The Trade Mark Act - Essay Example

Infringement Question (a).Section10 (2) of the Trade Mark Act 1994 s. A person infringes a registered trade mark if he uses in the of trade a sign where because – (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or, in specifically addressing the question at hand concerning Adam, (b) the sign is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark. In English statute or case law, there is no definition for what is use as a mark. Use as a mark will depend on the facts of each case, in particular, the nature of the mark and the goods and services concerned. English case law indicates that the judges are looking for use which is taken by the public as a badge of origin, in other words as an indication that the goods and services are from a particular trader. This requirement is not the same as a requirement that the relevant public should know the identity of owner’s of trade marks, but nevertheless associate the marks of products with a particular trade origin. It will be more difficult for an applicant or proprietor to show use as a trade mark with very non-distinctive marks or where the use has been mainly in conjunction with another trade mark. In the court’s attempt to sort out the dilemma in determining exactly what confusion is, the British Sugar case law provides guidance to making a uniform determination, it states: 2 i.the defendant’s use of a sign need not be used as a trade mark for his goods or services, BUT ii. the use must fairly be capable of being regarded as “in relation to” the goods and services in question, and iii. the defendant has the scope to show that his use is not “as a mark” and does not infringe pursuant to one or more of the relevant exceptions including, for example, honest descriptive use of a sign. In the Trebor Bassett v. Football Association case the alleged infringement was of a registration of the England football team crest which covered amongst other things, cards bearing the names of the English footballers wearing shirts on which the registered mark could be seen. The judge held that the reproduction of the crest was not even arguably “using” it in any real sense of the word and was certainly not using it as a sign in respect of the cards. So where there can be established that there is only incidental use of, for example, a punctuation mark which is the subject of a trade mark registration, which is open to traders to use in a completely non trade mark sense, there is proper basis for finding that the use is not truly “in relation to” the goods and services concerned. However, when we view Premier League, Topps, which has a similar set of circumstances, but a different outcome…Premier League football clubs have recently succeed in the Court of Appeals in their claim that Paninis’ album infringes the copyright in the league and club logos reproduced on the players photographs used on the stickers. Panini and Topps had both tended for the license to produce the official sticker collection. Panini, having lost, turned to the longstanding fall back of the so called and clearly so-marked “unofficial album”. Chadwick LJ delivered the lead judgment. He held 3 that the relevant question to ask was ‘why have logos been included in the stickers? And that it should be answered by an objective assessment of the circumstances in which the stickers were created. In Panini’s case, the reason for inclusion was to make stickers more attractive to a collector. This required an authentic image of a player and crucial to this was the appearance of the logos. Therefore, the inclusion could not be deemed as incidential. In the past, the UK registry has sought evidence of use of sufficient sales of the relevant goods or services rather than evidence on whether the public regards the mark as a badge of origin. However, in British Sugar, Jacob J rejected this practice and said that it was key that the evidence showed that the sign was known as a trademark. In Wagamama, the need for confusion as to source was held to be required before a trade mark would be infringed. The same approach was taken in Baywatch and BASF. It was held in Baywatch that it was illogical to require such a confusion in case of similar goods under s 10 (2) but not where goods were dissimilar. Again in Oasis, it was required to succeed under 5(3) the claimant needed to establish a conceptual connection between its reputation for batteries and goods which the applicants mark was to be used. Although accepting in principle that likely confusion is not a requirement of s 5 (3) of the UK Act, the judge was reluctant to find conduct taking unfair advantage of, or detrimental to the distinctiveness of or otherwise harmful to the opponent’s trade mark without likelihood of confusion. Also in Laura Ashley Manufacturing BV v. Edizioni Blusri, the latter registered the domain name “lauraashley.com, as well as numerous other well known businesses, with Network Solutions Inc. No internet web sites were activated for any of 4 the domain names registered. In response to a letter from the Laura Ashley company, Edizoni offered to sell the lauraashley.com domain name for US$7,500. Thereafter Laura Ashley commenced preliminary proceedings before the District Court of Parma, Italy, requesting inter alia, an ex parte injunction prohibiting the use of the domain name, including the transfer of the domain name to a third party. The defendants argued that the mere registration and offering to sell a domain name did not constitute infringement. The court rejected this argument and affirmed the ex parte injunction order, holding that the name of a well-known company contained within a domain name constitutes a distinguishing mark, since it facilitates an on line search of a web site and can therefore conflict with marks that are identical or similar. Question (b). Although the concept of dilution under the Directive (and in turn under the 1994 Act) is derived from the Benelux law, Benelux cases have had little influence on the interpretation of section 10 (3) in the UK. Section 10 (3) does not explicitly require proof of confusion, nevertheless conflicting approaches have been taken by the English Courts in this regard. In British sugar Jacob J suggested that 10 (3) might apply to a case in which there was no likelihood of confusion as to trade origin. Thius view was also considered by CoA in BT. Although it was acknowledged that likely confusion may not be needed given the language of s 10 (3) the court held there was likely confusion and therefore infringement. Again in Cirgi TM, Geofefry Hobbs QC found that s 5 (3) did not require there to be a likelihood of confusion. Although the same view was reiterated in Re CA Sheimer, the Registry did not point out that if confusion can be demonstrated, then opposition fairs better chances of succeeding under s 5 (3). 5 Finally, it was established by the ECJ in Sabel that the provisions of the directive do not require proof of confusion. It was asserted that a.5(2) of the directive do not require proof of confusion because this provision does not deal with confusion but with taking unfair advantage or a detriment. Although it could be said to be. The court in General Motors felt bounded by this view. It was held that asking for confusion would make section 10 (3) no wider than section 10 (2) which was not the intention of the directive. This view was adopted in Canon and was later confirmed in Marca Mode. In Pfizer Mr. Thorley’s approach, apparently, which he also took in the case of Loaded Trade Mark, appears to give Benelux meaning of confusion when considering A 5 (2). He relied on Sabel, General Motors and Canon to hold that proof of likelihood of confusion is not a requirement for proving infringement under section 10 (3). He held that the type of mere association rejected for section 10 (2) as not amounting to confusion would be relevant in relation to assessing the question of unfair advantage or detriment for section 10 (3). Nevertheless, he did make a finding to the fact that there was little likelihood of confusion caused by the defendants activities. Although following Sable, there is no need to show confusion under section 10 (3) it seems that some connection in the minds of the public must be demonstrated to show detriment required by the section. The English courts have so far been reluctant to find dilution in absence of likelihood of confusion. In-fact in none of the cases above does the claimant succeed without there being a risk of confusion. The results of the cases above therefore suggests that confusion or a likelihood of confusion is necessary before an argument based on s 10 (3) will succeed because the court will not other wise be persuaded of a likelihood of 6 detriment. Question ( c ). Articles 30 and 36 of the EEC Treaty do not preclude national legislation from allowing an undertaking which is the proprietor of a trade mark in a member state to oppose the importation from another member state by an undertaking which is legally and economically independent of it and without its consent of similar products lawfully bearing in the latter state an identical trade mark or one which is liable to be confused with the protected mark, even if the mark under which the goods in dispute are imported originally belonged to a subsidiary of the undertaking which opposes the importation and was acquired by a third undertaking following the expropriation of that subsidiary. It is clear from Article 36 of the EEC Treaty, in particular the second sentence, as well as from the context, that whilst the treaty does not affect the existence of rights recognized by the legislation of a member state in matters of industrial and commercial property, yet the exercise of those rights may nevertheless, depending on the circumstances, be restricted by the prohibitions in the treaty. In as much as it provides an exception to one of the fundamental principles of the common market, Article 36 in fact admits exceptions to the free movement of goods only to the extent to which such exceptions are justified for the purpose of safeguarding rights which constitute the specific subject matter of that property. Even where the rights in question belong to different proprietors the protection given to industrial and commercial property by national law may not be relied on when the exercise of those rights is the purpose, the means or the result of an agreement prohibited by the treaty. Am allegation by one undertaking as to similarity of products originating in 7 different member states and the risk of confusion of trade marks or commercial names legally protected in these states may perhaps involve the application of community law with regard in particular to the second sentence of article 36 of the treaty. It is for the court of first instance, after considering the similarity of the products and the risk of confusion, to enquire further in the context of this last provision whether the exercise in a particular case of industrial and commercial property right may or may not constitute a means of arbitrary discrimination or a disguised restriction on trade between member states. When we view Terrapin v. Terranova (1976) , we find the embodiment of the “exhausting of rights” principle which states: “the proprietor of an industrial or commercial property right protected by the law of a member state cannot rely on that law to prevent the importation of a product which has been lawfully marketed in another member state by the proprietor himself or with his consent.” Read More