This chapter discusses the conditions that must be met before a sign can be registered as a trade mark. The Trade Marks Act 1994 defines a ‘trade mark’ as ‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of another’. No mark can be registered unless it satisfies the two vital, but related, factors of being a sign and also capable of distinguishing one trader’s products from those of others. The impact of the removal of the requirement that a sign is capable of being represented graphically from the text of the articles of the Directive is also examined.
Chapter
25. Trade marks—registrability and use
Chapter
26. Trade marks—infringement and revocation
This chapter discusses the law on trade mark infringement and revocation. Section 10 of the Trade Marks Act 1994 establishes the basic criteria for an infringement action. If a mark is already on the Trade Marks Register, it is an infringement to use the same mark for the same goods or services. The grant of a trade mark lasts initially for 10 years from the date of its registration, and this may be renewed for a seemingly indefinite number of further periods of 10 years thereafter on payment of the appropriate fee. There are four grounds listed in s. 46(1) of the 1994 Act for revocation: (i) five years’ lack of genuine use of the mark in the UK without cause; (ii) a suspension for the same period (after initial use); (iii) the mark has become the common name for the product in question in the trade; and (iv) if the mark has been used in a misleading manner, especially as to the nature, quality, or origin of the goods or services in question.
Chapter
31. Character merchandising
Character merchandising does not have much in the way of specific recognition in UK law. In response, the character merchandising industry has sought legal protection via the adaptation of other intellectual property rights and their application to the merchandising field. This chapter discusses how copyright, trade mark law, and various torts combine to confer legal protection on character merchandising.
Chapter
19. Designs
Justine Pila and Paul L.C. Torremans
This chapter considers design law in the EU. Designs have something to do with shape and they are closely linked with the concept of a trade mark for a three-dimensional shape. Under the Community Designs Regulation, a single registered design right is granted in essence and this is done for the whole of the EU. That system is administered by the Office for Harmonization in the Internal Market (OHIM), which also administers the Community trade mark (Article 2 of the Regulation). As with the Community trade mark, the Community design right has a unitary character (Article 1(3) of the Regulation). The remainder of the chapter discusses the requirements for the grant of a registered design; grounds for refusal of registration; rights of the owner and infringement; ownership of and entitlement to a registered design; grounds for invalidity of a registered design; duration of the registered design right; and international commercial exploitation of registered designs.
Chapter
28. Tortious protection of intellectual property rights
This chapter discusses the ways in which the common law, in the form of the law of tort, creates rights of action. It focuses on the torts of passing off and malicious falsehood, although attention is also paid to the ways in which defamation can assist. These rights are supplementary, and complementary, to the statutory formal rights. In particular, trade mark law and passing off closely overlap, although s. 2(2) of the Trade Marks Act 1994 preserves passing off as a separate cause of action.
Chapter
14. Registration and Use of the Trade Mark
Justine Pila and Paul L.C. Torremans
This chapter discusses the acquisition of a trade mark. EU law distinguishes between the product or service to which the trade mark is applied on the one hand, and the trade mark on the other hand. One needs first of all to be in the presence of a sign, something that can be applied to the product or service and that can convey information. The cornerstone of the matter is that the sign should be distinctive as to origin. The main objective of trade mark law is to enable rights holders and consumers to distinguish the source of identical goods or services with a different origin. The remainder of the chapter covers unregistrable marks, absolute grounds for refusal of registration, relative grounds for refusal of registration, applying for a Community trade mark, and uses of trade marks.
Chapter
15. Infringement and Revocation of the Trade Mark
Justine Pila and Paul L.C. Torremans
This chapter considers EU law on trade mark infringement. The basic criteria for an infringement action are established by Article 5 of the Trade Mark Directive and Article 9 of the Trade Mark Regulation. If a mark is already on the register, it is an infringement to use the same mark for the same goods or services. If either, or both, of the two marks and the product in question are similar rather than identical, there will be an infringement if the later use of the earlier mark is likely to cause confusion to the public. Finally, unauthorized use of an identical or a similar mark, even on totally different goods, will also be an infringement if the repute of the original mark would be harmed by such a use. The remainder of the chapter deals with the three main paragraphs on infringement, Articles 5(1)(a), (b) and (2) in the Directive and Article 9(1)(a), (b) and (c) of the Regulation respectively, each of which deal with a different form of trade mark infringement. This is followed by discussions of exceptions to infringement and the revocation and invalidity of trade marks.
Chapter
13. Trade marks 1: key features, theoretical underpinnings, and the national, EU, and international regimes
This chapter introduces the key features of registered trade mark law, highlighting core aspects of registered trade mark protection and differences to other IP rights. It discusses the theoretical underpinnings for registered trade mark protection and accompanying policy tensions, particularly ongoing debates over whether registered trade mark protection should focus on the origin function of the mark or also extend to other trade mark functions associated with the creation and maintenance of brand investment and brand image. The chapter introduces the legal regime for the protection of trade marks from an international, EU, and UK perspective, and considers the impact of Brexit on registered trade mark law. The chapter also outlines the various international treaties relevant to the protection of trade marks.
Chapter
27. Trade marks—European and international aspects
This chapter discusses the international and European aspects of trade marks. Trade mark law is based on the Paris Convention and the TRIPS Agreement, with the Madrid system offering an international registration system. Inside the EU, one can also register a single trade mark for the whole of the Community by means of the Community Trade Mark Regulation. Trade mark law also has a substantial interaction with the Treaty provisions on the free movement of goods, but minimal conflict with competition law.
Chapter
9. Trade marks
This chapter studies trade marks, considering the historical uses of trade marks and the development of UK trade mark law. The way in which trade marks are used has, in some ways, changed little, even though trading conditions today are far removed from those of previous times. Although medieval use was primarily to guarantee quality, use since the Industrial Revolution has been to tell the consumer about the origin of the goods. Meanwhile, the legal history of trade marks shows that the principles articulated in the early cases continue to influence today's law. There is the perennial concern that trade marks create unfair monopolies. The chapter then looks at the commercial functions fulfilled by trade marks in the age of the consumer, with the objective of showing the dilemma inherent in trade mark law. It also examines how EU reforms have impacted on domestic trade mark law.
