scholarly journals The New Breed of Trade Marks: Sounds, Smells and Tastes

2001 ◽  
Vol 32 (1) ◽  
pp. 277
Author(s):  
Jacey K McGrath
Keyword(s):  
New Zealand ◽  
Trade Mark ◽  
Point Of Sale ◽  
Trade Marks ◽  
Likelihood Of Confusion ◽  
Ability To Act

Sounds, smells and tastes can now be registered as trade marks in New Zealand under the Trade Marks Act 1953. These novel types of signs raise concerns about their ability to act as effectively as the more traditional word and design trade marks. Consumers will have to utilise less perceptive senses in order to comprehend these marks, and may not be able to rely on them to distinguish products at the point of sale. The inherent intangibility of these marks may also have implications for determining questions of similarity and the likelihood of confusion in infringement actions.Unlike the more traditional trade marks, sounds, smells and tastes are usually intrinsic features of products. Such characteristics should not be registrable as trade marks because they are not sufficiently separate from the underlying goods and would allow a trader to have a monopoly over their production. The rationale behind trade mark protection must not be lost sight of in the desire to shield innovative traders who utilise exciting signs to market their products.

FITNESS LEISURE LTD’S TRADE MARK APPLICATION

2019 ◽  
Vol 136 (10) ◽  
pp. 605-617
Author(s):  
Keyword(s):  
Trade Mark ◽  
Trade Marks ◽  
Likelihood Of Confusion

Abstract H1 Trade marks – Opposition proceedings – Procedure – Failure to consider all grounds advanced by the opponent – Earlier marks – Assessment of likelihood of confusion – Appeal to Appointed Person

Assessing Likelihood of Confusion

2019 ◽  
Author(s):  
Ilanah Fhima ◽  
Dev S. Gangjee
Keyword(s):  
Trade Mark ◽  
Trade Marks ◽  
The Public ◽  
Likelihood Of Confusion ◽  
Essential Function ◽  
The Right ◽  
Article 5

The likelihood of confusion test is inextricably linked to the principal justification for trade mark protection. If the essential function of a trade mark is to reliably indicate the commercial origin of a product in the marketplace, an action to prevent confusion amongst consumers, thereby impeding this origin indicating ability, is a necessary corollary. The language of Article 5(1)(b) (relative grounds) and Article 10(2)(b) (infringement) of the Trade Marks Directive 2015 (TMD 2015) indicates that the proprietor has the right to prevent a junior user from registering or using a mark where ‘because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark’.

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.

The rise, fall and convolution of the intent to use requirement under New Zealand trade mark law

2020 ◽  
Vol 10 (1) ◽  
pp. 87-114
Author(s):  
Rob Batty
Keyword(s):  
New Zealand ◽  
Trade Mark ◽  
Intention To Use ◽  
Trade Marks ◽  
The United Kingdom ◽  
Intent To Use ◽  
Trade Mark Law ◽  
History Of ◽  
Bona Fide ◽  
Historical Developments

The ‘cluttering’ of trade mark registers with unused trade marks is an issue of contemporary concern. One mechanism that can be used to prevent ‘deadwood’ trade marks from getting on the Register in the first place is to ensure that a trader has a genuine intention to use the trade mark. Indeed, the enactment of the first registration legislation in the United Kingdom (UK) was followed by a judicial insistence that a trader could not ‘properly register a trade mark’ if the trader did not have bona fide and present intention to use the trade mark. An intent to use requirement remains a feature of New Zealand (NZ) law, though it has a much reduced sphere of operation under the Trade Marks Act 2002. Tracing historical developments, this article examines how the regulation of the intent to use requirement has evolved under NZ law. This exercise provides a useful lens for understanding how and why the intention to use requirement operates as it currently does. Further, by examining the history of the intent to use requirement, the article also illuminates that there is nothing intractable about how NZ trade mark law has opted to regulate intention to use, and NZ law may be adjusted to better address concerns like cluttering.

38. Relative grounds for refusal

2018 ◽  
Author(s):  
L. Bently ◽  
B. Sherman ◽  
D. Gangjee ◽  
P. Johnson
Keyword(s):  
European Union ◽  
Trade Mark ◽  
The European Union ◽  
Trade Marks ◽  
Likelihood Of Confusion ◽  
The Uk

This chapter focuses on ‘relative grounds’ for denying an application to register a trade mark as set out in section 5 of the Trade Marks Act 1994 and Article 8 of the European Union Trade Marks Regulation (EUTMR). It identifies ‘earlier trade marks’ and ‘earlier rights’ before turning to the tests which allow a prior mark to oppose the registration of a subsequent one. First, it reviews the so-called double identity ground, where an identical (later) mark is applied for, in the context of identical products. Second, it considers when likelihood of confusion may be established. Third, it surveys three situations referred to collectively as ‘dilution’, where the later mark may mentally evoke the earlier one in a way that is not confusing, yet still wrongful. It also explains the ‘advertising function’ of a trade mark, along with requirements relating to reputation and ‘due cause’. Finally, the chapter discusses relevant provisions governing unregistered trade marks, copyright, design right, and registered design right in the UK.

TINY REBEL BREWING CO LTD’S TRADE MARK APPLICATIONAppointed Person (Trade Marks)Prof. Ruth Annand: 16 August 2019BL O/482/19; [2019] R.P.C. 25

2019 ◽  
Vol 136 (10) ◽  
pp. 665-678
Author(s):  
Keyword(s):  
Trade Mark ◽  
Fruit Juices ◽  
Distinctive Character ◽  
Trade Marks ◽  
Passing Off ◽  
Likelihood Of Confusion

Abstract H1 Trade marks – Opposition proceedings – Device marks – TROPICANA – Comparison of goods – Whether beers similar to fruit juices – Comparison of marks – Dominant element – Descriptiveness – Acquired distinctive character – Conceptual differences – Assessment of likelihood of confusion – Passing off – Appeal to Appointed Person

scholarly journals The Challenges of Prior Use to New Zealand Registered Trade Mark Law

2014 ◽  
Vol 45 (2) ◽  
pp. 257
Author(s):  
Rob Batty
Keyword(s):  
New Zealand ◽  
Trade Mark ◽  
Trade Marks ◽  
The Public ◽  
Consumer Confusion ◽  
Prior Use ◽  
Trade Mark Law ◽  
Trade Mark Registration

Under the Trade Marks Act 2002, the registrant of a trade mark is provided with the exclusive rights to use its trade mark. Priority to such exclusive rights is awarded to the person who files a trade mark application first. A searchable Register of trade marks enables traders and the public to see which trade marks have already been registered and by whom. This seemingly certain system is complicated by the continuing relevance of unregistered trade marks under New Zealand law. The first user of a trade mark in the marketplace is considered the true "owner" or "proprietor" of a trade mark. A prior user of an unregistered mark is able to prevent registration of a trade mark, or cancel an existing trade mark registration, even when the application was filed in ignorance of any prior use and where there is no prospect of consumer confusion. This article explores the unsatisfactory nature and consequences of this law of "proprietorship" and questions its continuing relevance. 

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.

The Timing of Confusion

2019 ◽  
Author(s):  
Ilanah Fhima ◽  
Dev S. Gangjee
Keyword(s):  
Trade Mark ◽  
Point Of Sale ◽  
Likelihood Of Confusion ◽  
Trade Mark Infringement ◽  
Trade Mark Law ◽  
The Moment

The conventional assumption in trade mark law is that the potential for confusion is assessed at the moment when a transactional decision is required. In ‘trade mark infringement cases in order to establish liability, a plaintiff must establish that there is a likelihood of confusion between the junior user’s mark and the senior user’s mark. . . Most cases involve confusion at the point of sale’. However two other variants have also been recognised by courts. This chapter reviews the authorities which establish liability for confusion (1) that occurs prior to a purchase transaction and which may even be corrected before the transaction occurs, or (2) is generated by the use of a sign in relation to a product after its purchase. The former is referred to as initial interest confusion while the latter is known as post-sale confusion. While seemingly presented as a question of timing—when is the relevant consumer confused? —each variant more fundamentally relates to the presence or absence of meaningful harm to the trade mark owner.

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