Preface
Table of Cases
Table of Statutes
Table of Statutory Instruments
Table of EC and International Material
Chapter 1 Introduction
Registered trade marks
Well-known trade marks
Certification and collective marks
Geographical indications, designations of origin, traditional speciality guarantees
International conventions
Passing off
Olympic symbols
Chapter 2 What is a trade mark?
Trade mark: the statutory definition
A ‘sign’
Capable of being represented clearly and precisely
Capable of distinguishing goods or services of one undertaking from those of other undertakings
Registration in respect of goods or services
Undertakings
Unregistered trade marks
Passing off, s 2(2)
Impediment to registration
Defence to infringement, s 11(3)
Well-known trade marks
Well-known trade marks
Who is entitled to protection—meaning of ‘Convention country’
Meaning of ‘well known’
Well-known marks—basis for opposing registration of later marks
Well-known marks—defence to infringement of later marks?
Well-known marks—remedies for infringement
Company names, business names and internet domain names
Company names
Choice of name
Changing a company’s name—voluntary
Changing a company’s name—compulsory
Publicity to be given to a company name
Passing off and trade mark infringement
Unincorporated businesses and partnerships
Domain names
Chapter 3 Other kinds of mark—collective and certification marks, and protected descriptions
Introduction
Collective and certification marks
Protected descriptions
UK—applications for registration of certification and collective marks
UK—who is the ‘applicant’
UK—registration process for certification and collective marks
UK—absolute grounds for refusal
UK—applicant for a certification mark must not carry on a business in the goods or services
UK—misleading marks
UK—regulations relating to certification/collective marks
UK—time for filing the regulations
UK—regulations relating to collective marks
UK—regulations relating to certification marks
UK—post-registration amendment of regulations
UK—post-registration transfer of ownership
UK—revocation and invalidity of certification and collective marks
UK—infringement of collective and certification marks
European Union collective and certification marks
EU—collective and certification marks—the application process
EU—collective and certification marks—requirement to submit regulations
EU—collective and certification marks—examination
EU—collective and certification marks—amendment of regulations
EU—collective and certification marks—revocation and invalidity
EU—collective and certification marks—infringement
Protected geographical indications and designations of origin
Protected Descriptions—the subject matter of protection
Protected Descriptions—descriptors ineligible for protection
Protected Descriptions—formal requirements for protection
Protected Descriptions—use of the protected description
Protected Descriptions—scope of protection
Protected Descriptions—relationships with trade marks
Traditional Speciality Guarantees
Chapter 4 Absolute grounds for refusal
The absolute grounds for a refusal of registration
Signs that do not satisfy the definition of a trade mark—s 3(1)(a); Art 7(1)(b)
Marks devoid of distinctive character—s 3(1)(b); Art 7(1)(b)
Descriptive marks—s 3(1)(c); Art 7(1)(c)
Generic marks—s 3(1)(d); Art 7(1)(d)
Acquired distinctiveness—s 3(1); Art 7(3)
Marks for the shape of the goods—s 3(2); Art 7(1)(e)
Marks contrary to policy or morality—s 3(3)(a); Art 7(1)(f)
Deceptive trade marks—s 3(3)(b); Art 7(1)(g)
Contrary to law—s 3(4)
Emblems—ss 3(5), 4, 57 and 58; Art 7(1)(h) and 7(1)(i)
Bad faith—s 3(6); Art 52(1)(b)
Chapter 5 Relative grounds for refusal of registration; trade mark functions; honest concurrent use
Introduction
Overlap with infringement provisions
References to legislation
Conflicts with earlier registered trade marks
Grounds for opposing registration
Harm to the trade mark function
Applications for registration of an earlier mark
Issues arising
Earlier trade mark
Identity of marks
Similarity of marks
Identity of goods or services
Similarity of goods and services
Likelihood of confusion
Interdependence of assessments of similarity
Distinctiveness of the earlier trade mark through use
To what extent are the common elements of the marks used by various parties?
Marks with a reputation
Taking unfair advantage of the distinctive character or repute of the mark
Detriment to distinctive character or repute
Use of the later mark without due cause
Conflicts with other earlier rights
UK: rights protecting unregistered trade marks used in the course of trade
UK: protection for other unregistered rights (copyright, design right, etc)
Unregistered rights applicable to EUTMs
Trade mark ‘functions’
The essential function—origin
Other functions—the advertising and investment functions
Current status of ‘honest concurrent use’
Chapter 6 Classification
The requirement for a classification system
Nice Classification System
The requirement for an applicant to specify class(es) and the goods, and/or services
Points for the applicant to consider when applying
Requirement for clarity and precision in specifying goods or services
Use of the Class headings to specify goods and services
Specification should cover goods/services in both existing and anticipated future areas of activity
Difficulties arising when the specification is too broadly stated
Exclusions from protection—practice since Postkantoor
Retail, wholesale and shopping-centre services
Amendments to applications—restrictions on widening the scope of an application post-filing
Chapter 7 UK procedure for the registration of a trade mark
Introduction
The application
The application form and fees payable
Requirements for the filing of an application
Requirements in order to obtain a filing date
Requirements not necessary to obtain a filing date
Deficient applications
Further requirements
Examination of the application
Publication of the application
Opposition to the application
The time for filing opposition to the registration
The need to contact the applicant for the trade mark before opposing—impact on costs
Formalities in the filing of opposition
Notification of opposition to applicant
The cooling-off period
Extension of the cooling-off period
Termination of the cooling-off period
The applicant’s Form TM8 incorporating the counterstatement
The request for the opponent to prove use
The counterstatement
Preliminary indications
Implications of a preliminary indication
Procedural consequences of a preliminary indication
Notice to proceed with the opposition
The filing of evidence
Time limits for the filing of evidence
Extension of time for filing evidence
The form of evidence in opposition proceedings
Who should give the witness statement
Evidence by the opponent regarding the likelihood of confusion—the distinctiveness of the earlier mark
Evidence by the applicant regarding the likelihood of confusion—the distinctiveness of the earlier mark
Evidence regarding the goods and services
Challenging evidence
Cross-examination
Hearings
Skeleton arguments
Costs
Fast track oppositions
Fast track procedure
Appeals
Observations
Chapter 8 Application procedure before EUIPO
Introduction—EU trade marks
EUIPO and its procedures
The filing of an application for a EUTM
The requirements if the application is to be given a filing date
Representation of the mark
Further formal requirements
Claiming priority
Claiming seniority
Withdrawal or amendment of application
Examination of the application
The search
Publication
The opposition procedure
Opposition—the basis for opposing registration
Opposition—procedural requirements
Opposition—admissibility of the notice of opposition
Opposition—the absolute requirements for admissibility
Opposition—payment of the fees
Opposition—more on the absolute requirements for admissibility
Opposition—relative admissibility requirements
Opposition—further elements to consider
Opposition—two-month cooling-off period
Opposition—filing of evidence
Opposition—proving existence and validity of earlier trade mark applications/registrations
Opposition—documents to be in the language of the proceedings or translated
Opposition—applicant’s evidence and observations in reply
Opposition—applicant’s request that opponent proves use
Opposition—opponent’s proof of ‘genuine use’
Opposition—the evidence to prove genuine use
Opposition—further evidence and arguments
Opposition—formalities for filing evidence
Opposition—costs
Appeals
Chapter 9 International conventions—the Madrid System
Introduction
The Madrid System
The Madrid System in outline
The basic application/registration
The application form for an international registration
Consideration by WIPO—notification of formal irregularities (irregularities other than as to the classification of goods and services or their indication)
Consideration by WIPO—irregularities as the specification of goods and services
Designations with additional requirements
International registration, notification of the office of origin
Chapter 10 Representation
Introduction
Representation before UKIPO
Need for an address in the UK, EEA or Channel Islands
Appointment of a representative before the UKIPO
Cancellation of representation
Representation before EUIPO
Meaning of ‘legal practitioner’
Meaning of ‘professional representative’
Representation before WIPO
Appointment of a representative
Cancellation of appointment
Chapter 11 Invalidity
Introduction
A Invalidity under the TMA 1994—s 47
The grounds for declaring a trade mark invalid
Invalidity due to breach of s 3 (absolute grounds for refusal)
Invalidity due to existence of an earlier trade mark or earlier right (relative grounds for refusal)
The procedure for invalidation of UK trade marks under s 47
The procedure before UKIPO
B Invalidation proceedings at EUIPO
The basis for invalidation proceedings at EUIPO
Procedure for an application for invalidity before EUIPO
Next steps—procedure following an admissible application for a declaration of invalidity
Proof of use
Costs and appeals before EUIPO
Chapter 12 Revocation
Introduction
The action for revocation
The legislative provisions
A Revocation for non-use: s 46(1)(a)–(b); Art 58(1)(a)
The date to be considered
The meaning of ‘genuine use’
The level of use required
Nature of activities
Use of the mark as registered
Whether a mark differs in elements that affect its distinctive character
Use for the goods or services of the registration
Use in the relevant time period
Use in the relevant territory
Partial revocation
The UK approach to partial revocation on the basis of non-use
The approach to partial revocation on the basis of non-use before EUIPO
Proper reasons for non-use
Cases where proper reasons have been found
B Revocation where trade mark has become the common name in the trade for a product or service for which it is registered: s 46(1)(c); Art 58(1)(b)
‘The common name’ and ‘in the trade’
For the product or service for which it is registered
Resulting from the acts or inactivity of the registered proprietor
C Revocation where trade mark has become misleading: s 46(1)(d); Art 58(1)(c)
Practice and procedure
Chapter 13 Ownership of and dealings with trade marks
Introduction
UK registered trade marks
UK trade mark—a property right; legal and beneficial ownership
UK trade mark—co-ownership
UK trade marks—assignments and other transfers
UK trade marks—registration of assignments and of other transfers
UK trade marks—title to and dealings with applications for registration
UK trade marks—licence and mere ‘consents’
UK trade marks—the terms of a licence
UK trade mark—right of licensees to bring infringement proceedings
UK trade mark—recordal of licences
UK trade mark—consequences of failure to register a registrable transaction
European Community trade marks
EUTM—property right to be dealt with in its entirety
EUTM—applications for an EUTM
EUTM—transfers
EUTM—effect vis-à-vis third parties
EUTM—recordal of transfers
EUTM—licences
EUTM—recording of licences at EUIPO
International registrations
International registrations—recordal of assignments at WIPO
International registrations—recordal of licences at WIPO
Chapter 14 Infringement and parties to infringement actions
Introduction
A Summary of the infringement provisions
Relevant legislation
The infringement provisions
Overlap with relative grounds for a refusal to register a mark
B Exclusive rights
C Identical marks, identical goods or services (‘double identity’)—Directive Art 10(2)(a); TMA 1994 s 10(1); EUTMR Art 9(2)(a)
Condition (i)—use of a sign by a third party
Condition (ii)—the use must be use in the course of trade
Condition (iii)—the use must be without the consent of the trade mark proprietor
Condition (iv)—the use must be of a sign that is identical to the mark
Condition (v)—the use in relation to identical goods or services
Condition (vi)—the use must affect or be liable to affect the functions of the trade mark
D Likelihood of confusion—Directive Art 10(2)(b); TMA 1994 s 10(2); EUTMR Art 9(2)(b)
Conditions (i), (ii) and (iii)
Condition (iv)—use of a sign that is identical or similar to the mark
Condition (v)—use in relation to identical or similar goods or services
Condition (vi)—likelihood of confusion
E Unfair advantage of or detriment to the distinctive character or repute of a mark—Directive Art 10(2)(c), TMA 1994 s 10(3), EUTMR Art 9(2)(c)
Condition (i)—mark must have a reputation
Conditions (ii)–(v)
Condition (vi)
Condition (vii)—link with the mark
Condition (viii)—injury: causing detriment to or taking unfair advantage of distinctive character or repute
Condition (ix)—use was without due cause
F Who may be sued for infringement
Those using the mark
Joint tortfeasors
Affixing a sign to materials—Directive Art 11; TMA 1994 s 10(3B); EUTMR Art 10
G Who may sue for infringement?
Proprietors
Co-proprietors
Licensees
Chapter 15 Defences, disclaimers and limitations
Introduction
Defences under s 11/Arts 14, 16 and 138
Use of a registered trade mark where that mark is not liable to be declared invalid—s 11(1)/Art 16
Descriptive use—s 11(2)/Art 14
Use of one’s own name—s 11(2)(a)/Art 14(1)(a)
Use of indications of characteristics—s 11(2)(b)/Art 14(1)(b)
Use to indicate intended purpose—s 11(2)(c)/Art 14(1)(c)
The ‘honest practices’ proviso to s 11(2)/Art 14
Use of earlier rights in a particular locality—s 11(3)/Art 138
Acquiescence—s 48/Art 61
Exhaustion of rights—s 12/Art 15
Exhaustion in Europe and beyond
Acts amounting to first marketing
By or with the consent of the proprietor
Demonstrating consent
Legitimate reasons to oppose the further dealings in the goods
The meaning of artificial partitioning
Adversely affecting the original condition of the product
Presentation not to affect the reputation of the trade mark or of its owner
Requirement to label, provide notice and provide samples
Disclaimers—s 13(1)(a)
Limitations—s 13(1)(b)
The rights of co-proprietors under UK law
Chapter 16 Comparative and misleading advertising, and malicious falsehood
Introduction
General scheme of the CAD
The definitions in Article 2
Misleading advertising—Article 3
Allowance comparative advertising—Article 4
Malicious falsehood
Definition of malice
The meaning of the statement
Damage
Hyperbole and puffery
Malicious falsehood and comparative advertising
Relief
Chapter 17 Remedies
Introduction
Remedies for infringement of registered trade marks
Remedies—UK trade marks
Remedies—the effect of Brexit; comparable trade marks (EU)
Remedies—EUTMs
Pecuniary remedies—election between damages or an account of profits
Damages
Accounts of profits, s 14(2)
Injunctions, s 14(2)
Any other relief, s 14(2)
Remedies in respect of infringing goods, material and articles
Regulation (EU) No 608/2013 (as amended)
TMA 1994 s 89
Remedies for infringement of well-known marks
Unauthorised application for registration by an agent or representative
Unauthorised use of royal arms
Co-proprietors
Licensees
Jurisdiction of the courts
Chapter 18 Groundless threats
Introduction
Threats of infringement proceedings
Form of ‘threat’
Excluded threats
The permitted communications exclusion
Not an ‘express threat’
A permitted communication
Information that is ‘necessary’
A permitted purpose
Purposes that are not permitted
Person aggrieved
Person liable in respect of an actionable threat
Threats by professional adviser
Professional adviser
The conditions to be satisfied
Defences
Remedies
Chapter 19 Criminal offences
Introduction
Unauthorised use of a trade mark: counterfeiting
The mental element
Without consent
Infringing signs
Section 92(1)—goods bearing the sign
Section 92(2)—materials bearing the sign
Section 92(3)—articles for making signs
Section 92(5) defence—reasonable belief of non-infringement
Partnerships and bodies corporate
Enforcement
Penalties
Offences relating to the register
Section 94—Falsification of the register
Section 95—Falsely representing a mark as registered
Other offences
Section 99—Unauthorised use of royal arms
Chapter 20 Passing off
Introduction
The boundaries of passing off—need for deception and goodwill
Contrast with trade mark law
Who can sue
‘Extended’ and ‘reverse’ passing off
Significance of case law
Elements of the classic form of passing off
Structure of this chapter
A Nature of goodwill
Definition of goodwill
Ownership of goodwill
Scope and extent of goodwill
Time of assessment
Goodwill in ‘extended’ passing off
International goodwill
‘Anticipatory’ goodwill
Residual goodwill
An alternative to goodwill—s 56(2) of the Trade Marks Act 1994
B Embodiment of goodwill
Inherently distinctive trade marks
Other signs, get-ups, images and features
Descriptive names—secondary meaning
C The subject matter of the misrepresentation
Misrepresentation as to origin
Misrepresentation as to association, sponsorship, endorsement or other trade connection
Other misrepresentations: the key element of deception, and the notion of ‘initial interest’ confusion
Who must be deceived by the misrepresentation?
D Factors which may negate a ‘misrepresentation’
Does intent matter?
Use of own name
Acts outside the United Kingdom
Descriptive use of terms or names
Use of other distinguishing material, including disclaimers
Comparative advertising, spares and accessories
E Common field of activity
Relevance to deception or likelihood of deception
Relationship with damage
F Damage to or loss of goodwill
Loss of sales, damage by substitution
Dilution of the value of the goodwill
G Evidence
Evidence of reputation/goodwill
Evidence of misrepresentation
Evidence of damage to goodwill
Methods of obtaining evidence
H Defences
I Remedies
Damages
Account of profits
Injunctions
Interim injunctions
Comment on interim injunctions
Delivery up
Order to change name
J Practical matters
Pre-emptive measures to consider
Other matters
Chapter 21 Olympic symbols
Introduction
The Olympics Association Right
Infringement
Relevant representations
Suggesting an association
Use in course of trade, in the UK, without consent
Defences
Remedies
Appendices
Appendix 1 Trade Marks Act 1994
Appendix 2 Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (codification)
Appendix 3 Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks
Index