Introduction to the Law relating to
Brands (trade marks, passing off,
geographical indications and domain
Wednesday, 25 September 2013 16:00 - 18:00
4-5 Gray’s Inn Square
020 7404 5252
1.1. This and the next two seminars follow on from my talk “Introduction to IP” which I gave on the 26 June 2013.
The notes for that talk can be downloaded from Slideshare
1.2 In that talk I introduced two concepts that are fundamental to understanding intellectual property law:
1.2.1. intellectual assets: the things that give one business a competitive advantage over all others; and
1.2.2. intellectual property: the legal protection of investment in intellectual assets.
1.3. Intellectual assets fall into four broad categories:
1.3.3. technology; and
1.3.4. creative works.
1.4. Today I shall discuss brands and the laws that protect investment in branding.
1.5. On rhe 30 Oct 2013 I shall discuss creative works and designs and the legal protection of those intellectual
1.6. On the 27 Nov 2013 I shall discuss technology and the legal protection of technology.
2. What is a Brand?
2.1. According to the Intellectual Property Office,
a brand can be
“a trade name, a sign, symbol, slogan or anything that is used to identify and distinguish a specific product,
service or business. But a brand is much more than this; it can also be a ‘promise of an experience’ and
conveys to consumers a certain assurance as to the nature of the product or service they will receive and
also the standards the supplier or manufacturer seeks to maintain.”
2.2. The IPO continued that a brand might focus on “exclusivity of design; or perhaps excellence of customer
service or maybe high moral standards in its dealings with suppliers; or perhaps a combination of these and other
2.3. Brands can attach to a:
2.3.4. group of producers in a trade or industry;
2.3.5. group of producers in a region or location; or
In the next 2 minutes write down at least one example of a brand for:
(a) a business
(b) a product
(c) a service
(d) a group of producers in a trade or
(e) a group of producers in a region or
(f) a franchise
“What is a brand?” http://www.ipo.gov.uk/types/tm/t-about/t-whatis/t-brands.htm
3. Legal Protection of Brands
3.1. The sign by which a business, product or service or group of producers can be protected by:
3.1.1. the law of passing off;
3.1.2. the registration of the sign as a trade mark; and
3.1.3. an evolving law of geographical indications.
3.2. However, a brand manager would also wish to protect other aspects such as his or her business’s
relationship with its customers and the shape or feel of the product itself.
3.3. Thus he or she would use the law of confidence, database or even copyright right to protect the names,
addresses and requirements of customers, their service records and other information.
3.4. The brand manager would want to register a design for his or her product or at least rely on unregistered
Community design, national unregistered design right and in some cases copyright.
3.5. The brand manager would want to communicate with his or her customers through the business’s website
so he or she would want to ensure that the company has one or more domain names that those customers would
associate with the brand.
You are the marketing manager of Happy Cow Dairy Products Plc. and your company is about to launch a new
organic plain yogurt which you hope to market through Waitrose, Booths
and similar retailers. Write instructions to
Harry Hope-Less who will be in charge of the launch of this new product.
3.6. In order to carry out his instructions, Harry confers with Lucy Eagle. Happy Cows in-house legal advisor,
about some of the tools that the law puts at her company’s disposal. These include:
3.6.1. the law of passing off;
Booths are a small chain of supermarkets in North West England with a very high local reputation. Visit their website at
http://www.booths.co.uk to find out more about them.
3.6.2. UK trade marks;
3.6.3. Community trade marks;
3.6.4. certification marks;
3.6.5. collective marks;
3.6.6. geographical indications; and
3.6.7. domain names.
3.7. “How do we enforce these rights?” asks Harry. “And more especially how much does enforcement cost?”
3.8. “Good question” replies Lucy. “I had better take the “Branding - Trade Marks, Passing off, Domain Names,
Geographical Indications” course offered by 4-5 Gray’s Inn Square’s Intellectual Property Practitioners
to find out.
3.8. “Aye, love, I’d do that if I were you” agreed Harry, “but don’t expect me to pay for it out of my budget.” Lucy
smiled to herself because she knew that this course was free.
4-5 Gray’s Inn Square, Gray’s Inn, London, WC1R 5AH, T 020 7404 5252, http://4-5london.blogspot.co.uk/, E email@example.com
4. The Law of Passing Off
4.1. The law of passing off was developed by the judges over many years. It is similar but not directly related to
the continental notion of concurrence déloyale (unfair competition).
4.2. The principles were set out by Lord Oliver of Aylmerton in Reckitt and Colman Products Ltd v Borden Inc
“The law of passing off can be summarised in one short general proposition - no man may pass off his
goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff
in such an action has to prove in order to succeed. These are three in number. First, he must establish a
goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing
public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade
description, or the individual features of labelling or packaging) under which his particular goods or services
are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the
plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the
public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered
by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the
manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a
particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a
particular brand name in purchasing goods of a particular description, it matters not at all that there is little or
no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he
suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief
engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the
same as the source of those offered by the plaintiff.”
4.3. Thus a claimant has to prove three things:
4.3.1. Goodwill or reputation attached to goods or services by reference to a brand name, trade mark or
other features of labelling or packaging under which those goods or services are offered to the public;
4.3.2. Misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead
the public to believe that goods or services offered by him are the goods or services of the claimant; and
4.4. These probanda are sometimes referred to as “the holy trinity.”
4.5. As Birss J said recently in the Rihanna case
at paragraph : “For passing off to succeed there must be a
misrepresentation about trade origin.”
4.6. Copying features of the packaging or product will not suffice if the market will not be deceived. As Jacob J
put it in Hodgkinson Corby Ltd v Wards Mobility Services Ltd.
‘‘... there is no tort of copying. There is no tort of taking another man’s market or customers. Neither the
market nor the customers are the plaintiff’s to own.’’
 1 WLR 491,  RPC 341,  WLR 491,  1 All ER 873,  UKHL 12
Fenty and Others v Arcadia Group Brands Ltd and Another  EWHC 2310 (Ch),  WLR(D) 310
 FSR 169
4.7. Nor will the adoption of a sign reminiscent of a well-known brand name such as the adoption by a prep
school of the adjective Harrodian if there is no likelihood of confusion in the absence of a common field of activity
(see Harrods Ltd v Harrodian School Ltd.
4.8. Sometimes the misrepresentation is very subtle and depends entirely on the context in which the
representation is made. Thus, in Rihanna the sale by Top Shop of a t-shirt bearing an image of the singer was held
to be misleading partly because Rihanna had designed clothes before and partly because TopShop had tweeted
excitedly about its connection with Rihanna and other celebrities. As I observed in my case note
“What this case goes to show is that every passing off claim turns on its own facts and the special
facts of this case seem to be that Rihanna was no mere clothes horse with a voice but a fashion
authority (indeed a designer among other things) and that Topshop had gone out of its way to
show a connection with Rihanna. Yet another salutary warning that one should be very careful
about what one tweets about. I don't think that the facts upon which this case turned will occur
very often. I also think that in most merchandising and endorsement cases the Topshop
argument will succeed.”
4.9. What do you think of Birss J’s judgment in Rihanna? If you were instructed by Sir Philip Green
what would be your grounds?
4.10. There are two slight modifications to the so-called “holy trinity”:
4.10.1. extended passing off; and
4.11.2. inverse passing off.
4.11. In “extended passing off” protection is sought in respect of the goodwill generated by a particular product
rather than on that of the particular trader who produces it (paragraph 6 of Patten LJ’s judgment in Diageo North
America Inc and Another v Intercontinental Brands (ICB) Ltd and Others
). in Diageo the distillers of Smirnoff vodka
who were based not in Russia, Poland or Finland but in Warrington obtained an injunction from Arnold J to restrain
the sale of “a virtually clear tasteless alcoholic drink” called VODKAT.
The claimants relied on a line of cases which
had prevented the terms "Spanish champagne", "champagne cider", "elderflower champagne", "sherry", "old English
advocaat", "white whiskey" and "Swiss Chalet" from being applied to products which were not champagne, sherry
from Jerez, advocaat, whisky or Swiss chocolate respectively. This case law had been used to protect producers in a
 EWCA Civ 1315,  RPC 697
Jane Lambert “Passing off - Fenty v Topshop” 10 Sep 2013 NIPC Law. Note that Robert Furneaux of Sipara disagreed:
"i was reading your review on the case but cant seem to post a comment! my problem with the case is around the finding
of misrepresentation. i am no fashion afficiendo but my sense is that few fashion icons produce collections containing
pretty basic t-shirts with photos of themselves on. indeed the River Island collection by Rhianna contains nothing like it. i
just dont think TS customers would be confused in that way... hope there's an appeal!"
 Bus LR 401,  1 All ER 242,  RPC 2,  EWCA Civ 920,  ETMR 57,
Diageo North America, Inc and another v Intercontinental Brands (ICB) Ltd and another  RPC 12,  EWHC 17 (Ch),
 ETMR 17,  3 All ER 147, (2010) 33(3) IPD 33015 http://www.bailii.org/ew/cases/EWHC/Ch/2010/17.html
specific geographic area such as the sparkling wine makers around Reims and Épernay as well as manufacturers of
a particular product such as advocaat. On appeal, the respondents contended unsuccessfully that to be protected
by this extended form of passing off a product needed a “cachet”. Upon analysing the case law and Erven Warnink
B.V. v. J. Townend & Sons (Hull) Ltd.
the Court of Appeal rejected that contention.
4.12. In inverse passing off the defendant claims the work of the claimant as his own. In Bristol Conservatories
Ltd v Conservatories Custom Built Ltd.
for example, salesmen for the defendant company allegedly showed
pictures of the claimant’s conservatories prospective customers as samples of their own products and workmanship.
The Court of Appeal held that those facts would, if proved, be capable of amounting to passing off. The thrust of the
representation was that if the customers purchased from the salesmen, they would be getting the conservatory which
had been designed and made by the people who had earned the goodwill in the products shown in the photographs.
Question for Discussion
If a skilled craftsman called A who had learned his trade from B showed a portfolio of photographs of jobs
that he had done while working for B would B have a claim if A made clear in his portfolio when and for
whom those works were carried out?
 AC 731,  R.P.C. 31
 RPC 455
5. Registered Trade Marks
5.1. Art 13 (1) of TRIPS provides:
“Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking
from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular
words including personal names, letters, numerals, figurative elements and combinations of colours as well
as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not
inherently capable of distinguishing the relevant goods or services, Members may make registrability
depend on distinctiveness acquired through use. Members may require, as a condition of registration, that
signs be visually perceptible.”
5.2. Art 2 of the Trade Marks Directive
, which carries into effect the obligations of the EU member states under
“A trade mark may consist of any signs capable of being represented graphically, particularly words,
including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided
that such signs are capable of distin-guishing the goods or services of one undertaking from those of other
5.3. S.1 (1) of the Trade Marks Act 1994
(“TMA”), which implements the Trade Marks Directive in the UK,
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 other undertakings.” The section continues:
“A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or
the shape of goods or their packaging.”
5.4. A sign can be registered as a trade mark for the UK alone as a British trade mark under the provisions of the
Trade Marks Act 1994 or for the whole of the EU including the UK as a Community trade mark (“CTM”) under the
Community trade mark or CTM regulation (Council Regulation (EC) No 207/2009 of 26 February 2009 on the
Community trade mark).
The substantive laws of the two systems are similar.
5.5. Applications for British trade marks are made to the Intellectual Property Office (“IPO”) in Newport.
5.6. Applications for Community trade marks are made to OHIM (“Office for Harmonization in the Internal
Market”) in Alicante.
5.7. Trade marks are registered for specified goods or services which are listed in a number of classes that are
set out in the Nice Agreement.
5.8. Effect of registration:
OJ 8.11.2008 L299/25 http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2008:299:0025:0033:EN:PDF
1994 C 26 http://www.ipo.gov.uk/tmact94.pdf
OJ 24.3.2009 L 78/1 http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:078:0001:0042:EN:PDF
Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks
5.8.1. S.9 (1) of the TMA provides:
“The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed
by use of the trade mark in the United Kingdom without his consent.”
5.8.2. Similarly, art 9 (1) of the CTM regulation provides:
“A Community trade mark shall confer on the proprietor exclusive rights therein.”
5.9. A registered or Community trade mark may be infringed in any of 3 ways:
5.9.1. Using an identical sign in respect of identical goods:
s.10 (1) of the TMA provides:
“A person infringes a registered trade mark if he uses in the course of trade a sign which is identical
with the trade mark in relation to goods or services which are identical with those for which it is
Similarly, art 9 (1) (a) of the CTM Regulation provides that a proprietor shall be entitled to prevent
all third parties not having his consent from using in the course of trade:
“(a) any sign which is identical with the Community trade mark in relation to goods or services
which are identical with those for which the Community trade mark is registered;”
5.9.2. Using an identical or similar sign in respect of similar or identical goods in the course of trade
(a) the sign is identical with the trade mark and is used in relation to goods or services similar
to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical
with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of
association with the trade mark.” (s.10 (2) TMA).
Art 9 (1) (b) of the CTM Regulation is to similar effect:
“The proprietor shall be entitled to prevent all third parties not having his consent from using in the
course of trade:
(b) any sign where, because of its identity with, or similarity to, the Community trade mark and
the identity or similarity of the goods or services covered by the Community trade mark and the
sign, there exists a likelihood of confusion on the part of the public; the likelihood of confusion
includes the likelihood of association between the sign and the trade mark;”
5.9.3. Using a sign which is identical with, or similar to, the trade mark in relation to goods or services
which may or may not be similar to those for which the trade mark is registered, where the latter
has a reputation and where use of that sign without due cause takes unfair advantage of, or is
detrimental to, the distinctive character or the repute of the registered trade mark.
S.10 (3) of the TMA provides:
“A person infringes a registered trade mark if he uses in the course of trade in relation to goods or
services a sign which - (a) is identical with or similar to the trade mark, where the trade mark has a
reputation in the United Kingdom 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 trade mark.”
Similarly art 9 (1) (c) provides that a proprietor shall be entitled to prevent all third parties not
having his consent from using in the course of trade:
“(c) any sign which is identical with, or similar to, the Community trade mark in relation to
goods or services which are not similar to those for which the Community trade mark is registered,
where the latter has a reputation in the Community and where use of that sign without due cause
takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the
5.9.4. “Use” for the purposes of art 9 (2) of the CTM Regulation means
“(a) affixing the sign to the goods or to the packaging thereof;
(b) offering the goods, putting them on the market or stocking them for these purposes under that
sign, or offering or supplying services thereunder;
(c) importing or exporting the goods under that sign;
(d) using the sign on business papers and in advertising.”
Similarly, s.10 (4) of the TMA which provides that
“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 or exports goods under the sign; or
(d) uses the sign on business papers or in advertising.”
5.9.5. Art 9 of the CTM Regulation and s10 of the TMA have to be construed in accordance with the case
law of the Court of Justice of the European Union and the General Court. These cases are listed
conveniently on the OHIM website.
5.10. The TMA provide the following exceptions:
5.10.1. using a mark to identify the proprietor’s goods or services so long as it is in accordance with honest
commercial and industrial practices (s.10 (6));
5.10.2. use of another registered mark in relation to goods and services for which that mark is registered
5.10.3. use by a person of his own name and address (s.11 (2) (a));
5.10.4. use of indications concerning the kind, quality, quantity, intended purpose, value, geographical
the time of production of goods or of rendering of services, or other characteristics of goods or
services (s.11 (2) (b));
5.10.5 use of the trade mark where it is necessary to indicate the intended purpose of a product or service
In particular, as accessories or spare parts) (s.11 (2) (c));
5.10.6. use in the course of trade in a particular locality of an earlier right which applies only in that locality
5.10.7. first marketing in an EEA member state (s.12 (1)).
5.11. Arts 12 and 13 of the CTM Regulation contain similar provisions.
5.12. A trade mark cannot be infringed if it can be revoked under s.46 of the TMA or declared invalid under s.47:
5.12.1. S.46 (1) provides:
“The registration of a trade mark may be revoked on any of the following grounds-
(a) that within the period of five years following the date of completion of the registration procedure
it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in
relation to the goods or services for which it is registered, and there are no proper reasons for non-
(b) that such use has been suspended for an uninterrupted period of five years, and there are no
proper reasons for non-use;
(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in
the trade for a product or service for which it is registered;
(d) that in consequence of the use made of it by the proprietor or with his consent in relation to the
goods or services for which it is registered, it is liable to mislead the public, particularly as to the
nature, quality or geographical origin of those goods or services.”
5.12.2. S.47 (1) provides:
“The registration of a trade mark may be declared invalid on the ground that the trade mark was
registered in breach of section 3 or any of the provisions referred to in that section (absolute
grounds for refusal of registration).
Where the trade mark was registered in breach of subsection (1)(b), (c) or (d) of that section, it
shall not be declared invalid if, in consequence of the use which has been made of it, it has after
registration acquired a distinctive character in relation to the goods or services for which it is
5.12.3. S.47 (2) provides:
“The registration of a trade mark may be declared invalid on the ground-
(a) that there is an earlier trade mark in relation to which the conditions set out in section 5(1), (2)
or (3) obtain, or
(b) that there is an earlier right in relation to which the condition set out in section 5(4) is satisfied,
unless the proprietor of that earlier trade mark or other earlier right has consented to the
5.12.4. Arts 51 and 52 of the CTM Regulation correspond to s.46 and 47 of the TMA.
5.13. S.32 (1) of the TMA requires an application for registration of a trade mark to be made to the Registrar (who
is also the Comptroller-General of Patents, Designs and Trade Marks (“the Comptroller”)). The department of the
Intellectual; Property Office which deals with trade marks is known as “the Trade Marks Registry” or simply
5.14. Applications for registration must contain the following particulars:
(a) a request for registration of a trade mark,
(b) the name and address of the applicant,
(c) a statement of the goods or services in relation to which it is sought to register the trade mark, and
(d) a representation of the trade mark.
5.15. S.37 (1) requires the Registrar to examine the application to see whether it complies with the Act and Trade
Marks Rules 2008 (“the Rules”). If they do he accepts the application.
5.16. S.38 (1) requires the Registrar to publish the application.
5.17. Anyone objecting to the application may either oppose the application under s.38 (2) or make
representations to the Registrar as to why the application should not be granted.
5.18. An application may be challenged on absolute grounds or relative grounds of refusal:
5.18.1. “Absolute grounds” are founded on public interest; and
5.18.2. “Relative grounds” are conflicting intellectual property rights such as a previous trade mark
registration or a right to bring an action for passing off or other proceedings to prevent the use of
the proposed mark.
5.19. S.3 and 4 of the TMA set out the absolute grounds of refusal:
5.19.1. S.3 (1) provides
“The following shall not be registered -
(a) signs which do not satisfy the requirements of section 1(1)
(b) trade marks which are devoid of any distinctive character,
(c) trade marks which consist exclusively of signs or indications which may serve, in trade, to
designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of
production of goods or of rendering of services, or other characteristics of goods or services,
(d) trade marks which consist exclusively of signs or indications which have become
customary in the current language or in the bona fide and established practices of the trade:
Provided that, a trade mark shall not be refused registration by virtue of paragraph (b), (c) or (d)
above if, before the date of application for registration, it has in fact acquired a distinctive character
as a result of the
use made of it.”
5.19.2. S.3 (2) provides:
“A sign shall not be registered as a trade mark if it consists exclusively of-
(a) the shape which results from the nature of the goods themselves,
See para 5.3 above
(b) the shape of goods which is necessary to obtain a technical result, or
(c) the shape which gives substantial value to the goods.”
5.19.3. S.3 (3) provides:
“A trade mark shall not be registered if it is-
(a) contrary to public policy or to accepted principles of morality, or
(b) of such a nature as to deceive the public (for instance as to the nature, quality or
geographical origin of the goods or service).”
5.19.4. S.3 (4) provides:
“A trade mark shall not be registered if or to the extent that its use is prohibited in the United
Kingdom by any enactment or rule of law or by any provision of Community law.”
5.19.5. S.3 (4) provides that a trade mark shall not be registered in the cases specified, or referred to, in
s.4 (specially protected emblems):
“(1) A trade mark which consists of or contains -
(a) the Royal arms, or any of the principal armorial bearings of the Royal arms, or
insignia or device so nearly resembling the Royal arms or any such armorial
bearing as to be likely to be is taken for them, or it,
(b) a representation of the Royal crown or any of the Royal flags,
(c) a representation of Her Majesty or any member of the Royal family, or any
colourable imitation thereof, or
(d) words, letters or devices likely to lead persons to think that the applicant either
or recently has had Royal patronage or authorisation,
shall not be registered unless it appears to the registrar that consent has been given by or
on behalf of Her Majesty or, as the case may be, the relevant member of the Royal family.
(2) A trade mark which consists of or contains a representation of-
(a) the national flag of the United Kingdom (commonly known as the Union Jack), or
(b) the flag of England, Wales, Scotland, Northern Ireland or the Isle of Man, shall
if it appears to the registrar that the use of the trade mark would be misleading or grossly
(3) A trade mark shall not be registered in the cases specified in - section 57 (national
&c. of Convention countries), or section 58 (emblems, &c. of certain international
(4) Provision may be made by rules prohibiting in such cases as may be prescribed the
registration of a trade mark which consists of or contains –
(a) arms to which a person is entitled by virtue of a grant of arms by the Crown, or
(b) insignia so nearly resembling such arms as to be likely to be mistaken for them,
unless it appears to the registrar that consent has been given by or on behalf of
Provision may be made by rules identifying the flags to which paragraph (b) applies. here
such a mark is registered, nothing in this Act shall be construed as authorising its use in
any way contrary to the laws of arms.
(5) A trade mark which consists of or contains a controlled representation within the meaning
of the Olympic Symbol etc (Protection) Act 1995 shall not be registered unless it appears
to the registrar –
(a) that the application is made by the person for the time being appointed under
Section 1(2) of the Olympic Symbol etc (Protection) Act 1995 (power of Secretary
of State to appoint a person as the proprietor of the Olympics Association Right),
(b) that consent has been given by or on behalf of the person mentioned in
paragraph (a) above.”
5.19.6. S.3 (6) prevents the registration of a trade mark if or to the extent that the application is made in
5.20. S.5 sets out the relative grounds of refusal:
5.20.1. S.5 (1), (2) and (3) prohibit the registration of a sign the use of which would infringe an existing
trade mark registration and therefore mirror s.10 (1) (2) and (3) of the TMA.
“5. - (1) A trade mark shall not be registered if it is identical with an earlier trade mark and the
goods or services for which the trade mark is applied for are identical with the goods or services for
which the earlier trade mark is protected.
(2) A trade mark shall not be registered if because –
(a) it is identical with an earlier trade mark and is to be registered for goods or services similar
To those for which the earlier trade mark is protected, or
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical
with or similar to those for which the earlier trade mark is protected, there exists a
likelihood of confusion on the part of the public, which includes the likelihood of
association with the earlier trade mark.
(3) A trade mark which –
(a) is identical with or similar to an earlier trade mark,
shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United
Kingdom (or, in the case of a Community trade mark or international trade mark (EC) in the
European Community) and the use of the later mark without due cause would take unfair
advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.”
5.20.2. S.5 (4) provides that A trade mark shall not be registered if, or to the extent that, its use in the
United Kingdom is liable to be prevented by virtue of the law of passing off or an action for
infringement of copyright, design right or a registered design.
5.21. Arts 7 and 8 of the CTM Regulation correspond to section 3 and 4 of the TMA.
5.22. The TMA makes special provision for collective and certification marks:
5.22.1. S.49 of the TMA defines a “collective mark” as a mark distinguishing the goods or services of
members of the association which is the proprietor of the mark from those of other undertakings.
See paragraph 5.9 above
5.22.2. S.50 of the TMA defines a “certification mark” as a mark indicating that the goods or services
in connection with which it is used are certified by the proprietor of the mark in respect of origin,
material, mode of manufacture of goods or performance of services, quality, accuracy or other
5.22.3. Schedules 1 and 2 to the TMA make provision for collective and certification marks respectively.
5.22.4. Arts 66 to 74 of the CTM Regulation make provision for Community collective marks.
Questions for discussion:
(1) Why would a trader wish to register a trade mark when he can rely on the law of passing off?
(2) In what circumstances would you advise clients to consider collective mark or certification marks?
6. Geographical Indications
6.1. Geographical indications are defined by art 22 (1)
of TRIPS as “indications which identify a good as
originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or
other characteristic of the good is essentially attributable to its geographical origin.”
6.2. Art 22 (2) requires members of the World Trade Organization to "provide the legal means for
interested parties to prevent:
“(a) the use of any means in the designation or presentation of a good that indicates or suggests
that the good in question originates in a geographical area other than the true place of origin in a
manner which misleads the public as to the geographical origin of the good;
(b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of
the Paris Convention (1967)."
6.3. Traditionally the UK has protected geographical indications by the registration of collective and certification
marks under s.49 and s.50 of the Trade Marks Act 1994 and the law of passing off (see Bollinger v Costa Brava Wine
, Vine Products Ltd v Mackenzie & Co Ltd.
, John Walker & Sons Ltd v Henry Ost & Co Ltd.
Taittinger v Allbev Ltd.
6.4. These are now reinforced by Regulation (EU) No 1151/2012 of the European Parliament and of the Council
of 21 November 2012 on quality schemes for agricultural products and foodstuffs (OJ 14.12.2012 L343/1.
6.5. This regulation provides three types of protection:
6.5.1. Protected designation of origin ("PDO") which covers agricultural products and foodstuffs that are produced,
processed and prepared in a given geographical area using recognised know-how;
6.5.2. Protected geographical indication ("PGI") which covers agricultural products and foodstuffs closely linked to
the geographical area where at least one of the stages of production, processing or preparation takes place
in the area; and
6.5.3. Traditional speciality guaranteed ("TSG"} which highlights traditional character, either in the composition or
means of production.
 Ch 262
 RPC 1
 1 WLR 917
 FSR 641
6.6. Applications for registration of a product are made to the competent authority of any of the member states
which in the case of the UK means the Regional and Local Food Team, Food and Family Group at the Department
for Environment, Food and Rural Affairs ("DEFRA").
7. Domain Names
7.1. Domain names are mnemonics for a string of numbers that identify a server on the internet.
7.2. Before the development of the world wide web they were of no commercial interest and the universities and
US defence installations allocated them informally on a first come. first served basis..
7.3. Domain names became commercially valuable in the mid 1990s when businesses and other organizations
found that they could market their goods and services and communicate with the public through websites.
7.4. Speculators in this country and elsewhere known as “cybersquatters” found there was money to be made by
registering the names of well known businesses and then ransoming them to the trade mark owners.
7.5. Courts around the world tried to suppress this practice by granting injunctions to restrain trade mark
infringement and passing off (see British Telecommunications Plc & Others v One In A Million Ltd and Others.
7.6. Such orders were prohibitively expensive to obtain and often unenforceable when the cybersquatter was
7.7. In 1998 the US government incorporated ICANN (the Internet Corporation for Assigned Names and
Numbers) and placed it in charge of the domain name system.
7.8. The domain name space is divided into
7.8.1. generic top level domain names (gTLDs) such as .com. .org and .net; and
7.8.2. country code top level domain names (ccTLDs) such as .uk, .de, .fr and .ie.
7.9. ccTLDs are administered by national domain name authorities such as Nominet
in the UK.
7.10. gTLDs are managed directly by ICANN which authorizes independent companies to register such names on
a competitive basis.
7.11. One of the conditions for the right to register gTLDs is that registrars incorporate into their domain name
registration agreements a requirement that any complaint of cybersquatting shall be referred to expert determination
before a panellist appointed by WIPO or other dispute resolution service under a policy known as the UDRP (Uniform
Domain-Name Dispute-Resolution Policy).
7.12. Nominet and most other ccTLD authorities make similar provision in their registration agreements.
 ITCLR 146,  EBLR 2,  WLR 903,  1 WLR 903,  ETMR 61,  4 All ER 476,  Masons
CLR 165,  EWCA Civ 1272, [1997-98] Info TLR 423,  FSR 1 http://www.bailii.org/ew/cases/EWCA/Civ/1998/1272.html
Think of the ways in which domain names differ from trade marks
Author or Publisher Tile URL
British Brands Group A guide to brand protection http://www.britishbrandsgroup.org.uk/library/i
Design Council “The power of branding: a practical guide” http://www.designcouncil.org.uk/Documents/
What is a Brand? http://www.ipo.gov.uk/types/tm/t-about/t-
Lambert, Jane Introduction to Intellectual Property http://www.slideshare.net/nipclaw/introductio
Lambert, Jane Geographical Indications - "If it's outside Yorkshire
it's not worth ..................!"
Lambert, Jane “Passing off - Fenty v Topshop” 10 Sep 2013
Wadlow, Christopher The Law of Passing off: Unfair Competition
by Misrepresentation (4th edition) Sweet &
Agreement on Trade-Related Aspects of Intellectual
Property Rights (“TRIPS”)
Madrid Agreement Concerning the International
Registration of Marks (“Madrid Agreement”)
Protocol Relating to the Madrid Agreement
Concerning the International Registration of Marks
Nice Agreement Concerning the International
Classification of Goods and Services for the
Purposes of the Registration of Marks
Paris Convention for the Protection of Industrial
Trademark Law Treaty http://www.wipo.int/treaties/en/text.jsp?file_id=294357
Council Regulation (EC) No 207/2009 of 26 February
2009 on the Community trade mark (“CTM
Directive 2008/95/EC of the European Parliament and
of the Council of 22 October 2008 to approximate the
laws of the Member States relating to trade marks
Regulation (EU) No 1151/2012 of the European Parliament
and of the Council of 21 November 2012 on quality schemes
for agricultural products and foodstuffs (OJ 14.12.2012
Statutes and Statutory Instruments
Trade Marks Act 1994 (an unofficial consolidation by
Trade Marks Rules 2008 http://www.ipo.gov.uk/tmrules2008.pdf
Case Reference URL
British Telecommunications Plc &
Others v One In A Million Ltd and
 ITCLR 146,  EBLR 2,
 WLR 903,  1 WLR 903,
 ETMR 61,  4 All ER
476,  Masons CLR 165,
 EWCA Civ 1272, [1997-98]
Info TLR 423,  FSR 1
Diageo North America Inc and
Another v Intercontinental Brands
(ICB) Ltd and Others
 Bus LR 401,  1 All ER
242,  RPC 2,  EWCA
Civ 920,  ETMR 57
Erven Warnink B.V. v. J. Townend &
Sons (Hull) Ltd.
 AC 731,  R.P.C. 31
Fenty and Others v Arcadia Group
Brands Ltd and Another (Rihanna)
 EWHC 2310 (Ch), 
Harrods Ltd v Harrodian School Ltd  EWCA Civ 1315,  RPC
Hodgkinson Corby Ltd v Wards
Mobility Services Ltd.
 FSR 169
Reckitt and Colman Products Ltd v
Borden Inc and Others
 1 WLR 491,  RPC 341,
 WLR 491,  1 All ER
873,  UKHL 12