#3613 - Trade Marks 2 - Intellectual Property Law

TRADEMARKS 2

Relative Grounds of Refusal

TMD 1988 Article 4

TMA 1994 Section 5

The relative grounds of refusal concern either:

1. earlier trade marks

2. earlier rights

   Relative grounds of refusal

1. allow others to oppose registration of a mark by D

2. allow others to apply for a registered mark to be declared invalid

   Only apply if invoked by someone challenging registration

Relative Grounds of Refusal

For earlier trade marks, relative grounds of refusal are:

1. Double-identity (section 5(1))

2. Identical goods/similar trade mark and vice-versa (section 5(2))

3. Identical or similar marks, where earlier mark has a reputation (section 5(3))

   For earlier unregistered rights, can be refusal if registration amounts to passing-off or breach of copyright.

EARLIER TRADE MARKS

Section 4(2)

Earlier trade marks which can justify opposition/cancellation include:

1. Community Trade Marks (CTMs)

2. Registered national trade marks

1. Double Identity

Section 5(1)

Identical marks + identical goods or services

Here, is no need to prove D’s mark will cause confusion

1. Identical Marks

   C and D’s mark ‘identical’ only where D’s sign reproduces, without any modification or alteration, all the elements constituting the earlier trade mark

   LTJ Diffusion SA [2003] (ECJ)

   Test applied from viewpoint of average consumer

   Thus insignificant differences between sign and mark do not prevent identity

   LTJ Diffusion SA [2003]

2. Identical Goods or Services

   Court looks at specification of respective marks.

   ‘Specification’: i.e. description of class of goods protected by mark

   Extent of specification is determined at date earlier mark is registered

   i.e. cannot evolve to cover other things over time

   Reed Executive Plc v Reed Business Information [2004]

   Thus e.g.:

1. ‘UNITED AIRWAYS’ is identical to ‘UNITED AIRLINES’

• United Airlines v United Airways [2011]

2. ‘COMPASS LOGISTICS’ is not identical to ‘COMPASS’

• i.e. addition of extra word is enough to remove identity

• Compass Publishing v Compass Logistics [2004]

2. Confusing Similarities

   Section 5(2)

   Identical marks + similar goods, similar mark + identical or similar goods

   Relative ground applies only if there is likelihood of confusion on part of public.

   Likelihood of confusion appreciated globally

   Sabel v Puma [1997] (ECJ)

   Thus lesser degree of similarity between goods may be offset by greater degree of similarity between marks

   and vice-versa.

   Sabel v Puma [1997]

1. Similar Marks

   Court looks at marks as a whole

   Sabel v Puma [1999]

   Global appreciation requires court to look particularly at:

1. aural, visual or conceptual similarities

2. dominant and distinctive components of mark

• Sabel v Puma [1999]

  Is no minimum threshold of similarity

  i.e. if any similarity at all, likelihood of confusion must be considered

  Esure Insurance [2008] (English Case)

Aural, Visual & Conceptual Similarities

Which of these three aspects is most important depends on nature of goods in question

1. Aural

1. First syllable most important

   1. Where first syllables identical, often similarity

      Jose Alejandro v OHIM [2003] (‘budmen’ similar to ‘bud’)

   2. if first syllables different, not likely to be similarity

      Les Éditions Albert Réné v OHIM [2008] (‘Asterix’ and ‘Starix’ not similar)

2. Courts sometimes carry out quantative assessment

   relevant factor is whether two signs have more syllables in common than not

   Mystery Drinks [2003]

2. Visual

   Is most important element for e.g. clothes

   e.g. Philips-Van Heusen v OHIM [2003] (BASS and PASH)

   Visual similarity of words also relevant.

3. Conceptual

   Conceptual differences may make marks dissimilar even aural and visual similarities between signs.

   E.g. where earlier mark/new sign is such that it has meaning independent of goods in relation to which trade mark is sought

   Picasso v OHIM [2006]

   This only case where at least one of the two signs has a ‘clear and specific meaning’

   Picasso v OHIM [2006]

2. Similar Goods or Services

   All relevant factors must be taken into account when determining similarity.

   Canon v MGM [1998]

   Relevant factors include:

1. Nature of goods

2. End users of goods

3. Manner in which goods are used

4. Extent to which goods are in competition or complementary

• Canon v MGM [1998]

Complementary Goods

Some goods are ‘complementary’ to others which have established trade marks

E.g. a perfume marketed under mark ‘French Connection’ (clothes and perfume are complementary)

Are conflicting approaches as to when goods will be ‘similar’:

1. Some cases take narrow approach

• only similarity if one good ‘indispensable or important’ for use of other

• Muhlens v OHIM [2007] (Perfume and clothes not similar)

2. Others take broad approach

• El Corte Ingles [2007] (CFI) (Bags and clothes are similar)

3. Likelihood of Confusion

   Confusion arises where average consumer of relevant product might believe that goods or services in question come from:

1. Same undertaking

2. Or economically-linked undertakings

• Canon v MGM [1998]

  ‘Likelihood of association’ not an alternative to likelihood of confusion

  Sabel v Puma [1998]

  Average consumer is ‘reasonably observant and circumspect’

  Lloyd Shuhfabrik [1999]

  Level of attention of average consumer varies depending on goods in question:

  where characteristics of goods means average consumer only purchases after detailed examination, less likely to be confusion

  e.g. if good is expensive or technical

  Picasso v OHIM [2006]

Time of Confusion

‘Post-Sale Confusion’

Seems that post-sale confusion suffices.

i.e. where purchaser of D’s goods is under no confusion when buying the goods

but confusion arises when people later see the goods away from their point of sale

Datacard v Eagle Technologies [2011] (Ch.)

Likelihood of post-sale confusion is assessed in same manner as likelihood of confusion

i.e. must still be case that an average consumer of good in question would be likely to be confused

Arsenal FC v Reed [2004] (ECJ)

Datacard v Eagle Technologies [2011] (Ch.)

‘Initial Interest Confusion’

Can be ‘confusion’ where this is only at the point of initial interest

even if purchaser is no longer likely to be confused at point of sale

Portakabin v Primakabin [2010]

Och-Ziff Management [2010]

E.g. a misleading advert can cause confusion; even if:

when purchaser investigates goods being advertised, he realises that they are not connected with those that enjoy trade mark protection

or the advert does not lead to a sale at all

Portakabin v Primakabin [2010]

Och-Ziff Management [2010]

Distinctiveness

Distinctiveness of earlier mark relevant to likelihood of confusion.

Canon v MGM [1998]

less distinctive the earlier mark, the less likely new sign will cause confusion

and vice-versa

Where mark would be recognised as part of a ‘family of marks’, may have acquired distinctiveness

i.e. so that any sign which would appear to belong to this family refused registration

Il Ponte Finanzaria [2008]

E.g.’easyJet’, ‘easyCar’, ‘easyInternet’ etc.

Community Trade Marks (CTMs)

Where earlier mark is a CTM, D’s application for new CTM can be refused where registration of new mark would result in confusion only in part of European Union

i.e. no need for the confusion to result across whole EU

Armacell Enterprise [2008]

3. Marks with a Reputation

Section 5(3)

No registration where:

1. identical/similar marks

2. goods or services are not similar

3. earlier mark has reputation in the Member State/Community

4. use of later mark without due cause would take

• unfair advantage of,

• or be detrimental to distinctive character or reputation of earlier trade mark.

  NB section also applies to protect an earlier mark where the later good or service is similar or identical to goods or service for which earlier mark was registered.

  Despite wording of TMD 1988

  Davidoff v Gofkid [2003] (ECJ)

1. Reputation of Earlier Mark

1. Relevant reputation is that amongst average consumers of good/service in question

   General Motors v Yplon [1999] (ECJ)

2. Earlier mark must be known to a ‘significant part’ of relevant public.

   no need for any set percentage of public to have heard of earlier mark

   General Motors v Yplon [1999]

   Relevant factors for determining reputation include:

   Market share of TM

   Duration of use

   Geographical extent of use

   Size of investment made in promoting it

   • General Motors v Yplon [1999]

3. Earlier mark must have a reputation in “substantial part” of Member State concerned.

   Pago [2009]

   CTM has reputation in “substantial part” of EU where it has reputation throughout whole of one Member State.

   Pago [2009]

2. When Does Section Apply?

1. Link

   CANNOT be unfair advantage/detriment unless there is some sort of link between marks

   i.e. D’s mark must remind public of C’s mark

   Intel Corporation [2009] (ECJ)

   Relevant factors to link include:

1. Similarity of marks

2. Similarity of goods and services

3. Strength of earlier mark’s reputation

4. Distinctiveness of earlier mark

5. Likelihood of confusion

• Intel Corporation [2009]

  However fact that earlier mark is very distinctive or has huge reputation does not necessarily mean will be ‘link’

  Intel Corporation [2009]

Relevant Public

Possible that average consumer for goods of earlier mark is completely distinct from average consumer of goods for later mark

here, unlikely to be ‘link’

Intel Corporation [2009]

However even where two groups of consumers are separate, consumers of later mark may still draw connection between goods where:

1. Reputation of earlier mark so strong even those who do not use good will know of it

2. Earlier mark is very distinctive

• Intel Corporation [2009]

2. No Need for Confusion

   Section 5(3) does not require likelihood of confusion.

   although confusion is relevant...