A Trade Mark Essay Example

on products.

In the UK, domestic law incorporates Articles 4(4)(a) of the EC Trademark Directive and 8(5) of the Community Regulation through subdivision 5(3) of the Trade Marks Act 1994. This incorporation ensures that previous trademarks provide coverage for both UK and Community Trade Marks if they were registered prior. It also offers protection for Community Trade Marks derived from an earlier UK mark. Additionally, this inclusion extends to trademarks registered under the Madrid Protocol and "well known" trademarks safeguarded by Article 6bis of the Paris Convention.

Moreover, Article 4(4)(a) of the EC Trademark Directive empowers any Member State to prohibit registration of a trade mark that is either identical or similar to an earlier national trade mark but pertains to dissimilar goods or services.Infringement of a trade mark can occur if the later trade mark is used without justified cause and takes unfair advantage of or damages the distinctive character or reputation of the earlier trade mark in a Member State where it has a reputation. The Trade Mark Act 1994 specifies four main grounds for infringement, which also serve as reasons for refusing registration under section 5. It is not necessary to have prior knowledge or intention to infringe for an act to be considered infringement. In order for the trade mark to qualify as infringement, it must be used "in the course of trade". Any use that may jeopardize the guarantee of origin provided by a trade mark can be prevented. According to Section 10(1), confusion must be demonstrated when marks are identical or similar and goods/services are also identical or similar in order for it to constitute infringement. A mark is considered similar

if there is a likelihood of confusion among average consumers regarding the goods/services. It is important to evaluate marks as a whole since consumers generally perceive them this way. Using an identical mark for registered goods or services is illegal according to Section 10 (1). In Reed executive V Reed Business Information Ltd, it was determined that although the marks were similar, they were not exactly the same. The claimant accused the defendants of infringing on their trademark by using the names "Reed Elsevier" and "Reed Business Information".Jacob LJ concluded that "Reed Business Information" cannot be considered identical to "Reed" due to the additional words, according to SA Societe LTJ Diffusion v SA Sadas. The standard for uniqueness must be strictly interpreted, where both elements should be exactly the same. There must be a high level of uniqueness between marks. In Origins Natural Resources Inc V Origin Clothing Ltd, it was determined that the marks "Origin" and "Origins" were similar but not identical. Likelihood of confusion arises when there is similarity with an earlier registered mark and goods or services for which that mark is registered. A trademark will not be registered under Section 5 (2) if there is a likelihood of confusion among the general public. In British Sugar plc V James Robertson & Co Ltd, Jacob J recommended that infringement can occur when there is a reasonable possibility of confusion.Sons Ltd states that in order to determine if subdivision 5 (2) applies, one must consider if the trademarks are the same or similar and if the goods are also similar.It's important to assess whether there is a likelihood of confusion or association between

trademarks.If all three factors are affirmative, conflict will arise.The Sabel V Puma case emphasizes globally assessing the likelihood of confusion by considering market recognition, association between marks, and similarity of goodsThe conclusion was that there is a higher likelihood when the earlier mark is distinctive. Ruiz-Picasso V OHIM emphasized the importance of expensive and technical goods. Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc stated that confusion may occur if trademarks create an association suggesting common or linked sources. Marca Mode CV V Adidas AG determined that reputation alone does not imply a likelihood of confusion based on association.

Protection for Marks with Reputation

Article 8(5) of the Trade Mark Directive and Article 4(4) of the Community Trade Mark Regulation provide protection for marks with a reputation. These laws recognize that trademarks have significance beyond indicating origin. Bristol Myers Squibb v.Paranova identified the "essential function" of a trademark as ensuring consumer recognition without confusion. Certain trade marks, due to their reputation, have a value beyond simply distinguishing one product from another and therefore deserve protection. The Court offers guidance in Sigla on how to differentiate between the likelihood of confusion and the potential for unfair advantage. According to Sigla, confusion may arise when consumers are attracted to a product or service associated with an applied trade mark, mistakenly believing it originates from the same source as an identical or similar earlier trade mark.The Court in Sigla clarified that Article 8 (5) protects reputable trade marks against applications for identical or similar trade marks that could potentially damage its image, even if the goods or services covered by the applied-for trade mark are dissimilar to those of the previously

registered trade mark. It is crucial for a trade mark owner to establish that their trademark "has a reputation" in order to benefit from using it.

Dilution

Section 5 (3) of the Trade Marks Act 1994 allows an earlier trademark holder to prevent registration of a subsequent trademark that weakens the distinctiveness and exclusivity of their own trademark. Section 10 (3) specifies that infringement of a registered trademark occurs when someone uses a mark in commerce that is identical or similar to the registered trademark but applies it on unrelated goods or services. For infringement to happen, the registered trademark must be reputable in the UK and the use of a similar mark must be unjustified. This use must either take unfair advantage of or harm the distinctive character or reputation of the registered trademark. Instances like Adidas-Salomon AG and Adidas Benelux BV V Fitnessworld Jacobs have demonstrated that dilution, also known as 'blurring', falls under the concept of harm.Dilution, also known as 'tarnishment', refers to the decline in association with the original goods over time, negatively impacting how appealing the infringing mark is perceived by the public. Trademark protection focuses on recognition and quality, and even a relatively less famous trademark can claim repute if it has a strong associational image. The required level of repute for trademark protection was established in the General Motors Corporation V Yplon case. Proving harm caused to an earlier mark becomes easier if that mark has stronger distinctive character and reputation. According to rulings from the European Court of Justice (ECJ), terms like "has a repute" in various legal provisions necessitate that the mark is known

by a significant portion of the relevant public. To challenge a trade grade under Article 8(5), a competitor must demonstrate that, in the case of an earlier Community trade grade, it has established a reputation within the Community, or in the case of an earlier national trade grade, within the relevant Member State.The ECJ has determined that national courts must consider various factors, including market share, usage strength and duration, and investment made to promote a trade grade when assessing its reputation. The Advocate General in the Hag II case argued for a balance between public and private interests while ensuring clear communication through trademarks. In the Spa Monopole v OHIM-Spa finders case heard before CFI, it was ruled that reputation for specific goods or services cannot extend to cover others. Mineral water's reputation cannot be used as evidence for category 3 products. The owner of an earlier mark doesn't need to prove actual harm but rather provide prima facie evidence of future risk of unfair advantage or detriment. Section 5 (3) of the amended 1994 Act corresponds to subdivision 10 (3), which applies specifically to different goods and services than those covered by the registration. A violation under subdivision 10 (3) does not require any "likelihood of confusion."The case of Davidoff & Cie SA and Zino Davidoff SA v Gofkid Ltd established that a well-known mark should receive equal protection regardless of similarity in goods. Member states have the ability to provide specific protection to registered trademarks with reputations when a subsequent mark is identical or similar and used for similar goods or services. The European Court of Justice (ECJ) ruled in Adidas v

Fitnessworld that there only needs to be sufficient similarity between marks with a reputation for the public to establish a connection. When implementing Article 4(4)(a), member provinces must offer protection if a later mark is identical or similar to a reputed registered mark, regardless of differences in goods or services. The ECJ clarified that Article 5(2) provides reputation protection without requiring likelihood of confusion; it offers equal protection for marks used on identical or non-similar goods/services. Additionally, registration will be denied if the use of a trademark would unfairly exploit or harm the distinctive character or reputation of an earlier trademark. In the Spa-Finders case, it was determined that "unfair advantage" includes situations where there is clear development and free-riding on the success of well-known trademarks, as well as attempts to profit from their reputation. These actions involve gaining unfair benefits from the goodwill and promotional efforts of previous trademark owners, which can lead to detriment in terms of tarnishing or overshadowing.If there is a connection between two marks or related goods/services that causes harm to the strength and reputation of an earlier mark through association, it may be considered unfair. Evidence of reputation strongly supports claims of unfair advantage or harm. Advocate General Jacobs interpreted Article 5(2) of the EC Trademark Directive in the Adidas case, stating that "unfair advantage of typical character or reputation" encompasses clear development and free-riding on a famous mark's success or an attempt to leverage its reputation. The Court for First Instance (CFI) in Sigla stated that unfair advantage occurs when there is a risk that the image or characteristics associated with a well-known trademark are transferred to goods

covered by a second mark, making it easier to market those goods due to their association with the earlier mark's reputation. In the case of Taittinger SA V Allbev, Sir Thomas Bingham argued against allowing others to benefit from a reputation they did not establish themselves. In L'Oreal SA V Bellure NV, a decorative company attempted to imitate the L'Oreal brand. Jacob LJ emphasized the importance of unfair advantage and explained that using a well-known brand in a similar field hinders its owner from entering that field in the future. In Akteselkabet af 21 November 2001 V OHIM, one brand had a reputation in audiovisual equipment while another sought registration for clothing.
The CFI discovered that using the second mark on clothing could potentially mislead the public into thinking it was connected to the owner of the first mark, as they are accustomed to seeing it on sports-related apparel. This can be detrimental to the distinctiveness of the original mark. In the Spa-Finders case, it was determined that harm occurs when the original mark is no longer able to directly associate with its registered and utilized goods. The CFI concluded that simply establishing a connection between "Spa" and "Spa-Finders" in consumers' minds is not enough evidence to prove potential harm to distinctive character.

In the Intel Corporation Inc V CPM United Kingdom Ltd case, Article 4 (4) (a) of Directive was interpreted by Court as requiring a comprehensive assessment of whether there is a connection between an earlier mark with reputation and a later mark. It is necessary to consider all relevant factors in order to determine how average consumers perceive any association between conflicting marks, taking

into account their level of knowledge, observation skills, and discretion.

The Intel case established that having a reputation for specific goods or services, even if they differ significantly from those associated with a later registered mark, does not automatically imply a connection between the two marks. According to Jacob LJ's argument, simply mentioning the earlier grade to an average consumer when presented with a different product is inadequate evidence;The text emphasizes the importance of the quality and appeal of an earlier grade in relation to its representation of goods and services. It suggests that if the earlier grade appears distinct, it is more likely to be negatively impacted by the use of a similar or identical grade. The court case Claeryn V Klarein explored the concept of harm to a trade mark's reputation, also known as debasement or tarnishment. This occurs when goods associated with an infringing mark attract public attention in a way that reduces the attractiveness of the trade mark. Another case, Sigla SA V OHIM, further explained that harm to reputation arises when unjustified use of a respected trademark has a negative impact on the image of an earlier well-known mark. According to Spa-Finders, CFI (Court for Intellectual Property Rights) has determined that there is no conflict between the goods and services covered by both marks that could harm the reputation of Spa mineral Waters. The Court found that even though Spa-Finders offers lower-quality goods and services such as mineral waters, publications, and travel agency services, it does not tarnish or diminish the appeal of the Spa mark. Proving harm to reputation becomes easier when closely related goods are involved.When a party opposing

a registered trademark demonstrates that their mark already has a strong reputation and using the applicant's mark would unfairly benefit from or harm this reputation, it becomes the responsibility of the applicant to prove that their use is justified. Jacob LJ emphasized in L'Oreal vs. Bellure that establishing due cause is the defendant's duty. In the Nasdaq Stock Market Inc case, CFI determined that Nasdaq had a distinct attractive image relevant to stock market and other related goods similar to those offered by the applicant. The applicant failed to provide evidence justifying their use of the trademark under Article 8(5). Premier Brands UK V Typhoon Europe involved the court ruling that the defendant used Typhoo's established tea brand mark without justification. Initially, it was believed that there would be no confusion between the goods due to their dissimilarity. However, Neuberger J stated that "without due cause" required reasonable justification for using the mark in relation to their goods. Good faith alone does not suffice for registration. Similarly, Hollywood SAS V Souza Cruz SA established that simply using a mark to identify products does not fulfill the requirement of "due cause." These factors serve as guidance for courts in trademark dilution cases.In the end, trademarks have immense value and play a role in achieving commercial success through promoting uniqueness and providing protection. Their importance goes beyond economic worth as they also guarantee quality standards and offer consumer assurance. The European Court of Justice acknowledges that for a trademark to be globally recognized, it must possess a good reputation. Moreover, the ECJ's interpretation recognizes that the term "extra zone" pertains to a trademark's capacity to seek legal

protection, highlighting its broader significance.