#5394 - Trade Marks - Intellectual Property Law

Trade Marks

Intellectual Property LLM

Notes

Function of Trademark Protection 4

1. Indicator of Origin 4

2. Advertising Function 4

3. TMs and Brands 4

What is the Difference Between a TM and a Brand? 4

How Much Proprietor Control? 5

Issues in Trade Mark Law 5

Trademark and the Public Domain 5

Extrinsic Qualities 5

Registration 5

Domestic 5

International Protection 6

CTM 6

Madrid Protocol 6

The Definition of a TM 6

1. Any Sign 6

2. Capable of Graphic Representation 6

3. Capable of Distinguishing The Goods and Services of One Undertaking From That of Other Undertakings 7

Absolute Grounds for Refusal of Registration 7

1. Signs that don’t satisfy Art 2 8

2. Marks which must satisfy the proviso 8

a. Marks Devoid of Distinctive Character (s3(1)(b)/Art 7(1)(b) CTMR) 8

Shapes 8

Simple Signs 9

Colours 9

Names 9

Get-up and Trade Dress 10

Slogans 10

b. Descriptive Marks 10

c. Generic or Customary Signs 11

Relationship between Art 3(1)(a) and Arts 3(1)(b-d) 11

How do we assess acquired distinctiveness? 11

Marks Against the Public Interest (art 3(1)(e-g), art3 (2)(d) TMD; (s 3(2)-3(6) TMA) 12

1. Prohibited Shapes 12

4. Marks Contrary to Public Policy 15

5. Deceptive Marks 16

6. Registration in Bad Faith 16

No intention to use the mark 16

Where there is an abuse of a relationship 16

Applicant aware that a Third Party had some sort of claim to the Mark’s goodwill 16

Relative Grounds for Refusal of Registration 17

Identical marks on identical goods and services 17

When are Goods and Services Identical? 17

Identical marks on similar goods and services and similar marks on similar or identical goods and services + Proviso applies 17

The early UK interpretation of the proviso in ss5(2)(a-b)(Art4(1)(b)) 18

Benelux 18

Court of Justice 18

Marks With a Reputation – s5(3) TMA / Art 4(3) 20

Reputation 20

Dilution 20

Tarnishment 20

Unfair Advantage 21

‘Without due cause’ 22

Assessing damage 22

Conflicts with earlier rights 22

Infringement 23

Use must be in the course of trade 23

Need use of the mark be as a trade mark to infringe? 23

Trademarks and the Internet 24

Honest Concurrent Use – Overlapping Registration 25

Use of Own Name 25

Purely Descriptive Marks 25

Intended Purpose 25

Comparative Advertising 26

Ways to lose a Registered Trade Mark 27

1. Revocation 27

Non-Use (Art 12(1) TMD) 27

Generic Use (art 12(2)(a) TMD) 28

Misleading marks (art 12(2)(b) TMD) 28

2. Invalidity (arts 3 & 4 TMD) 28

Defence 28

Licences and Assignments 29

Remedies 29

Trade Marks of the European Union 29

Exhaustion of rights and changing the ‘condition’ of the goods 29

(Arts 7(1) & 7(2) TMD; s 12(1)&(2) TMA) 29

Rebranding and repackaging 30

Re-selling which changes the ‘mental’ condition of the goods 30

Trademarks

Trademarks are the most harmonised of the Intellectual Property rights, since they all stem from a directive (1989 - consolidated in 2008). They are also the most variable. There is now a community trademark - 2009 regulation (final word goes to the ECJ).

Sets out the origin of the trademarked product to the consumer. Posner and Landes say that the TM reduces customer search costs, and ensures the quality of the goods. The TM means that when you buy the product, you can guarantee it will be of the same quality as last time. This encourages the producer to strive towards uniform quality, and good quality (see Box). The value of a TM is self-perpetuating in this way – the TM owner wants consumers to keep buying their product for standardised and high quality. These benefits would be lost if someone was allowed to free ride on TMs.

Are there any costs? Ponser and Landes say no, but others disagree – some products are the same (e.g. Bleach) regardless of what brand one purchases. This means that producers waste money establishing and maintaining a TM, when it is not relevant, and pass those costs onto the consumer. Another example of this is Open-Source Software.

Apple, Coca-Cola etc. The growth in the licensing of TMs has meant that the indicator of origin function has diminished, and the advertising function has increased. P&G, Unilever and Nestlé own the majority of the brands in UK supermarkets, and so the indicator of origin is much less relevant. Previously, TMs established safety of products but this is no longer an issue, so the function has changed.

Schecter argues that the advertising functions of a trademark should also be protected. The mark encourages consumers to buy TMd goods regardless of their quality. The advertising function arises when the quality of goods in a market is pretty much the same. By protecting the advertising function, competitors can’t take advantage of the investment that the producers have made in the trademark.

Others argue that protecting more than the badge of origin means that entry into a market is very costly. Moreover, the way in which we see a product is more than just the product of what the proprietors do. The public invests values in a brand as well. Should Tottenham Hotspur get all of the benefit of what the supporters of the team invest in its TM?

There is an argument that the TM itself has become the brand – you are not buying the t-shirt or the trainers, you are buying the Nike ‘swoosh’. Quote in ‘No Logo’ (Klein) – Nike is now a marketing company, not a producer of shoes.

The TM Directive defines a TM as a graphic representation that is capable of distinguishing one traded good from another. There is no equiva definition for brands, but we can define it as an ‘aggregation of assets which includes, but is not limited to a TM’. It may also include marketing strategies, people, but most importantly, it is transferable – see Virgin (started in music, now money, aeroplanes etc).

Coca-Cola’s strong brand (formerly the most valuable in the world) came from ‘building consumer connections, iconic advertising’ etc.

• Burberry became the favourite brand of football hooligans and Chavs – Met Police ‘Operation Burberry’ and pubs refusing entrance.

• Nike becomes the brand most associated with sweatshops.

• Lonsdale contains the letters NSDA, which are the Nazi party initials, such that if you wore a t-shirt with a jacket, that’s what it showed. Lonsdale struck back and responded directly, using lots of colours, Muhammad Ali and directly funding LGBT groups.

TMs are indefinite (only IPR to do so), and give a monopoly to a firm over a particular trademark in a particular area. How much protection do we want to give? In the UK and Germany, common view is that there should always be limits.

Best example – Coca Cola bottle [1985] – CA refused to register the iconic bottle shape. Argued that if you give indefinite protection to functional shapes, you’re impoverishing the public domain. Under the TM directive, you can now register any sign, as long as it’s acting as a TM (an indicator of origin) to the market.

Benelux – extrinsic qualities protected even when there was no confusion, as long as the public makes a conection between the two products, which makes the TM look bad or dilutes it.

Claeryn / Klarein – Gin and cleaning product use very similar name, makes the gin less distinctive, and perhaps tarnishes the brand

What if it was the other way round? Gin makes the cleaning product seem better?

Unfair advantage – trader gets an unfair advantage:

L'Oreal v Bellure

Perfume Manufacturers (L'Oreal very high quality, Bellure very cheap), Bellure marketed itself as being better value. No confusion over the two but Bellure free riding on the TM.

Need to make an application to the trademark registry, sending a representation to the UK.

IP Translator Case – Class 41 (education) was a big area, did they need to be more specific? In some classes, you don’t need to be specific, because people understand the meaning of the words, but here, it was not so obvious that it was to fall into that class. Sleeping bags fall into furniture, for example. Open question, but a very important one.

Date of filing is important. On registration, your rights are backdated to the date of filing.

Examination of TM is contested. If there is no opposition, or if it succeeds, it will be registered for cycles of 10 years. There are still TMs protected since 1880s

Can make an application directly to OHIM – it will advertise the mark and then register it. In cases of infringement, can designate a national court to hear the case over the infringement. If there is a mark in any of the countries of the EU, then the CTM will fail.

29 countries have signed up to it – single application through a national TM office via WIPO. It will be examined in each country, and will succeed in some, if not all.

Very open ended definition, can include sounds, smells etc. Starting point is the non-exhaustive list in s1 of the Act. The benefit of this open-endedness is that it panders to consumers who are maybe not literate – don’t want them not to benefit from the benefits of trade mark protection (search costs) – Dinwoodie. Maybe the additional costs from this are not justified by the benefits that they confer on their owners (Elias (1992)).

Dyson v Registrar of Trade Marks (2007)

Dyson wanted to register 'a transparent bin forming part of the external surface of a vacuum cleaner' as a trade mark. It...