1. 9 Infringement
S9 (Rights of the trademark owner)
The proprietor of a registered trademark
has exclusive rights in the trademark
which are infringed by use of the
trademarks in the United Kingdom
without its consent
S10(1)-(3) TMA (Infringement acts)
S10(1) – The double identity ground
A person infringes a registered trademark
if he uses in the course of trade a sign
which is identical with the trademark in
relation to goods or services which are
identical with those for which it is
registered
S10(2) – Confusing similarities
A person infringes a registered trademark
if he uses in the course of trade a sign
where because –
(a) The sign is identical with the
trademark and is used in relation
to goods or services similar to
those for which the trademark is
registered, or
(b) The sign is similar to the trademark
and is used in relation to goods or
services identical with or similar to
those for which the trademark is
registered,
(c) There exists a likelihood of
confusion on the part of the public,
which includes the likelihood of
association with the trademark
S10(3) – Marks with a reputation
A person infringes a registered trademark
if he uses in the course of trade a sign
which –
(a) Is identical with or similar to the
trademark, and where the trade
has a reputation in the UK and the
use of the sign, being without due
cause, takes unfair advantage of,
or is detrimental to, the distinctive
character or the repute of the
trademark
Infringement acts - relative grounds
The grounds for infringement of S10(1)-
(3) mirror the relative grounds for refusal
in S5(1)(3)
No requirement of knowledge or
intention on the part of the
defendant. Liability is strict
No need to demonstrate damage
Possibility to commence an action
for infringement even though the
mark has not been used
Two main differences:
1. Need to identify the defendant’s
sign
2. In order to infringe, it must be
shown that the defendant used the
mark “in the course of trade”
What is the defendant’s sign?
Compare the sign as registered by the
claimant with the sign used by the
defendant
British Sugar v Robertson (TREAT) –
ROBERTSON’S TOFFEE TREAT and
TREAT are considered as being
identical
SA Societe LTJ Diffusion v SA Sadas
– ARTHUR and ARTHUR ET FELICIE
are considered non-identical
- There is identity where a sign
reproduces “without any
modification or addition, all the
elements constituting the
trademark”
2. - The courts will only be justified in
ignoring extraneous matter if it
would, in the eyes of the average
consumer, not be regarded as
being part of the sign
What is “use in the course of trade”?
Prerequisite for all grounds of
infringement
Euromarket Designs v Peters – In
order to sustain an action for
infringement of a British TM, the
infringing act must take place in
the UK. Here, anyone visiting the
website from anywhere other
than Ireland would understand
that the site was not directed at
them
Rationale of the requirement:
- to restrict the scope of protection
given to TM owners
- to minimize the impact that TMs
have upon non-commercial uses of
the sign
S10(4) – What kind of uses are covered?
A person uses a sign if, in particular, he -
(a) affixes it to goods or the packaging
thereof;
(b) offers or exposes goods for sale,
puts them on the market or stocks
them for those purposes under the
sign, or offers or supplies services
under the sign
(c) imports orexports goods under the
sign; or
(d) uses the sign on business papers or
in advertising
Trebor v Football Association – To
“affix a sign”, the mark must be
used directly rather than indirectly
on the goods. It is not enough if a
mark incidentally appears on the
defendant’s goods. Here, it was
held that T's act of publishing and
marketing the cards bearing
photographs of players wearing
the England football strip
including the "Three Lions" logo
did not in any sense amount to
using the logo in respect of the
cards on which the photographs
appeared, and certainly did not
amount to using the logo as a sign
in respect of the cards
- “Trade” includes any business or
profession
- “Trade” does not cover social or
domestic uses
- Use of a sign in art or music?
Arsenal v Reed – Uses “in the
course of trade” are uses which are
in the context of a commercial
activity with a view to economic
advantage and not as a private
matter. Here, R's defence was that
the signs had not been used as
trademarks indicating trade
origin, but were merely a sign of
affiliation to A's football club but
court ruled in favour of A as a
substantial number of customers
would find otherwise
…but the question whether they would
infringe would depend upon whether they
affect one of the essentials functions of
the mark, and whether they are covered
by a defence
1) Use as a trademark – the use of a
sign as a trademark, ie as a badge
of origin will constitute a relevant
use, and therefore will infringe
3. 2) Use as a description – for purely
descriptive purposes are non-
infringing because they do not
jeopardise the essential function of
the mark
Holterhoff v Freiesleben - that it
had been accepted by the German
court that H had used the terms
SPIRIT SUN and CONTEXT CUT
solely in order to describe the type
of cut of the precious stones
offered for sale and the description
was not meant to suggest that the
stones originated from F
3) Use as a trade name – use as trade
name in not in itself use in a
trademark sense. However, a shop
might use a trade name in a way
that was perceived as
distinguishing the goods of the
shop from those of other traders.
In such case use would be
infringing
Celine SARL v Céline SA
S10(5) – Secondary infringement
A person who applies a registered trade
mark to material intended to be used for
labelling or packaging goods, as a business
paper, or for advertising goods or services,
shall be treated as a party to any use of
the material which infringes the registered
trade mark if when he applied the mark,
he knew or had reasons to believe that
the application of the mark was not duly
authorised by the proprietor or a licensee
10 Invalidity and Revocation
S47 – Invalidity
A trademark may be declared invalid if it
was registered in breach of one of the
absolute or relative grounds for refusal
S46 – Revocation
4 grounds for revocation:
1) The trademark has not been used
for five years following the date of
the completion of the registration
(non-use)
2) The use of the trademark has been
suspended for an uninterrupted
period of five years (suspension of
use)
3) The trademark has become the
“common name in the trade”
(generic)
4) The trademark has been used in a
way so that it is liable to mislead
the public (deceptive)
S46(2) – Genuine use
For a mark to be kept on the register, it
has to be shown that it has been put to
genuine use in the UK
Two possible understandings of genuine
use:
- Any use which is not artificial,
fictitious or merely to retain the
mark
- Need for real substantial use in the
marketplace
Ansul BV v Ajax BV
o Use as a trademark
o Use via associated marks
o Use by a licensee
Place of use
Proper reasons of
non-use – existence
of obstacles to use
S46(1)(c) – Generic marks
The registration of a trademark may be
revoked because as a consequence of the
acts or inactivity of the proprietor, it has
become the common name in the trade
4. for a product or service for which it is
registered
Re Gramaphone Company’s
Application
S46(1)(d) – Misleading Uses (deceptive
marks)
The registration of a trademark may be
revoked where as a consequence of the
use made of it by the proprietor or with
his consent in relation to goods or services
for which it is registered, it is liable to
mislead the public, particular as to their:
- Nature
- Quality
- Geographical origin
Orwoola Trade Mark
11 Defences
Defences are available where a person has
been charged with trademark
infringement
Defences balance the interests of the
trademark owner and honest competitors
S10(6) – Comparative advertising
Nothing in the provision dealing with
infringement shall be construed as
preventing the use of a registered
trademark for the purpose of identifying
goods or services as those of the
proprietor or a licensee
Elements of defence:
- The TM is used for the purpose of
identifying goods or services as
those of the proprietor or licensee
- The use is in accordance with
“honest practices”
- The use does not “without due
cause, take unfair advantage of,
and is not detrimental to, the
distinctive character or repute of
the mark
O2 Holdings v Hutchison – The
TMA must be interpreted as
permitting comparative
advertisement, so long as it is
conducted in accordance to honest
practices, as those practices have
been defined for the purpose of
the Directive
Article 4 CAD
Comparative advantage shall… be
permitted [if]
a) Nor misleading
b) Compares goods or services
meeting the same needs or
intended for the same purpose;
c) Objectively compares one or more
material, relevant, verifiable..
d) Does not discredit or denigrate the
trademarks
e) For products with designation or
origin..
f) It does not take unfair advantage
of the reputation of a trade mark
g) It does not present goods or
services as imitations or replicas of
goods or services bearing a
5. protected trademark or trade
name
h) It does not create confusion among
traders
S11(1) – Use of a registered trademark
A registered trademark is not infringed by
another registered trademark in relation
to goods or services for which the latter is
registered
Registration provides a defence to an
action for infringement
S11(2)(a) – Own name defence
Defence to a claim of infringement where
a person uses their own name or address,
on condition that the use is in accordance
to honest practices in industrial and
commercial matters
Nichols’ trademark Application
S11(2)(b) and (c) – Descriptive use and
intended purpose
A registered trademark is not infringed
where the mark is used to indicate the
kind, quality, quantity, intended purpose,
value, geographical origin, the time of
production of goods or of rendering of
service, or other characteristics of goods or
services
A registered TM is not infringed where the
def finds it necessary to use the TM to
indicate the intended purpose of a product
or service (in particular accessories and
spare parts)
This is subject to the condition that the
use is in accordance to honest practices in
industrial and commercial matters
Gerolsteiner Brunnen GmbH v
Putsch GmbH
What is an honest practice?
The Gilette Company v LA-
Laboratories – Honest practices
constitute a duty to act fairly in
relation to the legitimate interests
of the trademark owner
The use of a trademark would not be in
accordance with the test where:
- It is done in such a manner that it
may give the impression that there
is a commercial connection
between the reseller and the
trademark proprietor
- Where the use would affect the
value of the trademark by taking
unfair advantage of its distinctive
character or repute
- If the use discredits or denigrates
that mark
- The third party presents its
product as an imitation or replica
of the product bearing the
trademark of which is is not the
owner
S12 – Exhaustion of rights
A registered trademark is not infringed by
the use of the trademark in relation to
goods which have been put on the market
in the EEA under that trademark by the
proprietor or with his consent, unless the
proprietor has legitimate reasons to
oppose further dealings in the goods
Legitimate reasons:
1) Altering the goods
Sony Computer Entertainments v
Tesco Stores
2) Repackaging
Bristol-Myers v Paranova
3) Rebranding
Bristol-Myers v Paranova
4) Advertising the goods
6. Parfums Christian Dior SA v Evora
BV
As a general rule, a trademark owner has a
right to object to the marketing of
repackaged goods. However, if a number
of conditions are met then the trademark
owner will not be able to exercise that
right
The exact conditions and their scope can
vary depending on the type of goods and
the type of repackaging in question
Examples of conditions:
the repackaging is necessary in
order to market the product in the
Member State of importation
the repackaging cannot adversely
affect the original condition of the
product
the presentation of the repackaged
product is not such as to be liable
to damage the reputation of the
trademark and its owner
Silhouette – There is no
international exhaustion
Zino Davidoff – Right to oppose
parallel importation from outside
the EEA cannot be used where the
trademark owner has consented to
such importation
