PROPERTY-1

TRADE MARK INFRINGEMENT NAME: COURSE: UNIVERSITY: Contents 1.0 INTRODUCTION.. 3 2.0 TRADE MARK INFRINGEMENT. 4 3.0 TRADE MARK LAW OF EUROPEAN UNION.. 5 4.0 CONCLUSION.. 16 5.0 BIBLIOGRAPHY. 18 1.0 INTRODUCTION According to TMA 1994[1], any sign or symbol that can be used graphically to differentiate goods and services from a certain undertakings to another undertakings can be termed as trade mark. A trade mark may include words, letters, and shape of goods or the way good are packaged, numerals or design. According to the criteria in Sieckman[2] case, the trade mark may use lines images or characters. These images must be clear, self contained, easily accessible, precise, intelligent and durable. Some of the signs are difficult and therefore not used as trade marks. For instance, it is difficult to use colours, sound and smell to different products from different companies. Dyson Vs Registrar[3] is an example of a case that involves the difficult signs differentiation. Trademarks are usually used in business for the following reasons. First, it is used to show that all goods with a certain mark come from a certain producer. Secondly trade mark is used to distinguish goods from different manufacturers. Third, trade mark are also used to guarantee quality where consumers knows that if good bear a trademark of certain company, then they have a certain quality. Fourthly, the trade mark is also used during advertisement where the companies uses one trademark to advertise all their product and even customer knows that when they see a certain trade mark, a certain company must be advertising its goods. According to the Trade Mark Rules 2000[4], for one to register a trade mark, a representation of the trade must be submitted accompanied by the statement showing the classes on which the trademark is being registered for. 2.0 TRADE MARK INFRINGEMENT However according to Trade Mark Act 1994, registration for trade mark may be denied on the following grounds; first the use of a mark that is identical on goods which are also identical to those goods associated with the trade mark. Secondly, a registration for trade mark may be denied for using identical marks on goods which are similar. Thirdly, the use of a similar mark on goods which are identical and finally, if the use of a similar or identical mark lead to unfair advantage to the reputation or character of the former trade mark, there will be infringement. All these four reasons can also be termed as infringement in the trade mark laws. However the company accused with infringement can defends itself from those accusations by citing section 10 of this Act which states the grounds for which a company may defend itself from accusation of trade mark infringement. For instance a company may state that it is acting in accordance with Practices that are honest in commercial or industrial matters. In UK there are many laws that covers trade mark extensively such as Trade Mark Act 1994 and the Trade Mark Act 2008[5]. These acts define the rules that regulate companies in all their decisions in regard to the trade mark issues. The mark laws protect the rights of all parties in all issues that relate to the trademark as part of the property rights. The laws protect the rights of both the plaintiff and the defendants as we will see in some of the famous cases in UK that involves the issues of the trade mark infringement and other property rights. 3.0 TRADE MARK LAW OF EUROPEAN UNION The law of trade mark in Europe is governed by the trade mark laws of the member countries. Member countries in Europe can chose to register their trade mark either in their own country or across the whole Europe through what is referred as Community Trade Mark. In Europe the member states of the European Union usually enforce European directives in order to harmonize their domestic trade mark laws with the laws of the European Union. This has made the trade mark laws almost the same in most of the countries in Europe. The domestic trade mark laws also apply to a large extent even to those countries in Europe that are not member countries of European Union through European Economic Area. It is very easy to distinguish different smells but the problem comes in when it comes to represent them using graphically. The question that comes in is whether smells can be represented graphically when making a trade mark. So if it possible to register smell, does it mean when one company register a certain smell as its trade mark, no other company can register similar smell and use it to promote its products without infringing with the trade mark of the previous company. In our case below, the defendant company used the comparison list to compare the smell of their products with the smell of the claimant products which were famous and had a trade mark that was known by many customers in the market. The issue of smell was evident in the case of Sieckmann[6], where the case was filed in Germany the issue in this case was product with a scent which was balsamically fruity which could hint it was a cinnamon. After giving this description verbally, Sieckmann also gave a formula which was used to create the smell and also a sample smell. The case whether this could be termed as a graphical representation was taken to the judge of European court of justice. In its ruling the court decided that the description and the sample were inadequate for they were not precise. The court argued that that the formula was not sufficient for many people to know what it represented. After reading the formula, it could not be understood what it meant and again the combination of the two was not satisfactory. According ECJ, the smell could be used as a trade mark even though it is not possible to perceive it virtually. Jacob LJ in L’Oreal SA and others v Bellure NV and others In this case the claimants, is a produce rand marketer of luxurious perfumes with known trade marks that are famous to many people in the UK. Some of their representations are word marks, while other consists of word marks and figurative mark which include a package of a particular bottle or a bottle representation. The defendant in this case involved a producer a company that offer a wide range of perfumes whose packaging and bottling were similar to those of the plaintiff company. The case also involves some other companies that marketed the products of the defendant. The marketing companies of the defendants used to provide their retailers with a list in order to compare the smell of the products of the defendant with those products of the claimant which they were imitating. The claimant filed this case in the court accusing the defendant and his marketing companies for infringement of the claimant trade mark. In this case several issues arose in regards to the interpretation of the trade mark laws of infringement. The clauses which had issues in interpretation are council directives on trade mark (89/104/EEC)[7] and article 3(a) of the directive of the council 84/450/EEC[8]. According to article 5 of the directives, the owner of a registered trade mark will be protected. The third party are not supposed to use any sign that is similar with trade mark that is registered in regards to goods or services that are similar to those of the already registered trade mark company. According to this provision, any member state of European Union will also ensure that the proprietor of trade mark is protected from those who may infringe on his rights without his consent. This will include any sign that resemble the trade mark of the proprietor which may be used to the disadvantage of the trade mark owner. This provision also state that comparative advertising will only be allowed only if it does not take any unfair advantage in the using the reputation of the trade mark owner. Again this will be allowed if the advertisement does not market goods as a replica or an imitation of the goods or services which bear the name of the protected trade name or trade mark. When the court was deciding the case it argued that according to article (5) of the EEC directives, for one to take unfair advantage in the reputation of the trade mark or even in unique character, it is not a must that there may be confusion of the two similar products. The advantage that arose when the third party used a sign that is almost similar to mark that already has a reputation was an unfair advantage to the owner of the trade mark with a reputation. This unfair advantage comes when the third party uses a sign that closely look like that of reputable trade mark to make his goods attractive. The third party also use prestige of the trade mark without paying any form of compensation to the owner who spend a lot of resources to ensure the sustainability of reputable mark in the market. The court continued to argue that the same provision protect the owner of a registered trade mark from any form of comparative advertisement by the third party. The defendant advertising companies did not follow the rules that permit comperative advertising. The use of a similar mark to that of the claimant company in order to promote the products of the defendant was an infringement of the claimant trade mark rights. According to these directives, any advertiser who implicitly or explicitly states that the product he is advertising is a replica or an imitation of a product which has a trade mark that is well known is taking unfair advantage by using comparative advantage that is unlawful. According to the decision of the European court of justice in this case, the act of the defendant to use comparison list to convince the public that their products correspond to the products of the claimant company (perfumes of the registered trade mark) was an infringement of the registered trade mark of the claimant perfumes company. The court decided this case using the decisions of the European court of justice. The defendant had three types of perfumes that smelled similar to the well known brand of the claimant company which has famous trade mark which is registered. The claimant in this case argued that the act of the defendant to use a list to compare the three products by showing the public which of their product correspond to the famous brand perfumes is an infringement to the well known trade mark of the perfumes. The was no evidence to show whether there was any customer who was deceived or confused to buy the product of the defendant company but the fact was that the defendant company gained unfair advantage by using that list of comparison. According to the ruling of the judge Jacob and Rimer, the defendant claim that he used comparison list to describe the perfumes only up to the descriptive purpose was not justifiable. According to these judges the use of the trade mark by the defendant company was not just for descriptive purposes only but its main goal was to advertise their perfume to the public in order to gain an unlawful advantage using the famous brand of the claimant registered trade mark. The court argued that according to the directives of the European court of justice[9] 3a (1), the defendant would not have infringed the trade mark rights of the claimant if his act was meant to be descriptive only. Comparative advertising is only allowed if it does not go beyond the limits that are set by sec 3a (1). The court argued that though the smell comparison is allowed in accordance with the sec 5(1) (a), there was infringement as per the directives of the sec 3a (1). The comparative list leads to imitation or replication of the known product which is not allowed according to these directives. There was also unfair advantage which was gained by using the mark which can be termed as unlawful. The comparative advertising in this case did not fall with the directives of the European court of justice. This act of failing to comply with these directives can therefore be termed as the use of the mark without due cause and there it did not fall in the provisions of infringement exception. The use of the comparative advertisement can therefore be termed as the use that is not for honest practices as it is stipulated by the trade mark Act of 1994. The court therefore justified their ruling in that defendant use of a similar mark was an attempt to free ride on the reputation of the reputable trade mark in order to gain unfair advantage in their trading. SEC (10) OF THE TRADE MARKS ACT 1994 One is considered to have infringed on a registered trade mark if he uses a sign in the course of his trading that is identical with the registered trade mark in regards to good and services which are identical to those product for which the trade mark is registered. The article 2 of this section clearly explain article one by stating that the infringement of the trade mark comes in when that sign which is similar to the registered trade mark is used to advertise those good which are similar to those goods or services represented by the registered trade mark. The article continue to state that the infringement will also result when the identical sign is used to in the course of trading in relation to goods and services that are similar to those associated with the registered trade mark. This provision will minimize the likelihood of confusion in the public and more so in associating the goods and services with those of already known trade mark. In order to make the interpretation of this section more clear, article (4) explain more about how the use of the sign may be referred to as infringement. First if the sign is affixed on the good or in its packaging. Secondly if the sign is used expose or offer goods for sale, put them in them in the market or supply them under that identical sign. Finally infringement comes in when the sign is used in advertising or on business papers. So according to this section, the defendant in this case has infringed the trade mark of the claimant in several ways. The defendant company imitated the bottling and packaging of its perfume which could easily mislead the consumers. The defendant marketing companies used comparative advertisement in the presentation of their products which is contrary to this section. They also used a word mark that was similar to the trade mark of the claimant company. Further more the word mark which is a sign that similar to the registered trade mark of the claimant was used to sell or offer to the market goods which are similar to those represented by the claimant trade mark. According to spinelo[10], the use of trademark is to guard exclusively commercial identity right. He argues that the trade mark legal protection was codified in federal trade Act which was enacted in 1946 and popularly known as Lanham Act. The law allows the seller to have a right to register as well as protecting other competitors from using his trade mark without his consent. These laws also protect the unregistered trade marks and ensure there is no unfair competition in the market. In accordance to supreme court of US when it was making a ruling on the Qualitex[11](1995), the trade mark ensure reduced customer cost of shopping and that of making decisions on purchasing. It also ensures that consumer get reliable source information about the products. Using the provision of Lanham Act, trade mark violation occurs when someone uses this trade mark in the sales of good and services. This can easily lead to consumer deception or confusion. Spinello argues that the infringement can be determined by checking whether there is any relation of similarity between the two products, confusion evidence, whether there is similarity of the marks and the channel of marketing that was used to market the product. He continues to argue that another form of trade mark violation is through dilution which simply means the act of lessening famous mark strength to differentiate or identify goods or service as it has stipulated in the Federal Trade Dilution Act of 1996[12]. According to him the law permit trade mark use that is fair in ways like non trade mark use and limited comparative advertising. He cites trade mark parody which is allowed provided it will not be used in ways related to trade. In UK before 1994, the law of trade was stricter since the laws that were in force were spelt in the of trade mark Act 1938 [13]which could not allow any form of comparative advertisement. However after the enactment of the trade mark act of 1994 things changed and some form of comparative advertisement were allowed under section 10(6). The section states that one is not limited to identifying goods or services using a trade mark similar to those of a registered trade mark. However the section continue to stipulate that if this done not in accordance with practices that are not honest in relation commercial or industrial matters , it will be treated as infringement. In addition if the comparative advertisement leads to unfair advantage to the company using reputable trade marks, this will be termed as the infringement of a registered trade mark. Several cases on the trade mark infringement have been taken before courts in UK. Vodafone group Vs orange personal communication ltd[14]. (1997) is an example of trade mark infringement in comparative advertising. In this case the plaintiff accused the defendant for using his advertisement slogan that enabled its subscribers to save 20 pound in each an every month. The court ruled that the slogan was misleading the subscribers arguing that even the subscribers of the defendant company could also save similar amount of money. British Telecommunications Plc v A T & T Communications (UK) Ltd. 1997 This is another case that can be used to make a decision in a case that involves comparative advertisement. In this case the plaintiff (British Telecommunication) accused the defendant (One in a million and others) for infringing with its trade mark rights. The case was presented before lord justice Aldous and swinton. The appellant are dealers in the domain name of the internet. Their work is usually to register those names and then sell them. They domain comprised of well known names and trade marks. The plaintiff accused the appellant for the act of infringing their well known trade mark. In its ruling the court argued that any person who go ahead and register domain name due to its similarity to the name, trade mark or brand name of a registered commercial organization will find himself or herself facing injunction. The court ruled that there was an infringement of the trade mark in this case. According to the judges, the appellants were trading on domain names and their action to using the trade mark in order to make their domain names more appealing and to extract some money using the trade mark resulted to infringement of the trade mark rights. The use was not in line with honest practice of commercial or industrial purposes and could also lead to confusion. The action of the appellants to register names that are similar to those already registered was trade mark infringement and passing off for it intends to confuse and deceive the public. The appellants used false representation in order to gain unfair advantage by using a name that is similar to name that is already registered and could therefore be termed as infringement of the trade mark rights. From these cases that have been presented before court on comparative advertisement and trade mark infringement, it is evident that comparative advertisement is allowed but it has some limit to which it should be practiced. S. 10 (6) of the trade mark act of 1994 allows comparative advertising as it is evident in the cases of Advanta and Vodafone[15]. If the reference to mark of the competitor is honest, one is allowed to tell the public of the advantages of the of the competitor good or service and even going to an extent of using registered mark in order to identify these competing goods or service. So in such a case the plaintiff has to show the proof or evidence that the defendant went beyond this limits when he was comparing the goods or services while carrying out his advertisement. He has to show that the defendant went beyond the provisions that are provided by the s.10 (6) of the 1994 trade mark Act. The act of infringement will not be present unless there act is done not in accordance with honest practice for commercial or industrial transactions as provided by the law. For the court to test whether the act was in accordance to the honest practice it must be objective in order to establish whether the defendant descriptive was meant to be used for unfair advantage or just for descriptive purpose as it provided in the law. The court has also to establish whether there was any financial gain that was gained by the defendant after using a mark, a sign or a name of a reputable trade mark. However as it has been seen in the cases of Advanta and Vodafone, the industrial or statutory codes of practice are note easy to tell if the advertisement is in accordance with the honest practices of industrial or commercial purpose as stipulated in the s. 10(6) of the 1994 trade mark act. Again it is evident that the trade mark Act of 1994 does not demand court to give a puritanical standard while dealing with advertisement regulations. Furthermore any advertising that is confusing or misleading to the public will not be in accordance with honest gain and will automatically lead to infringement of the trade mark rights of the reputable trade mark. Again in order to establish whether the advertisement was done in accordance to honest practice, the advertisement in the discussion should be considered in full and not some part of it. The words of an advertisement can only be said to be misleading to the readers if the advert is read in full and that after fair reading the reader of the words and the court cannot understand the word clearly. This does not mean that freedom of expression of any party is violated. 4.0 CONCLUSION The trade mark infringement laws are put in place to protect both parties and not only the proprietor of the trade mark. The Trade Act of 1994 give the owner of the trade mark exclusive rights on the ownership of his trade mark. This protects the proprietor from the use of his trade mark by third party that may give them unfair advantage over him without any financial compensation. However the same act s.10 (6) allows the third parties to use comparative advertisement while they are marketing their products. So the in the case of (Jacob LJ in L’Oreal SA and others v Bellure NV and others [2010][16], the Jacob L.J ruling was right in his ruling for there was infringement of trade mark of the plaintiff. The defendant had used comparative advertising in order to gain unfair advantage by using the registered trade mark of the plaintiff. 5.0 BIBLIOGRAPHY Abbe, Brown. Illuminating European Trade Marks? Volume 1, Issue 1, March 2004. British and Irish Legal Information Institute (BAILII) Colston, CatherinePrinciples of intellectual property law 1999 €“ Law €“ 482 pages Spinello, Richard. Intellectual property rights. Volume: 25 Issue: 1 2007 Lambert,John. Comparative Advertising. 1997. Access on 3 February, 2011.http://www.ipit-update.com/tm15.htm L’Oréal SA and others v Bellure NV and others Case C-487/07); [2009] WLR (D) 203 Barclays Bank Plc v RBS Advanta [1996] RPC 307 British Telecommunications Plc v A T & T Communications (UK) Ltd. [1997 DYSON LTD v REGISTRAR OF TRADE MARKS €¦ R.P.C. (2007) 124 (18): 619-629. Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) Sieckmann v German Patent Office (case C-273/00) Vodafone Group Plc v Orange Personal Communications Services Ltd. [1997] FSR 34, 39, European Court of Justice (ECJ) Rulings available at, EUROPEAN ECONOMIC COMMUNITY (No. 89/104/EEC), EUROPEAN ECONOMIC COMMUNITY (No. 84/450/EEC), European Economic Area (EEA) Federal Trade Dilution Act of 1996 Marks (No. 89/104/EEC), Reform Law (Consolidation), 25/10/1994 (16/07/1998).Accessed on 3 February, 2011. The European Community Trademark Laws Trade Mark Act 2008 Trade Mark Rules 2000 Trade Marks Act 1994, Trade Mark Act of 1938 Trademark Act of 1946 (€œLanham Act€) as Amended PUBLIC LAW 79-489, CHAPTER 540, APPROVED JULY 5, 1946; 60 STAT. 427 [1] Trade Marks Act 1994, [2] Sieckmann v German Patent Office (case C-273/00) [3] DYSON LTD v REGISTRAR OF TRADE MARKS €¦ R.P.C. (2007) 124 (18): 619-629 . [4] Trade Mark Rules 2000 [5] Trade Mark Act 2008 [6] Sieckmann v German Patent Office (case C-273/00) [7] EUROPEAN ECONOMIC COMMUNITY (No. 89/104/EEC), [8] EUROPEAN ECONOMIC COMMUNITY (No. 84/450/EEC), [9] European Court of Justice(ECJ) Rulings available at, [10] Spinello, Richard. Intellectual property rights. Volume: 25 Issue: 1 2007 [11] Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) [12] Federal Trade Dilution Act of 1996 [13] Trade Mark Act of 1938 [14] Vodafone Group Plc v Orange Personal Communications Services Ltd. [1997] FSR 34, 39, [15] Barclays Bank Plc v RBS Advanta [1996] RPC 307 Vodafone Group Plc v Orange Personal Communications Services Ltd. [1997] FSR 34, 39, [16] L’Oréal SA and others v Bellure NV and others Case C-487/07); [2009] WLR (D) 203

Posted in Uncategorized