Trade Marks - Case Study Example

Trade Marks In the UK, the Trade Marks Act 1994 governs the issues pertaining to trademark law. Under the provisions of the TMA 1994, the trademark should be distinct from others in all manners. The distinctiveness of trademark is the fundamental requirement for registering a trademark (Terpstra, 2004, p. 484). According to section 1 of this Act, a trademark is a sign which is capable of distinguishing the goods or services of a firm from other firms. Section 3 disallows the registration of a trademark if it lacks any distinctive character. This section also refuses the registration of a trademark if it deceives the public (Terpstra, 2004, p. 484). Section 3 of this Act requires a trademark to be distinctive. As such, section 1 of the Act stipulates that the trademark should render it possible to differentiate the goods or services of one undertaking from that of the others. An application for a mark that tends to mislead or deceive the public will not be registered (Terpstra, 2004, p. 484). Moreover, under the provisions of section 5 of this Act, a trademark applied for registration is compared with protected trademarks in the UK. Some examples of protected trademarks are UK national marks, CTMs and international registrations that have specified the EU or the UK (Olsen , 2006). In Philips Electronics NV v Remington Consumer Products, it was held by the court that a sign was anything that conveyed information. This definition clearly addresses signs involving words, designs, letters, and numerals, as all of these can be represented graphically without much difficulty. Apparently, this seems to create a difficulty with regard to odours and flavours (Lee, 1999). All the same, this perceived obstacle to registering such marks did not prove to be difficult to overcome. (i) A pyramid shape for chocolate mints, "pointymints", similar in some ways to a well – known brand of triangular chocolate “Toblerone.” In this problem a pyramidal shape for a mint chocolate had been applied for registration. This shape was already possessed by Toblerone, a well – known brand of chocolates. In order to register a trademark, it must have fulfilled three fundamental requirements; first, the trademark that is applied for registration must be a sign capable of being represented graphically. Second, it must be distinctive that it is capable of distinguishing the goods and services of one trader from other traders’ trademarks. Third, it must be distinctive (Lee, 1999). However, section 5 of the Trade Marks Act 1994 disallows the registration of a trademark that is indistinguishable from an earlier trademark. Moreover the goods or services concerned should be identical to those with regard to which the trademark has been protected. Earlier trademarks are defined under section 6 of the Trade Marks Act 1994 (Anon., 1994). These include, registered trademarks, international trademarks, Community trademarks whose date of application for registration is prior to that of the trademark sought to be registered, Community trademarks that can validly claim seniority from a previously registered trademark or international trademark, and trademarks that are entitled under the Paris Convention to protection as well known trademarks (Anon., 1994). The Trademarks Registry has adopted a practical approach to this problem by declaring that graphical representation of a sign transpires, whenever the following conditions are satisfied. First, the mark should be defined with sufficient precision, so that infringement rights can be determined. Second, the graphical representation should be capable of independently establishing the trademark without the necessity of additional information, such as supporting samples (Lee, 1999). The Registry made it clear that these guidelines are not common for every case. Every application will be considered on the merits of the case. For instance, the Dulux Dog mark was registered despite its simplistic description. In this instance the Trademarks Register permitted the registration of an image of an Old English Sheepdog and the Derbyshire Building Society (Lee, 1999). The Registry allows representation of shapes that are in the form of line drawings or photographs. A perfect example of this is the Coca-Cola bottle. The old Act refuses to register the shape of a bottle (Lee, 1999). The TMA, due to its pragmatic approach, had permitted the Coca Cola Company to register the shape of its bottle as a trademark. However, in our problem, trade mark for a pyramidal shape was already possessed by the renowned Toblerone chocolates. Hence, registration of the pyramidal shape for chocolate mints causes an infringement of the provisions of the Trade Marks Law. (ii) A name, "Oxford", for bicycles, which is a well – established unregistered mark recognised as a leader in its field of quality bicycles for the last twenty years. In the UK, it is generally believed that registration provides the maximum protection for trademarks. However, unregistered trademarks are also significant to some extent. Globalisation of the economy has initiated a relentless process of trade barrier attenuation. This exposes businesses to an ever increasing danger of having to compete with other entities operating in the same area. In addition, these entities frequently have similar trademarks (Fearon, 2004). The underlying concept in the application of trademark law by the UK courts had been the notion that trademarks essentially functioned as a guarantee of origin. This perspective had to be altered with the advent of article 5 of the Trade Marks Act 1994. This modified approach gives due importance to taking unfair advantage. There is now growing recognition of the investment made in making a brand famous. In addition, it has been conceded that third parties may profit in an unfair manner from such investment (Evrard, et al., 2010). Moreover, under the provisions of section 10 of the Trade Marks Act 1994, a trademark is infringed if one of the following conditions is satisfied. First, an individual employs a sign in the course of trade that is the same as the trademark and the sign relates to goods or services that are similar to those for which the trademark has been registered (Fawcett & Torremans, 2011, p. 128). Second, the sign resembles the trademark and is employed with respect to goods or services that are similar to the goods or services for which the trademark had been registered. In addition there should be the possibility that the public could be subjected to confusion and this could include correlating the sign with the trademark (Lambert, 2009, p. 42). Third, a sign is utilised during trade related to goods or services that is similar or identical to the trademark and the latter is well recognised in the UK. Moreover, the employment of the sign is either detrimental to or takes undue advantage of the distinctive nature or repute of the trademark (Michaels & Norris, 2010, p. 142). In our case, the name Oxford has been possessed by a bicycle brand that has been famous in this area for more than 20 years. As per the provisions of the Trade Marks law, even unregistered trademarks will be recognised as valid, if the goods represented by the trademark become well known due to these trademarks. Consequently, an infringement of the provisions of the Trade Marks Law will transpire if the same name is registered for another brand of bicycles. (iii) An unusual shade of metallic purple used as wrapping paper for mints produced by Rawntree Ltd. In our problem, an application was made to register metallic purple colour used as packaging paper for mints, as a trade mark. For a colour to be registrable, it should not have any functional purpose, it should not be merely ornamental and it should have obtained a secondary connotation as a sign. Thus, in Unilever plcs Trade Mark the registration of a red stripe in the Signal brand of toothpaste was not permitted. This red stripe contained a substance that had functional use (Colston & Galloway, 2010, p. 597). A colour that serves to distinguish an undertaking and that is distinctive may be deemed to be a trademark. Such a colour mark has to necessarily be related to goods or services. Thus in Smith Kline and French v Winthrop the House of Lords ruled that a pharmaceutical capsule, which was half transparent and half opaque and contained pellets of different colours, could be registered as a trademark, upon evidence that this capsule was commonly recognised as a trade mark (Colston & Galloway, 2010, p. 597). Moreover, in the Libertel case, the European Court of Justice (ECJ) ruled that a colour could act as a trademark. Accordingly, such single colours can be registered; however, these colours have to be defined with adequate accuracy. Such definition is effected by employing the relevant Pantone Number of the colour. In addition, with the passage of time, such colour should make it possible to differentiate goods and services of a trader from that of the others (Pinsent Masons, 2004). Libertel had made an application for registering the orange colour as a trademark for its telecommunication services. The ECJ permitted such registration and conceded in this particular instance that colours constitute signs. The Trade Marks Directive of the EU specifies some of the entities that can be registered as trademarks. Some of these are words, logos, and shapes (Pinsent Masons, 2004). The importance of this definition lies in the fact that colours were held to have the capacity to distinguish goods and services of one trader from that of another. In general, colours are considered to have nothing more than attractive and decorative attributes. However, this decision appended the capacity of acting as badges of origin to colours, in the commercial area, under certain circumstances. In its ruling the ECJ recommended the use of Pantone Numbers to distinguish colours, when viewed from the commercial perspective (Pinsent Masons, 2004). Similarly in our case, an unusual shade of metallic colour for wrapping paper can be registered as a trade mark provided it has the capacity to distinguish the goods of its trader from that of the other traders. In addition, it should make it possible for its goods to be distinct from other goods with the passage of time. (iv) The smell of "Desire" perfume, which is described by experts as "Vanilla with a hint of spice". The trademark laws permit registration of the correlation between odours and the products or services to be protected. The grant of such trademarks has been very rare. For instance, an olfactory trademark was registered for tennis balls having the fragrance of freshly cut grass in Vennootschap Onder Firma Senta Aromatic Marketings Application (Anon., 1999). However, in Sieckmann v Deutsches Patent – und Markenamt, an application for registering an olfactory trademark was rejected as the fragrance in question had not been described with sufficient precision. The ECJ upheld the rejection and opined that verbal descriptions, despite being graphic could fail to possess adequate clarity, precision and objectivity (Matheson, 2003). The fragrance to be registered as a trademark had been described as balsamically fruity with a slight hint of cinnamon. This was held by the ECJ to lack the accuracy to convey unambiguously the intensity of the cinnamon scent and the essence of the terms fruity and balsamically. The Court ruled that these terms involved a substantial amount of subjectivity and were per se, incapable of and unsuitable for explicitly recognising the olfactory trademark (Mount, 2009). Similarly in our case, description of a perfume as vanilla with a slight hint of spice is unclear and ambiguous for the purpose of identification as an olfactory trade mark. As a result, it cannot be registered as a trademark under the provisions of the Trade Marks Act. In addition, the TMA 1994, while supplanting the 1938 Act, has excised a number of uncertainties inherent in the earlier Act, with regard to infringement. Moreover, the new Act further extends the rights of a trademark owner, under section 9. As a consequence, trademark owners can claim damages for infringement of their trademarks. This Act also imposes certain limitations on the claims of damages by trademark owners. As a result trademarks can be used to identify the proprietor of those marks (Anon., 1995). This is usually seen in commercial advertisements Upon the registration of a trademark, its proprietor obtains rights over that mark. Section 10 of the TMA states that a trader who uses the trademark of another trader without the consent of the latter, in general infringes the registered trademark. The 1938 Act required trademarks to be listed in the Trademarks Register. Such listing was essential and a fundamental requirement under this Act. This requirement had to be satisfied by the owners of trademarks who were desirous of making claims for damages caused by trademark infringements (Anon., 1995). Section 9(3) of the new TMA continues with the imposition of certain requirements for claiming damages for trademark infringements. Under this section, the right of the trademark owner will come into force only after the registration of the trademark. As a result, the owner of the mark cannot make any infringement proceedings before the date of registration. This differs significantly from the 1938 Act, wherein the right of the owner of a trademark had come into force from the date of filing of the application for trademark registration. Thus, it is beneficial for a trademark owner to register the mark either prior to its use or immediately after its use (Anon., 1995). Trademark law has been witness to longstanding feuds, such as the Apple Corps v Apple Computer dispute which lasted nearly three decades. There were numerous cases fought between these two companies over the trademark issue (Salkever, 2004). Finally, this long standing dispute was settled and Apple Corps, which belonged to the Beatles and Apple Computer called an end to their protracted dispute, with the latter releasing the music of the Beatles on their iTunes Store, in the year 2010 (Beaumont, 2010). (v) Classification of goods and services for i to iv. As per the classification provided by the Intellectual Property Office, bicycles come under class 12. Moreover, chocolate mints are to be classified under class 30. In addition, the smell of perfume is to be classified under class 3. Finally, unusual wrapping paper for mints is to be classified under Class 39 (Intellectual Property Office, 2012). List of References Anon., 1995. Realistic remake: The new Trademarks Act. International Commercial Litigation, Volume 41, p. 32 – 37. Beaumont, C., 2010. Beatles music comes to Apples iTunes store. The Telegraph, 16 November. Colston, C. & Galloway, J., 2010. Modern Intellectual Property Law. 3rd ed. Taylor & Francis. Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to Approximate the Laws of the Member States Relating to Trade Marks. 2008. Evrard, J.-J.et al., 2010. The myth and reality of European trade trade mark harmonisation. [Online] Available at: https://search.ebscohost.com/login.aspx?direct=true&db=bth&AN=52175991&site=eds-live [Accessed 12 February 2012]. Fawcett, J. J. & Torremans, P., 2011. Intellectual Property and Private International Law. 2nd ed. Oxford University Press. Fearon, G., 2004. The importance of goodwill. [Online] Available at: http://ehis.ebscohost.com/eds/detail?sid=2a68fc5a-64ff-47ce-b922-e46aed58f479%40sessionmgr11&vid=3&hid=101&bdata=JnNpdGU9ZWRzLWxpdmU%3d#db=bth&AN=15033256 [Accessed 12 February 2012]. Intellectual Property Office, 2012. How we classify. [Online] Available at: http://www.ipo.gov.uk/t-class-guide.htm [Accessed 13 February 2012]. Koninklijke Philips Electronics NV v Remington Consumer Products Ltd (2002) Case C – 299/99 ECR I – 5475. Lambert, J., 2009. Enforcing intellectual property rights. Gower Publishing Ltd. Lee, C., 1999. Distinctly peculiar. Managing Intellectual Property, Volume 86, p. 29 – 32. Libertel Groep BV v Benelux – Merkenbureau (2003) Case C – 104/01. Matheson, J. A., 2003. The Sweet Smell of a Successful Registration. [Online] Available at: http://www.finnegan.com/resources/articles/articlesdetail.aspx?news=d28c44ca-6b7a-440b-a97d-ee09588e9c02 [Accessed 14 February 2012]. Michaels, A. & Norris, A., 2010. A Practical Approach to Trade Mark Law. 4th ed. Oxford University Press. Mount, T., 2009. Trade Marks – case law. [Online] Available at: http://www.lawdit.co.uk/reading_room/room/view_article.asp?name=../articles/5092-TM-Trade-marks-case-law.htm [Accessed 14 February 2012]. Olsen , J., 2006. Trademarks: On your marks - protect your rights. Legal Week, 14 September. Pinsent Masons, 2004. Guidance from ECJ on registration of colour trade marks. [Online] Available at: http://www.out-law.com/page-369 [Accessed 13 February 2012]. Salkever, A., 2004. Byte of the Apple. [Online] Available at: http://www.businessweek.com/technology/content/sep2004/tc20040930_9317_tc056.htm [Accessed 12 February 2012]. Sieckmann v Deutsches Patent- und Markenamt (2002) Case C – 273/00 ECR I – 11737. Smith Kline and French v Winthrop (1976) RPC 511. Terpstra, R. M., 2004. Which Buds for You? An Examination of the Trademark Dispute between Anheuser-Busch and Budejovicky Budvar in the English Courts. Temple International and Comparative Law Journal, Volume 18, p. 479 – 499. Trade Marks Act. Chapter 26. 1994 Crown copyright. Unilever pics Trade Mark (1984) RPC 155. Vennootschap Onder Firma Senta Aromatic Marketings Application case R 156/1998-2. 1999. Read More