The document outlines the legal framework surrounding brands, trademarks, passing off, geographical indications, and domain names. It explains key concepts such as the requirements for proving passing off, the registration process for trademarks in the UK and EU, and various types of trademarks and domain names. Additionally, it discusses legal protections against misuse and the importance of dispute resolution policies in domain name registrations.

1. Law Relating to Brands
Trade Marks, Passing off, Geographical
Indications, Domain Names
Jane Lambert
4-5 Gray’s Inn Square, Gray’s Inn, London, WC1R 5AH
Wednesday 25 Sep 2013
16:00 -18:00

2. More than just a logo, name or other sign
or symbol.
The way a business, product or service is
identified in the market.
What is a Brand?

3. Action of Passing off
Trade Mark Registration
Geographical Indications
Domain Names
Registered Designs, Confidence, etc
Legal Protection of Brands

4. Judge made law which has developed over
centuries
Similar to the Civil Law notion of unfair
competition
Basic principles set out by Lord Oliver in
the Jif Lemon case (Reckitt & Colman v
Borden).
Passing Off

5. A claimant has to prove:
● Reputation or goodwill;
● Misrepresentation; and
● Damage.
Sometimes referred to as “the holy trinity”,
Passing Off

6. Modifications to the “holy trinity”:
● Extended passing off
○ Where protection is sought in respect of the
product rather than that of the producer
(see the Vodka case);
● Inverse passing off
○ Where the defendant claims the work of the
claimant as his own as in Bristol
Conservatories.
Passing Off

7. “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
distin­guishing the goods or services of one
undertaking from those of other
undertakings.”
(Art 2 Trade Marks Directive)
Registered Trade Marks

8. Trade marks can be registered with:
● The Intellectual Property Office (“IPO”)
for the UK alone under the provisions of
the Trade Marks Act 1994; or
● OHIM (Office of Harmonization in the
Internal Market) for the whole EU as a
Community trade mark (“CTM”) under
the provisions of the CTM Regulation.
Registered Trade Marks

9. Trade marks are registered for specified
goods or services.
Such goods and services are grouped in
classes in accordance with the Nice
Agreement.
Registered Trade Marks

10. “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.”
(s.9 (1) TMA)
Registered Trade Marks

11. A registered trade mark may be infringed by using
a sign that is:
● identical to the mark in relation to identical
goods;
● identical or similar to the mark in relation to
identical or similar goods where there is a
likelihood of confusion including association;
● that is identical or similar to a mark with a
reputation that takes unfair advantage of or is
detrimental to the reputation of the registered
mark.
Registered Trade Marks

12. “Use” 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.”
Registered Trade Marks

13. Defences to trade mark infringement:
● Exceptions
○ S.10 - S.12 TMA
○ Arts 12 and 13 CTM Reg
● Invalidity
○ S.47 TMA
● Revocation
○ S.46 TMA
Registered Trade Marks

14. Applications must contain:
(a) a request for the registration of the
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.
Registered Trade Marks

15. Anyone opposing an application to register
a trade mark may:
● oppose the application; or
● make representations to the examiner as
to why the mark should not be granted.
Registered Trade Marks

16. An application may be challenged on:
● Absolute Grounds
○ Grounds of public interest
● Relative Grounds
○ Registration would conflict with an existing
trade mark registration or application or a
right to bring an action for passing off or
other intellectual property right.
Registered Trade Marks

17. Special types of trade marks:
● Collective marks
○ a mark distinguishing the goods or services
of members of an association from those of
other undertakings (s.49 TMA);
● Certification marks
○ a mark indicating that the goods or services
are certified by the proprietor of the mark
in respect of origin, quality etc (s.50 TMA)
Registered Trade Marks

18. Definition:
“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.”
(Art 22 (1) TRIPS)
Geographical Indications

19. Art 22 (2) TRIPS requires WTO members 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)."
Geographical Indications

20. ● Law of Passing off
○ Extended form of passing off
● Trade Marks
○ Collective Marks
○ Certification Marks
● Reg (EU) No 1151/2012
○ Protected designation of origin
○ Protected Geographical Indication
○ Traditional Speciality Guaranteed
Geographical Indications

21. ● Mnemonics for a string of numbers that
identify a server on the internet.
● Traditionally registered on a first come
first served basis.
● Became important with the development
of the Worldwide Web
● Problem of Cybersquatting
● Incorporation of ICANN to regulate
Domain Name System
Domain Names

22. Types of domain names:
● gTLD (Generic top level domains such as
.com, .net, .org and .biz; and
● ccTLD (Country code top level top level
domains such as .uk, .fr, .de, .au, .cn, .
jp etc)
● gTLD registrars appointed by ICANN;
● ccTLD registrars appointed by national
authorities such as Nominet in the UK.
Domain Names

23. One of the conditions for the appointment
of a domain name registrar is that it
incorporates a domain name dispute
resolution clause into its registration
agreements with end-users:
● UDRP (Uniform Domain Name Dispute
Resolution Policy) for gTLDs;
● DRS (Dispute Resolution Policy) for .uk
domain name disputes.
Domain Names

24. Jane Lambert
4-5 Gray’s Inn Square
Gray’s Inn
London
WC1R 5AH
020 7404 5252
jlambert@4-5.co.uk
Further Information