Law of Intellectual Property - Essay Example

?Law of Intellectual Property B. Advise i) Whether the “Desir” is legal to use as a Trade Mark for perfume, and also ii) Whether the smell of “Desir” which may be described as “spice with a touch of citrus lemon” is registrable with this or any other description. Scenting Ltd wishes to introduce a perfume of their own under trade mark “Desir” and its smell is to be described as “spice with a touch of citrus lemon”. It is to be examined whether it is legal to use the name “Desir” and whether the olfactory description is registrable as such or by any other description. The First step is to carry out a search in the Trade Marks Registry data base at http://www.ipo.gov.uk/tmtext or European database at http://tmview.europa.eu/tmview/welcome.html for possible prior conflicting uses of Desir or similar words already registered. The search results are furnished in the annexure 1. Among the 37 items revealed in the search results were also “Desir” and similar sounding “Desire “ and “Dezir” though under different classes. Out of 45 classes of items, perfume was not found. Class 1 was Chemicals. On further search for perfume, results showed that “perfume” fell under the Nice class 3. And the similar sounding “desire” has been registered in class Nice 3. The word “desir” has been registered under Nice class 30 which is for “foodstuffs”. The question is whether “desir” is registrable under the above circumstances. There are as many as five sections in the Trade Marks Act 1994 under which a trade mark can be refused to be registered. Relevant section for the present purpose is section 5 which states as follows. Section 5 (1) prohibits registration of a trade mark if an identical trade mark has been already registered as goods or service. Section 5 (2) (a) prohibits registration of a trade mark if a similar trade mark has been already registered. Section 5 (2) (b) prohibits registration of a trade mark if there is an existing similar trademark and the one sought to be registered is similar or identical and will likely cause confusion among the public including some relationship with an existing trademark. (Legislation.gov.uk, 1994) Section 3 prevents registration of a trade mark if it “would take unfair advantage” of earlier trade mark of repute. Section 5 (4) prohibits registration of a trade mark if it could not be registered by any rule of law such as “law of passing off”. The last section 6 however provides for registration of an already registered trade mark if the proprietor of the earlier trade mark gives his consent to the registration (Legislation.gov.uk, 1994, p. 11). In view of the above provisions, trade mark in the name of “Desir” may be refused since the name already falls under food stuffs. A similar or identical trademark can be refused as it would cause confusion and the public are likely to mistake it for food stuff. A perfume being mistaken for foodstuff could result in disastrous consequences. Even if the owner of the existing trade mark consents, the registry may in public interest ask the applicant to make changes in the word “desir” in order to avoid possible future complications. If at all, the applicant gets the approval of the name, olfactory description of the perfume needs to be clarified. The description sought to be registered is “spice with a touch of citrus lemon”. In this connection, the case law Eden SARL v Office for Harmonisation in the Internal Market ( Trade Marks and Designs ) (OHIM) (2005) says that it can be an absolute ground for refusal if olfactory description cannot be represented graphically as per article 7 (1) (a) of Regulation (EC) No 40/94. The article states that a trade mark if not visually perceivable should at least be capable of being graphically represented by way of clear, precise, easily accessible, intelligible, ,durable, and self contained images, line, and characters. The olfactory description “smell of ripe straw berries” of the applicant in the above case not has been adjudged as not a trademark having not been graphically represented as contemplated by Articles 4 and 7 (1) (a) Regulation No 40/94 if it has not been represented graphically” (WIPO, 1993) (p2). Another case in this connection that can be cited is Ralf Sieckmann v. Deutsches Patent- und Markenamt (2002). The plaintiff submitted a chemical formula and a sample in support of olfactory description of “balsamically fruity with a slight hint of cinnamon" .which his German Registration authority refused to register on the ground that the olfactory description was not capable of being represented graphically. The court ruled that Article 2 of the Council Directive 89/104/EEC of 21 December 1988 contemplated that a trademark sign not visually perceivable should at least be presented in graphical form such as “ images, lines or characters” which should be unambiguous, exact, self-explanatory, understandable, enduring, easily available and objective. In addition the court ruled that graphical representation of an olfactory sign cannot be substantiated by wordily explanation, chemical composition, sample of the odour or all of these combined together (Ralf Sieckmann v. Deutsches Patent- und Markenamt, 2002) Conclusion In the above circumstances, it is not legal for Scenting Ltd, to use a trademark as “Desir” as not registrable for reasons of prior registration of a similar or identical trade mark and the olfactory description not capable of being represented graphically. A) Advise Scenting of their chances of defending this trade mark infringement case. In this connection reference is made to sections 10 (1) and 10 (2) of Trade Marks Act 1994 (Legislation.gov.uk, 1994). Section 10 (1) makes it an infringement of a registered trade mark if a person in the course of trade uses a sign that is identical “with those for which it is registered”. Section 10 (2) makes it an infringement of a registered trade mark if by virtue of a person using a sign that is either similar to those goods or services for which it is registered as described in sub section 10 (2) (a) or identical with or similar to those goods or services for which it is registered as described in sub section 10 (2) (b), there is likely to be a confusion among the public including a creation of an impression of association with the said trade mark. In the instant case, Scenting Ltd of U.K. claims on the label of one of its products “Dawn” a generic brand that it smells like “Naissance” of a French company Chic Sarl by using the words “Not Naissance, but our testers couldn’t tell the difference”. If this sort of claim on the label is a form of comparative advertisement, it is not illegal after the enactment of the Trade Marks Act 1994 in the interest of promotion of competition. Committee of Advertising Practice (CAP) of U.K. recommends allowing of comparisons that are explicit or implied and they can refer to one’s own goods or goods of one’s competitors but the advertisements should not result in unfair attack or discrediting of competitors’ businesses or their products (Brierley, 2012). Comparative advertising if not truthful may amount to injurious falsehood. Present law does allow a defendant to use the claimant’s name or mark for the purpose of explicit comparison with his own goods or business. This kind of practice would not lead to confusion in the traditional sense as comparison itself would imply that two businesses or goods are separate and not connected. However as the law now stands, comparison may be actionable as passing-off if the defendant makes express and material representation that defendant’s goods or services are the same or similar to the goods or services of the claimant if actually that were not the case. There is no passing-off if the defendant while making use of the claimant’s name or mark also makes it in clear terms that his goods or services are not related to those of the claimant. In Ciba-Geigy v Parke Davis (1994) picture of a bitten apple was used by the defendants in their cheaper generic substitute for the claimant’s drug “Diclomax”. The claimant’s own advertisement widely used an apple’s picture to indicate their brand “Voltarol”. Any doctor noticing the defendant’s advertisement would realise that they are trying to pinpoint the cost advantages in their product. In this case, the decision was that there was no serious issue involved as doctors are not likely to stop prescribing or less prescribe on seeing the advertisement. In Kimberly-Clark v Fort Sterling (1997) defendant printed a slogan “ Softness guaranteed ( or we’ll exchange it for Andrex (R) on their promotional packages their brand “Nouvelle” toilet tissue which was held to be actionable by the manufacturers of “Andrex” on the premise that several customer would notice the prominently named Andrex and buy the defendant’s product without any awareness that Nouvelle and Andrex were competitive brands or to a disclaimer in small print (Wadlow, 2011), (Kola, 2013). A parallel can be drawn to the instant case of the defendants claiming on the label itself that consumers cannot tell the difference between their own brand and the brand of the plaintiff. The brands involved are cheap generic versus costly brand of the tissue paper. In this connection a reference to the recent decision in L’Oreal SA v Bellure NV (2010) is noteworthy. Plaintiffs sued the defendants for infringement of their trade mark under section 10 (1) and 10 (3). The Court of Appeal referred to EU’s Trade Marks Directive 89/104/EEC and Comparative Advertising Directive 97/55/EC (CAD) which did not make out a case of creating confusion or did not affect the affect of the function of the trade mark as to the guarantee of origin but in a significant manner promoted the defendant’s product. ECJ on being referred to tender advice on the concept of “unfair advantage” under Article 5 (2) and Article 3 a (1) (g) of the above mentioned Directives respectively, opined that the Directives had no relevance to the likely confusion or detriment of the registered trade mark but it did give unfair advantage to the defendant by the use of brand name of repute. Thus as contemplated by Article 3 a (1) (h) CAD the advertiser who claims implicitly or explicitly in a comparative advertising that his product is an imitation of the product of repute under well-known trade mark is held to have imitated the goods or services of the competitor. For the counter argument by the defendant that he did not contravene Article 5 (1) a or 5 (2) of the Trade Mark Directive, although he admitted that his packaging infringed L’Oreal’s trademarks, ECJ ruled that manner in which he had claimed was not advertising but an “out and out general purpose advertising aid “comparison list that did not fall within defence provisions of CAD. Conclusion In view of the above legal position, it is advised that Scenting company has no chances of success in defending the trade mark infringement case instituted by Chic SARL. References Brierley, S. (2012). The Advertising Handbook. Routledge. Ciba-Geigy v Parke Davis , F.S.R. 8 (1994). Eden SARL v Office for Harmonisation in the Internal Market ( Trade Marks and Designs ) (OHIM), T-305/04 (2005). Kimberly-Calrk v Fort Sterling , F.S.R.877 (1997). Kola, A. (2013). Essential Law for Marketers (2 ed.). London: Kogan Page Publishers. Legislation.gov.uk. (1994). Trade Marks Act 1994 c.26. Part1. Effects of registered trade mark. section 10. Retrieved April 8, 2013, from Legislation.gov.uk.: http://www.legislation.gov.uk/ukpga/1994/26/section/10 L'Oreal SA v Bellure NV , EWCA Civ 535 (2010). Ralf Sieckmann v. Deutsches Patent- und Markenamt, Case C-273/00. (Court of Justice of the European Communities December 12, 2002). Wadlow, C. (2011). The Law of Passing-off: Unfair Competition by Misrepresentation. Sweet & Maxwell. WIPO. (1993, December 20). World Intellectual Property Organization . European Union : Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community Trade Marks: Retrieved April 8, 2013 < http://www.wipo.int/wipolex/en/details.jsp?id=1421> Annexure 1 Trade mark short list “Your short list contains 37 items. Items in your pick list will last for 7 days (or until you delete cookies in your browser).” (IPO, n.d.) Bottom of Form “Trade Mark No. Mark Text File Date Status Nice Classes Image Short List EU001342666 DESIRE 13/10/1999 Registered 03 Top of Form Bottom of Form EU002475903 DEZIR 26/11/2001 Registered 01 03 07 Top of Form Bottom of Form EU003987815 DeSa/R 17/08/2004 Registered 07 09 11 Top of Form Bottom of Form EU004040309 DESIRE 22/09/2004 Registered 16 Top of Form Bottom of Form EU004839601 DESIRE 17/01/2006 Registered 11 Top of Form Bottom of Form EU005642715 DESIRE 25/01/2007 Registered 31 35 44 Top of Form Bottom of Form EU005959929 DESIRE 23/05/2007 Registered 09 41 42 Top of Form Bottom of Form EU006028831 DESIRS 22/06/2007 Registered 16 35 41 Top of Form Bottom of Form EU008124307 DESIRE 25/02/2009 Registered 09 Top of Form Bottom of Form EU009135963 DESIRE 27/05/2010 Registered 09 Top of Form ” Bottom of Form Top of Form Jump To Page: “ (IPO, n.d.) Read More