#3261 - Trade Marks - Commercial and IP

Intellectual Property Rights

Trade Marks

Basics:

Trade Marks Act 1994
S.1(1): any sign capable of being represented graphically; which is capable of distinguishing goods or services of one undertaking from those of other undertakings
Examples: music / small / logo / word

How to Register

A TM should be registered to acquire the IP protection [45 classes]
Some marks can be specifically excluded:
- S.3(3)national emblems
- S.3(5)Marks contrary to accepted principles of morality
Apply to UKIPO
Prescribed form – TM3 + Fee [200] [attach logo is necessary]
IPO sends filing receipt within 6 working days
Examination done and report sent to applicant within 15 working days
Mark is accepted
Mark is published in Trade Mark Journal for 2 months – [if objections are raised – extended to 3 months]
Registration Certificate issued [if no objections raised]

Can the client register:

Three limb test:

1. Is the mark capable of being a TM – S.1(1) definition
2. Is the mark refused under any absolute grounds [S.3]
3. Is the mark refused for any relative grounds [S.5]

S.1 Definition

Graphic representation	Clearly reproduced in 8cm by 8cm square in the TM Journal Can the sign be drawn; written in words / numbers / symbols / described in very clear words Problems: sounds / scents [using chemical formula symbols unlikely to work]
Can the TM distinguish the goods	Overlap with S.3 Absolute grounds “Deliberately Innovative” – no distinctive character in 2007 case

S.3 Absolute grounds

S.2(1)(a)	Sign does not satisfy S.1 requirements
S.2(1)(b)	Devoid of distinctive character: It sums up the product of business too accurately [e.g. “Shine] Use of personal name: S.11[2] TMA = everyone entitled to use name freely – but this does not mean every name is capable of registering their name. Personal signatures can work Combine with address or other distinctive character How common is the name [IPO approach to consider the facts area of use / scope of use / likely customer group] Common names can acquire distinctiveness through use [e.g. Paul Smith]
S.2(1)(c)	TM is too descriptive: consists exclusively of signs / indicators of the goods themselves: Protection against unfair monopolization of descriptive signs or indications “Friction Management Solutions” / Tastee-freeze / Weldmesh Client should combine with a more distinctive method - Twiglets [not descriptive of the actual crisps product] Words of quality or value – “magic / supreme” – NO 2 words together: “Babydry” = two words on their own could not be distinctive but put together created a unusual combination which was not common to the English language. Important that the word was in the reverse order from any common use [i.e. not dry-baby]. Contrast to Doublemint / companyline. “Companyline”: not allowed! Coupling together two such general words created nothing distinctive in the factual circumstance. Courts said a “overall assessment of the expression was needed to ascertain whether it is descriptive or not” “Doublemint” = descriptive & ambiguous and therefore deceptive so count NOT be registered. Marks suggesting graphical origin [Miss Swiss – name did not indicate the origin of the goods. Name was therefore deceptive]. Some names will need to be left available for other traders in the future
S.3(1)(d)	Mark has become generic
S.3(2)	Shape! Registering the TM for the shape of the goods / packaging! shape cannot consist exclusively of: Shape which result from the goods themselves: e.g. Dyson / Vienetta [Registered design right is more appropriate] Shape of goods which is necessary to achieve a technical result: Philips electronics [shape of razor heads could not be registered] Shape which gives substantial value to the goods Focus on distinctiveness! NB. If any of the above grounds (a-c) are proven the sign / shape can never acquire distinctiveness so can never be registered. It is a permanent block to registration.
S.3(3)	Public Interest Objections S.3(3)(a) Contrary to public policy S.3(3)(b) likely to deceive
S.3(6)	Mark is made in bad faith

How to overcome the absolute grounds:

Evidence of use: building up goodwill so the public can begin to recognise the mark and associate it with the brand.
Applicant has to sent to Trade Mark Registry – evidence of advertising spend / turnover in goods / length of use
Should have at least 5 years of use

S.5 Relative grounds

These grounds must be raised by a party challenging the registration. The UKIPO will only look at S.1 and S.3.

S.5(1): Mark is identical; goods and services are identical with the goods and services for which the earlier TM is protecting.
S.5(2)(a): Mark is identical; goods / services are similar.
S.5(2)(b): Mark is similar; goods / services are identical or similar
- For both (a) & (b): there must exist a likelihood of confusion on the part of the public [this includes a likelihood of association with the earlier TM]
S.5(3): where a identical, similar or dissimilar goods services use a identical or similar mark and the registration of that mark would be detrimental to the existing mark or create an unfair advantage for the applicant.
S.5(4): is the mark already protected by some other right. Is the use of the mark prevented by any rule of law? [e.g. passing off / UDR / RDR / Copyright]

The court’s approach to S.5:

Court will put themselves in the position of a reasonable, well-informed and alert customer, seeing the mark and having all the usual imperfections of recall of earlier marks that would be normal in such a person.
Identical = must be considerably the same [in terms of what they are; what customer is expecting to obtain]
Similarity of mark = the overall impression [paying attention to the distinctive and dominant features].
Similarity of goods = comparison of the use; the way the goods are sold; extent to which the goods compete.

Summary of S.5:

Identical

NO proof of confusion is needed

S.5(1)

Court puts itself in the position of a reasonable, well-informed and alert customer.

Likelihood of confusion is needed [S.5(2)(b)]

TM Similarity = overall impression of the visual, aural and conceptual similarities of the marks. Look at distinctive and dominant features

Similar

Likelihood of confusion is needed [S.5(2)(a)]

Goods and services similar: comparison of the use, users, and physical nature of the goods; the way in which the goods are sold; the extent to which the goods are competitive.

Likelihood of confusion is needed [S.5(2)(b)]

Identical, similar, dissimilar

Unfair advantage or detriment needed [S.5(3)]

Alternatives if you cant register your TM:

Apply for a Community Trade Mark: Single registration that is effective throughout the EU and gives protection on the basis of one registration. BUT - Is this appropriate. Does company want to expand into another Member state?]. It costs the same as registering in about 4 other Member states

Rights granted:

Exclusive right to use the mark [grants a monopoly right / exclusive right over the mark]

S.9(1) TMA 1994: the proprietor of a registered TM has exclusive rights in the TM which are infringed by the use of the TM in the UK without his consent”.

Initial 10 years [after which you need to renew] – potentially unlimited protection

Advantages to registering your TM:

Long / unlimited period of protection
Scope of protection - provides exclusive rights
Immediate recognition of brand - TM can have quick impact – no need to build up goodwill before registration.
Infringement actions are easier to bring than passing-off
Commercial value [can license. Good for bargaining power if you get into difficulties]
S.5(5) Can still register a TM if the breach is within S.5 and the proprietor of the earlier mark consents to the registration.

What to do when TM is registered:

Receive Certificate of Registration
Must use within 5 years of completion of the registration process [otherwise revokes or not renewable]
Renew within 10 years
Have a pro-active TM protection policy

TM protection policy includes:

Advertising TM – make sure it remains distinctive. Strengthen brand awareness. Do not let mark become generic [e.g. ‘hoover’ / ‘cello tape’]
Using TM logo [as a warning – to deter infringers]
Monitor applications for TM registration – in the TM journal / online applications
Reminder for renewal fees
Monitor use – is it within the class? [if this is breached revocation proceedings]. If not using – license it or sell it – to maximize the value of the mark.
Periodic trade mark audit – to assess the mark’s value
Investigate any improper use
Filing a caveat with the IPO [to be warned if something breaches the TM right]

Passing off [when a mark is not registered]

Tort [not a right]
Method of protecting unregistered TMs / Trade reputations / goodwill
What does it involve:

Some form of copying / imitation [e.g. similar brand name or imitation of claimant’s “get-up” The imitation causes confusion Proprietor of the mark will bring a claim

The elements of passing off: [Rickitt & Coleman v Borden 1990 - TEST]

C and D both in Trade / business Goodwill / reputation attached to goods /...

#3261 - Trade Marks - Commercial and IP

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