LECTURE 4
Relative Grounds
REQUIRED READING
• T. Aplin and J. Davis, Intellectual Property Law (OUP, 2013), Ch. 7.
• L. Bently and B. Sherman, Intellectual Property Law, 4th ed. (OUP, 2014), Ch. 38.
• W. Cornish, D. Llewelyn and T. Aplin, Intellectual Property: Patents Copyright
and Allied Rights, 6th ed. (Sweet & Maxwell, 2013)
• H. MacQueen, C. Waelde & G. Laurie, Contemporary Intellectual Property: Law
and Policy (OUP, 2007), 612-650
FURTHER READING
• A. Carboni, “Two Stripes and You’re Out! Added Protection for Trade Marks with a Reputation” [2004] EIPR 229
• J. Cornwell, “The Davidoff v Gofkid Case” [2003] EIPR 537
• B. Isaac & Rajiv Joshi, “What does Identical Mean?” [2005] EIPR 184
• P. Frassi, “The European Court of Justice Rules on the Likelihood of Confusion Concerning Composite Trademarks: Moving Towards an Analytical Approach” 37 IIC 438 (2006)
• A. Griffiths, “The trade mark monopoly: an analysis of the core zone of absolute protection under Art.5(1)(a)” [2007] IPQ 312
• C. Morcom, “Extending Protection for Marks Having a Reputation” [2003] EIPR 279
• P. Jaffey, “Likelihood of Association” [2002] EIPR 3
• G. Würtenberger, “Risk of Confusion and Criteria to Determine the Same in European Community Trade Mark Law” [2002] EIPR 20
TRADE MARKS ACT 1994 Section 5: Relative grounds for refusal of registration
(1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected.
(2) A trade mark shall not be registered if because -
(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(3) A trade mark which –
(a) is identical with or similar to an earlier trade mark,
shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European
Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. (4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented
(a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, or
(b) by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) above, in particular by virtue of the law of copyright, design right or registered designs.
A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an “earlier right” in relation to the trade mark.
(5) Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.
INTRODUCTION
SECTION 5(1): THE DOUBLE IDENTITY GROUND What is an earlier trade mark?
When are the marks identical?
SA Société LTJ Diffusion v SA Sadas, Case C-291/00 [2003] ETMR (83) 1005
Reed Executive v Reed Business Informatics [2004] RPC 40 (CA) (Reed/Reed Business Information)
When are the goods or services identical?
British Sugar v Robertson, [1996] RPC 281 (treat)
SECTION 5(2): CONFUSING SIMILARITIES When are the marks similar?
Sabel BV v Puma AG, Rudolf Dassler Sport, Case C-251/95 [1997] ECR I-6191 “The tribunal should take into account the degree of aural, visual, or conceptual similarity, as well as the inherent or acquired distinctiveness of the mark” Visual, aural and conceptual similarity
Muelhens v OHIM [2006] ECR I-0000
British Sugar v Robertson [1996] RPC 281
The likelihood of confusion on the part of the public, which includes the likelihood of association
Who must be confused?
What is meant by likelihood of confusion?
Lloyd Schuhfabrik Meyerv Klijsen Handel Case C-342/97 [1999] ECR I-3819, [1999] ETMR 690
Case C-251/95 Sabel BV v Puma aG [1997] ECR I-6191
Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn- Meyer Inc [1998] ECR I-5507 Case C-425/98 Marca Mode CV v Adidas AG [2000] ECR I-4861
Vedial SA v OHIM, Case T-110/01, 12.12.2002
Case C-3/03 Matratzen Concord GmbH v GmbG v Office for Harmonisation in the Internal Market [2004] ECR I-3657
Case C-120/04 Medion AG v Thomson Sales Germany & Austria GmbH [2005] ECR I-8551
Case C-334/05 Office for Harmonisation in the Internal Market v Shaker de L. Laudato & C SAS [2007] ECR I-4529
Specsavers v. Asda [2012] EWCA Civ 24
What is meant by likelihood of association?
Sabel BV v Puma AG, Case C-251/95 [1997] ECR I-6191
Picasso v Picaro, [2006] ETMR 349
Proof of confusion Tine of assessment
Claude Ruiz-Picasso v. OHIM [2006] E.C.R. I-643
Och-Ziff Management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch), [2011] FSR 11
SECTION 5(3) PROTECTION OF NON-ORIGIN FUNCTIONS THE ANTI-DILUTION PROVISION
Reputation
General Motors v Yplon Case C-375/97 [1999] 3 CMLR 427
Pago C-301/07 – Reputation ‘in the Community’
Similarity of marks
Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld, Case C-408/01 [2004] 1 CMLR (4) 448
Intel Corp v CPM UK Ltd, [2007] EWCA Civ 431; [2007] RPC (35) 846
Intel Corp v CPM UK Ltd, Case C-252/07 [2008] WLR (D) 371
L’Oreal v Bellure, [2007] EWCA Civ 968; [2008] ETMR (1) 1
Unfair advantage or detriment Unfair advantage
L’Oreal v Bellure, [2007] EWCA Civ 968; [2008] ETMR (1) 1
NASDAQ, Case T-47/06 (10 May 2007)
C-487/07, L'Oreal SA and ors v Bellure NV and ors
Julius Samann vTetrosyl [2006] ETMR 75
Damage to reputation
Colgate Palmolive v Lucas Bols Claeryn/Klarein, (1976) IIC 420
C.A. Sheimer (M.) Sdn Bhd’s Trade Mark Application [2000] RPC 484
Souza Cruz v Hollywood SAS R283/1999-3 [2002] ETMR (64) 705
1. Describe the test devised by the ECJ for establishing that a trade mark enjoys reputation.
2. Describe briefly the test applied by the E.C.J. for determining confusion.
3. Describe briefly the test applied by the E.C.J. for determining similarity between products.
4. Describe briefly the test applied by the E.C.J. for determining similarity between signs.
Discuss the registrability of the following signs in respect of the U.K.:
(a) “Two Bears” for “toys”. A composite mark, comprising a design of two bears tasting honey and the words “Honey Pot”, has already been registered in the U.K. by an unconnected entity as a trade mark, also for “toys”.
(b) “Business Leaders Express” for “the provision of financial information”. “Business Leaders Today” has already been registered as a Community Trade Mark for “newspapers” by an unconnected entity.
(c) “MARS”(in Roman script) for chocolate, MARS (without Roman script) is already registered in the UK for confectionery and biscuits.
(d) “Glasgow Learning Press” for “books for children”. “Glasgow University Press” has already been registered for “academic books” in the U.K. by an unconnected entity.
(e) “Marie-Louise” for “magazines for women”; “Louise” has already been registered as a CTM for “cosmetic products for women” by an unconnected entity.
(f) “ROLEX” for drain cleaner. “ROLEX” is already registered for watches and jewellery. (g) “ZARA” for garden furniture. ZARA is registered for furniture. The registered
