Two Cases and the Development of Trade Mark Law - Case Study Example

Two Cases and the Development of Trade Mark Law Introduction The beginnings of the UK Trade Mark Law took root as early as pre-1875 and were part of Common Law. The ground for protection of marks was then based on the concept of deceit and misrepresentation, which eventually evolved into property after the passage and adoption of the first trade mark law in 1875. Subsequently, the law on trade mark saw amendments and revisions and in 1994, a new law was passed on the subject in compliance with a harmonisation directive from the European Union. The cases of British Sugar plc v James Robertson & Sons Ltd [1996] R.P.C. 281 and Executrices of the Estate of Diana, Princess of Wales Application [2001] E.T.M.R. 2, both greatly impacted on the development of trade mark law in UK. The former is a complaint for trade mark infringement whilst the latter is an application for registration under TMA 1994. British Sugar is significant because the Court had expanded the meaning of the term “distinctive character” from a mere literal analysis of the product’s description to how it is perceived by the public whilst the Diana case clarifies the registrability of signatures and famous names although the same have been left silent under the present law. 2 History of the UK Trade Mark Law Trademarks, which can constitute names, symbols or device or a combination of any of them, separate and differentiate the goods or services of traders from those of their competitors. The trademark law operates to protect a trader from unfair competition from other traders who may capitalize on the reputation and goodwill already attached to the goods and services and established through their careful cultivation through the years. Prior to 1875, UK trademarks were protected solely by common law, which was grounded on deceit and additionally by the Chancery on the basis of misrepresentation. The Common Law protection found basis in a 16th century case, JG v Samford, which held that a cloth manufacturer cannot use a mark similar to that previously used by another when the latter cloth has already gained a superior reputation (Hodkinson 1987 101-102; Dinwoodie & Janis 2008 7). Grounded on deceit, common law protected trade mark owners by determining whether the use of the same or similar design by another person was attended with intent to deceive and was likely to deceive. From the concept of trade mark protection on the ground of deceit, it eventually evolved into one of property protection when the first of the trademark laws, Trade Mark Registration Act 1875, was passed finally classifying trademarks as property. The law’s most distinguishing characteristic is the introduction of a system of registering trade marks (Dinwoodie & Janis 2008 13-14, 28). In 1938, a new Trade Mark Act was passed that supplanted the earlier law. In this version, the source function of a registered trade mark is given weight and in fact the only weight. Thus, under this law, protection was not extended to the use of the trade mark for other uses where it was used commercially. The use, for example, of the trade mark KODAK in tee-shirts was not granted protection by the courts as a mark for clothing (Colston & Middleton 2005 507). In 1984, TMA 1938 was amended to include registration of services in addition to goods but not to retail services if they are conducted by those mainly engaged in goods supply (Colston 1999 356). In 1994, a new law on trade mark was passed. The TMA 1994 was passed to accommodate and to comply with an EU Directive lowering the standards of trade mark registrability, widen the ambit of infringement and allow a more facile third party challenge to registration validity. The law also provided for the implementation of a Community Trade Mark Regulation that established a unitary trade mark for the entire EU. Finally, the law was also to put into place the provisions of the 1989 Madrid Protocol that created a system of international recognition of trade marks (Colston & Middleton 2005 502) 3 Case 1: British Sugar Plc v James Robertson & Sons Ltd, [1996] R.P.C. 281 British Sugar Plc is a food manufacturing company which produces, among others, a sweet syrup called “Treat” under its Silver Spoon mark and registered in accordance with law on 14 October 1992, specified under its registration as dessert sauces and syrups under Class 30. “Treat” comes in a range of various flavours. The Silver Spoon Treats are particularly used as toppings for desserts and ice cream but it is as an ice cream topping where the product is more famous cornering about 50% of the market. In groceries, they are displayed in the section for ice cream and dessert toppings with other brands of the same kind. On the other hand, James Robertson & Sons Ltd manufactures jams and preserves and in 1995 launched a new line of sweet spread, a toffee flavoured one, packed in oval jam jars and labeled “Robertson’s Toffee Treat” with the word “Robertson’s” appearing clearly in white capital letters and “Toffee Treat” in some kind of fancy script. The product is usually displayed in groceries and supermarkets in the jams and preserves sections away and separate from the section where Silver Spoon Treats are displayed. British Sugar eventually sued Robertson for infringement of trade mark (British Sugar Plc v James Robertson & Sons Ltd, [1996] R.P.C. 281). The issues in this case are: whether or not “Robertson’s Toffee Treat” and “Silver Spoon Treat” belong to the same specifications; whether or not defendant must use mark as a trade mark to fall within the ambit of s 10(1) or 10(2) of the Trade Marks Act 1994 and if yes in either, whether trade name infringement lies; whether defence or not lies under s 10(2), and; whether registration by plaintiff is valid (British Sugar Plc v James Robertson & Sons Ltd, [1996] R.P.C. 281). The Court ruled that there was no trade mark infringement because first, the two products are not of the same specification. The Court held that, unlike the “Silver Spoon Treat” which has a specification as dessert sauces and syrup, “Toffee Treat’s” is jam and preserve despite what its label says and the fact that it can be also used as a dessert or sauce. This is because the latter’s primary use is as jam, packed as a jam in a jar jam, displayed in the spread section in supermarkets and groceries and used mainly by consumers as jam. The Court held that in determining trade name infringement, resort must be made to the use of the product in the trade and in this case, “Toffee Treat” is not a dessert or sauce. However, it is not important for infringement to lie that the mark allegedly infringing is also used as a trade mark by the alleged infringer. What suffices is the registered trade mark is used in the course of the business. Secondly, no confusion of products ensued for the use of the defendant of the word “treat” in their product because the two products are not only dissimilar but are also used and presented in dissimilar fashion (British Sugar Plc v James Robertson & Sons Ltd, [1996] R.P.C. 281). 4 Executrices of the Estate of Diana, Princess of Wales Application [2001] E.T.M.R. 25 In this case, the executrices of the estate of the late Princess Diana applied for the registration of “Diana, Princess of Wales” as a trade mark of various goods and services under the Trade Mark Act 1994. To find support for such application, the applicants conducted a dual survey: the first, a nationwide survey of offices of bankers, solicitors and accountants in the cities, and; the second, on a London housing estate. The surveys asked the respondents of their perception of the title “Diana, Princess of Wales” and many associated it to a charity or a fundraising. The results suffered on two points: it prods respondents to guess, and; it could suggest only goods but precluded services. The application was denied on the ground that it failed to meet the requirements of registrability as defined s 1(1) and lacks distinctive character as laid down is s 3(a) and (b), respectively. Under the first, a trade mark is required to be capable of being represented graphically to distinguish goods from other goods. 5 Conclusion: The Impact of the Two Cases to UK Trade Mark Law The significance of the British Sugar Plc v James Robertson & Sons Ltd, [1996] R.P.C. 281 to the development of the trade mark law in the UK is that it expanded and broadened the word distinctiveness under section 3(b) of the TMA 1994 to acquired distinctiveness or distinctiveness that a certain good has acquired in the market rather than confining the meaning of the word to the specifications as described in the registration and classification The court gave importance to how the public perceive the product rather than relying only on the literal description of the product by the manufacturer (Hutton 2009 130). Thus, although the Robertson’s Treat identified itself as, among others, a dessert in its label, the Court gave credence to the fact that its presentation and appearance leans towards presenting itself as a jam or preserve and that the public uses and sees it as such. Previous to this case, any reference to the distinctive character mentioned in s 3(b) which constitutes the lack of as one of the grounds for rejecting a trade mark application On the other hand, the application case of the executrices of Diana attempting to register the name “Diana, Princess of Wales” to refer to a line of goods and services is also of a significant impact to the development of UK trade mark law because it clarified the registrability of famous names as trade mark or signature marks. Previous to the Diana case, the case law on the matter was rather hazy. TMA 1938 presumed that signature names were registrable but under TMA 1994, the law was silent on the matter. In the case however, of ELVIS PRESLEY Trade Marks [1999] RPC 567, which was decided after the passage of the TMA 1994, the Court held that the names “Elvis” and “Elvis Presley” signature marks were registrable even though a prior trade name Elvis Presley Enterprises Inc. was registered. The Court’s ratiocination for the grant was that the signatures are distinct and capable of being distinguished from the goods of the latter under that trade mark (Beverley-Smith 2002 39). The Diana case clarified the issue on registrability of signatures. Whilst the Elvis case which was decided under TMA 1994 allowed registration, the Court refused registration in the Diana case on the ground that the mark identifies only the subject matter of the goods but not a particular trade source. The name does not guarantee, for example, that the goods will be under the control of a single entity who will regulate and produce all the goods sold under the mark. The Diana case has consolidated the ruling of the Court in the TARZAN case which was decided during the applicability period of TMA 1938, in which the application for registration was rejected on the ground that the mark referred expressly to the subject matter and not to the source (Beverley-Smith 2002 40). References: Beverley-Smith, H. 2002 The Commercial Appropriation of Personality Cambridge University Press, 2002 Colston, C. 1999 Principles of Intellectual Property Law Routledge. Colston, C. & Middleton, K. 2005 Modern Intellectual Property Law Routledge Cavendish. British Sugar PLC v. James Robertson & Sons Ltd., 1996 R.P.C. 281 (Chancery Division) (U.K.). Dinwoodie, G. & Janis, M. 2008 Trademark Law and Theory: A Handbook of Contemporary Research Edward Elgar Publishing. Executrices of the Estate of Diana, Princess of Wales Application [2001] E.T.M.R. 25. Hodkinson, K. 1987 Protecting and Exploiting New Technology and Designs Taylor & Francis. Hutton, C. 2009 Language, Meaning and the Law Edinburgh University Press. Michaels, A. 2002 A Practical Guide to Trade Mark Law Sweet & Maxwell. Trade Mark Law 1994. Read More