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61 Cards in this Set
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Warnink v J Townend (Advocaat) |
Requirements for passing off: 1. Misrepresentation2. Made by a trader in the course of trade 3. To prospective customers of that trader or ultimate consumers of goods or services supplied by that trader 4. Which is calculated to injure the business or goodwill of another trader (reasonably foreseeable consequence) 5. And which causes actual damage to a business or goodwill of the trader by whom the action is brought
Damages in extended passing off Loss of trade Damage to reputation Dilution of the Advocaat term |
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Reckitt & Colman v Borden (Jif Lemon) |
Requirements for passing off: 1. The mark has to have goodwill associated with it2. There must be a misrepresentation 3. The misrepresentation damages the goodwill of the claimant
Goodwill can be associated with distinctive packaging
Misrepresentation due to source of product - can be anonymous source (i.e. public relies on a particular brand name but there is little public awareness of the identity of the proprietor) |
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Maxwell v Hogg |
Pre-trading goodwill Not found in this case - Maxwell advertised a magazine pre-launch in Hogg's publication. Hogg then launched their own magazine under the same name before Maxwell. Court ruled Maxwell had no goodwill as no trading |
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BBC v Talbot Motor |
Pre-trading goodwill Evidence of existing goodwill found as a result of market research and extensive advertising on TV/radio/print "some 1.2 million of the population knew of BBC's CARFAX" |
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Sheraton v Sheraton Motels |
Goodwill of foreign traders Sheraton Hotels had not hotels in UK but court affirmed existence of goodwill through bookings made through UK office EVIDENCE OF BUSINESS ACTIVITY |
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Bernardin v Pavilion
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Goodwill of foreign traders
Claimant was proprietor of Crazy Horse Saloon in Paris. Defendant opened place of same name in London. No injunction awarded - even though claimant had distributed leaflets on England, no evidence that there were English customers of Paris establishment. NO BUSINESS ACTIVITY |
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Anheuser-Busch v Budejovicky Budvar |
Defendant started selling "Budweiser Budvar" in the UK At the time plaintiff's product (Budweiser beer) was known in UK but only sold on US Forces bases. Court ruled no goodwill in UK as not available for general purpose. MERE REPUTATION |
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Reddaway v Banham |
Goodwill in a descriptive term - trader needs to show that the words have acquired a secondary meaning of goods or services of which they are the source. Claimant made machinery belts from camel hair, competitors did too but did not use the phrase camel hair, therefore court ruled that Reddaway had goodwill from the term |
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Scandecor Development v Scandecor Marketing |
Ownership of goodwill If contractual agreements between companies expires, goodwill belongs to the person who carried out the trading activity in the territory, not necessarily parent company |
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Spalding v Gamage |
Misrepresentation as to quality Defendants sold plaintiff's disused footballs as newly improved models Court ruled that this counted as misrepresentation despite not misrepresenting the source of product |
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Colgate-Palmolive v Markwell Finance |
Misrepresentation as to quality Colgate sell cheap low quality toothpaste in Brazil (availability of local ingredients). However mark and packaging were same. Markwell imported to UK and sold - said Colgate were at fault for misrepresenting quality by using same packaging. However court ruled that Markwell had made a false representation to public that Brazilian toothpaste was the same quality as UK toothpaste. |
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Harrods v Harrodian School |
Misrepresentation that Plaintiff has control or responsibility over Defendant's Goods or Services Harrods refused injunction over prep school naming. Connection must be one likely to be made by public. Belief that plaintiff has sponsored defendant will not give public impression that there is some connection between the traders Misrepresentation may target public at large or narrower consumer circle (in this case parents of prospective pupils)
Damages Dilution of brand name not found here - "no danger of Harrods becoming a generic term for a retail emporium in luxury class" especially when used in connection with a school
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Bristol Conservatories v Custom Built |
Reverse passing off Defendant's catalogue of products had pictures of plaintiff's conservatories - claiming benefit of another trader to enhance own reputation. Court of Appeal held that defendant had made a misrepresentation that its goods were of same quality as claimant's. |
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McDonalds v Burger King |
Comparative advertising Advertising that mentions another trader's goods or services could be misrepresentation as public could interpret it as an improved version of product |
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BT v One In A Million |
Cybersquatting is an actionable misrepresentation - likely to make people think registrant is connected with owner of goodwill in domain name. Also domain name registration in this case was ruled as instrument of fraud - intention of threatening dishonest use
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Lever v Goodwin |
Providing deceptive goods is also actionable misrepresentation even if defendant is not directly selling goods Defendant argued that they sold goods to retailers who were not confused - court denied that they could escape liability in this way |
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Elvis Presley Trade Marks |
Personality merchandising Court ruled that public were unlikely to think (or care) that Elvis Presley name applied to toiletries and perfumes indicated any connection with the Presley estate |
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Mirage Studios v Counter-Feat Clothing |
Character merchandising Regarding cartoon or television character representation on goods, court ruled public likely to think this was as the result of a license granted by owner of copyright - therefore a misrepresentation n.b. copyrighted part seems crucial here
Damages Loss is in royalties from both goods and potential license agreements (market not exclusive) Loss of control over quality of garments - therefore loss in reputation |
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Rihanna v Arcadia |
Personality merchandising Court ruled that there was a misrepresentation due to the target market - and similarity to Rihanna's newest album cover |
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Factors for determining if misrepresentation is deceptive
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i) strength of public association with claimant's sign
ii) similarity of defendant's sign iii) proximity of fields of business iv) location of fields of business v) characteristics of market vi) intention of defendant vii) disclaimer viii) parody or satire |
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Bollinger v Costa Brava Wine |
Extended passing off Use of 'champagne' term by defendant. Court recognised that a group of traders may share goodwill in a name that is distinctive of a certain class of goods. Defendant's wine was not produced in Champagne region and therefore not champagne. Therefore misrepresentation, described deliberately with the object of acquiring sales through goodwill of champagne label. Ruled as deceptive as there was considered to be a not insignificant number of people who would be misled.
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Fage v Chobani |
Extended passing off Chobani yoghurts were made by straining method but not made in Greece. Held liable for passing off |
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L'Oreal v Bellure |
Passing off Bellure manufactured smell-alikes of L'Oreal perfumes. Smells were not trademarked. L'Oreal submitted that fragrance had goodwill however court ruled that no suggestion that anyone had been misled by similarity of fragrance. L'Oreal also tried to say they were instruments of deception - that some vendors of product would make false representations due to smell-alike quality. Judge ruled that instruments of deception must have some quality themselves that deceives (e.g. packaging or name). Packaging in this case different. Claimants finally tried to say that it was a form of unfair competition. Rejected by courts as being unnecessary, undesirable and inappropriate. |
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Trade Marks Act 1994 Section 1(1) |
Absolute grounds A trade mark means any SIGN capable of being REPRESENTED GRAPHICALLY which is CAPABLE OF DISTINGUISHING goods or services of one undertaking from those of another. |
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Philips v Remington |
There is no class of marks having a distinctive character by nature or by use made of them which is not capable of distinguishing goods or services - i.e. no class of marks which is a priori excluded from protection
Capable of distinguishing is preliminary requirement (assessed before distinctive character). However if a mark has distinctive character it is capable of distinguishing.
For an otherwise descriptive word to be registerable, it must have, in practice, displaced its ordinary meaning
Shape necessary to achieve a technical result Cannot register shapes whose essential characteristics perform technical function, result that exclusivity would limit possibility of competitors supplying a product incorporating such a function, or at least limit their freedom of choice in regard to technical solution (the mere fact that technical function can be achieved by more than one shape does not render it registerable) |
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Sieckmann |
Criteria for graphic representation i) clear ii) precise iii) self-contained iv) easily accessible v) intelligible vi) durable vii) objective
Registration of smells In this case registration was sought for the smell of cinnamon; verbal description, chemical formula and sample of smell provided. However court indicated these would not meet criteria. Deposit of sample not graphic representation, or durable/stable. Chemical formula not clear, precise or intelligible. |
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Libertel v Benelux |
Graphical representation Registration of single colours Sample of colour held to be not durable. Verbal description would also not satisfy the criteria. Designation using internationally recognised identification code MIGHT be considered to constitute a graphic representation and meet Sieckmann criteria (in combination with sample and description). Colour also unlikely to have distinctive character |
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Nestlé v Cadbury |
Graphical representation Registration of single colours Cadbury Pantone 2685C applied to whole visible surface or being the predominant colour of the packaging of the goods. Court of Appeal ruled this introduced a multitude of possibilities not graphically representable. |
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Heidelberge Bauchemie
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Graphical representation
Registration of two colours Tried to register blue and yellow as a trade mark, application indicating colours would be used "in every conceivable form" Only sufficiently clear and precise if the application specified that the colours would be "systematically arranged" in a "clear and predetermined way". |
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Shield Mark v Joost Kist |
Graphical representation Registration of sounds First nine notes of Für Elise in musical notation and instructions to be played on piano - held to meet Sieckmann requirements (intelligibility does not have to be immediate) Cockerel: onomatopoeiacally (kukelekuuu) and description - did not meet Sieckmann requirements as subjective
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Dyson v Registrar of Trade Marks |
Sign requirement Attempt to register the transparent dust collecting bin as a trade mark Held to not be a sign - merely a property of the product Also not precise re. Sieckmann - could take on many forms depending on model of vacuum cleaner. |
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Apple Inc v German Patent and Trademark Office |
Sign requirement Shop layout can satisfy sign requirement if the depicted layout departs significantly from the norm or customs of sector concerned |
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CIPA v Registrar of Trade Marks |
Speciality CIPA sought to register "IP translator" for services of education etc. Includes translation services. Rejected as mark was descriptive of those services. CJEU ruled that you have to state whether application is intended to cover all goods and services within a class, or only some - CIPA indicated had not intended to cover translation so was allowed on further processing |
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Trade Marks Act 1994 Section 3 |
Absolute grounds Will not be registered: (1) a) signs which do not satisfy section 1(1) b) devoid of any distinctive character c) consist exclusively of signs or indications which designate characteristics of goods or services (kind, quality, quantity, intended purpose, value, geographical origin, time of production) d) consist exclusively of signs or indications which have become customary in the current language or in established practices of the trade - unless before the date of application and following use which has been made of it, it has acquired a distinctive character
(2) will not be registered if consists exclusively of (a) shape resulting from nature of goods (b) shape necessary to give a technical result (c) shape that gives substantial value to the goods
(3) (a) contrary to public policy or morality (b) deceptive
(4) prohibited by law (particularly passing off)
(5) specially protected emblems (royal arms, crown, olympic symbols, UK flags)
(6) made in bad faith |
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Rewe Zentral v OHIM |
Devoid of distinctive character Rewe sought to register "LITE" for food/drink classes. Distinctive character of a mark must be assessed in relation to: a) the goods or services for which registration has been requested b) the perception of the section of the public targeted
Application of principles: LITE is commonly used in English language in relation to foodstuffs, namely the lightness of them Would be regarded by public as low in calories without imagining that it would be a trademark Therefore would not enable public to distinguish goods concerned from those with a different commercial origin |
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SAT1 v OHIM |
Devoid of distinctive character SAT.2 mark - consider separate parts ("SAT", "." and "2") first, then consider mark as a whole |
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BioID v OHIM |
Devoid of distinctive character ompound marks Just because separate parts are devoid of distinctive character doesn't mean whole mark is |
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Henkel v OHIM
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Devoid of distinctive character
dishwasher tablets Shape of goods - distinctive character Does the shape depart significantly from norm of sector? General consumer's level of attentiveness is lower in relation to everyday goods |
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Linde, Winward & Rado |
Devoid of distinctive character Test for "Devoid of distinctive character" Mark must be capable of identifying product as originating from a particular undertaking, distinguishing it from other undertakings
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Deutsche SiSi v OHIM |
Devoid of distinctive character Distinctiveness of product packaging Stand-up pouches for fruit drinks not distinctive - average consumer does not treat packaging material as indicating source - merely decorative or protective |
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DaimlerChrysler v OHIM |
Devoid of distinctive character Court allowed registration of shape of car grille, saying consumers had come to understand car grilles as signs of origin |
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Audi v OHIM |
Devoid of distinctive character Slogans - even though Vorsprung Durch Technik is an objective message, it doesn't mean it's devoid of distinctive character. Acquired distinctiveness through use |
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Koninklijke KPN Nederland v Benelux Merkenbureau |
Test for "Exclusively descriptive" Does the mark represent, in the mind of relevant class of persons, a description of the characteristics of the goods/services and will that be the case in the future Irrelevant that it may not be the ONLY way of describing goods/services |
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Procter & Gamble v OHIM (affirmed in Campina Melkunie v Benelux-Merkenbureau) |
Exclusively descriptive BABY-DRY for nappies - consider descriptiveness of each word but also consider as a whole Unusual juxtaposition of two words can make the mark not descriptive - any perceptible difference between combination of words and terms used in common parlance is enough
If a mark is purely descriptive in one of the languages used in trade in the community, renders it ineligible for registration as a CTM |
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Windsurfing Chiemsee v Attenberger
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Acquired distinctiveness - for descriptive words, connotation must no longer be PURELY descriptive
1. market share 2. intensity 3. geographical spread 4. longevity 5. investment 6. proportion of public who recognise as belonging to undertaking 7. statements from chambers of commerce |
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Streamserve (affirmed in Doublemint) |
Exclusively descriptive Registration not allowed - excluded from registration if "at least one of its possible meanings designates a characteristic of the goods concerned" |
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Hauck v Stokke |
Shape results from nature of goods Shape which results from nature of goods means the shapes with essential characteristics inherent to generic function of such goods |
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Lego v OHIM |
Shape necessary to give a technical result Technical result = any desirable functional aspect of a shape |
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Bang & Olufsen v OHIM |
Shape gives substantial value Shape of speaker was emphasised in marketing - timeless sculpture for music reproduction. Therefore substantial value given by shape. n.b. important to remember that the shape gives value because it signifies something other than the brand producing it |
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Bennetton Group v G-Star International |
Shape gives substantial value Shape of a product which gives substantial value cannot constitute a trade mark where, prior to application, it acquired attractiveness as a result of its recognition as a distinctive sign |
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Ajit Weekly
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Bad faith
What did applicant actually know? Would a reasonable person regard the applicant's behaviour, given that knowledge, as "conduct falling short of acceptable commercial behaviour"? |
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Trade Marks Act 1994 Section 5 |
Relative grounds (1) will not be registered if it is identical with an earlier mark and it is applied for identical goods/services (2) will not be registered if (a) it is identical with an earlier mark and is to registered for similar goods/services (b) it is similar to an earlier mark and is to be registered for goods/services identical or similar, and there exists a likelihood of confusion on part of public (including association with earlier mark) (3) (a) will not be registered if is identical or similar to an earlier mark, if the earlier mark has a reputation in UK (or EC in the case of CTM or ITM) and use of later mark would take unfair advantage of distinctive character or repute of earlier mark. (4) not be registered if liable to be prevented by (a) law (in particular passing off) (b) an earlier right (in particular copyright, design or reg design) (5) unless proprietor of earlier mark consents |
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LTJ Diffusion |
Meaning of identical marks Interpret identical strictly - mark should be the same in all respects (from the view of average consumer) |
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Oberhauser v OHIM |
Meaning of identical goods/services If earlier mark is for broad category and application is for narrower category inside that, treat that as identical. |
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Galileo |
Meaning of identical goods/services Any overlap - goods/services within overlap treated as identical |
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Canon v MGM |
Similarity of goods/services Take into account factors including physical nature of goods, intended use, end users, distribution channels, location in supermarkets and whether in competition
Requirements of section 5 are interdependent/cumulative (i.e. less similarity between goods/services may be offset by great similarity between marks or vice versa)
Likelihood of confusion Judge through eyes of average consumer |
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Sabel v Puma |
Similarity of marks Consider marks as a whole, in way average consumer would see them Visual, aural and conceptual similarity (dominant components) - if earlier mark well known greater chance of confusion
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Lloyd Schuhfakrik Meyer v Klijsen Handel also Asda v Specsavers |
Average consumer is reasonably well-informed, circumspect and observant Suffers from imperfect recollection Analyses marks as a whole and does not proceed to analyse various details |
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General Motors v Yplon |
Reputation of earlier mark Marks must be known by significant part of the public for relevant goods/services Consider market share, intensity, geographical extent, duration of use, investment made in promoting it |
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Intel v CPM UK |
Reputation of earlier mark Global appreciation test Stronger distinctive character and reputation, easier it will be to accept detriment has been caused Existence of a link does not mean he has to prove there has been damage - proof requires evidence of a change in economic behaviour of average consumer Any mark with a reputation could have character damaged |
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Interflora v Marks and Spencers |
Due cause for similarity Adwords Selection of trademarks with reputation as internet words can be seen as taking unfair advantage Especially where such ad words are used to sell goods which are imitations of the goods which are sold under mark with reputation But where selection is used to sell goods which are alternatives to goods sold under TM with reputation, no adverse effects - must be regarded as fair competition |
