#15024 - Trademark Infringement And Defences - Intellectual Property Law

Art 5(1) / s10(1)-(3)

• Same 3 categories as Art 4/s5

  • Double identity

  • Confusing similarity

  • Dilution

• Similar analysis applies: must apply the global approach

  • Infringement more likely if the mark is more distinctive

• Difference: pre-ambulatory part

  • “A person infringes a registered trade mark if he uses in the course of trade …”

Non-exhaustive list in s10(4) / Art 5(3)

• Affixes it to the goods or packaging

• Offers goods for sale or puts them on the market under the sign

• Imports or exports under the sign

• Uses the sign on business papers or advertising

• D sold merchandise outside C’s stadium, which carried C’s trade marks

  • D’s store had a notice stating that his goods were not ‘official’ merchandise

  • D argued that his use was not infringing as it was not trade mark use but was use as a badge of allegiance or loyalty

• CJEU: C can only prohibit use which can “affect his own interests as proprietor of the mark, having regard to its functions”

  • The notice is immaterial, since customers may come cross the goods away from the stall where the notice is and interpret the signs as designating C as the undertaking of origin of the goods

• NOTE (Sunroy and Badger): “ trade mark use is not a necessary element of infringing use”

• CA (Aldous LJ): Affirmed the CJEU decision

  • “ECJ is not concerned with whether the use complained about is trade mark use”

  • The issue is whether it affects the “functions of the trade mark”

  • It is “immaterial that … the sign is perceived as a badge of support for or loyalty or affiliation to the proprietor of trade”

  • In any case, D was using the marks as trade marks since some of his customers would understand them as denoting origin

IMPLICATION: Indication of origin is not the only function of the trade mark

• Issue of keyword advertising: Was Google using trade marks by selling keywords to advertisers that consisted of these trade marks (AdWords service)?

• CJEU: Google was not using the trade marks by storing the keywords

  • Use “implies, at the very least, that that third party uses the sign in its own commercial communication”, so the referencing service provider isn’t using

  • Art 5(3) is a “non-exhaustive” list, especially since it was “drawn up before the full emergence of electronic commerce”, which gives rise to different uses

• D registered C’s marks as keywords with Google, so that sponsored links directing users to its site appeared in searches

• C’s marks also appeared on D’s websites because they were displayed by sellers

• CJEU: Keyword advertising was use, but seller displays were not

  • Using keyword advertising is an infringement of Art 5(1) if it does not enable average internet users “to ascertain whether the goods concerned originate” from the proprietor or a 3^rd party without difficulty

  • Use requires that the 3^rd party “uses the sign in its own commercial communication”

    • “enabling its customers to display on its website” the signs is NOT use

Arsenal v Reed [2002] ECR I-10273

• CJEU: Use in the course of trade must be “in the context of commercial activity with a view to economic advantage and not as a private matter”

Louis Vuitton v Google [2010] ECR I-2417

• CJEU: The advertisers were using the marks in the course of trade but Google wasn’t

  • Since the keyword is the “means used to trigger the ad display … the advertiser indeed uses it in the context of commercial activity and not as a private matter”

L’Oreal v eBay [2011] ECR I-6011

• CJEU: Individual sellers are not usually acting “in the context of a commercial activity”

  • If “owing to their volume, their frequency or other characteristics, the sales made on such a marketplace go beyond the realms of a private activity, the seller will be acting ‘in the course of trade’”

Louis Vuitton v Google [2010] ECR I-2417

• Comparative advertising or keyword advertising to offer alternative goods/services is use in relation to the competitor’s goods or services

• Use in relation to goods or services where the sign is used “in such a way that a link is established between that sign and the goods marketed or services provided”

Where does the use occur?

L’Oreal v eBay [2011] ECR I-6011

• CJEU: Use is within the UK even if the website and server are from a Third State, as long as it is “targeted at consumers within the EU”

  • For the national courts to determine this

  • “the mere fact that a website is accessible from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in that territory”

Affected by factors such as domain name, language, currency, delivery and follow up services

The reference to functions in Arsenal v Reed isn’t limited to the indication of origin

• CJEU: Art 5(1)(a) prevents 3^rd party use which “affects or is liable to affect the functions of the trade mark”

  • “These functions include not only the essential function … which is to guarantee to consumers the origin … but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising”

  • Proprietor cannot rely on Art 5(1)(a) “if that use is not liable to cause detriment to any of the functions of that mark”

    • Wouldn’t be “use” within the provision if not affecting any of these interests and “purely descriptive”

  • Infringement under Art 5(1)(b) requires confusion “and accordingly the possibility that the essential function of the mark may be affected”

    • Art 5(1)(a) gives “broader” protection that that

• CJEU: Origin function is “adversely affected if the ad does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor or an undertaking economically connected to it or, on the contrary, originate from a third party”

  • The use of the keyword to trigger the ad “is liable to create the impression that there is a material link in the course of trade” between the goods and C

  • If the ad suggests an economic link, there is an adverse effect on the origin function

  • Even if there is no economic link suggested, if reasonably attentive internet users cannot determine if the advertiser is a 3^rd party, there is adverse effect

• Advertising function is also relevant

  • Where use “adversely affects the proprietor’s use of its mark as a factor in sales promotion or as an instrument of commercial strategy”

  • Repercussions such as having to pay more to promote C’s own ad “do not of themselves constitute an adverse effect on the advertising function”

  • Keyword advertising doesn’t affect advertising function because the proprietor’s result will still appear in the list of “natural results” in a high position

• CJEU: “a trade mark is always supposed to fulfil its function of indicating origin, whereas it performs its other functions only in so far as its proprietor uses it to that end”

• Adverse effect on the investment function

  • Where the mark is used to “acquire or preserve a reputation capable of attracting consumers and retaining their loyalty”

  • Although this “may overlap with the advertising function, it is none the less distinct”

  • Where the mark already has a reputation, 3^rd party use which “affects that reputation and thereby jeopardises its maintenance” has adverse effect

    • BUT “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” or prompts some customers to switch, no adverse effect

• ISSUE (Bentley): It is unclear how advertising and investment functions work, especially since they have been defined so broadly

Possible Reforms

• Max Planck Study (2011)

  • Proposed reforms to remove the consideration of advertising and investment functions from the analysis under the double identity rule

• Commission Proposal: Proposed to limit double identity to the origin function

• BUT these suggestions were rejected by Council and Parliament

Specsavers v Asda [2012] EWCA Civ 24

• Specsavers registered their mark in black and white but used it in green

• Asda used the mark in white and green

• CA: The sign must be considered in context and colour can also be taken into account

• IMPLICATION: Both D and C’s use of the sign can be relevant when comparing

ISSUE (Bentley): If we take into account the entire context, circumstances and use, then what is the point of the trade mark register?

• Blurs the lines between passing off and trade mark law

3 main defences set out in Art 6(1) / s11(2)

• Exhaustive list of defences

• Proviso: in accordance with honest practices in industrial or commercial matters

Art 6(1)(a) / s11(2)(a)

• Use by a person of his own name and address

Originally, the Council suggested that it could only apply to personal names, but this has since been expanded by the CJEU

• Anheuser-Busch (2004): Includes corporate names, the Council statement had no legal effect

• Hotel Cipriani (2010): Includes trading names and possibly stage names / non-de-plumes

Art 6(1)(b) / s11(2)(b)

• Use of indications concerning kind,...