Trade Mark Revision Notes
What is Trade Mark?
It is a symbolic relationship between the supplier who owns the trade mark and the consumer, trademarks
perform a vital function of indicating the origin of the goods and services being sold: in other words the
trade mark functions as a badge of origin.
“The Primary function of a trade mark, traditionally, has been to identify the commercial or trade
origin of the goods (or services) to which it is applied.” (S Ricketson)
The key points about the function of a Trade Mark:
1. A badge of Origin
Some examples being Tesco and Rolls Royce – when a consumer sees one of these registered
trademarks used in conjunction with goods or services, it gives an indication of the origin of those products.
2. An indication of Quality
Trademarks are able to achieve that affect because they act as a guarantee to the consumer the all the
goods bearing a particular trade mark have been provided by or under the control of the same
manufacturer and therefore likely to be of similar quality.
3. A means of Advertising
Many traders invest not only time but effort, but also substantial sums in bringing a particular mark to the
attention of the public.
4. An investment Vehicle
So for example, communication, investment, or advertising functions. These are said to arise from the fact
that the investment in the promotion of a product is built around the mark.
The last 3 are sometimes referred to as the “extended’ or ‘communicative’ functions. In terms of the
Trade Mark Reform package, the extended functions will no longer be referenced to as double
identity disputes.
During the 19th Century, when a consumer wanted to purchase particular goods, she had to rely
heavily on the expertise of the shopkeeper for advice of origin of the goods and their quality.
Not until 1875 that a register was first introduced in the UK partly in response to the growth in
international trade.
Now it is said that the association of a trade mark with goods and services (the origin) that sells
products to the consumer, rather than the expertise of the shopkeeper.
The advantages of this meant it reduced the burden on the trade of the need to prove goodwill and
distinctiveness necessary for an action in passing off.
Policy Issues:
Key issues:
1. The extent of the monopoly conferred by the mark
2. The trade mark framework seeks to balance the interests of the trade mark proprietor, the
competitor and the consumer.
,Trade Mark only gives monopoly over the use of the mark in conjunction with the goods and services for
which it is registered.
This leads to a constant tension between traders as proprietors of trade marks who would like to
see the scope of that monopoly construed as broadly as possible so as to reserve themselves as
much exclusivity in the market as possible and competitors who wish to see the monopoly
interpreted narrowly so as to enable them to encroach and free ride upon a successful registered
trade mark.
Registration and the scope of protected conferred by the mark are circumscribed by indication the
consumer might find confusing, or which implicate the origin function of the mark.
Case law has at times sent inconsistent signals in recognising and balancing the interests. The current
provisions on registered trad marks have spawned more case law at European level than any other area of
IP.
The financial importance of trade marks in business has led to this. Trade mark owners and
competitors are willing to litigate in seeking to ensure that they can obtain even the smallest
competitive advantage over their competitors.
Despite their economic aspects, there has been discussion in relation the law supporting trad marks and
seeking to limit their power. one of these is in relation to human rights, e.g. property rights and freedom of
expression.
For example:
Anhhesuer-Busch v Portugal – the ECHR held that trademarks and applications are possessions for the
purposes of Article 1, Protocol 1.
The advocate general made reference to balancing competition rights in Google France v Louis Vuitton
“whatever the protection affording to innovation and investment, it is never absolute. It must always
be balanced against other interests, in the same way as trade mark protection itself is balance
against the. I believe that the present case call for such a balance as regards to freedom of
expression and freedom of commerce. “
Current trends of Trade Mark?
There has been a backlash in some sectors of society against the power that is said trademarks can have
over daily life of a consumer. This campaign has been directed at brands rather than the marks
themselves.
The terms ‘brand’ or ‘branding’ would appear to refer to the totality of the mage that is portrayed in
relation to or by a product in the marketplace and the process of getting there.
The word branding can be applied to an entire corporate identity as well as to individual products and
services. In recent years, companies have attempted to build whole aspirations, images and lifestyles
around a brand e.g. Levi, Baileys, Vodka. It is argued it offers a lifestyle that is dictated by the brand owner
but which does not necessarily reflect real life.
There has been criticism of the extended functions of Trade Marks and the complexity of the case
law of the Court of Justice in this area:
Loreal v Bellure:
Jacob LJ:
We are to consider whether the functions of communication, investment or advertising are liable to
be affected. Even though the use is not capable of jeopardising the essential function of the mark
, which is to indicate the origin of goods. I am bound to say that I have a real difficulty with these
functions when divorced from the origin function. There is nothing in the legislation about them.
conceptually, they are vague and ill-defined. Take for instance the advertising and investment
functions. Trad mark owners of famous marks have spent loafs of money creating them and need to
continue to spend to maintain them. But all advertisements for rival products will impinge on
the owners affects and affect the advertising and investment function of the band in question.
All comparative advertising is likely to affect the value of the trade mark owner’s investment.
Interflora v Marks and Spencer’s:
Advocate general made reference to criticism of the extended functions of a trade mark: it cannot be denied
that the court finds itself at a rather challenging situation as to the acceptability of its case law in relation to
Art.5 of Directive 89/104 also in view of the critic ism presented by academics. When the court of justice
gave its judgement in the case. It chose to ignore the criticism in earlier case law emphasising that
the extended functions were relevant to those cases which concerned the infringement of identical
marks as well as those where the marks were similar and had a reputation.
In a study by Max Planck – it was pointed out that ‘Although in particular L’oreal v Bellure has been
welcomed by proponents of strong trade mark protection, it is undeniable that the increased focused laid on
trade mark functions as an element of defining the concrete ambit and scope of trade mark law has blurred
the picture, notability in the double identify cases it recommends greater certainty by adding the full
functions of the trade mark to the preamble and definition the ambit of trade mark law.
But there is no single universally accepted function of a trade mark. However, trend seems
to focus on the origin function, BUT the Court of Justice has chosen to embrace wider
functions.
Trade Marks and Other intellectual Property Rights: Registration?
A trader will gain protection for a trade mark in relation to the goods or services in which she deals and for
which the mark is registered.
A similar mark registered in relation to a difference class of goods by a different trader will not
necessarily infringe the first if there no likelihood of confusion between the two marks.
Two or more traders can use identical marks in conjunction with similar or dissimilar goods and
services;
If, however, a consumer is likely to be confused as to the origin of the goods or services sold under
the mark, then either the application for registration will be turned down or it will be opposed by the
proprietor of the first registered mark.
If used unregistered, then it can be challenged.
Extended protection is granted to marks which has a reputation. Infringement may occur where the
use of a similar by a competitor without due course, takes unfair advantage of, or is detrimental the
distinctive character or repute of the registered mark.
Trade marks find their justification in the consumer society. The basic function of a trade mark is denote the
origin of particular goods and services and thus reward the manufacturer who consistently produces goods
of a particular quality using that mark.
The nature stands out in relation to other rights – for example:
1. Patents which give an absolute monopoly but for a limited time of 20 years.
2. Copyright gives a weaker monopoly, but for a longer period of 70 years after the death of thee
author.
, 3. Design right gives monopoly of 25 years.
4. Trade marks by contrast, can give a monopoly of an unlimited period of time. Registration of a
trade mark in the UK lasts for ten years from the date of registration, successive period after 10
years may be applied.
Example:
Bass Logo: Registered Trade Mark:
This was the first UK trade mark register and is still valid.
Its registered in relation to pale ale, but the monopoly in that mark is limited in that registration does
not prevent a competing trader for entering that mark.
The proprietor dos not obtain a monopoly in the mark as such, in the goods or services. It is limited to the
use of the mark in connection with the same or similar goods and services for which it is registered.
The Regulatory Framework:
1) UK national registrations
UK Trade Marks Act 1994 (“TMA”)
Implements Trade Mark Directive and obligations from international Treaties. It was introduced as a
result of the EC Council Directive 89/104/EEC of 21st December 1988 to approximate the laws of
the Member stats relating to trade marks. It governs those marks registered in the UK register with
the UK intellectual Property Office.
2). European:
1. Community Trade Mark Registration
2. Trade Mark Directives
3). International
1. WTO
2. TRIPS
Paris Convention
Madrid Agreement
Madrid Protocol
Trade Mark Law Treaty
Singapore Treaty
Nice Classification
1. Regulatory Frame Work: Application and Procedure: The UK
To apply for a UK registered Trade Mark application is made to the office in Newport in Gwent. The
application must include
What is Trade Mark?
It is a symbolic relationship between the supplier who owns the trade mark and the consumer, trademarks
perform a vital function of indicating the origin of the goods and services being sold: in other words the
trade mark functions as a badge of origin.
“The Primary function of a trade mark, traditionally, has been to identify the commercial or trade
origin of the goods (or services) to which it is applied.” (S Ricketson)
The key points about the function of a Trade Mark:
1. A badge of Origin
Some examples being Tesco and Rolls Royce – when a consumer sees one of these registered
trademarks used in conjunction with goods or services, it gives an indication of the origin of those products.
2. An indication of Quality
Trademarks are able to achieve that affect because they act as a guarantee to the consumer the all the
goods bearing a particular trade mark have been provided by or under the control of the same
manufacturer and therefore likely to be of similar quality.
3. A means of Advertising
Many traders invest not only time but effort, but also substantial sums in bringing a particular mark to the
attention of the public.
4. An investment Vehicle
So for example, communication, investment, or advertising functions. These are said to arise from the fact
that the investment in the promotion of a product is built around the mark.
The last 3 are sometimes referred to as the “extended’ or ‘communicative’ functions. In terms of the
Trade Mark Reform package, the extended functions will no longer be referenced to as double
identity disputes.
During the 19th Century, when a consumer wanted to purchase particular goods, she had to rely
heavily on the expertise of the shopkeeper for advice of origin of the goods and their quality.
Not until 1875 that a register was first introduced in the UK partly in response to the growth in
international trade.
Now it is said that the association of a trade mark with goods and services (the origin) that sells
products to the consumer, rather than the expertise of the shopkeeper.
The advantages of this meant it reduced the burden on the trade of the need to prove goodwill and
distinctiveness necessary for an action in passing off.
Policy Issues:
Key issues:
1. The extent of the monopoly conferred by the mark
2. The trade mark framework seeks to balance the interests of the trade mark proprietor, the
competitor and the consumer.
,Trade Mark only gives monopoly over the use of the mark in conjunction with the goods and services for
which it is registered.
This leads to a constant tension between traders as proprietors of trade marks who would like to
see the scope of that monopoly construed as broadly as possible so as to reserve themselves as
much exclusivity in the market as possible and competitors who wish to see the monopoly
interpreted narrowly so as to enable them to encroach and free ride upon a successful registered
trade mark.
Registration and the scope of protected conferred by the mark are circumscribed by indication the
consumer might find confusing, or which implicate the origin function of the mark.
Case law has at times sent inconsistent signals in recognising and balancing the interests. The current
provisions on registered trad marks have spawned more case law at European level than any other area of
IP.
The financial importance of trade marks in business has led to this. Trade mark owners and
competitors are willing to litigate in seeking to ensure that they can obtain even the smallest
competitive advantage over their competitors.
Despite their economic aspects, there has been discussion in relation the law supporting trad marks and
seeking to limit their power. one of these is in relation to human rights, e.g. property rights and freedom of
expression.
For example:
Anhhesuer-Busch v Portugal – the ECHR held that trademarks and applications are possessions for the
purposes of Article 1, Protocol 1.
The advocate general made reference to balancing competition rights in Google France v Louis Vuitton
“whatever the protection affording to innovation and investment, it is never absolute. It must always
be balanced against other interests, in the same way as trade mark protection itself is balance
against the. I believe that the present case call for such a balance as regards to freedom of
expression and freedom of commerce. “
Current trends of Trade Mark?
There has been a backlash in some sectors of society against the power that is said trademarks can have
over daily life of a consumer. This campaign has been directed at brands rather than the marks
themselves.
The terms ‘brand’ or ‘branding’ would appear to refer to the totality of the mage that is portrayed in
relation to or by a product in the marketplace and the process of getting there.
The word branding can be applied to an entire corporate identity as well as to individual products and
services. In recent years, companies have attempted to build whole aspirations, images and lifestyles
around a brand e.g. Levi, Baileys, Vodka. It is argued it offers a lifestyle that is dictated by the brand owner
but which does not necessarily reflect real life.
There has been criticism of the extended functions of Trade Marks and the complexity of the case
law of the Court of Justice in this area:
Loreal v Bellure:
Jacob LJ:
We are to consider whether the functions of communication, investment or advertising are liable to
be affected. Even though the use is not capable of jeopardising the essential function of the mark
, which is to indicate the origin of goods. I am bound to say that I have a real difficulty with these
functions when divorced from the origin function. There is nothing in the legislation about them.
conceptually, they are vague and ill-defined. Take for instance the advertising and investment
functions. Trad mark owners of famous marks have spent loafs of money creating them and need to
continue to spend to maintain them. But all advertisements for rival products will impinge on
the owners affects and affect the advertising and investment function of the band in question.
All comparative advertising is likely to affect the value of the trade mark owner’s investment.
Interflora v Marks and Spencer’s:
Advocate general made reference to criticism of the extended functions of a trade mark: it cannot be denied
that the court finds itself at a rather challenging situation as to the acceptability of its case law in relation to
Art.5 of Directive 89/104 also in view of the critic ism presented by academics. When the court of justice
gave its judgement in the case. It chose to ignore the criticism in earlier case law emphasising that
the extended functions were relevant to those cases which concerned the infringement of identical
marks as well as those where the marks were similar and had a reputation.
In a study by Max Planck – it was pointed out that ‘Although in particular L’oreal v Bellure has been
welcomed by proponents of strong trade mark protection, it is undeniable that the increased focused laid on
trade mark functions as an element of defining the concrete ambit and scope of trade mark law has blurred
the picture, notability in the double identify cases it recommends greater certainty by adding the full
functions of the trade mark to the preamble and definition the ambit of trade mark law.
But there is no single universally accepted function of a trade mark. However, trend seems
to focus on the origin function, BUT the Court of Justice has chosen to embrace wider
functions.
Trade Marks and Other intellectual Property Rights: Registration?
A trader will gain protection for a trade mark in relation to the goods or services in which she deals and for
which the mark is registered.
A similar mark registered in relation to a difference class of goods by a different trader will not
necessarily infringe the first if there no likelihood of confusion between the two marks.
Two or more traders can use identical marks in conjunction with similar or dissimilar goods and
services;
If, however, a consumer is likely to be confused as to the origin of the goods or services sold under
the mark, then either the application for registration will be turned down or it will be opposed by the
proprietor of the first registered mark.
If used unregistered, then it can be challenged.
Extended protection is granted to marks which has a reputation. Infringement may occur where the
use of a similar by a competitor without due course, takes unfair advantage of, or is detrimental the
distinctive character or repute of the registered mark.
Trade marks find their justification in the consumer society. The basic function of a trade mark is denote the
origin of particular goods and services and thus reward the manufacturer who consistently produces goods
of a particular quality using that mark.
The nature stands out in relation to other rights – for example:
1. Patents which give an absolute monopoly but for a limited time of 20 years.
2. Copyright gives a weaker monopoly, but for a longer period of 70 years after the death of thee
author.
, 3. Design right gives monopoly of 25 years.
4. Trade marks by contrast, can give a monopoly of an unlimited period of time. Registration of a
trade mark in the UK lasts for ten years from the date of registration, successive period after 10
years may be applied.
Example:
Bass Logo: Registered Trade Mark:
This was the first UK trade mark register and is still valid.
Its registered in relation to pale ale, but the monopoly in that mark is limited in that registration does
not prevent a competing trader for entering that mark.
The proprietor dos not obtain a monopoly in the mark as such, in the goods or services. It is limited to the
use of the mark in connection with the same or similar goods and services for which it is registered.
The Regulatory Framework:
1) UK national registrations
UK Trade Marks Act 1994 (“TMA”)
Implements Trade Mark Directive and obligations from international Treaties. It was introduced as a
result of the EC Council Directive 89/104/EEC of 21st December 1988 to approximate the laws of
the Member stats relating to trade marks. It governs those marks registered in the UK register with
the UK intellectual Property Office.
2). European:
1. Community Trade Mark Registration
2. Trade Mark Directives
3). International
1. WTO
2. TRIPS
Paris Convention
Madrid Agreement
Madrid Protocol
Trade Mark Law Treaty
Singapore Treaty
Nice Classification
1. Regulatory Frame Work: Application and Procedure: The UK
To apply for a UK registered Trade Mark application is made to the office in Newport in Gwent. The
application must include
