trademark & passing off print

Trademarks & Passing Off

Harry SK Tan Assoc Professor of LawNanyang Business SchoolNanyang Business School

Copyrights Reserved 2013

Trademarks Trademarks

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Brands & TrademarksWhat is the relationship between the marketing concept of brand and the legal definition of concept of brand and the legal definition of trademark? Brand consists of brand signals and consumer g

associations with those signals Brands usually have more than one signal (words,

l d i l h ) logos, designs, colors, shapes, etc.) Some or all of those signals might be protectable

as t adema ks as trademarks Trademark protection may or may not extend to all

elements of brand value elements of brand value

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Trademarks is......any sign capable of being represented

hi ll hi h i bl fgraphically which is capable of distinguishing goods or services of one undertaking from those or other undertakings. See Section 2 TM Act. g

word logo audio colourword, logo, audio, colour...

registered & non-registered action for passing-off

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What is a Sign?

What is a trade mark under the TM Act? Sign

d f d 2 l d defined in section 2 as including any letter, word, name, signature, numeral device brand headingnumeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination p g g ythereof; USSFTA no longer has to be i ll tibl i l dvisually perceptible so can include

sounds and scent

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Use of a Signdefined in s27(4) to mean:( ) li it t d th k i th f(a) applies 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 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;(d) uses the sign on an invoice, wine list, catalogue, ( ) g , , g ,

business letter, business paper, price list or other commercial document, including any such document in any medium; ordocument in any medium; or

(e) uses the sign in advertising.


Some TM examples Words & Phrases

Xerox, Kodak,Dont leave home without it, Where do you want to go today?

Pictures & Symbols Windows icon, Nike Swoosh,

Numerals & LettersIBM KLAX TV TCS RCS RADIO1 CLASS95 IBM, KLAX TV, TCS, RCS, RADIO1, CLASS95

Nicknames - Coke Sounds & Music - Jingles


Purpose of Trademark Law

Trademark law is intended to: Protect the owners investment and

goodwill in a markg Prevent consumers from being confused as

to the origin of goods and servicesto the origin of goods and services

Functions of trade marks?Functions of trade marks? identifies the source provides information to consumerprovides information to consumer indicates quality emblem of goodwill


emblem of goodwill

TM Law GoalsTraditional goal of trademark law: to enable

consumers to distinguish one producers goods consumers to distinguish one producer s goods and services from those of another

Enables consumers to make purchase choices pbased on past experience, reputation

Provides incentive for firms to produce quality d d i goods and services

Protects investment of firms in reputation


Ownership Rights- Rights of a trademark owner:

ti 26 th k th i - section 26: use the mark, authorise others;

infringement provisions: s27(1), s27(2), s27(3);

best advice is register your trade mark;- Infringement use of the TM in the course Infringement use of the TM in the course

of trade without the consent of mark owner. Use of identical or sign similar to.g


TM Protection

Possible areas of trade mark protection1. Common law action - passing off.2 Trade Marks Act (Revised 2005 2. Trade Marks Act (Revised 2005 Cap 332).3. Consumer protection legislation Consumer Protection (Fair Trading) ( g)Act 2003 - unfair practice for a supplier to do or say anything, or gomit to do or say anything that would deceive or mislead consumers.


Marks That Can Be Trademarked

TrademarkA distinctive mark symbol name work motto or A distinctive mark, symbol, name, work, motto or device that identifies the goods of a particular business, e.g., Xeroxbusiness, e.g., Xerox

Service mark Mark used to distinguish the services of the holder

from those of its competitors, e.g., United AirlinesCertification mark

Mark that is used to certify that goods and Mark that is used to certify that goods and services are of a certain quality, e.g., wines from Napa Valleyp y

Collective mark Mark used by cooperatives, associations, and

f l f


fraternal organizations, e.g., Boy Scouts of America

Unregistrable Marks Descriptive Marks good best

M k C t th T d Marks Common to the Trade keyboard Marks contrary to Public Policy or Morality

i l/ l b h i d i t d B t h t b t FCUK?immoral/vulgar behaviour depicted. But what about FCUK?

Deceptive Marks Swiss Made when it is not Marks Identical or similar to Earlier Marks Marks that causes confusiona s t at causes co us o


Unregistrable Marks

Lack distinctiveness Apple for apples rather than computersrather than computers

Generic terms TMs can become generic egg gLINOLEUM, FORMICA, ESCALATOR (do not use trade mark to describe product!) e.g. Xerox, Maggi Mee, Google, Band-Aid


Types of TMTwo types of trade marks:

1 R i t d t d k T d M k A t 1998 1. Registered trade mark Trade Marks Act 1998 (Spore)2 Unregistered trade marks2. Unregistered trade marks

comparative level of protection; common law tort of passing off common law tort of passing off.

McDonalds - RegisteredMcDonalds - Not necessarily registeredMcDonalds Not necessarily registered


Registered trade marks

Goods marks and service marks Goods marks and service marks Comply with Trade Marks Act (Revised

)2005 Cap332) To be registrable a mark must be used To be registrable, a mark must be used

as a trade mark and be distinctive.b d l It must not be scandalous

10 years renewable 10 years renewable


TM Classification

Sources of trademark conflictTrade mark law has two limitations which leads Trade mark law has two limitations which leads to conflict:1 Protection only in country of registration1 Protection only in country of registration

But with the Madrid Protocol one filing and one set of fees can obtain international registration;

2 The class system - protection only in the class the trade mark is registered in.

45 classesmusical instruments

clothing, footwear, head gear

( l 25 i Cl thi f t h d )

c ot g, ootwea , ead gea

Alcoholic beverages (except beer)


(eg class 25 is Clothing, footwear, headgear)

Paris Convention and Madrid Protocol

impact on international trademarks

Concept of famous or well-known mark or trade mark dilution doctrine

Geographical indications need no registration under the Geographical registration under the Geographical Indications Act (but register if registrable)

I t ti l i t ti i l International registration in one language one office




Central attack all TMs expire if TM in country of origin expire

Defence convert to national registration within 3 monthswithin 3 months




Madrid Protocol registration one language one office designating all t t t i h t ti treaty countries where protection desired

But still challengeable country by countrycountry




Well-known marks protected even if not registered

Business identifies identical or similar to well-known marks not permittedp

Protection against dilution in an unfair manner or unfair advantage of distinctive manner or unfair advantage of distinctive character of the well known trade mark Owner does not need to prove confusion Owner does not need to prove confusion (only a connection which would damage interests of owner of mark)

Harry SK Tan 2013

interests of owner of mark)

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Trademark infringements

4 main types

Type 1, Singapore Trade Marks Act s27(1):

A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark he uses in the course of trade a sign which mark, he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with gthose for which it is registered.

Eg I m ke nd ell m o n ROLEX t he Eg., I make and sell my own ROLEX watches although Rolex own the trade mark for watches. (Class 14)

Harry SK Tan 2013

(Class 14)

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Trademark infringements Type 2, Singapore Trade Marks Act s27(2):

A person infringes a registered trade mark if without A person infringes a registered trade mark if, without the consent of the proprietor of the trade mark, he uses in the course of trade a sign where because ( ) th i i id ti l ith th t d k d i (a) the sign is identical with the trade mark and is used in relation to goods or services similar tothose for which the trade mark is registered; or

(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 similar to those for which the trade mark is registered,

there exists a likelihood of confusion on the part of the public.

E.g., for (a) I call my mixed fruit drink McJuice.for (b) I call my perfume CHRISTINA DOIR and people buy it thinking it to be an authentic original CHRISTIAN DIOR product

Harry SK Tan 2013

thinking it to be an authentic original CHRISTIAN DIOR product

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Trademark infringementsType 3 Infringement Use of an identical or similar trade mark on goods or services Use of an identical or similar trade mark on goods or services

which are quite different from those for which the trade mark is registered, where the user

(i) bt i f i d t f th t t d k (i) obtains an unfair advantage from that trade mark or (ii) damages its reputation

E f (i) h I t f DOLBY h i id l E.g., of (i) when I promote a range of DOLBY hearing aids, people will assume that my hearing devices will have an advanced level of acoustic technology

E.g., of (ii) I produce SONY jeans which are of poor quality and uncomfortable to wear, thereby making consumers reluctant to purchase other SONY products


Trademark infringementsType 4, Singapore TM Act s27(3):

the use of the trade mark in relation to those goods the use of the trade mark in relation to those goods or services would indicate a connection between those goods or services and the proprietor;

(c) there exists a likelihood of confusion on the part of the public because of such use; and

(d) the interests of the proprietor are likely to be damaged by such use.

E I t il h ll d M t Bl th MONT BLANC E.g., I open a retail pen shop called Mont Blanc; the MONT BLANC trade mark is well known for pens but not for retail sales services. People visit the shop, do not like the range of low-quality mass-produced ball-point pens on offer and accordingly quality mass-produced ball-point pens on offer and accordingly favour brands other than MONT BLANC in future


Confusion arising from Infringement

It is enough to show that 1)A i bl b ( k t t i 1)An appreciable number (unspoken target in

many courts: 15%) 2)of average or reasonably prudent 2)of average or reasonably prudent

consumers 3)would more likely than not (preponderance of 3)would more likely than not ( preponderance of

the evidence standard) be confused as to source, sponsorship, affiliation or connection


Similar infringement provisions in other countries

- Australia s120 Trade Marks Act 1995

- UK s10 Trade Marks Act 1994


Exceptions/DefencesS28 Trade Marks Act - it is permissible to use a trade mark if the use is any one of the following and such use is in the use is any one of the following and such use is in accordance with honest practices in industrial or commercial matters:

- his name or the name of his place of business

- the name of his predecessor in business or the name of his predecessors place of businesspredecessors place of business

- he uses a sign to indicate the kind, quality, quantity, intended purpose, value, geographical origin or other intended purpose, value, geographical origin or other characteristic of goods or services

- he uses a sign to indicate the time of production of goods or of the rendering of services

- he uses the trade mark to indicate the intended purpose of d (i ti l i t ) i

Harry SK Tan 2013

goods (in particular as accessories or spare parts) or services

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unregistered trademarksSection 28(2) deals with unregistered trade marks:

Notwithstanding section 27, a person does not infringe a registered trade mark by using an unregistered trade mark that is identical with or similar to the registered trade mark gin relation to goods or services identical with or similar to those for which the trade mark is registered if he, or he and his predecessor in title, have continuously used in the

f t d th i t d t d k i course of trade the unregistered trade mark in relation to those goods or services from a time before

(a) the date of registration of the registered trade mark; or(a) the date of registration of the registered trade mark; or

(b) the date the proprietor of the registered trade mark, or a predecessor in title, or a person who was a registered p , p guser of the trade mark under the repealed Act, first used the trade mark,

whichever is the earlier

Harry SK Tan 2013

whichever is the earlier.

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Exceptions/Defences Section 28(3) deals with the same trade marks

but registered in different classes of goods or but registered in different classes of goods or services:

Notwithstanding section 27 a registered trade Notwithstanding section 27, a registered trade mark is not infringed by the use of another registered trade mark in relation to goods or services for which the latter is registeredservices for which the latter is registered.


Exceptions/Defences

Section 28(4) states it is not an infringement if the use :

a) constitutes fair use in comparative commercial advertising or promotion;

(b) is for a non-commercial purpose; or

(c) is fo the p pose of ne s epo ting o ne s (c) is for the purpose of news reporting or news commentary


TM DilutionConcept of Dilution:

S ti 2 d fi "dil ti " Section 2 defines "dilution" as:in relation to a trade mark, means the lessening of the capacity of the trade mark to identify and of the capacity of the trade mark to identify and distinguish goods or services, regardless of whether there is (a) any competition between the proprietor of the trade mark and any other party; or(b) any likelihood of confusion on the part of the public

US law blurring or tarnishment


Passing Offg O

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Passing off

Remedy in tort to protect unregistered trade k + t dmarks + trade names

Elements of passing off:Misrepresentation made by a trader in course of business

Made to prospective customers/ ultimate consumersCalculated to injure business/ goodwill of another j / gtrader

Causes actual damage or will probably do so

Difficulties of proving passing off


Elements of passing off action

Goodwill or reputation attached to the get- (b d k i d i ti up (brand packaging, description,

advertising campaign, slogan? Misrepresentation made by a trader in course

of business Made to prospective customers/ ultimate

consumers Calculated to injure business/ goodwill of

another traderanother trader Causes actual damage or will probably do so


Deceptive representations

Deception is an element of the action BUT no need to prove that there is

intent (by the offender) to deceive or intent (by the offender) to deceive or mislead the public. ONLY need to prove that the public ONLY need to prove that the public had been duped (confused or deceived) by the misrepresentationdeceived) by the misrepresentation


What is being misrepresented?

Misrepresentation as to ORIGIN that Ds goods are from P that D and P are connected someway that D and P are connected someway that D claims Ps goods are from D

Misrepresentation as to QUALITYD k i t ti t lit D makes misrepresentations as to quality of his own goods

D makes misrepresentations as to quality of his Ps goods


Proving Misrep

Court to consider the purchasing publics confusion and how it arosepublics confusion and how it arose

Court not concerned with moron in a Court not concerned with moron in a hurry being confused. Test is of Ordinary Sensible Purchaser using y gordinary caution would be confused or deceived.


Difficulties of proving passing off

Requires existence of goodwill and deceptiondeception

The property right is not a right in the k t b t th i ht i th name, mark or get-up but the right in the

reputation or goodwill of which the name, mark or get-up is the badge or vehiclemark or get up is the badge or vehicle.

Law is territorial; so is goodwill Existence of reputation without goodwill is

fatal to claim in passing off. (eg Budweiser beer known in US but not sold in UK; Hong Kong Jumbo vs Singapore Jumbo )


Covers character merchandising (cartoon Covers character merchandising (cartoon characters but not personalities)characters but not personalities)

Concept of dilution as damageConcept of dilution as damageConcept of dilution as damageConcept of dilution as damage Geographical origin eg Swiss chocolate, Geographical origin eg Swiss chocolate,

champagne champagne basmati lao beijingbasmati lao beijing??champagne, champagne, basmati, lao beijingbasmati, lao beijing??


Geographical indication Geographical indications - geographical place

name connotes special qualityname connotes special quality

Bordeaux, champagne, bourbon, cognac What about longjing tea; ceylon tea;

Darjeeling tea; yangzhou fried rice; mongolian barbecue? Kentucky Fried mongolian barbecue? Kentucky Fried Chicken?

Sarawak kolo mee; Katong laksa; Sarawak kolo mee; Katong laksa; Clementi rojak: Tiong Bahru porridge? Bedok chwee kuay; Ponggol nasi lemak? T li b ?Tanglin bao?


Internet Trademark Issues

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Trademarks & Domain Names

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Establishing an Internet PresenceEstablishing an Internet Presence

Domain name registrationDomain name registration

IP addresses & DNS site address

Hierarchical system

Unique, but need only differ slightly Eg. Dogsbody or dogs.Body or dogs-bodyg g y g y g y

Organisational & geographicEg. .Com or .Co.Sg


Registration AuthoritiesRegistration Authorities

eg InterNic & NSI SigNic (Singapore)eg. InterNic & NSI, SigNic (Singapore) names show authoritynames show authority

independent

dispute resolution policies


Domain Names & Trade Marks

Infringement

in the course of trade

similar goods or services

Case law

Glaxo v Glaxo wellcome (1996) Direct Line Group v Glaxo v Glaxo wellcome (1996), Direct Line Group v Direct Line Estate Agency (1997)

Harrods Ltd v UK Network Services Ltd (1996) Harrods Ltd v UK Network Services Ltd (1996)

Pitman Training v Nominet UK & Pearson Professional (1997)Professional (1997)

Prince plc v Prince Sports Group (1997)


Some Examples of C b iCybersquatting

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Q&AQ&A

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