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Cover Intellectual Property Law

13. Infringement and loss of registration of trade marks  

This chapter focuses on trade mark infringement, setting out the rights of a trade mark owner to prevent others from making use of any sign which is the same as or similar to the registered mark in the course of trade. A claimant who brings a trade mark infringement action will have to show two things: that an act of infringement has been committed, and that such conduct falls within the scope of protection afforded to the registered mark. Once these two points have been established, the court will normally find in favour of the claimant unless one or more of the counter-arguments raised by the defendant succeeds. A defendant who is sued for trade mark infringement, besides denying that infringement has been made out or raising one of the statutory defences, will usually try to counterclaim that the mark should be revoked or declared invalid.

Chapter

Cover Contemporary Intellectual Property

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

Cover Contemporary Intellectual Property

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 its differences to other IP rights. It discusses the theoretical underpinnings for registered trade mark protection and also the accompanying policy tensions, in the context of an increasingly visible place of brands in society. The chapter introduces the legal regime for the protection of trade marks from an international, EU, and national (UK) perspective. Reflecting relevant agreements and treaties, the chapter outlines various standards established for the protection of trade marks, along with the systems by virtue of which traders can register and protect marks in many countries throughout the world.

Chapter

Cover Holyoak and Torremans Intellectual Property Law

24. Trade marks—an introduction  

This chapter discusses the historical roots of trade marks, the need for reform, and the rationale of a system of trade marks. Over the last decades, trade mark law has been harmonized in Europe; in the UK, the Trade Marks Act 1994 saw a sea change in the law of trade marks.

Chapter

Cover Holyoak and Torremans Intellectual Property Law

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

Cover Intellectual Property Law

12. Relative grounds for refusal of registration  

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.

Chapter

Cover European Intellectual Property Law

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.

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Cover Intellectual Property Law

40. Infringement  

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.

Chapter

Cover European Intellectual Property Law

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.

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Cover Intellectual Property Law

10. Registration of a ‘sign’  

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.

Chapter

Cover Holyoak and Torremans Intellectual Property Law

25. Trade marks—registrability and use  

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.

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Cover Intellectual Property Law

36. Subject Matter  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

This chapter discusses three requirements that a sign must satisfy to be validly registered or, if it is already registered, to ensure that it is not subsequently declared invalid: there is a sign; the sign can be represented adequately; and the sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings. The chapter also considers specific policy-based limits on the registration of shapes or other characteristics of products, in the form of three ‘functionality’ exclusions. It also briefly outlines certification and collective marks.

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Cover Intellectual Property Law

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.

Chapter

Cover Intellectual Property Law

33. Misrepresentation  

L. Bently, B. Sherman, D. Gangjee, and P. Johnson

This chapter considers one element of the action of passing off with respect to trade marks: the requirement that there be a misrepresentation. It first describes the type of conduct that amounts to misrepresentation and the consequences that flow from that conduct, as well as the types of suggestion that are actionable. It then discusses the requirement that a statement must be likely to cause confusion in order to qualify as a misrepresentation. In addition, the chapter explains how passing off action can be brought not only against a person who carries out the misrepresentation, but also against anyone who provides the means for the misrepresentation to occur (such as by providing instruments of deception).

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Cover Intellectual Property Law

7. Trade Marks II: The Relative Grounds for Refusal of Registration, Infringement, and Remedies  

All books in this flagship series contain carefully selected substantial extracts from key cases, legislation, and academic debate, providing able students with a stand-alone resource. This chapter discusses the relative grounds for refusal to register a trade mark; acts that constitute infringement; and remedies for infringement. It considers the finding of the Court of Justice of the EU that the investment, advertising, and commercial functions of a trade mark will be protected as well as its role as a badge of origin in cases of ‘double identity’ under the Trade Marks Directive and domestic law. The chapter considers possible changes to the position under the new Trade Marks Directive and following the UK’s departure from the EU. It looks at cases in which a third party is deemed to have taken unfair advantage of a trade mark with a reputation. It also discusses the use of trade marks on the internet and the implications for findings of infringement.

Chapter

Cover Intellectual Property Law

8. Trade Marks III:Defences, the Loss of a Trade Mark, and Exhaustion of Rights  

All books in this flagship series contain carefully selected substantial extracts from key cases, legislation, and academic debate, providing able students with a stand-alone resource. This chapter considers the limitations of the protection afforded by trade mark registration. It discusses the defences to infringement set out in Article 6 of the Trade Marks Directive and section 11 of the Trade Marks Act 1994; trade marks and comparative advertising; the ways in which it is possible to lose registered trade mark protection (through revocation and a finding of invalidity); and how trade mark rights might be exhausted.

Chapter

Cover Intellectual Property Concentrate

9. Passing-off and trade marks  

Passing-off is a common law cause of action that protects traders with goodwill in their business against misrepresentations made by their competitors which confuse customers as to the source of goods or services. The typical passing-off scenario is where a trader, by the use of a brand name, logo, slogan, or packaging, deceives customers into thinking that its products or services are associated with another trader. Trade marks can be registered for signs or symbols that identify products or services as coming from a particular trader, so to be registrable a trade mark must be distinctive of a trader’s goods and not similar to any earlier registered mark, or a non-registered mark that is in use. Registration of a trade mark gives substantial advantages over relying on passing-off. The law of registered trade marks has been harmonized by the European Union.

Chapter

Cover Intellectual Property Law

37. Absolute Grounds for Refusal  

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.

Chapter

Cover Information Technology Law

20. Trade mark issues  

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.

Chapter

Cover Intellectual Property Law

11. Absolute grounds for refusal of registration  

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.