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These are the slides for my introduction to brands which I presented on the 25 September 2013 to an audience of 20 at 4-5 Gray's Inn Square.
This talk follows on from my Introduction to IP in June 2013 and if you have not seen those slides or read the manual it is worth doing so.
Brands are the handle by which businesses, goods and services are recognized by the market place. They include trade marks and trade names but are so much more.
Investment in branding is protected in the UK by a set of legal rules:
- the action for passing off;
- trade mark registration;
- geographical indications; and
- domain names.
The action for passing off is a judge-made doctrine that has evolved over centuries. Essentially it is a prohibition against misrepresenting one trader's goods, services or business as those of another by adopting the same or a similar sign. Essentially there are three probanda:
- reputation or goodwill;
- misrepresentation, and
There are however two special types of passing off:
- extended passing off where the goodwill is in the product rather than the producer; and
- inverse passing off where the defendant claims the goods or services of the claimant as his or her own.
Trade marks are signs that can distinguish one trader's goods or services from those of all others. They are registered for specified goods or services which are organized into classes in accordance with the Nice Agreement. The registration of a trade mark confers the exclusive right to use the mark in relation to the specified goods or services.
A registered trade mark can be infringed by using:
- a sign that is identical to the registered mark in respect of the specified goods or services;
- a sign that is the same or similar to the registered mark in relation to the same or similar goods where because of such similarity there is a likelihood of confusion including a likelihood of association with the registered mark; and
- a sign in relation to any goods or services that is similar to a mark with a reputation where the use without due cause takes unfair advantage of or is detrimental to the registered mark.
There are a number of exceptions to the exclusive rights conferred by registration and a defendant to an infringement action will often counterclaim for the revocation or invalidation of the registered mark.
There are two special types of trade mark:
- collective marks; and
- certification marks.
Trade marks may not be registered if such registration is contrary to the public interest (absolute grounds) or conflicts with an earlier trade mark or other IP right.
WTO member states have an obligation under TRIPS to protect the i