LECTURE 4 Relative Grounds REQUIRED READING T. Aplin and J. Davis, Intellectual Property Law (OUP, 2013), Ch. 7. L. Bently and B. Sherman, Intellectual Property Law, 4 th ed. (OUP, 2014), Ch. 38. W. Cornish, D. Llewelyn and T. Aplin, Intellectual Property: Patents Copyright and Allied Rights, 6th ed. (Sweet & Maxwell, 2013) H. MacQueen, C. Waelde & G. Laurie, Contemporary Intellectual Property: Law and Policy (OUP, 2007), 612-650 FURTHER READING A. Carboni, Two Stripes and You re Out! Added Protection for Trade Marks with a Reputation [2004] EIPR 229 J. Cornwell, The Davidoff v Gofkid Case [2003] EIPR 537 B. Isaac & Rajiv Joshi, What does Identical Mean? [2005] EIPR 184 P. Frassi, The European Court of Justice Rules on the Likelihood of Confusion Concerning Composite Trademarks: Moving Towards an Analytical Approach 37 IIC 438 (2006) A. Griffiths, The trade mark monopoly: an analysis of the core zone of absolute protection under Art.5(1)(a) [2007] IPQ 312 C. Morcom, Extending Protection for Marks Having a Reputation [2003] EIPR 279 P. Jaffey, Likelihood of Association [2002] EIPR 3 G. Würtenberger, Risk of Confusion and Criteria to Determine the Same in European Community Trade Mark Law [2002] EIPR 20 A. Horton, The Implications of L Oréal v Bellure A Retrospective and a Looking Forward: The Essential Functions of a Trade Mark and when is an Advantage Unfair?, E.I.P.R. Issue 9, 2011; also available at: http://www.twobirds.com/english/documents/audrey%20horton%20offprint.pd f 1
TRADE MARKS ACT 1994 Section 5: Relative grounds for refusal of registration (1) A trade mark shall not be registered if it is identical with an earlier trade mark and the goods or services for which the trade mark is applied for are identical with the goods or services for which the earlier trade mark is protected. (2) A trade mark shall not be registered if because - (a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark. (3) A trade mark which (a) is identical with or similar to an earlier trade mark, shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark. (4) A trade mark shall not be registered if, or to the extent that, its use in the United Kingdom is liable to be prevented (a) by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade, or (b) by virtue of an earlier right other than those referred to in subsections (1) to (3) or paragraph (a) above, in particular by virtue of the law of copyright, design right or registered designs. A person thus entitled to prevent the use of a trade mark is referred to in this Act as the proprietor of an earlier right in relation to the trade mark. (5) Nothing in this section prevents the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration. 2
INTRODUCTION SECTION 5(1): THE DOUBLE IDENTITY GROUND What is an earlier trade mark? When are the marks identical? SA Société LTJ Diffusion v SA Sadas, Case C-291/00 [2003] ETMR (83) 1005 Reed Executive v Reed Business Informatics [2004] RPC 40 (CA) (Reed/Reed Business Information) When are the goods or services identical? British Sugar v Robertson, [1996] RPC 281 (treat) SECTION 5(2): CONFUSING SIMILARITIES When are the marks similar? Sabel BV v Puma AG, Rudolf Dassler Sport, Case C-251/95 [1997] ECR I-6191 The tribunal should take into account the degree of aural, visual, or conceptual similarity, as well as the inherent or acquired distinctiveness of the mark Visual, aural and conceptual similarity Muelhens v OHIM [2006] ECR I-0000 Sir Terence Conran v Mean Fiddler Holding, [1997] FSR 856 (Zinc/Zincbar) Distinctiveness The European v The Economist Newspaper [1998] FSR 283 De Cordova v Vick Chemical Co. (1951) 68 RPC 103 When are the goods or services similar? Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer, Case C-39/97 [1999] 1 CMLR 77 3
British Sugar v Robertson [1996] RPC 281 The likelihood of confusion on the part of the public, which includes the likelihood of association Who must be confused? What is meant by likelihood of confusion? Lloyd Schuhfabrik Meyer v Klijsen Handel Case C-342/97 [1999] ECR I-3819, [1999] ETMR 690 Case C-251/95 Sabel BV v Puma ag [1997] ECR I-6191 Case C-39/97 Canon Kabushiki Kaisha v Metro-Goldwyn- Meyer Inc [1998] ECR I-5507 Case C-425/98 Marca Mode CV v Adidas AG [2000] ECR I-4861 Vedial SA v OHIM, Case T-110/01, 12.12.2002 Case C-3/03 Matratzen Concord GmbH v GmbG v Office for Harmonisation in the Internal Market [2004] ECR I-3657 Case C-120/04 Medion AG v Thomson Sales Germany & Austria GmbH [2005] ECR I- 8551 Case C-334/05 Office for Harmonisation in the Internal Market v Shaker de L. Laudato & C SAS [2007] ECR I-4529 Specsavers v. Asda [2012] EWCA Civ 24 What is meant by likelihood of association? Sabel BV v Puma AG, Case C-251/95 [1997] ECR I-6191 Picasso v Picaro, [2006] ETMR 349 Proof of confusion Tine of assessment Claude Ruiz-Picasso v. OHIM [2006] E.C.R. I-643 Och-Ziff Management Europe Ltd v Och Capital LLP [2010] EWHC 2599 (Ch), [2011] FSR 11 4
SECTION 5(3) PROTECTION OF NON-ORIGIN FUNCTIONS THE ANTI-DILUTION PROVISION Reputation General Motors v Yplon Case C-375/97 [1999] 3 CMLR 427 Pago C-301/07 Reputation in the Community Similarity of marks Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld, Case C-408/01 [2004] 1 CMLR (4) 448 Intel Corp v CPM UK Ltd, [2007] EWCA Civ 431; [2007] RPC (35) 846 Intel Corp v CPM UK Ltd, Case C-252/07 [2008] WLR (D) 371 L Oreal v Bellure, [2007] EWCA Civ 968; [2008] ETMR (1) 1 Unfair advantage or detriment Unfair advantage L Oreal v Bellure, [2007] EWCA Civ 968; [2008] ETMR (1) 1 NASDAQ, Case T-47/06 (10 May 2007) C-487/07, L'Oreal SA and ors v Bellure NV and ors L'Oreal SA & Ors v Bellure NV & Ors [2010] EWCA Civ 535 (21 May 2010) Aktieselkabet af 21 November 2001 v OHIM, T-477/07 (6 Feb 2007) Miss World Ltd v Channel Four Television Corp, [2007] FSR (30) 574 Detriment to the distinctive character of the earlier mark Intel Corp v CPM UK Ltd, [2007] EWCA Civ 431; [2007] RPC (35) 846 Intel Corp v CPM UK Ltd, Case C-252/07 [2008] WLR (D) 371 NASDAQ, Case T-47/06 (10 May 2007) 5
Julius Samann vtetrosyl [2006] ETMR 75 Damage to reputation Colgate Palmolive v Lucas Bols Claeryn/Klarein, (1976) IIC 420 C.A. Sheimer (M.) Sdn Bhd s Trade Mark Application [2000] RPC 484 Souza Cruz v Hollywood SAS R283/1999-3 [2002] ETMR (64) 705 Intel Corp Inc v Sihra, [2004] ETMR 44, [2003] EWHC 17 6
1. Describe the test devised by the ECJ for establishing that a trade mark enjoys reputation. 2. Describe briefly the test applied by the E.C.J. for determining confusion. 3. Describe briefly the test applied by the E.C.J. for determining similarity between products. 4. Describe briefly the test applied by the E.C.J. for determining similarity between signs. Discuss the registrability of the following signs in respect of the U.K.: (a) Two Bears for toys. A composite mark, comprising a design of two bears tasting honey and the words Honey Pot, has already been registered in the U.K. by an unconnected entity as a trade mark, also for toys. (b) Business Leaders Express for the provision of financial information. Business Leaders Today has already been registered as a Community Trade Mark for newspapers by an unconnected entity. (c) MARS (in Roman script) for chocolate, MARS (without Roman script) is already registered in the UK for confectionery and biscuits. (d) Glasgow Learning Press for books for children. Glasgow University Press has already been registered for academic books in the U.K. by an unconnected entity. (e) Marie-Louise for magazines for women ; Louise has already been registered as a CTM for cosmetic products for women by an unconnected entity. (f) ROLEX for drain cleaner. ROLEX is already registered for watches and jewellery. (g) ZARA for garden furniture. ZARA is registered for furniture. The registered proprietor sells very expensive Italian imported sofas and does not sell garden furniture, which is a separate market. It is accepted that the consumer will not be confused. 7