24. Trade marks—an introduction

2019 ◽  
pp. 397-402
Author(s):  
Paul Torremans
Keyword(s):  
Trade Mark ◽  
Trade Marks ◽  
Trade Mark Law ◽  
The Law ◽  
The Uk

This chapter discusses the historical roots of trade marks, the need for reform, and the rationale of a system of trade marks. Over the last decades, trade mark law has been harmonized in Europe; in the UK, the Trade Marks Act 1994 saw a sea change in the law of trade marks.

28. Tortious protection of intellectual property rights

2019 ◽  
pp. 515-550
Author(s):  
Paul Torremans
Keyword(s):  
Intellectual Property ◽  
Property Rights ◽  
Intellectual Property Rights ◽  
Common Law ◽  
Trade Mark ◽  
Trade Marks ◽  
Passing Off ◽  
Trade Mark Law ◽  
The Common ◽  
The Law

This chapter discusses the ways in which the common law, in the form of the law of tort, creates rights of action. It focuses on the torts of passing off and malicious falsehood, although attention is also paid to the ways in which defamation can assist. These rights are supplementary, and complementary, to the statutory formal rights. In particular, trade mark law and passing off closely overlap, although s. 2(2) of the Trade Marks Act 1994 preserves passing off as a separate cause of action.

Keyword Advertising: Challenging the Traditional Concept of “Use” under Malaysian Trade Mark Law

2009 ◽  
Vol 4 ◽  
pp. 1-17
Author(s):  
Pek San Tay
Keyword(s):  
Online Advertising ◽  
Trade Mark ◽  
Traditional Concept ◽  
Trade Marks ◽  
Search Terms ◽  
Keyword Advertising ◽  
Internet Users ◽  
Trade Mark Law ◽  
The Uk ◽  
The U.S

AbstractKeyword advertising involves the sale of keywords, sometimes comprising the trade marks of others, by search engine providers so that the keyword purchasers' advertisements are triggered as sponsored results whenever Internet users type in any of the keywords as search terms. This method of online advertising is new and novel and has been embraced widely by many businesses. However, its legality, particularly in the sale of keywords comprising the trade marks of others, has been challenged in a number of major jurisdictions. This article examines the approach of the courts in the U.S. and the UK with regard to the practice of keyword advertising with particular emphasis on the concept of “trade mark use.” With these foreign decisions serving as a useful guide, this article analyses and evaluates whether the practice of keyword advertising is legal under Malaysian trade mark law as embodied in the Trade Marks Act 1976.

26. Trade marks—infringement and revocation

2019 ◽  
pp. 446-488
Author(s):  
Paul Torremans
Keyword(s):  
Trade Mark ◽  
Trade Marks ◽  
Trade Mark Infringement ◽  
Indefinite Number ◽  
Genuine Use ◽  
The Common ◽  
The Law ◽  
The Uk ◽  
Nature Quality

This chapter discusses the law on trade mark infringement and revocation. Section 10 of the Trade Marks Act 1994 establishes the basic criteria for an infringement action. If a mark is already on the Trade Marks Register, it is an infringement to use the same mark for the same goods or services. The grant of a trade mark lasts initially for 10 years from the date of its registration, and this may be renewed for a seemingly indefinite number of further periods of 10 years thereafter on payment of the appropriate fee. There are four grounds listed in s. 46(1) of the 1994 Act for revocation: (i) five years’ lack of genuine use of the mark in the UK without cause; (ii) a suspension for the same period (after initial use); (iii) the mark has become the common name for the product in question in the trade; and (iv) if the mark has been used in a misleading manner, especially as to the nature, quality, or origin of the goods or services in question.

Four Dimensions of Diamond T: Combination Trade Marks of Colours And Shapes

2006 ◽  
Vol 37 (4) ◽  
pp. 583
Author(s):  
Michael McGowan
Keyword(s):  
Three Dimensional ◽  
Trade Mark ◽  
Fourth Dimension ◽  
Trade Marks ◽  
Four Dimensions ◽  
Trade Mark Law ◽  
Dimensional Shape ◽  
Three Dimensional Shape

This article examines the relatively new fields of colour and shape trade marks. It was initially feared by some academics that the new marks would encroach on the realms of patent and copyright.  However, the traditional requirements of trade mark law, such as functionality and descriptiveness, have meant that trade marks in colour and shape are extremely hard to acquire if they do not have factual distinctiveness. As colour and shape trade marks have no special restrictions, it is proposed that the combination trade mark theory and analysis from the Diamond T case should be used as a way to make them more accessible. The combination analysis can be easily applied because every product has a three dimensional shape and a fourth dimension of colour.

HOW THE TRADE MARKS ACT SHAPES UP TO PERPETUAL MONOPOLIES

1998 ◽  
Vol 57 (2) ◽  
pp. 235-273
Author(s):  
JENNIFER DAVIS
Keyword(s):  
Engineering Design ◽  
English Language ◽  
Trade Mark ◽  
Consumer Products ◽  
Big Business ◽  
Trade Marks ◽  
Trade Mark Law

In British Sugar plc v. James Robertson & Sons Ltd. [1996] RPC 281, Jacob J. asked whether the 1994 Trade Marks Act enables “big business to buy ordinary words of the English language at comparatively little cost”. His answer was a resounding “no”. In Philips Electronics NV v. Remington Consumer Products, 22 December 1997, he asks whether trade mark law, by conferring a perpetual monopoly, can interfere with the freedom to manufacture artefacts of a “desirable and good engineering design”. The educated reader might hazard that he would again answer in the negative. And so it transpires. The thrill of the chase is to see how Jacob J. interprets the Act to reach this conclusion.

Character merchandising: aspects of legal protection

Legal Studies ◽  
2001 ◽  
Vol 21 (2) ◽  
pp. 226-250
Author(s):  
Andrew McGee ◽  
Sarah Gale ◽  
Gary Scanlan
Keyword(s):  
Present State ◽  
Legal Protection ◽  
Trade Mark ◽  
Third Parties ◽  
Trade Marks ◽  
Passing Off ◽  
Legal Control ◽  
The Creation ◽  
The Law ◽  
Special Circumstances

The article considers the present state of the law of character merchandising. It questions whether the law relating to character merchandising should be further developed and extended so as to give an individual a comprehensive right to prevent the unauthorised use of aspects of his personality by third parties in connection with the promotion or sale of goods or services. In this context the article rejects the creation of new comprehensive remedies such as a tort of appropriation of personality as being undesirable and impractical. The article maintains that unauthorised acts of personality appropriation or use are already subject to adequate legal control through the law of trade marks and passing off. In this regard the article further suggests that tortious remedies such as defamation, malicious falsehood, and, in restricted circumstances copyright, provide effective sanctions against the unauthorised use of an individual's persona in commercial enterprises in particular and special circumstances. These remedies supplement and complement the principal remedies provided by trade mark protection and passing off.

scholarly journals The interpretation practice of The European Court of Justice while judging the conflict between labelling applied as trademark with elderly right of another person

2010 ◽  
Vol 58 (3) ◽  
pp. 85-90
Author(s):  
Hana Kelblová
Keyword(s):  
Consumer Protection ◽  
Trade Mark ◽  
European Court Of Justice ◽  
Patent Office ◽  
Trade Marks ◽  
Court Of Justice ◽  
Likelihood Of Confusion ◽  
European Court ◽  
The Law

The article deals with the verification of the starting hypothesis of complementariness of the law of consumer protection and the law of intellectual property. In order to achieve that goal the author analyzes individual the Czech Trade Marks Act from the standpoint of protection of rights and interests of consumers.The article follows the categorical requirement of a public law rule, the Consumer Protection Act, which prohibits deceiving consumers and establishes that deceiving may also consist in offering products and services unjustified designated by misleading trade mark.The consumer is deceived most frequently when trade marks are used for designation of products and their promotion. The Trade Marks Act may be analyzed in relation to consumer protection first from the standpoint of consumer protection against trade marks misleading someone about the origin and quality of products and services designated by them. Then it is possible to examine the question whether requirements of a designation for being registered as a trade mark are at the same time those attributes of the trade mark which meet the declared intention of the lawmaker, i.e. that the trade mark should be a source of information for the consumer about the origin and quality of the product de­sig­na­ted by it.Especially, the article deals with an interpretation of the conception „Likelihood of Confusion“ as the fundamental conception while judging the conflict with elderly trademarks applying for the re­gi­stra­tion into the list of The Patent Office.A perception of an average consumer is a fundamental factor for a judgement of „Likelihood of Confusion“ as results from the decision practice of The Czech Patent Office, Czech courts and The European Court of Justice. This is proof of the conclusion that rules of the Trademark Law are rules of the Consumer protection Law.

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