Trade mark

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The purpose and function of trade marks

A trade mark serves to distinguish the goods or services of one supplier from those supplied by others. It is a badge of origin, a sign that indicates who made the goods or provided the services.

Trade mark law prevents one trader appropriating the reputation of another: it is therefore concerned with three matters - preventing unfair competition, protecting consumers and preserving business assets.

Trade mark law should be thought of as a part of unfair competition law. The state grants a monopoly on the use of distinctive matter that gives consumers valuable information. The law also serves to protect consumers from misleading or false descriptions of the origin of the goods or services they buy.

The same monopoly cannot be granted to two different people, so there has to be a mechanism for resolving conflicts between different undertakings’ “signs”. In the UK, the Trade Marks Registry is charged with keeping the register clean: in other countries, different views are adopted and the owners of trademarks carry more responsibility for this function.

Businesses in different areas of activity can be allowed to use the same trademark without there being any risk of customers becoming confused about the origin of the goods or services: there is room in the world for Eagle brand pencils, tyres, life assurance, and many other things, and no-one thinks that Polo mints are made by VW or that Polo motor cars have anything to do with Ralph Lauren. But to allow someone to use the name Eagle on erasers would be likely to cause confusion with the pencil manufacturer, and Polo chocolates could have the same effect. We shall explore below how the trademark system seeks to avoid these problems arising and how it deals with them when they do.


Legislation

The Trade Marks Act 1994 came into operation on 31 October 1994. The new legislation was needed to implement the EC’s First directive on the harmonisation of trade mark law. It also updates an Act that dated from 1938, makes provision for the registration of Community trademarks and international trademarks (of which more anon) and implements some of the requirements of the Paris Convention.

Registered trademarks: Subject matter

Any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of others is in principle registrable. (Section 1(1)). Words, logos, combinations of the two, letters (three-letter marks are now acceptable whether or not they are pronounceable: two letter marks are not), names, and the shape of goods or their containers as well as tunes and even gestures and smells are therefore registrable. The list in the Act is not exhaustive, so anything that is capable of distinguishing may be registered - provided it is capable of being represented graphically.

Marks which are descriptive remain unregistrable, but there is no longer a possibility that a mark which is in fact distinctive will be in law unregistrable (as was the case for geographical names under the old law: York). In some cases, however, the applicant will have to show that the mark has acquired distinctiveness through use. In other words, a sign that is not inherently distinctive - say, the name SMITHS used on potato crisps - can come in time to identify one particular producer of crisps.


Conditions for protection

In addition to the basic requirements set out above, the Act lays down further demands:

The mark must be in use or the applicant must have a bona fide intention to use it. This has to be declared on the application form. Protection is dependent on continuing use on the goods for which the mark is registered. For the purposes of registration, goods and services are divided into 42 classes by the Nice Classification, and the mark must be registered in the appropriate classes (multiclass applications may be filed, saving on legal and official fees).

Owners may face the problem of their marks becoming generic. A generic word no longer qualifies for registration, and could be challenged by a third party.


Obtaining protection

Application

Application is made using form TM3. The application fee is £200, plus £50 for each class after the first: all goods and services are divided by international agreement into 46 classes.

Specification of goods or services

The specification is of great importance for the scope of protection given by the eventual registration - though less so now than under the 1938 Act. The old Act prohibited registration of the same or a confusingly similar mark for “goods of the same description”, but the test is now different (see below): and it also limited infringement to use of the same or a confusingly similar mark to goods or services within the specification of the registered mark.

The test for infringement is now much wider than under the 1938 Act (see below). This means that the need to maximise the scope of the specification is reduced: owners are no longer confined to suing within its limits. Although it was a 1938 Act case, Laddie J in Mercury Communications v Mercury Interactive suggested that a registration for “computer software” might no longer be sustainable for all types of software: and with the new Act this is more clearly the case. A wide specification might make the registration subject to revocation or partial revocation on grounds of non-use, and in the Minerva case (2002) Jacob J decided that he had the power not only to revoke a registration (or parts of it) but also to add a qualification to the specification to make it narrower.


Examination and objections

Once an application has been filed, the Registry will examine it to check whether any absolute or relative grounds exist for refusing registration. The first set of grounds are reasons inherent in the mark itself: the second arise because of the existence of prior rights, whether in registered trademarks or otherwise.


Absolute grounds for refusal

A trademark application may be refused because of some inherent defect in the mark itself:

It is not within the definition in section 1 (for example, cannot be represented graphically, or is not capable of distinguishing)

It is devoid of distinctive character

It is descriptive of the goods or services or some characteristic of them

It is generic

Objections on the last three of these grounds can be overcome by showing acquired distinctiveness, or a secondary meaning. However, the Registry will normally require several years’ use where the mark is a descriptive one.


Relative grounds for refusal

Registration may also be refused if there is a conflict between the mark and some earlier right belonging to someone else. A variety of rights may constitute grounds for refusal:

· identical mark already registered for same goods

· identical or similar mark already registered for similar or identical goods, and likelihood of confusion

· identical or similar mark already registered for different goods, earlier mark has reputation, later mark without due cause takes unfair advantage of or is otherwise detrimental to reputation

· protection for common law rights, copyright and design right. (For example, the Direct Line jingle).


Advertisement and oppositions

Once any objections on absolute and relative have been dealt with - by the Registry being convinced by arguments on paper or at a hearing or by consents having been obtained from owners of prior rights - the application proceeds to advertisement in the Trade Marks Journal, a weekly publication of the Patent Office. After advertisement, three months have to elapse to allow third parties to object to registration.

After the three months has elapsed, or all the oppositions filed have been dealt with satisfactorily, the mark will be registered and a certificate issued. Registration is back-dated to the application date or priority date, but the owner can only sue for infringement from the date of registration.

Trade mark owners subscribe to watching services to ensure that they are notified of up-coming applications. This will become more important in the UK in the future, for reasons explored later: it is already a matter of some importance here, and more so on the continent.


Scope of protection

The scope of protection for a 1994 Act mark is wider than that under the old law. There are now three kinds of infringement that can be sued on:

same mark, same goods or services (goods or services within specification)

same or similar marks, same or similar goods or services, if likelihood of confusion (including likelihood of association, a phrase found to be meaningless in Wagamama Restaurants v City Centre Restaurants (1994)

same or similar marks, dissimilar goods, if the mark has a reputation and the junior mark is taking unfair advantage of that reputation or is otherwise detrimental to it (dilution)

Whether a mark is similar is judged by examining the marks in question, irrespective of how they are used: Origins Natural Resources v Origins Clothing (1995).

Similarity of goods is judged in much the same way as were goods of the same description under the old Act: the uses to which they are put, the different users of the goods, the channels of supply (including where they are shelved in supermarkets, if appropriate) and the character and qualities of the goods are all material (British Sugar plc v James Robertson & Sons). Similar criteria will apply to services.


“Use”

Section 10(4) tells us what the Act means when it refers to use of a trademark, amounting to infringements if done without authority. The list in the subsection is not exhaustive. It includes:

affixing a mark to goods or their packaging

offering or exposing goods for sale, putting them on the market or stocking them under the sign, or offering or supplying services under the sign. The wording is largely taken from Article 5 of the Directive, though the words “or exposing” do not appear there. English law gives a restricted meaning to “offering the goods”, implying an actual offer: using the words of the Directive might not therefore catch merely displaying (or “exposing”) the goods in a shop window, for example.

The wording used in the Act is also designed to catch the situation where a trader adopts the name of another as the name of a shop, selling the good for which the mark is registered. Under the 1938 Act the infringing user could have argued that this was not “use” since it was not use upon or in physical relation to the goods.

Importing and exporting goods under the sign is also “use” for the purposes of the Act. Section 31 of the old Act covered exporting: whatever would be use of the trademark if done with goods or services supplied in the UK will be an infringement if the goods or services to which the mark is applied in the UK are to be supplied abroad.

Importing infringing goods infringes the proprietor’s rights even before the goods are placed on the market. Action can therefore be taken immediately the goods enter the country. Customs and Excise may also be given notice to treat goods bearing infringing trademarks as prohibited goods (section 89 and EC Council Regulation 3842/86).

Use of a trademark on business papers or advertising material is also caught by the Act. This provision is aimed at use of the mark to describe the goods of the person using the mark, not in comparative advertising (where the mark is used to identify the proprietor’s goods), a situation covered by section 10(6).

It is not longer a requirement of the law that the defendant's use be "trade mark use". What is required is that the defendant's activities harm the essential function of the trade mark. A trade mark is an indication of origin, so if what the defendant is doing makes the trade mark less effective as an indication of the origin of genuine goods or services it will amount to an infringement (Arsenal v Reed [2003] EWCA Civ 696[1]): a small conceptual change, perhaps, but a massive increase in the scope of protection given by a registered trade mark.


Liability of Printers, etc.

Anyone applying a registered trade mark to labelling or packaging materials, business papers or advertisements for goods or services may be treated as a party to any use of the material which infringes the rights of the proprietor. There is a requirement here that at the time of applying the mark the printer, etc., knew or had reason to believe that the application of the mark was not authorised by the owner of the mark or a licensee. This provision is aimed at printers and others who print or otherwise deal in labels or packaging bearing a trademark with the intention that they be used on infringing goods.


Non-visual use

The 1938 Act took a narrow view of what could be an infringing use. It required that such use be a visual representation of the mark: spoken use, in a television advertisement or by a seller, was not an infringement. Now, non-visual use of a trademark is included within the definition of “use” in section 103.


Defences

The 1994 Act provides a number of defences to an infringement action.

Section 11(1) provides that it is not an infringement of a trade mark to use one's own registered trade mark. In theory, the junior trade mark only became registered because there was no conflict with the senior one: so how can a conflict arise after registration? Certainly, the better (one might think the proper) course would be to seek a declaration of invalidity (or, in the parlance of the European Community trade mark system, cancellation). However, in a CTM case, Case C-561/11 Fédération Cynologique Internationale v Federación Canina Internacional de Perros de Pura Raza, a reference to the ECJ by the Juzgado de lo Mercantil No 1 de Alicante (sitting as Community Trade Mark Court No 1), the Court of Justice held "that the exclusive right of the proprietor of a Community trade mark to prohibit all third parties from using, in the course of trade, signs identical with or similar to its trade mark extends to a third-party proprietor of a later registered Community trade mark, without the need for that latter mark to have been declared invalid beforehand.”

Groundless threats

Making groundless threats of infringement proceedings can be actionable under section 21 of the Act[2]. Care must be taken to avoid making threats that may turn out to be actionable.


Revocation and invalidity

Introduction

A trade mark my be revoked if the conditions for remaining registered no longer apply: and may be declared invalid (and removed from the register) if it turns out that it should not have been registered in the first place. Revocation and invalidity may be the subject of separate proceedings (either in the Trade Marks Registry or the courts) but are most commonly encountered as counterclaims to infringement proceedings.

Non-use

A trade mark must be kept in use, otherwise its distinguishing function is discontinued and there is no justification for granting a monopoly over its use. Non-use for five years (ending on a date three months before an application is made for revocation, to allow time to negotiate with the non-using owner) is grounds for revocation. Use must be more than “merely colourable” use, that is it must be genuine.


Marks ceasing to be distinctive

Trademarks may cease to be distinctive during their lives. This happens when the brand name is used to describe the type of goods rather than to identify the goods of one supplier. Trade mark owners must be on their toes to prevent this from happening.


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