Intellectual Property Law - Essay Example

Intellectual Property Law Passing off was established a long time prior to the registration of trade marks as a common law tort. Its original intention involved the protection of businessmen and traders, allowing them to act on fellow traders who made attempts to use their established goodwill or reputation through use of a similar get up or mark to the original trader’s1. In order for the trader to bring action against another for passing off, they needed to establish resulting damage, misrepresentation, and goodwill. A statutory system was introduced, in 1875, to register trademarks whereby trademark registration acted to indicate a product’s origin or identity, while also protecting the mark from use by other traders apart from the one who registered the mark2. This solved problems that had arisen regarding showing ownership to the mark through the establishment of goodwill necessary for pass-off action. The trademark directive finally got implementation into law with 1994’s Trade Mark Act (TMA) that holds to date. It states that the proprietor of a trademark that has been registered possesses exclusive rights that are infringed upon through the use of the trade mark without their consent in the UK3. The TMA sought to widen the infringement of trademark scope through allowing traders to register any sign that could be graphically represented and capable of distinguishing one’s undertaking from another traders undertaking4. With the advent of the Trade Marks Act 1994, it has been suggested that the common law tort of passing off has become largely superfluous in the protection of identifying insignia. This paper will seek to show that this is not eh case, especially since it still acts as a fallback option when the TMA faces limitations, while it also fills the gaps in TMA section 10. One of the reasons why the TMA has been seen to render passing-off as superfluous in protection of identifying insignia, is that it has given a broader definition to what a trademark that can be registered constitutes. This in effect has allowed the registration of most things that can be used as a distinguishing element during passing off5. However, the expanded definition provided by the TMA do not render passing off completely superfluous in English law. This is especially since it is still the main action cause for those who, for one reason or another, do not register their trademarks, as well as for those marks that are non-registerable because of the limitations of TMA. In addition, even though the TMA extends the protection scope for trademarks, there are gaps that leave passing off as the only redress in common law. In this case, the law has had to come up with a dual protection system6. There was a similar stance taken in the P&G v OHIM case when dealing with trademarks and descriptive words. In this case, P&G wanted “Baby-Dry” to be registered as a nappy trademark. However, this mark was held to lack descriptive words since it was an invented term by all standards and was not part English as a language, which made its use less likely as a descriptive term7. While this provides for a narrow interpretation of words that are descriptive, its extremity is not as significant as that found in passing off in common law. This is because some cases involving passing off are suggestive of the fact that simply designating characteristics is not sufficient as compared to direct designation for statutory trademark law of a statutory nature8. Therefore, there are words that cannot be considered descriptive under passing off law, but are recognized under the Trade Mark Act. The wider protection under passing off means that there are areas in which its broader protection will have a role to play, in spite of the presence of registered trade mark systems. Passing off also plays an essential role despite the advent of the Trade Mark Act of 1994, especially with regards to identifying insignia that carries the name of a place. 1994’s Trade Mark Act prevented the trademark registration where the name could be an indication of where the product originates9. This aspect is subject to qualification that the name had not acquired a character that was distinctive resulting from its use. In Windsurfing Chiemsee v. Huber, the judgment held that the only time a geographical name acquires distinctive character is if the trader has made intensive and long-standing use of the name through application of registration10. The test under passing off law is stricter as was demonstrated in Chelsea Man Menswear v. Chelsea Girl, in which action under the passing off law proved successful. A trader using the name Chelsea Man sued another trader who marketed his products under the same name. In spite of the fact that it was easy to mistake the product’s origin, the need to show an intensive or long-standing use was not necessary11. Therefore, a passing off action could prove successful where using trademark law to pursue action would be probably unsuccessful. Another issue that necessitates the consideration of passing off with regards to identifying insignia is the use of personal names, especially those of celebrities. Passing off traditionally held that a man should have the ability to use his name as a mark and where there was confusion; it was a lesser evil for a man to be deprived of an inherent and natural right12. However, reluctance to allow defendants to use their own name in defense has increased with the Trade Mark Act. One example of this is the Asprey and Garrard v. WRA Guns, where judgment held that where confusion arises between traders using personal names in their businesses and one had registered it as a trademark, defense about the name being a personal one is a necessity13. This judgment suggested that passing off could confer exclusivity to a personal name even where the personal name was also that of the defendant. However, the Trade Mark Act limits the court’s requirement to use passing off because Section 1(1) holds that a registerable trade name is any sign that can graphically be represented to distinguish an individual’s products from the products of another individual14. This is one example of why it has been suggested that the TMA has made passing off superfluous in the protection of identifying insignia, especially because it extends the limits of what can be referred to as trademark. However, the broader meaning of trademarks as given by the TMA does not mean that it is superfluous, as seen by its presence as a fall back option for marks that were not registered or renewed and were potentially registerable. If a trader has already created goodwill but is yet to register a mark that could potentially be registered or has not renewed it, passing off supports that the trader should still be protected from another trader benefiting from it15. Renewal of the trademark is required under the Trade Mark Act, which holds that registration of a trademark will only be valid for a maximum of ten years. However, a trader must always seek to register and renew a trademark since the outcomes of a passing off action where they fail to register or renew are more uncertain compared to a situation where their trademark has clearly been infringed on. There is a concerning issue, however, in that the latter position, which could cause more significant damage to the trader who owns the identifying insignia than to the former, is not protected as much16. Passing off, therefore, plays a critical role in this case with regards to goodwill protection. The common law’s position in such a circumstance becomes clearer on examining the decision in David v. Gofkid at the ECJ. In this case, the contention was whether the Directive’s protection for instances in which products were dissimilar could also be used to instances in which they were the same17. The ruling held that Article 5(2) of the Directive portended illogical results for different member states and must be interpreted to mean that entitlement of states to protect reputable registered identifying trademarks, where the identifying insignia was similar or identical to another should also be extended to products that were similar to those the registered mark covers. This ruling does not mean that there are extended interpretations for provisions that incorporate the article domestically18. However, it states that states will have to use discretion in providing protection in cases like these. These types of provisions are only achievable through the making of an amendment in legislation touching on trademarks or through the use of passing off19. Therefore, until the Trade Mark Act has been reformed to cover these extensions, applicants will have to rely on passing off to make successful actions in protecting their products from the use of identifying insignia similar to theirs on non-confusing but damaging products. For instance, in Taittinger v. Allbev, an alcoholic beverage going under the name Elderflower Champagne was not originally from the region of Champagne. By bringing action under the passing off law, the plaintiffs were successful as the court rules that, while the likelihood of confusion was low or non-existent, the identifying insignia did bring damage to Champagne’s associated good will. This was due to the fact that it resulted in erosion or blurring of Champagne’s identifying insignia’s uniqueness, which could result in the debasing of Champagne house’s exclusive reputation20. Where the tarnishing of a business’ good will is under this type of risk, it becomes important to have passing off as a fall back option for protection. This can be seen in IRC v. Muller where goodwill is defined as an attractive force including identifying insignia, which brings clients21. Therefore, passing off is still essential in these circumstances for the protection of goodwill. Following from this discussion, the common law tort of passing off, to conclude, is still a critical type of protection of a trader’s identifying insignia. This is in spite of the introduction under the Trade Mark Act of 1994 of a registered trademark protection system. While the protection offered by the Trade Mark Act has a broader scope than what was offered under the passing off law, the act still possesses limitations that can only be rectified by passing off before they are amended. In addition, the Trade Mark Act’s gap in the 10th section requires that common law is used, including the provisions made by passing off. Bibliography G Kwan, Infringement of Trade Marks and Passing Off by Dealing in Genuine Articles [2003] European intellectual property review 45, 45 H Norman, Intellectual property law (1st, Oxford University Press, Oxford 2009) 34, 36 H Rangel-Ortiz, The Tort of Passing Off: Life after the UK Trade Marks Act 1994? [2008] Trade Mark World 25, 27 K Lau, Passing off of Well-known Trade Marks [2010] Singapore Academy of Law Journal 426, 428 L Sebastian, H Hemming, S Sebastian, The law of trade mark : and their registration and matters connected therewith, including passing off and goodwill (5th, Stevens and Sons, London 2009) 56 M Shuilleabhain, Common-Law Protection of Trade Marks - The Continuing Relevance of the Law of Passing Off [2003] international review of industrial property and copyright law 722, 722 N Caddick, B Longstaff, C de Mauny, A Wood, J Gyngell, A users guide to trade marks and passing off (2nd, Bloomsbury Professional , Haywards Heath, West Sussex 2012) 81 N Dagg, G Bennett, C Jervoise, R Dickinson, S Khwaja, Patents; Copyright and Designs; Trade-marks and Passing Off [2003] Intellectual Property Journal 605, 609 P Narayanan, The law of trade marks and passing off (4th, Calcutta, Eastern Law House 2011) 61, 63 W Alberts, Aspects of passing off in a statutory context in English and South African law [2009] SA Mercantile Law Journal 645, 650-651 Read More