Patents and Trade Marks 2014
Trade Marks: Rationales and Scope
Read the following:
Question: What is the extent of the monopoly granted to the trade mark owner? How does all this affect your view of the function of the trade mark?
Consider also the following:
a) The function of a mark:
• indication of origin,
• communicative function – quality, investment, advertising (all extended functions – see in particular dilution).
b) The interests to be balanced by the law:
• trader (registered trade mark proprietor),
• competitor (public interest),
• consumer (public interest).
Trade Marks: Registerability
• What types of marks may be registered? Why is the register broken down into different classes?
• Give examples of two different types of registered marks (eg a shape, a logo, a word etc).
• What Nice classes cover the following goods/services: legal advice; spades; wine; tractors; paper?
• What can be registered as a trade mark?
• What requires to be shown before an application for a 3d mark is likely to be successful?
• How do you assess the distinctive character of a trade mark?
• Who is the average consumer?
• How does the average consumer perceive a mark?
• Would a perceptible difference between a 3d sign consisting of the shape of goods in common use, and the goods themselves, mean that the shape of the 3d sign would be registerable?
• When will a 3d mark be considered distinctive?
• Are some types of mark more difficult to register than others? Why should this be?
• What is the standard to be applied in considering whether a mark should be barred from registration on grounds of public policy or morality?
• Identity appears not to mean absolute identity. How different do you think trade marks might be yet still be considered identical?
• What is the scope of protection for weak marks or those with descriptive elements?
• What is the scope of protection for marks with a specific meaning? Does and should this differ from weak and descriptive marks?
• How do you determine similarity between goods and services?
• What are the important elements in determining a likelihood of consumer confusion?
• What is the relationship between a likelihood of confusion and association?
• Does a trade mark have to be used ‘in a trade mark sense’ (rather than e.g. descriptively) for infringement to occur?
Consider in particular the following cases. The further questions might assist in your analysis
Sabel v Puma Case C-251/95  1 C.M.L.R. 445.
• How do you assess similarities between marks?
• What is the role and importance of the average consumer?
• How does an average consumer perceive a mark?
• What is the effect of an earlier mark being distinctive? Is a likelihood of association a subset of a likelihood of confusion or a part of the test? What should it be?
Arsenal Football Club Plc v Reed Case C-206/01  Ch. 454
• What does use mean in trade mark law?
• What is use as a trade mark, or use in the course of trade?
• Why does the question of use matter? What are the implications for the scope of the monopoly conferred by the trade mark?
• What is dilution?
• What types of ‘dilution’ are there?
• What should the relationship be as between the sign and the mark?
• What requirements are there as between the goods or services?
• What functions of a mark does dilution protect?
• How do you determine the reputation of a mark?
• Is establishing a link in the mind of the consumer enough for dilution? Should there be something more (an effect on economic behaviour?) What does this mean?
• What amounts to detriment?
• What are the limits on dilution? What should the limits be?
• When do you think an unconnected third party should be able to use a registered trade mark?
• What does the Trade Marks Act say about when a mark may lawfully be used by a third party?
• What is meant by ‘in accordance with honest practices in industrial or commercial matters’?
• When does the ‘own name’ defence apply?
Patents and Trade Marks 2013
• Reckitt & Colman Products v Borden Inc  RPC 341;  1 WLR 491; 1 All ER 873.
• ErvenWarnink v Townend, the ‘Advocaat’ case  AC 731
Identify from these cases the prerequisites for a passing off action to succeed.
What differences can you see between the definitions of passing off given in these cases? What difference is made by the speeches of Lords Diplock and Fraser in the Advocaat case?
Where does the common ground lie? Do the differences matter?
Do you find the Reckitt & Colman decision in any way surprising?
Identify two circumstances or sets of facts in which the problem of foreign goodwill may arise.
Read Anheuser-Busch Inc v BudejovickyBudvar  FSR 413. See also the recent discussion in Hotel Cipriani SRL v Cipriani (Grosvenor Street) Ltd  EWHC 3032 (Ch) and Hotel CiprianiSrl v Cipriani (Grosvenor Street) Ltd  EWCA Civ 110 (CA) [see sections on passing off in the cases]. Do you think it acceptable that a foreign trader claiming to protect goodwill in England could not bring a passing off action where there is reputation but no trading activity in England? What might be the impact of the internet?
Passing off protects a variety of devices including words (including personal, geographical and business names, titles, and invented words), get-up (the packaging or dress in which goods are presented to the public), use of personalities and characters, and advertising techniques and themes. Give an example of each of these types of protectable device:
• an invented word that would be or has been protected by a passing off action
• a distinctive business name or abbreviation
• a feature of product packaging
• an advertising slogan or image
• character merchandising.
Is representing another’s goods or services as yours passing off? See Hazel Carty, “Inverse passing off: a suitable addition to passing off?”,  EIPR 370.
Read Taittinger SA v Allbev Ltd  FSR 641 and contrast Harrods Ltd v Harrodian School Ltd  RPC 697 and consider whether passing off should be used to prevent “dilution”.
If Champagne and Scotch Whisky are two examples of extended passing off, can you think of any other products in the market place in which the goodwill attaches to the product, whoever manufactures it? Read Diageo v Intercontinental Brands  EWHC 17 (Ch);  E.T.M.R. 17aff’d  EWCA Civ 920)
Read Irvine v Talksport Ltd  2 All ER 414 – a case which extended the notion of dilution to the personal reputation of a well-known public figure whose image had been included without authorisation in a trade promotion. Is this case a further extension of passing off?
Read article 10 bis(3) of the Paris Convention. Note the prohibitions:-
1. all acts of such nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor;
2. false allegations in the course of trade of such a nature as to discredit the establishment, the goods, or the industrial or commercial activities, of a competitor;
3. indications or allegations the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of the goods
Consider how each of the three prohibitions in the Paris Convention article on unfair competition is dealt with by the law of passing off. Has passing off been over extended? Consider in this regard C. Morcom “Gowers: a glimmer of hope for compliance with Article 10 bis of the Paris Convention” E.I.P.R. 2007, 29(4), 125-127.
Is passing off moving in the direction of an unfair competition action? Should an unfair competition action be introduced by statute, to bring the United Kingdom closer to its European neighbours?
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