The European Trademark Law and Some Dissimilarity With the ECJ - Research Paper Example

 Introduction: Legal frameworks throughout the world defend certain commonly acknowledged types of intellectual property like patents, copyright, trademarks etc. The last 50 years have seen a prototype transfer whereby intellectual assets such as intellectual property (IP), human capital and organisational capacities are considered as essential to business operation and economic expansion. A rising share of the market value of firms seems to come from their intellectual assets,1 and firms are running these assets more dynamically to key out extra ways of drawing out value from them.2 IP in the form of patentable technology, legally protectable trademarks and designs, copyright and others have progressively become the most crucial assets, not only for many of the worlds largest companies, but also for small and medium enterprises (Schweihs, 2002). Intellectual property (IP) is a term which refers to a number of discrete kinds of legal monopolies over conceptions of the mind, which can be either artistic or commercial. IP also includes the related areas of law (Raysman et all, 2008). A variety of intangible assets are given certain special rights under the IP law. The most common kinds of intellectual property include trademarks, copyrights, industrial design rights, patents, and trade enigmas in some jurisdictions. According to Sherman and Bently (1999), “The British Statute of Anne 1710 and the Statute of Monopolies 1623 are now seen as the origin of copyright and patent law respectively.” Definition of IP Originality is one of the most important terms which are related to copyright. Presently the term ‘originality’ is used by law as a touchstone in evaluating when and why something can be copyrighted. England’s conventional criterion for originality was a Lockeanderived industriousness criterion, according to which the work must spring up from the author at the same time be the product of more than nominal skill and labour. This standard was developed in Walter v. Lane,3 and many other cases. Thus, originality based on fact is almost certainly injured with issues which cannot be solved or cannot even be replaced for the present legal meaning of what makes up an original work. An option to defining original will be more appreciated with reference to the nature of authorship. This is truly a region in which the law can be changed (Ian Hoare, 2001). According to Swannell (1986) original means “The common conception of the meaning of ‘original’ is something that is new, not done before. In fact, ‘original’ is defined as “existing from the first; primitive; earliest; not imitative or derived; creative.” Meaning of trade mark Trade marks are a branch of our daily life and culture which helps us to make out the products and services which we look for. Trade marks are the key for companies to sell and publicise their commodities and services. Trade marks are repeatedly taken, in their daily sense, to signify text and logos, or fundamental signs, which, by special usage, become linked with a particular brand. Trade marks can, yet include colours, sounds and even scents. According to Kerty (1951), “at the time of the introduction of legislation regarding trade marks during 1875, it was accepted that property in a trade mark existed from the moment that it was first used on goods within the market.” According to Nicholson’s Application4 “rights were obtained through mere use. Kerty states that the judgment differentiates the case of a mark which is prima facie not distinct and such a mark should not be a trade mark until reputation in the market helps to denote the goods of the trader using it. In the case of Reddaway v Banham5 the question of property in a trade mark came up. In this case Lord Herschell had a doubt as to whether it was apt to speak about property in trade mark. In Burberrys v J.C.Cording6 it was concluded that property only exists in goodwill and if a mark is used then it will be damaged. Later on in the case of Spalding v Gamage7 this opinion was confirmed. Trade mark infringement Trademark infringement is a breach of restricted rights devoid of the approval of the trademark possessor or any licensee. Trademark infringement mainly takes place when a person applies a trademark which is either a sign or a pattern, which is same as or is confusingly alike to the products possessed by the other party. The trademark possessor may begin a legal proceeding against the party that infringes his trademark. According to Section 108 of Trade marks act “(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because. (b) the sign is similar to the trade mark 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”. The current case of Wistbray Ltd v Creative Nature Ltd9 (2005) stresses that the Court will consider the overall idea of a sign to decide whether it contravenes a trade mark. Albeit trademark law principally defends the trademark as a suggestion of origin, trademarks provide other purposes as well. A trademark operates as a warrantee of a uniform level of certain features, like quality, so the public when buying "will get the product which it asks for and wants to get." in addition, manufacturers and merchandisers use trademarks to promote goods (Rudolf, 1993). Infringement of trademarks comes down under the minimum level of fair competition the government imposes in the marketplace. Infringement of trademarks is but a facet of unfair competition as stated in the case of United Drug Co. v. Theodore Rectanus Co.10 Since unfair rivalry is a tort, as laid down in the case of Fry v. Layne-Webster Co.,11 trademark infringement automatically becomes a tort as well (McCarthy, 1994). Furthermore, some courts consider trademark infringement as an honourable and moral violation of marketplace standards. One court states: "The fundamental purpose of the law in regard to trademarks is to prevent one person from passing off his goods or services as those of another. Its over-all objective is to promote fair play" (Landes and Posner, 1988). In the case of National Chemsearch Corp. v. Uni-Search Corp12 when a defendant deliberately imitates another's trademark to trade on its good will, the court submits its "sense of fundamental fairness is offended" by the defendant's feeble attempts to explain its actions and the entire episode which is a sad commentary on business morality" (Landes and Posner, 1988). The Trade Marks Act 1994 sets a trade mark as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”13. S. 10(4) of the Trade Marks Act, 1994 provides that: “For the purposes of this section a person uses a sign if, in particular, he— (a) Affixes it to goods or the packaging thereof; (b) Offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign; (c) Imports or exports goods under the sign; or (d) Uses the sign on business papers or in advertising” Under the above circumstances there is a use of the mark. But the question remains as to whether it unavoidably translates into infringement? At this point it is apt to look at another significant proviso that is s 10(5), which reads as follows: “A person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, shall be treated as a party to any use of the material which infringes the registered trade mark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor . . .’ With regard to s 10 (5), and s 10(4) (a) and (d), the following was submitted in Beautimatic International Ltd v Mitchell International Pharmaceuticals Ltd14: “It is also necessary to consider section 10(4) (a) and 10(5). Although the opening words of section 10 (5) do not precisely mirror those of section 10(4) (a) and (d), it seems to me fairly clear that it is intended to extend the ambit of section 10(4) (a) and (d) to ‘‘a person who applies a registered trade mark to material intended to be used’’ for the purpose described in section 10 (4) (a) and/or (d), although it gives such a person a special defence, namely that set out in the last part of section 10 (5).” Thus it can be inferred that innocence is a defence as far as s 10(4)(a) and (d) are concerned. Put differently, it would avail a party to establish that he was not aware of even had no reason to believe that the particular goods were contravening products. With regard to s 10(4) (c), it was held in Waterford Wedgwood plc v David Nagli Ltd15 that “absence of knowledge of the fact that goods are infringing is not a defence to an infringement action.” Now only s 10(4)(b) is left and this links directly to the problem under discussion. If the Waterford decision is enforced to the latter, the remainder of s 10(4), it is as good as applying the eiusdem generis rule on the basis that s 10(4)(b) and (c) are both provisos which deal with the sale of goods, that fault is also not necessary for s 10(4)(b). Likelihood of Confusion In Omega SA v OHIM16, the Court of First Instance (CFI) preserved a resistance against a request by watchmaker Omega SA to record a symbolic trademark that included the Greek symbol for omega and the word ‘omega’. The CFI remarked clearly that it was not possible for OHIM to consider the terms of a private agreement in conflict legal proceedings founded on Article 8(1) (b) of the Community Trademark Regulation. Omega Engineering charged the opposition on the footing of likelihood of confusion with its original national OMEGA marks and indicated that Omega SA’s application violated a co-existence arrangement between the parties. The co-existence agreement was that Omega SA assured not to register the trademark for goods applied for evaluating variable parameters. The court preserved the opposition, but mentioned that the arrangement had no holding on the opposition proceedings and that Office of Harmonisation for the Internal Market (OHIM) could not decree on a conflict between nationally registered marks. In Shaker di L Laudato & C Sas v OHIM17, the ECJ annulled the CFI’s conclusion on the footing that the lower court neglected to carry out a global judgment of the likelihood of confusion by keeping apart its judgment of a single factor of the mark. The facts of the case are that Shaker wanted his mark which was a dish adorned with lemons and the word ‘limoncello’. The CFI believed that the overriding element of Shaker’s mark was the ornamented dish, and that as a result the marks were visually not same. The ECJ concluded stating “that due to the dominant element of the decorated dish, there was no likelihood of confusion with the earlier word mark.” The OHIM Board of Appeal invoked the ECJ, arrogating that the CFI had wrongly enforced the rule of global judgment of likelihood of confusion. The ECJ noticed that it is settled case law that the fair consumer usually comprehends the mark as a whole and does not examine its several points. Thus to carry out a global assessment would mean more than having one element of a complex mark and comparing it to another mark. The ECJ directed that the comparison should be conducted by testing each of the marks which is dispute on the whole and then analyse if the entire notion conveys to the appropriate public by a complex trademark and does it dominate by one or more of its elements. The judgment in additional elucidated the rationales relevant to the likelihood of confusion study when complex marks are at issue. Evolutions in European Trademark Law 15 years after the Trade Marks Directive 89/104 initially wanted to reconcile national trademark laws all over the European Community, many doubts still persist as to its interpretation. Some of these doubts were addressed in 2008, either in the settings of the directive itself or that of the Community Trade Mark Regulation, which furnishes a matching system for the registration of trademarks so that it could lay a uniform effect all through the European Community and for their social control (Cook, 2009). The European Court of Justice (ECJ) had to consider two trade mark cases last year. Both the cases were from English courts. One was O2 and another v Hutchinson18 which was with regard to the extent to which trademark law can be applied to obstruct other than legitimate relative advertising. The other one was Intel v CPM,19 which addressed the vaguest issue of dilution in trade mark. Neither case went in favour of the trademark owner (Cook, 2009). In the case of O2 and others v Hutchinson the ECJ adjudged that it is a general principle through which a registered trademark owner cannot stop a third party from using the same sign or similar to, his mark, in a relative ad which meets all the considerations, as established in the Comparative Advertising Directive. This directive is now integrated in the consolidating Misleading and Comparative Advertising Directive 2006/114 which permits comparative advertising in the European Community. on the other hand, it also directed that the prerequisite of the Comparative Advertising Directive is that the comparison should not generate confusion in the marketplace amongst the advertiser and a challenger or among the advertiser's trademarks, trade names, or other separating marks, goods or services with those of a competitor. The comparison should not be met in conditions where article 5(1) (b) of the Trade Mark Directive would put off the use of a sign matching with, or similar to, a registered trademark since there was a probability of confusion on the part of the public (Cook, 2009). It then examined if a comparative advertisement in spite of satisfying all the other necessities of the Comparative Advertising Directive, could ever contravene a registered trademark under article 5(1) (b) of the Trade Mark Directive. The court then decided that comparative advertising was not infringement of trade mark unless and until it does not develop any confusion on the part of the public. Thus it is a rare case in which trade mark law is used to prevent comparative advertising (Cook, 2009). In Intel v CPM the ECJ has formulated Community law additionally in the internationally arguable issue of trademark dilution. The dilution term cannot be found under the EC trademark law. But the attention has been concentred on article 5(2) of the Trade Mark Directive (to which article (9)(1)(c) of the Community Trade Mark Regulation matches), which provides the owner of a trademark with a repute and a right to put off another "using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered... where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark". This is in corresponding link under the circumstance of validity, to article 4(4) (a) of the directive and article (8) (5) of the rule, through which a more previous application for registration of a mark can effectively be disputed if it corresponds to the same relationship to an earlier trademark with a repute (Cook, 2009). Thus in the setting of infringement an essential facet of this proviso, in disparity to the more conventional bases of infringement for like goods and services under article 5(1) (b) of the directive (and article 9(1)(c) of the regulation), is that it enforces only to use in relative to goods and services that are unlike from those for which the trademark is registered. Thus the ruling tries to serve the need to safeguard a trade mark reputation against some kinds of destructive use which does not result in any confusion on the part of the public (Cook, 2009). Honourable Laddie J, In Compass Publishing BV v Compass Logistics Ltd 20held that “It is frequently said by trade mark lawyers that when the proprietor's mark and the defendant's sign have been used in the market-place but no confusion has been caused, then there cannot exist a likelihood of confusion under Art.9.1 (b) or the equivalent provision in the Trade Marks Act 1994 (‘the 1994 Act’), that is to say s.10 (2). So, no confusion in the market-place means no infringement of the registered trade mark. He further adds that “This is, however, no more than a rule of thumb. It must be borne in mind that the provisions in the legislation relating to infringement are not simply reflective of what is happening in the market. It is possible to register a mark which is not being used. Infringement in such a case must involve considering notional use of the registered mark. In such a case there can be no confusion in practice, yet it is possible for there to be a finding of infringement.” Honourable Laddie J, In Compass Publishing BV v Compass Logistics Ltd continues “Similarly, even when the proprietor of a registered mark uses it, he may well not use it throughout the whole width of the registration or he may use it on a scale which is very small compared with the sector of trade in which the mark is registered and the alleged infringer's use may be very limited also. In the former situation, the court must consider notional use extended to the full width of the classification of goods or services. In the latter it must consider notional use on a scale where direct competition between the proprietor and the alleged infringer could take place.” Conclusion A vast quantity of trademark cases have been brought to light and it is not possible to keep in mind of the developments. The assignment actually highlighted and in reality brought to light a few key areas of the European trademark law and some dissimilarity with the ECJ. For instance, it is now clear that OHIM has no concern in trademark coexistence agreements amongst parties to an opposition. It was held that only the national courts have the proper jurisdiction to decide on such cases. References 1. Cook, Trevor. ”Evolutions in European Trademark Law.” Retrieved from 2. Brad, Sherman; Lionel Bently, 1999. The making of modern intellectual property law: the British experience, 1760-1911. Cambridge University Press. p. 207. 3. http://www.out-law.com/page-10104 retrieved on 29th April, 2010 4. http://www. whoswholegal.com/news/features/article/12862/developments-european-trademark-law on 29th April 2010. 5. Ian. Hoare, 2001 “Originality” in Copyright Doctrine, Intellectual Property Law (LW556). 6. Kerty, 1951, “Law of Trade Marks”. Sweet & Maxwell, London 7. Landes, William, M and Posner, Richard A. 1988. “The Economics of Trademark Law, 78 Trademarks” pp. 267 to 272 8. McCarthy, Thomas, J., 1994. “McCarthy on Trademarks and Unfair Competition”. 9. Richard Raysman, Edward A. Pisacreta and Kenneth A. Adler. 1999-2008. “Intellectual Property Licensing: Forms and Analysis”. Law Journal Press 10. Robert P Schweihs. 2002. “Valuation of Intellectual Property is the focus of the New Accounting Guidelines”, 14 (5) Intellectual Property and Technology Law Journal 6 11. Rudolf, Callmann, 1993. “The Law of Unfair Competition, Trademarks, and Monopolies.” š 17.01 12. Swannell, J. (Ed.) “The Little Oxford Dictionary” 6th Ed. (1986) Clarendon Press, page 376. 13. Trade Marks Act, 1994 Read More