paid in the global appraisal to how the mark has been used (global assessment of confusion)

  • the greater the intensity and geographical extent of the use, the greater the acquired distinctiveness of the mark, and the greater the likelihood of confusion

• If the mark has been used in particular ways and D uses its mark in a similar way, this could form part of the ‘global appreciation’

Specsavers International Healthcare v. Asda Stores - the mark had been used primarily in a particular shade of green

• The Court was asked whether this was relevant and it unhesitatingly replied that it was, both to the global appreciation of likely confusion, and also in appraising whether unfair advantage had been taken of the mark, since the defendant had also used green ovals

If there is an additional element not visible on the register—such as use in a specific colour—is relevant only because it affects consumer perception of the registered mark in question

What is D’s sign?

The question of exactly what constitutes the defendant’s sign is of primary importance when considering section 10(1)—the ‘double identity’ provision:

• Exactly identical = confusion is not relevant, D has infringed the trade mark right

LTJ Diffusion - The French court sought clarification as to whether Article 5(1)(a) covers only identical reproduction without addition or can extend to reproduction of the sign with added matter.

• CoJ in stating that there is identity where a sign reproduces ‘without any modification or addition, all the elements constituting the [trade mark]’

• This implies there is no doctrine of ‘added matter’ or ‘ineffective addition’

• Indicates that courts are not free to ignore added matter

Nevertheless, it gives virtually no guidance on how to identify the parameters of the defendant’s mark.

The most plausible guide is that a tribunal will be justified in ignoring extraneous matter only if, in the eyes of the average consumer, it would not be regarded as being part of the sign

• Factor 1- whether the matter is visually or syntactically interlinked so as to be perceived as part of a single visual or semiotic entity

  • Use of the same font

• Factor 2 - Semiotic interlinking might also be conveyed by adding an adjective in front of a trade mark.

  • Edible play dough is not identical to play dough; transport yellow pages is not identical to yellow pages

• Factor 3 - Use of a term grammatically correctly within a slogan might render the slogan as a whole the relevant sign, but if, within the slogan, there were some changes in font or stylization that made a component distinct, then that alone might constitute the sign.

• Factor 4 - whether the element is perceived as functioning in a distinct way

  • Eg. Cadbury’s chocolate in advertising, a tribunal may treat the word ‘chocolate’ as a description rather than as part of the mark

• Factor 5 - The prefix and suffix components of an email might also be seen as distinct entities (with different roles)

  • Eg. [email protected] was held to be use of a sign identical to the claimant’s registered mark herr voss (Blue IP v. KCS Herr-Voss [2004] EWHC 97 (Ch), [53])

Bentley Motors v. Bentley 1962 and Brandlogic [2020] EWCA Civ 1726, [19]–[23]

• Where the defendant Bentley Motors had previously used a logo (the B-in-wings device) extensively and separately from the word Bentley, consumers would consider this to be the simultaneous use of two distinct signs, as opposed to one composite sign, thereby allowing a double identity claim against just Bentley to succeed

Strict approach – LTJ; where unclear whether consumers would consider an element to be outside the mark, the tribunal should treat the mark as a whole. The comparison should be under s.10(2) not s.10(1).

• Application of 10(1) should be confined to obvious cases

• Complex tests of identity are inappropriate

1124-1145 to go

The specifics of D’s use of the mark

Contrasting s.5, s.10 requires that the defendant ‘will have committed, or will be about to commit, specific acts’ (O2 Holdings v. Hutchison 3G UK, Case C-533/06 [2008] ECR I–4231, [66]–[67].)

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