The Law of Trade Marks

Lecture I: What is a Trade Mark

General Reading
Bently & Sherman - Part IV Journals EIPR (European Intellectual Property Review) IPQ (Intellectual Property Quarterly) IIC (International Review of Industrial Property & Copyright Law) Law Reports RPC (Reports of Patent Cases) FSR (Fleet Street Reports) ETMR (European Trade Mark Reports) CMLR (Common Market Law Reports) ECJ cases available on ECJ website

Useful Web Sites www.patent.gov.uk/dtrademk/index.html (UK Trade Mark Office) www.wipo.org (World Intellectual Property Organisation) www.wto.org (World Trade Organisation) Trade Marks are protected under two regimes namely; 1. The Common law of passing off 2. The statutory regime which protects registered trade marks found in the 1994 Trade Marks Act. These two legal regimes transform signs into forms of property. Both forms of legal protection are available simultaneously. In the case of passing off the sign must have been used in trade so as to have acquired a reputation. Under the statutory regime, the sign must have been registered, either at the UK Trade Mark Registry or at the Community Trade Mark Office called the OHIM.

HISTORY OF MARKS: Earliest times traders applied marks to their goods to indicate ownership, e.g. farmers commonly branded cattle and earmarked sheep as a way of identifying their livestock. Merchants also marked their goods before shipment so that in the event of a shipwreck, any surviving merchandise could be identified and retrieved. Guilds: were trade organisations that had control over who could make certain goods or provide certain services. They were also concerned to ensure that goods were of satisfactory quality. In order to be able to identify the source of unsatisfactory goods, the guilds required their members to apply identifying marks or signs to the goods. With the growth of regional trading (industrial revolution) many traders continued to apply their marks to the goods they manufactured. Moreover with the growth of mass media and public reading traders started to advertise their goods by reference to these marks. In turn purchasers started relying on the signs of the goods. Another important change in the role played by marks took place around the beginning of the twentieth century. This change in the function of trade marks has been described as a transformation from signals to symbols. As signals trade marks trigger an automatic response and serve to identify the maker of the product. In contrast as symbols trade marks evoke a broader set of associations and meanings. Here they are used to identify the product or to give the product an identity. In so doing the mark became symbol, a poetic device, a name designed to conjure up product attributes whether real or imagined. History of the legal protection of Marks: It seems that the courts first began to protect marks at the behest of traders in the 16th century. Initially protection was provided by the Common law courts through the action of deceit. Not much later the Courts of Chancery used the action of passing off to protect a trader who had developed a reputation or goodwill through use of a particular sign or symbol. This action is still available. A system of registration of marks was first introduced in 1875. The

impetus for this came more from foreign sources than from domestic pressure. Now in UK trade mark law is governed under 1994 Trade Marks Act.

What is a Trade Mark?

Legal definition? "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." Trade Marks Act 1994, s. 1(1) cf EC Trade Mark Directive (1988), Art. 2 Note that a registered trade mark has to be registered in relation to specific goods or services

What is a sign? "A `sign' is anything which can convey information The only qualification expressed in the directive is that it be capable of being represented graphically." Jacob J in Philips Electronics [1998] RPC 283 (HC) at 298 What might this include? Possible signs? o o o o o o Brand name Logo Shape of product/ packaging? Colouring of product/ packaging? A jingle (or other sound)? The scent or smell or taste of product/ packaging?

Note the requirement of graphic representation

Note the different ways in which a sign may signal to consumers? o o o o Visual Aural Conceptual To other senses?

What are the goods or services of one undertaking? "Take water and sugar: they are commodities. Process them into cola drinks and you have products. Market and promote them into COCA-COLA and PEPSI-COLA: you have brands." The Economist, "The Year of the Brand" 24/12/1988 [T]he essential function of the trade mark is to guarantee the identity of the origin of the marked product to the consumer or end user by enabling him, without any possible confusion, to distinguish the product or service from others which have a different origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish, it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality. (The European Court of Justice) A trade mark indicates the origin or trade origin of the products with which it is used All products bearing (or sold under) the same trade mark should therefore have the same trade origin A trade mark indicates what can be termed brand or marketing/ commercial identity One undertaking may control more than one marketing identities

What is the practical benefit of being able to indicate trade origin? Consumers can more readily identify and recognise products

on the basis of their trade origin Consumers can use trade marks to choose among products according to their trade origin Consumers can use trade marks to express preferences on the basis of trade origin or to make origin-specific request Trade marks may assist undertakings in acquiring goodwill for their products and ensuring that only they can profit from this goodwill The ability to acquire and retain goodwill is an important aspect of competition between undertakings in a market economy In effect, a trade mark may become a focus of goodwill and a primary reference point in the minds of consumers. For this reason, trade marks are sometimes regarded as giving a guarantee of quality to consumers, but this does not amount to a legal guarantee The guarantee of quality offered by a trade mark is not of course absolute, for the manufacturer is at liberty to vary the quality; however, he does so at his own risk and he not his competitors will suffer the consequences if he allows the quality to decline. Thus, although trade marks do not provide any form of legal guarantee of quality they do in economic terms provide such a guarantee, which is acted upon daily by consumers. AG Jacobs in his Opinion to the ECJ in Hag II (1990) To have a common trade origin, all the goods or services bearing it must have originated under the control of a single undertaking which is responsible for their quality The most publicly successful modern businesses are those, like Nike and Tommy Hilfiger, that have abandoned making things in favour of making ideas and images for their brands and their real work lies not in manufacturing but in building up their brands. Naomi Klein, No Logo (2000) The undertaking does not have to manufacture the goods or

provide the services itself It can arrange for the products to be provided by other undertakings through such arrangements as sub-contracting, outsourcing and franchising Goods/ services with the same trade origin may come from a variety of physical sources and/or a variety of manufacturers/ providers An undertaking can licence (i.e. formally give consent to) other undertakings to use its trade mark on products that they produce This is the basis of such marketing arrangements as o Merchandising o Franchising o Joint branding o Commercial sponsorship/ endorsement For products to be the products of an undertaking, that undertaking must have authorised their presence on the market (and their availability to consumers) under or bearing its trade mark and thus with the specific marketing identity that the trade mark symbolises Major Bros. v. Franklin [1908] 1 KB 712 Primark Stores v. Lollipop Clothing [2001] ETMR 334 All such products therefore have a common trade origin regardless of their physical origin or the actual circumstances of their production By the same logic, products that are identical in quality and produced by the same manufacturer may not have the same trade origin Major Bros. v. Franklin [1908] 1 KB 712 Primark Stores v. Lollipop Clothing [2001] ETMR 334 An undertaking can assign (i.e. formally transfer) its trade

marks to another undertaking, which then becomes the owner of that trade mark and assumes control of the presence of products bearing the trade mark on the market.

How can an Undertaking Protect its Trade Marks?

Two forms of action are available o An action for infringement of a registered trade mark o An action in the tort of passing off Note that registering a trade mark does not prevent its owner from bringing an action in passing off

The Action for infringement of a registered trade mark This action is available to owners of a registered trade mark The trade mark may be registered in the UK or as a Community Trade Mark (or CTM) The action is now governed by the Trade Marks Act 1994 (TMA 1994) The TMA 1994 was designed to implement the European Trade Mark Directive (1988) and the European Court of Justice (ECJ) can therefore make authoritative rulings on the relevant law

The Action in Passing Off This action is conditional on the claimant having goodwill that is or may be damaged by a misrepresentation made by the defendant This action can only be brought in respect of a feature already familiar to consumers (such that it has become a focus for goodwill) and where the defendants imitation of the feature is likely to mislead consumers about the defendants products and cause damage to the claimants business.

The actions basis in common law makes it a flexible and adaptable remedy. Mirage Studios v Counter-Feat Clothing [1991] FSR 145 Edmund Irvine v Talksport [2003] EMLR 6

The Action for Infringement of a Registered Trade Mark The claimant must be the owner of a registered trade mark The defendants action must constitute infringement of that trade mark The defendant may seek to rely on a defence against infringement The defendant may seek to have the trade mark revoked or declared invalid (i.e. improperly registered)

The Framework of the Law

International Framework Traders who operate on more than a local level will wish to protect their marks on a transnational basis. Various mechanisms have been developed to assist in this regard. The earliest of these was the Paris Convention. The Paris Convention for the protection of industrial property 1883 (as amended) o No prescribed minimum standards o National Treatment (i.e. non-nationals must be given the same rights as nationals) this ensures the possibility for foreign protection of trade marks. o Well-known marks belonging to traders in other states must be protected even if unregistered

o While the Paris convention failed to create a mechanism for the international application for Marks.

The Madrid Agreement on the international registration of marks of (1891) and the Madrid Protocol of (1989) o Systems for facilitating international applications. Under these arrangements after making a home registration or home application an individual or company may apply to the Bureau of the WIPO for an international registration. The bureau passes the application on to relevant national trade mark offices. If the Offices of the contracting party does not refuse the application within a limited time, it is treated as registered. o UK party to Madrid Protocol only o TMA 1994 enables UK application >> an international trade mark

The TRIPs Agreement 1994 o Section 2 (Article 15-21) o Reinforces the Paris Convention (Article 2) o Sets minimum standards

European Framework The Trade Mark Directive: 89/104/EEC o Implemented by TMA 1994 o Substantial harmonisation throughout the EC

The Community Trade Mark Regulation: 40/94 o Provides for CTM with unitary effect throughout the EC o Such rights are acquired by the filing of a single application for a Community trade mark with the Office for Harmonisation in the Internal Market (the OHIM). o Became fully operational on 1 April 1996 o Administered by the Office for Harmonisation in the Internal Market (OHIM) located in Alicante (Spain). o National TMs may be converted to CTMs (providing acceptable as such) but still retain acquired rights in original territory (seniority) o As of December 2003, the OHIM had received over 350,000 applications and has registered close to 200,000 marks.

Registered Trade Marks in the UK

Three systems of registration are now applicable: Registration with the Trade Marks Registry of the UK Patent Office gives protection in the UK. Registration of a CTM with the OHIM or through the UK Trade Marks Registry gives protection throughout the EC. Registration as an International Trade Mark with the World Intellectual Property Organisation ("WIPO") in Geneva pursuant to an application or registration made in a Protocol country (including one at the UK Trade Marks Registry) gives protection in all designated Protocol countries (and takes effect in the UK as if it were a UK trade mark).

Unregistered trade marks may still be protected in the UK: By the action in passing off

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Under section 56 of the TMA 1994, as a well known mark (in the UK) of an undertaking or other person based in another Paris Convention country.

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