The of Tom and Pete Soil Manufacturers - Case Study Example

Order 165976 PARENTS AND TRADEMARK LAW The facts and circumstances given in the case of Tom and Pete soil manufacturers fall under the law of patents and trademarks. A patent is the name given to a bundle of monopoly rights which give the patentee the exclusive right to exploit the invention for a given period of time 1. It is a right to stop others; an inventor does not need a positive right to exploit his own invention. On the other hand, a trademark is a mark used in relation to goods or services so as to indicate a connection in the course of trade between the goods and some person having a right to use the mark 2 The commercial purpose of a trademark is to distinguish the goods or services of a company from those of its competitors. Many trademarks indicated quality and induce customers to buy the goods. According to trade marks Act 1994, A trademark is "any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of another's 3 ________________ 1. (K. Abbott, N. Pendlebury, 7th edn 2001) 2. Ibid 3. Trade marks Act 1994, EU directive on trademarks. Looking at the facts and circumstances underlying the case of Tom and Pete Soil manufacturers of gardening equipment, which they introduced in spring 2006, they have a right to prevent their competitors FR and ED and Salisbury supermarkets by inventing and selling the product. In order for them (Tom and Pete Soil) manufacturers to protect their invention they have to apply for a patent. First they should make an application to the UK patent office. At the patent office they are required to fill a document called 'complete specification. This form contains a description of the article, process or machine, including working instructions and a statement of 'claims' which the inventor seeks his monopoly. It is against these claims that any infringement is judged. The patent office will carry out research to test for novelty. According to the result of the search the applicant may decide to abandon or modify his application or request an examination by a qualified patent office examiner. The main task of the examiner is to see that the claims of the specification describe things that are not only new, but also inventive. Once the examiner is satisfied the specification is published and for 3 months afterwards any interested party can object by notice to the patent office. In the event of no opposition or failure of objections the 'letters patent' will be seated and the patentee can sue in the High Court for any infringement. Once granted, the patent covers the UK and is in force for 4 years, and it can be renewed annually for a further 16 years after which it can be extended by an application to the High court for a further 5 to 10 years. After duty registering their Pete Tom and Pete Soil manufacturer will have the patent rights and they can reinforce a legal action against anyone making, using, selling, offering for sale or importing their patented invention. In the event of the competitors proceeding to invent the polythene bags, Tom and Pete Soil can approach the court and fire a civil suit. In the court section 60 (1)4, patents Act 1977 states that "Subject to the provision of this section, a person infringes a patent for an invention if, but only if, while the patent is in force, he does any of the following things in the united Kingdom in relation to the invention without that consent of the proprietor of the patent, that is to say:- Where the invention is a process, he uses the process or he offers it for use in the United Kingdom when he knows, or it is obvious to a reasonable person in the circumstances, that its use there without the consent of the proprietor would be an infringement of the parent. Therefore the aggrieved party can seek the assistance of the courts which will issue an injunction barring the competitors i.e. FR & ED as well as Salisbury supermarkets from inventing and selling the polythene growing bags. Further Messrs Soil can prevent Tom Brothers and Salisbury Supermarkets from inventing and selling the said products by registering the mark Tom Pot. A mark is used in relating to goods or services so as to indicate a connection in the course of trade between the goods and some person have a right to use the mark. The commercial purpose of a trademark indicates quality and induces customers to buy the goods. _____________ 4. www.jenkin-ip.com By mess of Soil registering their mark it will confer a statutory monopoly on the use their mark hence they can sue for infringement. The fact that the shape of goods can be a trademark overrules the House of Lords decision in Coca-Cola Trade Marks (1986)5, however, there is no protection if the shape:- i) Results from the shape of the goods ii) Is necessary to obtain a technical result or iii) Adds substantial value to the goods By registering the mark TomPot Messrs Soil will prevent their competitors from using their brand name which is likely to cause confusion to their customers. By so doing they will prevent their competitors from using the mark TomPot. However, if they proceed then they will be held liable for infringement. Infringement occurs when any person, without permission, uses in the course of a trade, a mark identical to the registered mark or so similar as to be likely to deceive or cause confusion 6. (ibid). When considering whether marks are similar the idea conveyed by the mark must be looked at as well as physical similarity. In Tow V. Notek (1951) 6 P used a drawing of a car in the shape of a cat's body with the eyes as headlamps as their trademark. D used the lead ________________ 5. K. Abbott, K. Wardman, Business law, 2001 6 www.ipaustralia.gov.au the shape of a cat's body with the eyes as headlamps as their trademark. D used the lead of a cat with the eyes as car headlamps. It was held that although the drawings were visually dissimilar the idea was the same, so P's trademark had been infringed. When infringement occurs the plaintiff is entitled to an injunction and damage on an account of profits and to an order for destruction or modification of the offending good. However, there is common law protection of the mark of Tom pot against use by competitors of Messrs Soil manufacturers. This common law remedy know as 'passing off" is available for the protection of business reputation or goodwill which attaches to unregistered trademarks. Passing off provides a remedy in a scenario where business has been trading under an unregistered trademark for many years, and a rival business starts using the same or a similar mark7 Passing off is usually committed by imitating the appearance of the plaintiff's goods, or by selling them under the same or similar name. Passing off which is a tort may be committed by applying the name of the locality in which the plaintiff produces goods to the defendant's goods. In Bollinger v. Costa Brava wine co. (1961) 8) P, who manufactured champagne, brought an action against D who was describing their product as 'Spanish Champagne'. It was held that the word "champagne" was generally regarded as referring exclusively to _________________ 7. www.enwikipedia.org 8. www.ipd.gov.hk wine produced in the champagne district of France and even with the Prefix 'Spanish' purchasers could be misled. An injunction was granted to prevent D from using the name. Therefore under common law the aggrieved party can move to the court and file a suit seeking to prevent their competitors from trading in a name similar to theirs. Upon hearing both sides the court will issue on injunction to Prof. this, the plaintiff must show that they have likely to suffer a loss of theirs competitors continue using the mark which causes confusion to their customers. In Harrods Ltd. V. Harrods Ltd (1923)9 the farmers Knightsbridge store successfully prevented money - lending company from trading under the Harrods's name. Although the nature of their business was different there was sufficient likelihood that the public would assure that they were connected. Conclussion To conclude, Messrs Soil Manufacturers can use both ways to prevent the invention and selling of the growing polythene bag. By registering their mark, Tom Pot it will prevent their competitors from using the mark. Under common law remedy Messrs Soil manufacturers can approach the court and the court will issue an injunction to prevent them from using imitating the shape and transparency of the bag as well as the mark which is likely to cause confusion among their customers. _________________ 9. Journal or Intellectual property law and practice, 2006 Bibliography 1. K. Abbott, K. Wardman, Business law 7th edition, 2001, Oxford University press. 2. www.enwikipedia.org 3. www.ipd.gov.hk 4. www.ipaustralia.gov.au 5. www.jenkin-ip.com 6. Trade marks Act 1994, EU directive on trademarks. 7. Hendrickson, Kent and Katrina Strauch. "Intellectual Property Rights and Scholarly Publishing in the Twenty-First Century, 1991. 8. Smallson, Frank. "Soliciting From a Spectrum of Sources." Intellectual Property Magazine, February 1995. Read More