Rights protecting brands - Trademarks and Passing off

Right

Trademarks

What is a TM?

badge of origin
Offers distinctiveness - distinguishes trader from his competitors
Monopoly right
Elements of TM registration:
representation of mark itself and
specific of goods and services in relation to which the owner has exclusive rights to use the mark

Stage 1 - Registrability

Overview

s.1 TMA - does mark fall w/in definition [see above]
S.3 TMA - are there absolute grounds for refusal? [see below]
S.5 TMA - relative grounds for an existing TM owner to object to registration of mark? [see below]

S.1(1)	S.1(1) 3 part definition a sign, which is Capable of being represented graphically and Capable of distinguishing goods or services of one undertaking from those of other undertakings
Sign =	An easy hurdle to clear. Second para of s.1(1) gives examples
Capable of being represented graphically =	CJEU has held such a representation must be ‘clear, precise, self-contained, easily accessible, intelligible, durable and objective’
Capable of distinguishing goods =	Any signs can be distinctive naturally or by nurture (ie distinctiveness via use) No real difference between capability of distinguishing and distinctiveness
S.3 absolute grounds for refusal	s.3(1)(a) compliance w/s.1 - mark must fall w/in that stat definition S.3(1)(b)(c) and (d) [objections not mutually exclusive, any 1/more than 1 can be proved] S.3(1)(b) devoid of any distinctive character the more striking and fanciful the mark, the more likely it will not fall @ this hurdle S.3(1)(c) descriptive marks if a mark consists exclusively of a sign indicating type of goods and/or services it will not be registered. Q is whether the mark can be read as having a descriptive meaning which is not its only meaning. Eg doublemint not allowed S.3(1)(d) customary in the language or practices of trade q of fact, needs to be some evidence. Eg not being able to register green for a type of mint as is commonly used Proviso to s.3(1) applies to (b)(c) and (d), effect is to save marks which are distinctive thr/time as a result of its use as a TM ie acquired distinctiveness. IPO must be persuaded that mark is used as a TM (not as eg a decorative or descriptive feature) Consequence of such use if that public has learned ot read it as a TM (and not just as eg simple deco) s.3(2) additional hurdle for shape marks 3D mark must not simply consist of shape resulting from nature of goods or a shape which is necessary to obtain a technical effect/result or gives substantial value to goods S.3(3) public policy, morality, deceptiveness S.3(6) applications made in bad faith
Applying s.3	Think about s.3 before advising a client who is making a new mark. If client already has a weak mark: is evidence of acquired distinctiveness available; and/or Could client give its existing mark a slightly different and more distinctive form eg. By incorporating an extra name or adding visual mark

S.5 - Relative grounds for refusal

Section	Factor	Compare mark applied for (the sign) against already registered	Compare goods/services applied for against already registered
5(1)	Double identity	Identical	Identical
5(2)(a)	Likelihood of confusion	Identical	Similar
5(2)(b)	Likelihood of confusion	Similar	Identical/similar
5(3)	Reputation in UK and unfair advantage or detriment	Identical/similar	-
5(4)	Earlier unreg’d right (eg in passing off)	“	Varies - not always applicable (depending on nature of earlier right)

Notes

S.5(2) is a global test, not a step-by-step one. Correct approach is to address all 3 factors systematically, but recognise they are interdependent and take into account all facts and circumstances on a case-by-case basis.

S.5(3) is basically for famous marks and applies where sign is used w/o due cause and one or more of the 3 specified consequences may follow:

‘blurring’ of famous mark
‘tarnishing’ of famous mark
‘freeloading’ - taking unfair advantage of famous mark’s goodwill

Advantages of registration

r’ion gives notice of rights to world - warns others off
Reg’d TM infringement easy to prove (don’t have to establish your right other than Reg’ion cert)
EU wide protection available via TM reg’ion (even if you’re not using you mark you know you have 5 yrs to bring your use)
Not expensive to obtain reg’ion

Duration ss.42 and 43

can be indefinite but must be renewed every 10 yrs
Property rights ss.2, 9 and 22 - once reg’d TM is property right of owner. Can be assigned and security can be granted over it

Revocation and invalidity - ss.46 and 47

can be revoked if hasn’t been used for continuous 5 yr period
Also if owner has let it become generic
Can be invalidated if it is proved it should have been reg’d in 1st place

Stage 2 - Infringement

Stage 3 Comparison

Compare	Cl’s mark/spec as registered against D’s mark/goods as used

Section	Infringing act	Other factor(s)	Marks	Goods/services
10(1)	Use in course of trade	-	Identical	Identical
10(2)(a)	Use in course of trade	Confusion likely	identical	Similar
10(2)(b)	Use in course of trade	Confusion likely	Similar	Identical/similar
10(3)	Use in course of trade	Reputation in UK and detriment or unfair advantage	Identical/similar	-

The court will form its own view as to whether or not there is a likely hood of confusion on behalf of the customer. There is no need to prove consumers have actually been confused but obvi it helps if such evidence exists.

Stages 4 and 5

Defences

Stat in s.11:

S.11(1) bona fide use of D’s own name/address
S.11(2)(b) use of a mark simply as an indication of characteristics of goods or services eg ‘BABY-DRY’ TM name for nappies won’t prevent other users saying nappies ‘keep your baby dry’
S.11(2)(c) use of mark where it is necessary to indicate intended purpose of a product or service
S.11(3) use of an earlier unreg’d TM w/in a particular locality protects small traders of whose prior rights (in passing off) the cl cannot have been expected to know about

Common defensive strategies

D will argue that:

cl has not made out its case on the facts
Cl’s TM should not have been reg’d in first place and is therefore not valid

Remedies

Ss.14-19 civil remedies: injunction, order for delivery up, order for erasure of offending sign, order for disposal of infringing goods etc, damages or account of profits, interim remedies

Ss.92, 94 and 95 criminal offences

Law of Passing Off

What?	TMA is of no assistance if TM isn’t reg’d. Passing off = CL action in tort which can protect a TM (or other indication of trade origin) regardless of whether not it has been reg’d Sometimes called law of ‘unreg’d TMs’ Nb. Passing off and infringement of reg’d TM are not mutually exclusive P/o actions can be v difficult and expensive to pursue - a main issue is collecting evidence
Elements	Jif Lemon - tort of p/o has 3 x elements, all of which must be proved
(1) Goodwill	Goodwill = attractive force that bring in custom Relates to recognition of TM Essential that mark be distinctive Goodwill is not the same as reputation Reputation can help prove goodwill Goodwill can generally be taken to be generated thr/: use of an (unreg’d) TM by cl Which acquires a reputation in UK As a result of business activity in UK
(2) Misrepresentation	Cl needs to prove that the public has been confused into believing a false message communicated by D. classically MR as to trade origin Which is more likely to cause confusion as to origin On part of public Cl must persuade court Origin = eg made by cl or licensed by cl Not that public actually was confused Just that they were like to be confused Same kind as origin confusion as is required under s.5(2) and s.10(2) TMA Who must be confused? The public Proof of confusion and survey evidence. Factors which help include: Common field of business activity Purchasing environment Evidence of actual confusion Intention not relevant
Misrep summary	identify MR. Aim to achieve clarity re what exactly misleading message is Identify how D is conveying MR. Eg the D might have adopted a v similar get-up to cl’s, used misleading wording in publicity material, or used a photograph (sees Eddie Irvine case) Decide whether any facts suggest confusion is likely. What is the public, to whom the MR is communicated, likely to believe?
(3) Damage	damage likely or actual Ideally actual Eg. Loss of sales, erosion of mark’s distinctiveness in marketplace, inability to license ... Likely if other elements proved (in classic p/o) Courts may infer damage if other elements proved
(4) Defences	D will usually argue elements of tort aren’t made out on fact, that cl doesn’t use its TM in course of trade (therefore no goodwill) or D is not using mark in course of trade (therefore no MR) or cl has not proved confusion is likely
(5) Remedies	Generally same as available as infringement for IP rights, most imp: injunction (interim/final) and/or Delivery up; and/or Damages or an account of profits

#8605 - Rights Protecting Brands - Commercial and IP

Sources

What is a TM?

S.1(1)

Sign =

Capable of being represented graphically =

Capable of distinguishing goods =

S.3 absolute grounds for refusal

Applying s.3

Section

Factor

Compare mark applied for (the sign) against already registered

Compare goods/services applied for against already registered

5(1)

5(2)(a)

5(2)(b)

5(3)

5(4)

Ss.9 and 10(4)

Compare

Section

Infringing act

Other factor(s)

Marks

Goods/services

10(1)

10(2)(a)

10(2)(b)

10(3)

Defences

Common defensive strategies

Remedies

What?

Elements

(1) Goodwill

(2) Misrepresentation

Misrep summary

(3) Damage

(4) Defences

(5) Remedies

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