lec. the law of trade marks

7/28/2019 Lec. the Law of Trade Marks

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The Law of Trade Marks

Lecture I: What is a Trade Mark

General ReadingBently & Sherman - Part IV

JournalsEIPR (European Intellectual Property Review)IPQ (Intellectual Property Quarterly)IIC (International Review of Industrial Property & Copyright Law)

Law ReportsRPC (Reports of Patent Cases)FSR (Fleet Street Reports)ETMR (European Trade Mark Reports)CMLR (Common Market Law Reports)

ECJ cases available on ECJ website

Useful Web Siteswww.patent.gov.uk/dtrademk/index.html (UK Trade Mark Office)www.wipo.org (World Intellectual Property Organisation)www.wto.org (World Trade Organisation)

Trade Marks are protected under two regimes namely;

1. The Common law of passing off2. The statutory regime which protects registered trade marks

found in the 1994 Trade Marks Act.

These two legal regimes transform signs into forms of property. Bothforms of legal protection are available simultaneously.

In the case of passing off the sign must have been used in trade so asto have acquired a reputation. Under the statutory regime, the signmust have been registered, either at the UK Trade Mark Registry or atthe Community Trade Mark Office called the OHIM.
http://www.patent.gov.uk/dtrademk/index.htmlhttp://www.wipo.org/http://www.wto.org/http://www.patent.gov.uk/dtrademk/index.htmlhttp://www.wipo.org/http://www.wto.org/


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HISTORY OF MARKS:

Earliest times traders applied marks to their goods to indicateownership, e.g. farmers commonly branded cattle and earmarkedsheep as a way of identifying their livestock.

Merchants also marked their goods before shipment so that in theevent of a shipwreck, any surviving merchandise could be identifiedand retrieved.

Guilds: were trade organisations that had control over who could makecertain goods or provide certain services. They were also concerned toensure that goods were of satisfactory quality. In order to be able toidentify the source of unsatisfactory goods, the guilds required theirmembers to apply identifying marks or signs to the goods.With the growth of regional trading (industrial revolution) many traderscontinued to apply their marks to the goods they manufactured.Moreover with the growth of mass media and public reading tradersstarted to advertise their goods by reference to these marks. In turnpurchasers started relying on the signs of the goods.

Another important change in the role played by marks took placearound the beginning of the twentieth century. This change in thefunction of trade marks has been described as a transformation fromsignals to symbols.

As signals trade marks trigger an automatic response and serve toidentify the maker of the product.

In contrast as symbols trade marks evoke a broader set ofassociations and meanings. Here they are used to identify the productor to give the product an identity. In so doing the mark became symbol,a poetic device, a name designed to conjure up product attributeswhether real or imagined.

History of the legal protection of Marks:

It seems that the courts first began to protect marks at the behest oftraders in the 16th century.

Initially protection was provided by the Common law courts through theaction of deceit. Not much later the Courts of Chancery used the actionof passing off to protect a trader who had developed a reputation orgoodwill through use of a particular sign or symbol. This action is stillavailable.

A system of registration of marks was first introduced in 1875. The


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impetus for this came more from foreign sources than from domesticpressure.

Now in UK trade mark law is governed under 1994 Trade Marks Act.

What is a Trade Mark?

Legal definition?

"A `trade mark' means any sign capable of being representedgraphically which is capable of distinguishing goods or services ofone undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (includingpersonal names), designs, letters, numerals or the shape of

goods or their packaging."

Trade Marks Act 1994, s. 1(1)

cf EC Trade Mark Directive (1988), Art. 2

Note that a registered trade mark has to be registered inrelation to specific goods or services

What is a sign?

"A `sign' is anything which can convey information The onlyqualification expressed in the directive is that it be capable ofbeing represented graphically."

Jacob J in Philips Electronics [1998] RPC 283 (HC) at 298

What might this include?

Possible signs?

o Brand nameo Logoo Shape of product/ packaging?o Colouring of product/ packaging?o A jingle (or other sound)?o The scent or smell or taste of product/ packaging?

Note the requirement of graphic representation


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Note the different ways in which a sign may signal toconsumers?

o Visualo Auralo Conceptualo To other senses?

What are the goods or services of one undertaking?

"Take water and sugar: they are commodities. Process them intocola drinks and you have products. Market and promote theminto COCA-COLA and PEPSI-COLA: you have brands."

The Economist, "The Year of the Brand" 24/12/1988

[T]he essential function of the trade mark is to guarantee theidentity of the origin of the marked product to the consumer orend user by enabling him, without any possible confusion, todistinguish the product or service from others which have adifferent origin. For the trade mark to be able to fulfil its essentialrole in the system of undistorted competition which the Treatyseeks to establish, it must offer a guarantee that all the goods orservices bearing it have originated under the control of a single

undertaking which is responsible for their quality.

(The European Court of Justice)

A trade mark indicates the origin or trade origin of theproducts with which it is used

All products bearing (or sold under) the same trade markshould therefore have the same trade origin

A trade mark indicates what can be termed brand ormarketing/ commercial identity

One undertaking may control more than one marketingidentities

What is the practical benefit of being able to indicate tradeorigin?

Consumers can more readily identify and recognise products


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on the basis of their trade origin

Consumers can use trade marks to choose among productsaccording to their trade origin

Consumers can use trade marks to express preferences on thebasis of trade origin or to make origin-specific request

Trade marks may assist undertakings in acquiring goodwillfor their products and ensuring that only they can profit fromthis goodwill

The ability to acquire and retain goodwill is an importantaspect of competition between undertakings in a marketeconomy

In effect, a trade mark may become a focus of goodwill and aprimary reference point in the minds of consumers.

For this reason, trade marks are sometimes regarded as givinga guarantee of quality to consumers, but this does not amountto a legal guarantee

The guarantee of quality offered by a trade mark is notof course absolute, for the manufacturer is at liberty tovary the quality; however, he does so at his own risk andhe not his competitors will suffer the consequences ifhe allows the quality to decline. Thus, although trademarks do not provide any form of legal guarantee ofquality they do in economic terms provide such aguarantee, which is acted upon daily by consumers.

AG Jacobs in his Opinion to the ECJ in Hag II (1990)

To have a common trade origin, all the goods or servicesbearing it must have originated under the control of a single

undertaking which is responsible for their quality

The most publicly successful modern businesses are those, likeNike and Tommy Hilfiger, that have abandoned making things infavour of making ideas and images for their brands and their realwork lies not in manufacturing but in building up their brands.

Naomi Klein, No Logo (2000)

The undertaking does not have to manufacture the goods or


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provide the services itself

It can arrange for the products to be provided by otherundertakings through such arrangements as sub-contracting,outsourcing and franchising

Goods/ services with the same trade origin may come from avariety of physical sources and/or a variety of manufacturers/providers

An undertaking can licence (i.e. formally give consent to)other undertakings to use its trade mark on products that theyproduce

This is the basis of such marketing arrangements as

o Merchandising

o Franchising

o Joint branding

o Commercial sponsorship/ endorsement

For products to be the products ofan undertaking, that

undertaking must have authorised their presence on themarket (and their availability to consumers) under or bearingits trade mark and thus with the specific marketing identitythat the trade mark symbolises

Major Bros. v. Franklin [1908] 1 KB 712Primark Stores v. Lollipop Clothing [2001] ETMR 334

All such products therefore have a common trade originregardless of their physical origin or the actual circumstancesof their production

By the same logic, products that are identical in quality andproduced by the same manufacturer may not have the sametrade origin

Major Bros. v. Franklin [1908] 1 KB 712Primark Stores v. Lollipop Clothing [2001] ETMR 334

An undertaking can assign (i.e. formally transfer) its trade


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marks to another undertaking, which then becomes the ownerof that trade mark and assumes control of the presence ofproducts bearing the trade mark on the market.

How can an Undertaking Protect its Trade Marks?

Two forms of action are available

o An action for infringement of a registered trade mark

o An action in the tort of passing off

Note that registering a trade mark does not prevent its owner

from bringing an action in passing off

The Action for infringement of a registered trade mark

This action is available to owners of a registered trade mark

The trade mark may be registered in the UK or as aCommunity Trade Mark (or CTM)

The action is now governed by the Trade Marks Act 1994(TMA 1994)

The TMA 1994 was designed to implement the EuropeanTrade Mark Directive (1988) and the European Court of Justice(ECJ) can therefore make authoritative rulings on therelevant law

The Action in Passing Off

This action is conditional on the claimant having goodwillthat is or may be damaged by a misrepresentation madeby the defendant

This action can only be brought in respect of a feature alreadyfamiliar to consumers (such that it has become a focus forgoodwill) and where the defendants imitation of the featureis likely to mislead consumers about the defendants productsand cause damage to the claimants business.


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The actions basis in common law makes it a flexible andadaptable remedy.

Mirage Studios v Counter-Feat Clothing [1991] FSR 145

Edmund Irvine v Talksport[2003] EMLR 6

The Action for Infringement of a Registered Trade Mark

The claimant must be the owner of a registered trade mark

The defendants action must constitute infringement of thattrade mark

The defendant may seek to rely on a defence againstinfringement

The defendant may seek to have the trade mark revoked ordeclared invalid (i.e. improperly registered)

The Framework of the LawInternational Framework

Traders who operate on more than a local level will wish to protect theirmarks on a transnational basis. Various mechanisms have beendeveloped to assist in this regard. The earliest of these was the ParisConvention.

The Paris Convention for the protection of industrial

property 1883 (as amended)

o No prescribed minimum standards

o National Treatment (i.e. non-nationals must be giventhe same rights as nationals) this ensures the possibilityfor foreign protection of trade marks.

o Well-known marks belonging to traders in other statesmust be protected even if unregistered


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o While the Paris convention failed to create a mechanismfor the international application for Marks.

The Madrid Agreement on the internationalregistration of marks of (1891) and the MadridProtocol of (1989)

o Systems for facilitating international applications. Underthese arrangements after making a home registration or

home application an individual or company may apply tothe Bureau of the WIPO for an international registration.The bureau passes the application on to relevantnational trade mark offices. If the Offices of thecontracting party does not refuse the application withina limited time, it is treated as registered.

o UK party to Madrid Protocol only

o TMA 1994 enables UK application >> an internationaltrade mark

The TRIPs Agreement 1994

o Section 2 (Article 15-21)

o Reinforces the Paris Convention (Article 2)

o Sets minimum standards

European Framework

The Trade Mark Directive: 89/104/EEC

o Implemented by TMA 1994

o Substantial harmonisation throughout the EC


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The Community Trade Mark Regulation: 40/94

o Provides for CTM with unitary effect throughout the EC

o Such rights are acquired by the filing of a singleapplication for a Community trade mark with the Officefor Harmonisation in the Internal Market (the OHIM).

o Became fully operational on 1 April 1996

o Administered by the Office for Harmonisation in theInternal Market (OHIM) located in Alicante (Spain).

o National TMs may be converted to CTMs (providing

acceptable as such) but still retain acquired rights inoriginal territory (seniority)

o As of December 2003, the OHIM had received over350,000 applications and has registered close to200,000 marks.

Registered Trade Marks in the UK

Three systems of registration are now applicable:

Registration with the Trade Marks Registry of the UK Patent Officegives protection in the UK.

Registration of a CTM with the OHIM or through the UK TradeMarks Registry gives protection throughout the EC.

Registration as an International Trade Mark with the WorldIntellectual Property Organisation ("WIPO") in Geneva pursuant to

an application or registration made in a Protocol country(including one at the UK Trade Marks Registry) gives protection inall designated Protocol countries (and takes effect in the UK as ifit were a UK trade mark).

Unregistered trade marks may still be protected in the UK:

By the action in passing off


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Under section 56 of the TMA 1994, as a well known mark (inthe UK) of an undertaking or other person based in another ParisConvention country.

lec. the law of trade marks

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