#16181 - Tm Infringements - Intellectual Property Law

• Section 9 TMA – TM are exclusive rights, infringed by w/in UK without his consent

Use of the Senior Mark

• L’Oreal v Ebay – Operator of online marketplace does not ‘use’ signs appearing on its website when its customers sell goods bearing the mark

• Cosmetic Warriors v Amazon – When an online marketplace uses senior marks (lush bath bombs) as keywords to promote goods sold through its online platform (their own amazon bath bombs), then online marketplace ‘uses’ these marks.

Use in Course of Trade - Arsenal v Reed – “take place in the context of commercial activity with a view to economic advantage and not as a private matter”

In relation to Goods/ Services

A link must be made between mark used and the other goods/ services offered by the third party. Such link exists when the mark is used by a third party to distinguish its own products/ services in some way:

• E.g. comparative advertising: distinguishing one’s own products by comparing their characteristics

• E.g. keyword advertising: distinguishing one’s own products as alternatives of the goods marketed by the trade mark proprietor

• Section 10(1) TMA – identical goods in identical sector

• Celine – In order for a junior use to constitute an infringing use:

  • Plaintiff’s mark must be ‘used’ by defendant

  • In the course of trade

  • Without Plaintiff’s consent

  • In related to goods/ services

  • Double identity

  • Use must affect or be liable to affect the essential function of TM (origin of goods) – but has been extended by L’Oréal v Bellure

• Hoelterhoff – if one applies double identity literally the exclusion rights would be too broad and harm competition. Proprietor entitled to only protect those who use the TM and not those who offer it only for reference points.

• Adam Opel v Autec – scale model toy manufacturers using the Opel logo. Strictness of double identity can lead to undesired results. Have to look at whether there was damage to the TM. Scale model toys are there for many toys without these companies having to do with those companies. Public would not be confused or think there was an economic link between the two.

• L’Oreal v Bellure –TM functions are for: communication (the most unclear), quality, advertising or investment. An infringement needs to have an adverse effect on any one of these – idea is to give extra protection to another set of interests like brand loyalty. COJ found identical mark in identical services in comparative list was likely to harm advertisement

• LV v Google France – essential function impaired when the advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the TM or an undertaking economically connected to it or, on the contrary, originate from a third party. Purchase of a competitor’s keyword didn’t impair advertising function because not in main engine, only advertisement search engine.

• Cosmetic Warriors v Amazon – Thus in this case, sponsored link 1: ‘Lush Soap at Amazon.co.uk’ where no lush soaps but alternatives to other types. Clear damage to origin function.

• Interflora v M&S – For investment function “needed to see if junior use substantially interferes with the proprietor’s use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.”

• Dilution by blurring – e.g. reserve rolls Royce for cars and not for other sectors

• Dilution by tarnishing – negative associations that will introduce in a certain mark. E.g. rolls Royce for toilet paper.

• General Motors v Yplon – degree of recognition must be by a significant part of the public concerned. Done through survey evidence but all relevant factors are taken into consideration.

• Intel Corp v CPM UL – ‘Intel’ for CPU v ‘Intelmark’ for telemarketing services. Must establish a link between the junior and senior trademark that would cause confusion in a consumer’s mind because of this link. Do the Global appreciation Test:

  • Similarity of marks/ products (no need for similarity in goods/ services)

  • Nature of products

  • Reputation distinctiveness of earlier mark

  • Findings of confusion

Need to demonstrate ‘change in economic behavior’ of average consumer of the goods or services. Evidence can be in: loss of sales; devaluation of attractiveness or image; decrease of the mark’s economic value; mark becoming a generic term

• Environmental Manufacturing v OHIM –SC said need more than theory of dilution but need consequences in loss of sales, devaluation of the trademark, mark becoming more generic (change in economic behavior)

• L’Oreal v Bellure – considers issues of unfair advantage and free-riding. Focusing on junior user facilitating its marketing efforts through associations to reputable senior marks. First, ‘power of attraction, reputation and prestige’ or earlier mark. Second, evidence of advantage been transferred. Third, this advantage was ‘unfairly taken’. Intention is a critical factor (look at minutes in meetings, objective in creating similar, ‘knock-off’ product)

• Just because one has a TM, can always be challenged to make it invalid or can revoke it

• Application for declaration of invalidity:

  • Made by any person

  • For absolute/ relative grounds

  • Procedural issues not harmonized

• Effects of invalidity, section 47(6) TM Act 1994:

  • Where it is considered invalid, registration deemed never to have been made

  • Does not affect transaction past and closed

• Revocation can be made for reason of:

  • Non-use of mark (for 5 years)

  • Mark becoming generic (e.g. linoleum; refrigerator; laundrette)

  • Mark becoming misleading (deceives public)

• Effects of revocation, section 46(6) TM Act 1994:

  • Where registration of TM is revoked to any extent, rights of the proprietor shall be deemed to have ceased to that extent

  • From the date of the application for revocation

  • Or if the court is satisfied the grounds for revocation existed at an earlier date

• What do proprietors need to do to avoid revocation (s. 46)?

  • Use for goods/ services registered for which it is registered

  • In the course of trade

  • Within a 5 year period from date of completion of registration

  • Used by yourself or through third party that has consent

  • In its territory

  • Use the mark as registered or with variations not altering its distinctive character

  • Make a genuine use of your tm or at least provide justified reasons for non-use

• Common law acquiescence:

• Habib v Habib Zurich – mere failure to sue without some positive act of encouragement is not enough and is not acquiescence

• L’Oréal v Bellure – comparative advertising is permitted provided that:

  • It is not misleading

  • It compares goods/ services meeting the same needs/ purpose

  • It objectively compares material, relevant and verifiable and representative features

  • It does not discredit or denigrate trademarks etc. of competitor

  • For products with a designation of origin it relates to products with...