#1693 - Trademarks Relative Grounds For Refusal Of Registration.Docx - Intellectual Property Law

3. Relative Grounds for Refusal of Registration

Rule: Marks which conflict with earlier marks or signs may not be registered. This protects the earlier TMO, and safeguards the guarantee of origin. The relative grounds for refusal mirror provisions concerned with infringement.

Relation to ‘Earlier Marks’

Summary:

1. s.5(1) – the marks and the goods/services are identical.

2. s.5(2)(a) – the marks are identical, the goods/services are similar, likelihood of confusion/association.

3. s.5(2)(b) – marks are similar, goods/services are identical/similar, likelihood of confusion/association.

4. s.5(3) – marks are identical/similar, earlier TM has a reputation, applicant’s use would be unfair advantage/detriment.

NB. s.4 concerned with ‘earlier rights’.

What is an ‘earlier trade mark’?

• S.6(1)(a), (b) and (ba) - Registered British/Community/international mark having effect (under the Madrid Agreement or Protocol) in one of the MSs with a priority date before the applicant’s. If the registration of a mark falling within the first two categories has lapsed, the mark can form the basis of an objections for a period of one year after expiry.

• S.6(2) - Registrar shall not refuse to register the TM by reason of the earlier TM unless the use conditions are met.

Does the opponent (or applicant for cancellation) have an appropriate interest to challenge?

Trade Marks (Relative Grounds) Order 2007: An opposition on relative grounds can only be commenced by a person who has a relevant interest in an earlier mark. In case of opposition to UK registration only proprietor of early mark can bring proceedings.

However, a cancellation action can be brought by the proprietor or licensee of an earlier mark. Justified because a cancellation action may be by way of a counterclaim to infringement – would be unfair were it not possible for a licensee of an earlier TM who is accused of infringing a later mark to be able to challenge that mark.

Has the earlier mark been used? S.6(3): Where an applicant for a mark is faced with an opposition on relative grounds on the basis of an earlier TM registered 5years+ previously, the applicant can demand that the opponent produces evidence of use of the TM within the past 5 years, or provides proper reasons for non-use. Otherwise the opposition is rejected.

----------------------------------------------------------------------------------------------------------------------------------------------

S.5(1) Identical trade mark and identical goods (TMD Art. 4(1)(a); CTMR Art 8.(1)(a))

Double Identity Test: Targets counterfeit products

1. Is the TM applied for identical to an earlier TM?

2. Are the goods/services for which registration is applied for identical with earlier TM?

= If yes; no need to prove anything further as earlier TM protected unconditionally. Assumed confusion will result.

1. When are marks identical? Most try to prove marks are identical because this avoids the provision of needing to prove confusion. Necessary to compare the representation of the earlier TM contained in the registration certificate. Comparison is between the earlier TM (as registered) and the sign in the applicant’s application. Consider as whole:

Issue: Are marks that are slightly different treated as identical? Cts construe narrowly as no need for confusion:

• Diffusion v. SA Sadas [2003]; 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 between sign and a TM, from the view of the average consumer, ‘where the former reproduces, without any modification or addition, all the elements constituting the latter’. ‘Insignificant differences’ may go unnoticed by average consumers.

• Websphere [2004]; On this test ‘Web-Sphere’ and ‘WebSphere’ were identical.

• Blue IP Inc; ‘KCC HERR VOSS’ is not identical to ‘HERR-VOSS’.

2. When are goods/services identical?

• Discovery [2000]; If the earlier goods/services are broader so as to include the category of the applicant’s mark they are identical, thus ‘broadcasting services’ were identical to radio broadcasting services.

• British Sugar [1996]; If the language needs interpreting look to the words in the TM specification. Ct had to decide whether ‘cosmetics’ including ‘skin lightning cream’. Jacob J explained, instead of construing words literally, ‘when it comes to construing a word used in a TM specification, one is concerned with how the product is, as a practical matter, regarded for the purposes of trade’. Not complete reliance on just the words.

----------------------------------------------------------------------------------------------------------------------------------------------

S.5(2) Identical/similar trade mark and identical/similar goods/services (TMD Art. 4(1)(b); CTMR Art 8.(1)(b))

Test:

1. Is the TM applied for identical (s.5(2)(a)) or similar to the earlier TM (s.5(2)(b))?

2. Are the goods/services for which registration is applied for identical or similar (s.5(2)(a) – similar only; (s.5(2)(b) – similar or identical) to the earlier TM’s class?

3. Does a likelihood of confusion exist on the part of the public in the territory in which the earlier TM is protected? Likelihood of confusion includes likelihood of association.

• Canon [1999]; Strength in one category can outweigh weakness in another. ECJ said the various elements may be offset by the way the other requirements is met. Called the ‘interdependency principle’ – e.g. low levels of similarity between goods might be offset by a high level of similarity between marks.

• Cf Vedial; ECJ indicated that the three requirements (similarity of goods, marks and confusion) cumulative.

1. What is a ‘similarity of marks’?

• *Sabel BV v. Puma AG [1997]; ECJ laid down basic framework

‘Global appreciation approach’: Ct should compare the marks as a whole, in the way an average consumer would see them. The average consumer normally does not proceed to analyse a mark’s various details, so attention should be paid particularly to the dominant or distinctive components of the mark. Should examine the degree of aural, visual or conceptual similarity between the marks. Ct will take into account inherent or acquired distinctiveness of the mark. Looking at the marks as a whole means the ct will not necessarily examine the mark in too much detail.

Decision: Two leaping cats – conceptual similarity may be enough if the earlier mark was well known or if the image was particularly imaginative.

There is no minimum threshold level of similarity that has to be shown:

• Esure Insurance Ltd v. Direct Line Insurance [2008]; ‘If there is no similarity at all, there is no likelihood of confusion to be considered. If there is some similarity, then the likelihood of confusion has to be considered but it is unnecessary to interpose a need to find a minimum level of similarity’ [per Arden LJ].

  • Visual, aural and conceptual similarity – Typically courts consider each in turn.

• Il Ponte Finanzaria [2008]; Trade-off occurs. E.g. Visual/conceptual differences can offset aural similarities.

Although marks are compared as a whole, emphasis is placed on the ‘dominant’ components. In much of the case law there is a tendency to emphasise the textual element:

• Matratzen Concord v. OHIM [2003]; Earlier word ‘MATRATZEN’ was a successful basis for opposition to registration of a composite mark, comprising MATRATZRN MARKT CONCORD and including a figure carrying a mattress, because word MATRATZEN found to be dominant feature of app’s composite mark.

• Shaker de Laudato [2007]; Applicant wanted to register ‘Limoncello’ with a plate of six lemons. Opposed by holder of earlier mark ‘Limonchelo’ (words only), also relating to goods in class 33. CFI held signs dissimilar because of the dominance of the plate. ECJ overturned finding, reminding Ct that assessment is a global one. Assessment must be based on the overall impression given by the marks, bearing in mind their distinctive and dominant components. Only where all the other aspects are negligible can assessment be carried out on the basis solely of the dominant element.

Visual Similarity – Most important for certain kinds of goods, e.g. clothes or furniture (Inter-Ikea Systems [2008]). Same for 3d marks.

For word marks a determination of visual similarity involves looking at the length of their marks, structure (whether same no. of words), and whether same letters are used. Cts bear in mind that consumers may not be able to remember a mark perfectly (‘imperfect recollection’). Cts used notion to expand ambit of protection given to earlier TMs.

• *Lloyd Schuhfabrik [1999]; For identical goods, ‘LLOYD’ and ‘LOINT’S’ sound similar because most consumers will have an ‘imperfect recollection’ of the name. Must place his trust in the ‘imperfect recollection of them that he has kept in his mind’.

Aural similarity – Cts tended to carry out a quantitative assessment. May be sufficient, particularly if it is the dominant element of the mark:

• Meric (2006); Near-identical goods, ‘PAM-PIM’S BABY-PROP’ confusingly similar to PAM-PAM.

• Matratzen Concord; Ruled that one can use descriptive words from another language unless nationals in the country used would understand that word.

• Mystery Drinks GmbH v. OHIM [2004]; Phonetics of wines will be important as they as heard in restaurants and recommendations are passed by word of mouth. ‘MYSTERY’ and ‘MIXERY’ similar because the goods might be ordered orally.

• (SPAG) SA v. OHIM [2005]; ‘HOOLIGAN’ for clothing was not confusingly similar to ‘OLLY GAN’.

If a word mark is short, differences may be as...