Issues of the Registrability and Infringement of Trademark

Issues of the Registrability and Infringement of Trade quarryThis drumhead would be regarding to the issues of the registrability and misdemeanour of authentication. Trade mark argon the indicators of the decline of the products and services to which it attaches1 which could bring a great economic value. Trademark is defined as any consecrate that is capable of being graphically representable which is distinguishable from one ripe(p) to a nonher under in s.1(1) of Trade Marks roleplay(TMA) 19942. Generally, a post could last for 10 years initially entirely it could be re-create every ten year if it is employmentd in the appropriate class.Trademarks in United Kingdom (UK) is currently governed by TMA 1994 which implemented the atomic number 63an Union(EU) directive 89/104/EEC.3 There atomic number 18 3 requirements to be fulfilled to lodge a trademark. Firstly, a mark must(prenominal) be a mug where it is very broad as it includes words, devices, images, distorts, shapes, music, sounds, and smells. On the facts, the plastic seashell base would be the gull.Next, the mark must be graphically representable. However, some unusual marks such as colour, shape, smell and sound marks would be trying to fulfil this requirement. Therefore, some guidelines have been laid trim down in Sieckmann v Deutsches Patent-und Markenamt4 where it states that the augury must be clear, precise, self-contained, easily accessible, intelligible, and have a perdurable objective for a mark to be graphically representable. On the facts, De Rijk Kluyv think to register the seashell shape which fall under the course of unusual mark. However, it is dispute for a 3-dimensional shape to be represented 2-dimensional graphical form. This could be seen in Swizzels Matlow Ltds 3-Dimensional Trade Mark Application5 where the shape mark failed to be registered as thither was no indication of thickness, size and more. Moreover, in that respect were also many sunk attempts for Re Coca-Cola Co6 to register the shape of their bottle. However, the case of Smith Kline and French v Winthrop7allowed a registration of a 3-dimensional shape in classifiable colour combination. On the facts, unless the confederacy could fulfil the Sieckmann citeria, the mark is non registrable.Furthermore, the mark must also be capable of distinguishing under s.3(1) of TMA 1994. In Scandecor Development AB v Scandecor Marketing AV8, it was held that the importance of trademark is that the goods could be classifiable from separates. Hence, if a mark would not be registrable if is not capable of distinguishing as this was concord by Canon Kabushiki Kaisha v MGM9 on the importance of distinctiveness.However, it would be to a fault wide to look at what could be registered as trade mark. Hence, it is discontinue to focus on what could not be registered by looking at the absolute grounds of refusal under s.3 of TMA 1994 where it sets out 10 categories of signs that could not b e registered. However, there are three categories where it could be registered if a secondary essence could be provided. They are s.3(1)(b), s.3(1)(c) and s.3(1)(d) of TMA 1994.Firstly, under s.3(1)(b) of TMA 1994, it verbalize that the trademarks which devoid of any distinctive character. However, there are 2 different views in this area from UK and European Court of Justice(ECJ). For example, the shape of a torch was ref utilize to be registered as a trademark in cartridge Instrument v OHIM10. It stated that solitary(prenominal) marks which are significantly from the norm or customs of the welkin that can indicate the origin and not lack of the purpose of distinctive character.However, the opinion of UK was different in British Sugar Plc v mob Robertson and Son Ltd11 where Laddie J held that a mark would fall under s.3(1)(b) of TMA 1994 if it could not be distinguished without the customary have the knowledge that it is a trademark. On the facts, the term OUR being IS YOUR OYSTER could arguably to be considered as significant from the norm and distinctive. Moreover, the term could also be distinguished without having the humans knowing it as a trademark. Hence, it would not fall under s.3(1)(b) of TMA 1994.Moreover, on the facts, the guide word of OUR domain IS YOUR OYSTER should not fall under the category under s.3(1)(c) where it is exclusively descriptive of the goods or services to be registrable. The world(a) rule is that the whole of a mark must be descriptive and not scarcely part of the mark. However, the law in this area was uncertain. In Besnier SAs Trade Mark Application12 the registration was ref apply as the term Day by Day would naturally to be employ by other traders. However, in Procter Gamble Co. v OHIM13, it was held that in appeal that baby dry is not the whole descriptive of nappies and the overall effect of the mark is important quite of the components that make it up. This was supported by Griffiths where he stated that it offers greater conclusion to trademark applicants.14Furthermore, in Windsurfing Chiemsee v Attenberger Cases15, the European Court of Justice(ECJ) held that geographic descriptive marks could be registered as trademark if the public associates that mark is with the owner but not the geographic place. In that case, the trademark was used 2 years before it was registered and its application was allowed by the European Court of Justice(ECJ). On the facts, the slogan had only been used just under 2 years. It could be argued that it did not meet the requirement of the length of use laid down in Windsurfings case.However, in OHIM v Wm. Wrigley Jr.Co16, it was held that the mark Doublemint was descriptive even if it was merely partly represented the characteristics of mint flavoured or mint-scented products. It could be submitted that the courts were trying to prevent a floodgate of litigations for marks that consisted descriptive words as this was allowed in Procters case as mentio ned above. This decision had departed from the universal rule and held that it would be considered descriptive even though it only consists part of the mark. It also did not overrule Procters case and created a confusion in law in this area. Hence, on the facts, by following the recent decision in Wrigleys case, the order would fail in the registration of the term as a trademark as it consists a word that is descriptive to the goods themselves which is the word OYSTER where it is a type of seafood.Other than that, the mark should not consist exclusively signs or indications where it became the generic terms in general language or the unique(predicate) market sector under s.3(1)(d) of TMA 1994. On the facts, it could be argued that the slogan OUR WORLD IS YOUR OYSTER fall under the generic terms in general language as it is an edited version of the idiom the world is your oyster. Hence, it could be argued that the slogan could not be registered as a trademark.However, a mark that acquired a distinctive character through its use would be registrable. It is compulsory that the mark must have been used and has in fact acquired a distinctive character. In Socit des Produits Nestl SA v Mars UK Ltd17, it was held that the slogan of Have a BreakHave a Kit cat had become distinctive through its use even though the spirited Court on appeal held that Have a Break itself is not distinctive, the Court of Appeal held that the mark pick up not be distinctive individually. On the facts, unless the keep company could proof distinctiveness by video displaying that a portion of customers that could identify the goods are originate from this company because of the slogan, the slogan OUR WORLD IS YOUR OYSTER would not be registrable.Next, in determining whether there is an misdemeanour of DUTCHY BEACH mark, s.10 of TMA 1994 would be discuss. A typical infringement would involve a sign used by a trader which is connatural to another(prenominal) registered trademark owned by another trader which indicate the root of the goods or services. On the facts, the activity that constitutes an infringement would be affixing a sign to goods or packaging as the mark DUTCHY BEACH was used in a range of beverages by Beechy Beverages Ltd under s.10(4) of TMA 1994.There are three types of use which are regarded as infringements under s.10(1), s.10(2) and s.10(3) of TMA 1994. On the facts, the type of use would be the similar sign for mixed goods which has a reputation and it was used without due cause, takes unfair advantages or detriments under s.10(3) of TMA 1994.18 The mark DUTCHY BEECH sign is similar to DUTCH BEECH mark where one sells beverages but the other one sells processed seafood products. On the facts, it is clear that the mark DUTCHY BEECH is visual, phonic and conceptual similar with DUTCH BEACH as per Muelhens v OHIM19. The company would need to image that there is a likelihood of confusion but this was held to be unnecessary to do so by ECJ in Sabel BV v Puma AG, Rudolf Dassler Sport20. Moreover, on the facts, it is clear that the goods sold by the parties are dissimilar as per the case of Daimler Chrysler AG v Javid Alavi21where the classes of the goods are not the same. On the facts, the class of goods under De Rijk and Kluyvs company are class 29 and 31 while the class of goods under Beechy Beverages are class 32 and 33.Furthermore, De Rijk and Kluyv would need to prove that the trademark has a reputation. However, it is not necessary for the mark to be famous. The reputation would only need to be existed in part of the geographical area by determining the degree of knowledge of the public. It was held by the ECJ in General Motors(GM) v Yplon SA22 that the size of the investment for the promotion of the mark must be considered when determining the degree of knowledge of public on the ii marks. On the facts, they had recently invested in a new seafood platter for the supermarkets. Hence, it could be argued that there is a sufficient reputation for the mark on the public as there was an investment on the mark and it was also used on the goods which distributed to the supermarkets and restaurants locally. It could be argued that the public had a sufficient knowledge on the mark as it can be seen in supermarkets and restaurants.Then, they would need to show that there are detriments suffered or Beechy Beverages had taken unfair advantage of the dream up or distinctive character of DUTCH BEACH mark. It is unnecessary for them to show detriments if there is an unfair advantage taken by Beechy Beverages. On the facts, it could be argued that Beechy Beverages had taken an unfair advantage by using a similar to the mark with repute which is DUTCH BEACH to market their goods as per LOreal v Bellure23. However, if Beechy Beverages could show that the use was with due cause as per Premier Brands UK v Typhoon Europe Ltd24, there would not be an infringement. On the facts, it could be argued that there is no due cause for the use of the mark. However, Beechy Beverages would argue that the use was for comparing advertisement as per TMA 1994 in light of Directive 97/55/EC25.There would be an infringement if the sign was used in a course of trade under s.10(3) of TMA 1994 even if the sign did not used as a trade mark. It could be regarded to be used in a course of trade if it is used for business purposes to indicate the origin of the goods and services as per vibrating reed Executive Plc v Reed bloodline Information26. Moreover, the case Adam Opel AG v Autec AG27 held that any use of a similar mark including decoration purpose would amount to an infringement. On the facts, the Beechy Beverages company did not intend to register it as a trademark as there is no application made. However, according to the case stated above, it would unruffled be an infringement as the sign was used to indicate the beverages are from Dutch as the word DUTCHY was used and it is similar to a registered mark.However, Beechy Beverages could judge for a defence under s.11(2)(b) as the use could be argued as indications for the geographical origin of its goods if there is an infringement. Beechy Beverages would argue that the use of the mark was indicating the goods are from Dutch as the name, DUTCHY BEECH consists partly of the geographical name. This defence would be accepted if the use of the mark may be expected by the public.In conclusion, the shape of the seashell base would be difficult to be registered and the slogan OUR WORLD IS YOUR OYSTER would not be able to be registered as it failed to meet requirement stated above. Moreover, De Rijk and Kluyv will success in their infringement claim but Beechy Beverages would have a defence to it as stated above. De Rijk and Kluyv could seek for injunction and damages from Beechy Beverages for the losses.1 Davis, Jennifer, Intellectual Property Law nitty-gritty Text, (4th edn, OUP 2012) 2002 Trade Marks Act 1994, s.1(1)3 First Council Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks 19884 Sieckmann v Deutsches Patentund Markenamt (C273/00) 2003 3 WLR 4245 Swizzels Matlow Ltds 3-Dimensional Trade Mark Application 1999 RPC 8796 Re Coca-Cola Co 1986 2 every ER 2747 Smith Kline French Laboratories Ltd v Sterling-Winthrop Group Ltd 1976 RPC 5118 Scandecor Development AB v Scandecor Marketing AV and Others 2002 FSR 1229 Canon Kabushiki Kaisha v MGM 1999 ETMR 110 Mag Instrument v OHIM (C-136/02) 2005 ETMR 4611 British Sugar Plc v crowd together Robertson and Son Ltd 1996 RPC 28112 Besnier SAs Trade Mark Application 2002 RPC 6013 Procter Gamble Co. v OHIM (C-383/99) 2001 ECR I-625114 Griffiths, Modernising Trade Mark Law and Promoting Economic Efficiency an evaluation of the Baby-Dry perceptiveness and its aftermath 2003 1 IPQ 1-3715 Windsurfing Chiemsee v Attenberger Cases C-108/97, C-109/97 1999 ECR I-277916 OHIM v Wm. Wrigley Jr. Co. (C-191/01) 2003 ECR I-1244717 Socit des Produits Nestl SA v Mars UK Ltd C-353/03 2006 FSR 218 Trade Marks Act 1994, s.10(3)19 Muelhens v OHIM 2006 ECR I-000020 Sabel BV v Puma AG, Rudolf Dassler Sport 1998 RPC 19921 Daimler Chrysler AG v Javid Alavi (t/a Merc) 2001 RPC 4222 General Motors (GM) v Yplon SA (C-375/97) 1999 ECR I-542123 LOreal SA v Bellure N.V. and Others 2010 EWCA Civ 53524 Premier Brands UK v Typhoon Europe Ltd 2000 FSR 76725 Directive 97/55/EC of European Parliament and of the Council of 6 October 1997 amending Directive 84/450/EEC concerning misleading advertising so as to include comparative advertising 199726 Reed Executive Plc v Reed Business Information Ltd 2004 RPC 76727 Adam Opel AG v Autec AG C-48/05