41. Trade mark defences

2018 ◽  
Author(s):  
L. Bently ◽  
B. Sherman ◽  
D. Gangjee ◽  
P. Johnson
Keyword(s):  
Trade Mark ◽  
Comparative Advertising ◽  
Trade Marks ◽  
Intended Purpose ◽  
Parallel Importation ◽  
First Sale ◽  
Own Name ◽  
Scope Of Protection

This chapter is about the various defences that are available to a person who has been accused of infringing a trade mark under the Trade Marks Act 1994. A prominent limitation on the scope of protection, which operates defensively, is whether the defendant has made a legally relevant use of the mark. Besides this, the defendant is excused if the mark has been used (i) as the defendant’s own name or address, (ii) for descriptive purposes, or (iii) to indicate the intended purpose of a product or service. These threeuses are subject to a proviso testing for whether the use has been in accordance with honest practices in industrial and commercial matters. Additional defences facilitate comparative advertising and permit parallel importation via the exhaustion of the trade mark owner’s rights upon first sale.

14. Defences to trade mark infringement

2019 ◽  
pp. 320-360
Author(s):  
Stavroula Karapapa ◽  
Luke McDonagh
Keyword(s):  
Intellectual Property ◽  
Trade Mark ◽  
European Economic Area ◽  
European Economic ◽  
Trade Mark Infringement ◽  
Economic Area ◽  
Parallel Importation ◽  
Own Name ◽  
Scope Of Protection

This chapter looks at the various defences against trade mark infringement and the way in which the courts have interpreted them. A defendant's principal argument will be to deny that there has been any infringing conduct, and/or that what has been done is not within the scope of protection given to the registered mark. There are, however, a number of statutory defences. These defences span from the use of one's own name to a framework outlining the conditions of comparative advertisement and the role of exhaustion of rights as a defence to an action for trade mark infringement, including the ways in which the intellectual property owner can object to the parallel importation of non-European Economic Area (EEA) goods.

13. Infringement and loss of registration of trade marks

2019 ◽  
pp. 290-319
Author(s):  
Stavroula Karapapa ◽  
Luke McDonagh
Keyword(s):  
Trade Mark ◽  
Trade Marks ◽  
Trade Mark Infringement ◽  
Scope Of Protection

This chapter focuses on trade mark infringement, setting out the rights of a trade mark owner to prevent others from making use of any sign which is the same as or similar to the registered mark in the course of trade. A claimant who brings a trade mark infringement action will have to show two things: that an act of infringement has been committed, and that such conduct falls within the scope of protection afforded to the registered mark. Once these two points have been established, the court will normally find in favour of the claimant unless one or more of the counter-arguments raised by the defendant succeeds. A defendant who is sued for trade mark infringement, besides denying that infringement has been made out or raising one of the statutory defences, will usually try to counterclaim that the mark should be revoked or declared invalid.

Trade Marks and Allied Rights

2017 ◽  
Author(s):  
Dev Gangjee
Keyword(s):  
Brand Image ◽  
Trade Mark ◽  
Unfair Competition ◽  
Legal Issues ◽  
Geographical Indications ◽  
Trade Marks ◽  
Passing Off ◽  
Domain Names ◽  
Detrimental Impact ◽  
Scope Of Protection

This chapter outlines the principal features of trade mark protection regimes, drawing primarily on EU and US materials to illustrate the underlying legal issues. It includes an outline of the principal allied rights; namely (i) unfair competition, (ii) passing off, (iii) publicity rights, (iv) geographical indications, and (v) domain names. The overview traces the incremental re-orientation of trade mark regimes in recent decades as they have moved beyond their traditional remit of origin-indication protection in response to claims that brand image needs to be better accommodated. In some cases, the ensuing broader scope of protection can have a detrimental impact on speech and inhibit marketplace competition.

scholarly journals Legal Implication of the Effect of the TRIPS Agreement on the Trade Marks Law in Nigeria

2016 ◽  
Vol 12 (10) ◽  
pp. 140
Author(s):  
Temitope O. Oloko
Keyword(s):  
International Trade ◽  
Public Relations ◽  
Trade Mark ◽  
Developing Nations ◽  
Trips Agreement ◽  
Trade Marks ◽  
Legal Effect ◽  
Parallel Importation ◽  
Trade Mark Law ◽  
Legal Implication

The implication and the effects of the TRIPS Agreement in developing nations are constantly unfolding. Modern businesses use trade marks as an important public relations tool for marketing purposes. Considering the importance of the TRIPS Agreement in the trade mark regime, assessing the legal effect that the Agreement has on the law in Nigeria helps in determining the compliance of the Trade Mark Law to a large extent. The aim of this article is to identify the areas of compliance and to discuss the diversity and effectiveness of the TRIPS agreement. The article sheds light on the level of compliance of the Trade Marks Law and the expected impact. This could help in identifying the level of fulfilment of Nigeria’s international trade obligation. The study contributes to knowledge by providing insights in determining the extent to which the Trade Mark Law still need reformation. The areas covered by this article are limited to service marks, well-known marks, the requirement for use, and parallel importation.

Scope of Protection, Limitations, 
and Enforcement

2016 ◽  
Author(s):  
Alexander Mühlendahl ◽  
Dimitris Botis ◽  
Spyros Maniatis ◽  
Imogen Wiseman
Keyword(s):  
Trade Mark ◽  
Trade Marks ◽  
Trade Mark Infringement ◽  
In Transit ◽  
Scope Of Protection

This chapter explores the scope of protection and considers trade mark conflicts from the perspective of trade mark infringement and enforcement. It also considers conflicts between trade mark and other types of rights over commercial indicia. The concepts of use, confusion, and protection of trade marks with reputation together with their related tests have been developed in Chapter 5. In this chapter we revisit them from an infringement perspective where the comparisons courts have to make become more concrete, and market and factual contexts become even more relevant. Issues specific to the enforcement of the Community trade mark are considered towards at the end of this chapter together with a discussion on goods in transit.

scholarly journals On the scope of protection of renowned trade marks

2018 ◽  
Vol 8 (4) ◽  
pp. 273-289
Author(s):  
Gustavo Ghidini ◽  
Giovanni Cavani
Keyword(s):  
Trade Mark ◽  
Third Party ◽  
Strict Sense ◽  
Distinctive Character ◽  
Trade Marks ◽  
The Third ◽  
Similar Sign ◽  
Eu Directives ◽  
The Third Party ◽  
Scope Of Protection

The aim of this paper is to define the scope of protection afforded to ‘marks with reputation’ under EU Directives and Regulations. The authors argue that the protection granted to said marks also in relation to ‘not similar’ goods requires that, having regard to all the circumstances of the specific case, the consumer could be induced to reasonably suppose that the trade mark owner is somehow (industrially or commercially) connected with the circulation of products bearing an identical or confusingly similar sign. If this possibility cannot be assessed, it should be denied that the use of that sign either brings an unfair advantage to the third party user, or is detrimental to the distinctive character or the repute of the renowned trade mark. In sum, the thesis here submitted states that the protection afforded to renowned trade marks, even ‘extra moenia’ (ie beyond the risk of confusion in a strict sense between the products), anyway presupposes that a misleading message is conveyed to the consumer, inducing her/him to ‘transfer’ the reputation of the latter's products to those of the third party user's products, with the effect of altering the consumer's purchasing choices.

WOOF AND BREW LTD’S TRADE MARK APPLICATION

2019 ◽  
Vol 136 (8) ◽  
pp. 536-548
Author(s):  
Keyword(s):  
Freedom Of Speech ◽  
Trade Mark ◽  
Eu Law ◽  
Trade Marks ◽  
The Uk ◽  
Scope Of Protection

Abstract H1 Trade Marks – Opposition proceedings – PAWSECCO – Edible pet treats – Pet beverages – Whether use in the UK prohibited by any enactment or provision of EU law – Protected denominations of origin – PROSECCO – Scope of protection – Assessing evocation – Surrounding context – Circumstances suggestion visual and phonetic similarities not fortuitous – Freedom of speech – Parody defences – Appeal to Appointed Person

Trade Marks and Competition Law

2016 ◽  
Author(s):  
Alexander Mühlendahl ◽  
Dimitris Botis ◽  
Spyros Maniatis ◽  
Imogen Wiseman
Keyword(s):  
Competition Law ◽  
Trade Mark ◽  
European Market ◽  
Trade Marks ◽  
Market Dominance ◽  
Competition Rules ◽  
The Common ◽  
Scope Of Protection ◽  
Article 102 Tfeu

In this chapter we will examine briefly the formal interaction between trade marks and competition law. We have seen that competition questions were raised in the previous chapter in respect of the potential function of trade mark rights as tools for compartmentalizing the common European market into national markets. We have also highlighted the competition arguments and rationale considered by the Court first in determining what constitutes a protectable trade mark and second in delineating the scope of protection. Here, the focus shifts to how trade mark rights and agreements involving trade marks are weighed up by competition law. The two primary competition rules that are described below deal with anti-​competitive collusion (Article 101 TFEU, previously Article 81 EC) and abuse of market dominance (Article 102 TFEU, previously Article 82 EC).

Distinctiveness of the Marks

2019 ◽  
Author(s):  
Ilanah Fhima ◽  
Dev S. Gangjee
Keyword(s):  
European Union ◽  
Trade Mark ◽  
The European Union ◽  
Trade Marks ◽  
Likelihood Of Confusion ◽  
European Trade ◽  
The Impact ◽  
Scope Of Protection ◽  
Practical Level

The role of distinctiveness is perhaps the least understood element of the likelihood of confusion analysis. Obscure in its origins, the idea that the more distinctive a mark is, the more likely confusion should be has been repeatedly accepted by the Court of Justice of the European Union (CJEU), but this is also strongly criticised by commentators and UK judges in particular. This chapter seeks to understand the role that distinctiveness plays in the assessment of confusion, explaining how it entered the European trade mark system and critically evaluating its role. On a practical level, this chapter seeks to understand the impact of distinctiveness through examples of levels of distinctiveness that have and have not been accepted to result in enhanced protection, and also to consider how tribunals have dealt with the overlap between distinctiveness for registrablity and likelihood of confusion purposes. However, the chapter ends with a note of warning: although it is possible to find a significant number of cases where distinctiveness is employed to enhance the scope of protection trade marks, in the vast majority of cases, this factor is either not mentioned or deemed irrelevant.

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