This chapter analyses the relative grounds for refusal of trade marks from registrability. Whilst absolute grounds are concerned with an analysis of a proposed mark's innate qualities, covering defects in the mark as such, relative grounds involve a comparison of the mark with prior rights. In particular, relative grounds occur when a mark applied for is already in use or when a similar mark is already in use. The chapter notes that s. 5 of the Trade Marks Act 1994 recognises three instances in which relative grounds for refusal will succeed: where the sign is identical to an earlier sign and the goods and/or services applied for are also identical; where the sign is identical to an earlier sign and the goods and/or services applied for are similar; and where the sign is similar to an earlier sign and the goods and/or services applied for are identical or similar.
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This chapter discusses the registration of trade marks. Unlike passing off protection that is not subject to formalities, trade marks ought to be registered in order to receive legal protection. Whether a trade mark is capable of registration depends on three requirements. First, whether the subject matter of the application satisfies the definition of ‘trade mark’ in s. 1 of the Trade Marks Act 1994; second, whether there are any objections to the application under the absolute grounds for refusal in s. 3; and third, whether there are any prior rights which could prevent registration under the relative grounds for refusal in s. 5. The chapter then presents an outline of the registration procedure. In essence, the procedure can be broken down into six steps: application and filing of Form TM3; examination; search and notification of prior rights; publication and notification to owner(s) of prior rights; opposition; and registration.
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L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter deals with trade mark infringement, as set out in sections 10(1)-(3) of the Trade Marks Act 1994. It first outlines a non-exhaustive list of the situations in which a person uses a sign, such as affixing the sign to the goods or to the packaging; importing or exporting goods under the sign; or using the sign on business papers or in advertising. It then discusses how the claimant’s and defendant’s marks may be identified for comparison purposes, and the range of situations in which an infringement claim is viable, including when a mark is used in a relevant manner, in the course of trade, within the territory of the UK, and in relation to goods and services. Finally, it examines the functions of a trade mark, commencing with the ‘origin’ function. It concludes by considering secondary or accessory liability for trade mark infringement, especially relevant for Internet platforms.
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This chapter examines the absolute grounds for refusal of trade marks from registrability, which are found in s. 3 of the Trade Marks Act 1994 (TMA). The chapter lists objections to registrability based on the mark's own characteristics. To be refused registration, the mark should possess some innate quality which prevents registration. For instance, the mark applied for may be descriptive, generic, or it may lack distinctiveness. Marks that go against public policy or marks that are immoral will also be refused protection. The TMA also contains a number of negative objections in contrast to its predecessor, which required an applicant to show that the mark applied for was positively entitled to registration.
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This chapter focuses on trade mark protection in the United Kingdom and its operation in the context of Internet related activities. Trade marks constitute a key component of the system of intellectual property rights. The present law is to be found in the Trade Marks Act 1994, which was introduced in order to enable the United Kingdom to comply with its obligations under the 1988 EC Directive to Approximate the Laws of the Member States Relating to Trade Marks. The chapter discusses the effect of trade marks; the doctrine of passing off; trade marks and information technology; Internet-related trade mark disputes; the uniform dispute resolution rules; and trade marks and Internet search engines.
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L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter examines the ‘absolute’ grounds for refusing to register a trade mark as set out in section 3 of the Trade Marks Act 1994. It first looks at the reasons for denying an application for trade mark registration before analysing the absolute grounds for refusal, which can be grouped into three general categories: whether the sign falls within the statutory definition of a trade mark found in sections 1(1) and 3(1)(a) and (2) of the Trade Marks Act 1994; whether trade marks are non-distinctive, descriptive, and generic; and whether trade marks are contrary to public policy or morality, likely to deceive the public, or prohibited by law, or if the application was made in bad faith. Provisions for specially protected emblems are also considered.
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L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter examines revocation as a reason for removing a mark from the register and the grounds for revocation as set out in section 46 of the Trade Marks Act 1994. It begins by discussing the first ground on which a mark may be revoked: ‘non-use’ (the trade mark has not been used for five years following the date of completion of the registration). It considers the relevant period of non-use and proper reasons for non-use, along with the issue of rewriting the specification with respect to goods and services. The chapter then looks at the second ground for the revocation of trade marks: if the mark has become the ‘common name in the trade’ (that is, generic marks). The final reason for revocation is if the mark has been used in a way that misleads the public (that is, deception is involved).
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L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter is concerned with the exploitation and use of trade marks under the Trade Marks Act 1994. It first considers the ownership of trade marks and ‘unregistered marks’ and the problems that arise in relation to co-ownership. It then describes the ways in which trade marks and ‘unregistered marks’ can be exploited (self-exploitation, assignment, voluntary licences, compulsory licences, mortgages, testamentary dispositions) as well as the limitations placed on the uses that can be made of a trade mark. Registration of interests and transactions is also discussed, and UK competition law is compared with that in Europe. In addition, the chapter presents a list of terms that are commonly used in trade mark licence agreements and the approach that competition law takes towards them. Finally, it outlines trade mark delimitation agreements.
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L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter examines the ‘absolute’ grounds for refusing to register a trade mark as set out in section 3 of the Trade Marks Act 1994, Article 3 of the Trade Marks Directive, and Article 7 of the European Union Trade Mark Regulation (EUTMR). It first looks at the reasons for denying an application for trade mark registration before analysing the absolute grounds for refusal, which can be grouped into three general categories: whether the sign falls within the statutory definition of a trade mark found in sections 1(1) and 3(1)(a) and (2) of the Trade Marks Act 1994; whether trade marks are non-distinctive, descriptive, and generic; and whether trade marks are contrary to public policy or morality, likely to deceive the public, prohibited by law, or if the application was made in bad faith. Provisions for specially protected emblems are also considered.
Chapter
L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter deals with trade mark infringement, as set out in sections 10(1)-(3) of the Trade Marks Act 1994 and Article 9 of the European Union Trade Marks Regulation (EUTMR). It first outlines a non-exhaustive list of the situations in which a person uses a sign, such as affixing the sign to the goods or to the packaging; importing or exporting goods under the sign; or using the sign on business papers or in advertising. It then discusses how the claimant’s and defendant’s marks may be identified for comparison purposes, and the range of situations in which an infringement claim is viable, including import or export and use on the Internet. Finally, it examines the functions of a trade mark, commencing with the ‘origin’ function. It concludes by considering secondary or accessory liability for trade mark infringement, especially relevant for Internet platforms.
Chapter
L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter examines revocation as a reason for removing a mark from the register and the grounds for revocation as set out in section 46 of the Trade Marks Act 1994 and Article 57 of the European Union Trade Marks Regulation. It begins by discussing the first ground on which a mark may be revoked: ‘non-use’ (the trade mark has not been used for five years following the date of completion of the registration). It considers the relevant period of non-use and proper reasons for non-use, along with the issue of rewriting the specification with respect to goods and services. The chapter then looks at the second ground for the revocation of trade marks: if the mark has become the ‘common name in the trade’ (that is, generic marks). The final reason for revocation is if the mark has been used in a way that misleads the public (that is, deception is involved).
Chapter
L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter is concerned with the exploitation and use of trade marks under the Trade Marks Act 1994 and the European Trade Marks Regulation (EUTMR). It first considers the ownership of trade marks and ‘unregistered marks’ and the problems that arise in relation to co-ownership. It then describes the ways in which trade marks and ‘unregistered marks’ can be exploited (self-exploitation, assignment, voluntary licences, compulsory licences, mortgages, testamentary dispositions) as well as the limitations placed on the uses that can be made of a trade mark. Registration of interests and transactions is also discussed, and UK competition law is compared with that in Europe. In addition, the chapter presents a list of terms that are commonly used in trade mark licence agreements and the approach that competition law takes towards them. Finally, it outlines trade mark delimitation agreements.
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L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter introduces the common law of passing off and the statutory regime that protects registered trade marks found in the Trade Marks Act 1994. It commences with a brief history of trade marks and the development of their legal protection. This is followed by a discussion of the ways in which legal protection of signs and symbols are justified. It then considers the international and regional background that informs and constrains the law on trade marks in the UK, with particular reference to registration and the harmonization of standards. The chapter concludes by looking at challenges posed to trade marks by electronic commerce and the use of trade marks as domain names, as well as recent developments in artificial intelligence which will impact this field.
Chapter
L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter introduces the common law of passing off and the statutory regime that protects registered trade marks found in the Trade Marks Act 1994. It commences with a brief history of trade marks and the development of their legal protection. This is followed by a discussion on the ways in which legal protection of signs and symbols are justified. It then considers the international and regional background that informs and constrains the law on trade marks in the UK, with particular reference to registration and the harmonization of standards. The chapter concludes by looking at challenges posed to trade marks by electronic commerce and the use of trade marks as domain names, as well as the phenomenon of supermarket lookalikes or own brands.
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L. Bently, B. Sherman, D. Gangjee, and P. Johnson
This chapter is about the various defences that are available to a person who has been accused of infringing a trade mark under the Trade Marks Act 1994. A prominent limitation on the scope of protection, which operates defensively, is whether the defendant has made a legally relevant use of the mark. Besides this, the defendant is excused if the mark has been used (i) as the defendant’s own name or address, (ii) for descriptive purposes, or (iii) to indicate the intended purpose of a product or service. These threeuses are subject to a proviso testing for whether the use has been in accordance with honest practices in industrial and commercial matters. Additional defences facilitate comparative advertising and permit parallel importation via the exhaustion of the trade mark owner’s rights upon first sale.
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Each Concentrate revision guide is packed with essential information, key cases, revision tips, exam Q&As, and more. Concentrates show you what to expect in a law exam, what examiners are looking for, and how to achieve extra marks. This chapter reviews the law on intellectual property and data protection. The law of copyright is governed by the Copyright, Designs and Patents Act (CDPA) 1988 that protects original materials including literary, dramatic, musical, artistic works, and typographical arrangements. The Trade Marks Act 1994 protects the owner of any sign capable of being represented graphically and which is capable of distinguishing the goods or services of one undertaking from those of another. Registration of a patent prevents others from making, using, or selling the same product without permission. The protection lasts for five-year periods (to a maximum of 20 years). The changes introduced through the Data Protection Act 2018, the General Data Protection Regulation, the Law Enforcement Directive and the Intellectual Property (Unjustified Threats) Act 2017 are also discussed.
