Introduction to Trade Mark Law

INTELLECTUAL PROPERTY LAW II: TRADE MARKS, PASSING OFF & PATENTS (LAW339)

NOTES FOR WEEK 1

INTRODUCTION TO TRADE MARK LAW

READING:

Textbook:

Bently & Sherman’s Intellectual Property Law (OUP, 2014) Chapter  35 & 36

Relevant statutes:

• UK Trade Marks Act 1994
• Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks, codifying Directive 89/104/EC as amended (Directive 2008/95/EC is repealed with effect from 15 January 2019)
• Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version)
• 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, OJ L 336, 23.12.2015, p. 1–26 (entering into force 20 days after publication, but implementation by members states within 3 years)
• Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs), OJ L 341, 24.12.2015, p. 21–94 (entering into force 90 days after publication, i.e., 23 March 2016, but with a considerable number of provisions entering into force on 1 October 2017, see Art. 4 of the Regulation).

Case Law:

Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH, Case C-529/07Hotel Cipriani v Cipriani (Grosvenor Street) Ltd,  [2010] EWCA Civ 110; [2010] RPC 16Ferrero SpA's Trade Marks, The Appointed Person [2004] R.P.C. 29

T 140/08, Ferrero SpA v Office for Harmonisation in the Internal Market [2010] E.T.M.R. 4

C-273/00, Ralf Sieckmann v Deutsches Patent- und Markenamt, [2002] ECR I-11737

Libertel Groep BV v Benelux Merkenbureau, C-104/01 [2005] 2 CMLR (45) 1097

Heidelberger Bauchemie, C-49/02 [2004] ECR I-6129

Dyson Ltd v Registrar of Trademarks C-321/03 [2007] CMLR (44) 303

Société des Produits Nestlé S.A. v Cadbury UK Limited [2012] EWHC 2637 (Ch)

C-273/00, Ralf Sieckmann v Deutsches Patent- und Markenamt, [2002] ECR I-11737

Shield mark BV v Joost Kist C-283/01 [2003] ECR I-14313

Case R 120/2001-2 Eli Lilly (Second Board of Appeal, OHIM, 04.08.03)

C-421/13, Apple v DPMA ECLI:EU:C:2014:2070

Société de Produits Nestlé SA v Cadbury UK Ltd (KitkatCase C-215/14) ECLI:EU:C:2015:604

Hauck v Stokke case C-205/13 ECLI:EU:C:2014:2233

L’Oreal v. Bellure [2010] ETMR 47

Case 236/08 Google France v. Louis Vitton

Interflora v. Marks & Spencers Case C-323/09 ECLI:EU:C:2011:604

Best-Lock (Europe) Ltd v OHIM Case T-395/14 ECLI:EU:T:2015:380 Appeal

Lego Juris A/S v OHIM  Case C-48/09 ECLI:EU:C:2010:516 Appeal

Phillips v Remington Case 299/99 [2002] ECR I-5475

TRADE MARK ACT, 1994 (AS AMENDED)

Section 1: Trade marks

(1)In this Act, a ‘trade mark’ means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging

(2)…

Section 2: Registered trade marks

(1)A registered trade mark is a property right obtained by the registration of the trade mark under this Act and the proprietor of a registered trade mark has the rights and remedies provided by this Act.

What is a sign?: Smells as signs:

C-273/00, Ralf Sieckmann v Deutsches Patent- und Markenamt, [2002] ECR I-11737

Trade mark protection is sought for the olfactory mark deposited with the Deutsches Patent- und Markenamt of the pure chemical substance methyl cinnamate (= cinnamic acid methyl ester), whose structural formula is set out below. Samples of this olfactory mark can also be obtained via local laboratories listed in the Gelbe Seiten (Yellow Pages) of Deutsche Telekom AG or, for example, via the firm E. Merck in Darmstadt. C6H5-CH = CHCOOCH3.’

[pic 1]

19. The object of a trade mark is to enable consumers to identify goods and services by their origin  and quality. Both endow the goods covered by the trade mark with an image and a reputation: the reputation of the trade mark. The matter is thus one of establishment of a dialogue between manufacturer and consumer. The manufacturer gives the consumer information in order to make him aware of the goods, and sometimes persuades him as well. A trade mark is in reality communication.

20. Communication means one person imparting something that he knows to another. Consequently, every act of communication requires a sender, a message, a medium or channel for its transmission, and a recipient who can decipher or decode it. The code in which it can be expressed depends on the type of decoder the recipient uses to receive, comprehend and assimilate it. Homo sapiens is thus a recipient with a wide variety of decoders.

21. The entire human body is a sensory receptor, which means that perception of signs by consumers can be as varied as the senses at their disposal.

22. If the purpose of a trade mark is to enable the consumer to distinguish the goods and services offered to him by their origin, this process can take place through any organ he uses to communicate with the outside world. The distinctive sign can be perceived by the sense of sight, hearing, touch, smell or even taste. In principle, any message capable of perception by the senses can constitute an indication for the consumer and consequently can be a sign capable of fulfilling the distinguishing function of a trade mark.

23.Consequently, there is no reason in principle why trade marks should not be created by messages which differ from those capable of perception by the eye.

24.Although any message which may be perceived through any sense can constitute a sign capable of identifying the goods of an undertaking, this innate capability is not always the same. The reason for this is very simple: perception of the outside world by human beings differs, depending upon the sense or window through which it takes place.