Trade-marks - PowerPoint Presentation

Slide1

Trade-marksSlide2

Trade-marks

A trade-mark is any mark which identifies the source of the wares

Trademark in the US

Trade mark in the UKSlide3

Trade-marks

Trade-marks are protected by

The common law of passing off

Passing off was once known as unfair competition

And still is in the US

The

Trade-marks Act

The Act applies only to marks which are registered

Unfair Competition Act was predecessor of Trade-Marks Act

Hence trade-marks may be registered or unregisteredSlide4

Passing Off & Trade-marks

Passing off and the

Trade-marks Act

offer very similar protection

It is very common to allege both passing off and an infringement of the TMA in the same action

Differences are procedural

Territorial extent

PO is limited to region in which the mark is actually known

TMA protection it national on registration

Establishing of reputation

PO requires reputation be established by evidence

TMA requires only use as prerequisite to registrationSlide5

Principles

Trade-marks law protects an association between a mark and the source of the wares

Contrast trade-marks with patent and copyright in which the wares themselves are protected

The operation of the market relies extensively on brands The goodwill associated with them is considered to be a most valuable form of property However, despite its connection with a product,

a mark

must not be confused with the product – it

is

something else

, a symbol of a connection between a source of a product and the product itself.

Kirkbi

v

Rivtik

SCCSlide6

Principles

Corollary

Functionality is not protected by trade-marks law

To achieve protection for functional aspects of a work, copyright or patent protection must be soughtSlide7

Principles

Why is it important to protect the association between the mark and the wares?

In many cases the quality of the wares cannot be determined by direct inspection at the time of the purchase

Only experience – and hindsight – tells the quality of the goods

Reputation is the basis of the saleSlide8

Principles

A good reputation sets up a virtuous circle

Consumers buy the manufacturer’s goods because of the reputation

The manufacturer keeps up its reputation because this leads consumers to purchase

Note that it is expensive to produce high quality wares

A good reputation allows a provider to charge commensurately more for their waresSlide9

Principles

Once the reputation is established a forger can exploit the mark by selling inferior quality goods at the same price as is commanded by the owner’s higher quality goods

The forger

could choose to offer high quality goods

But it won’t

The forger can make extraordinary profits by offering inferior goods at the same priceSlide10

Elements

Trade-marks law protects reputation by protecting the link between the source and the wares

The mark may be a manufacturer’s mark

A distributor’s mark

A retailer’s mark

A service mark

This allows the reputation of the source to develop through consumers’ experience with wares associated with the markSlide11

Elements

Because trade-marks law is aimed at protecting reputation the key element is

confusion in the mind of the consumers as to the source of the wares

The mark must be

Confusingly similar, and

Confusing as to the source of the wares

Using the mark to refer to the source of the wares is not confusing

Eg

“I own a Honda™”Slide12

“Source Theory”

This is encapsulated in the traditional “source theory”

The function of a trademark is to impart information as to the source or sponsorship of the product.

Singer Mfg Co v

Loog

(1880) 18

ChD

395Slide13

“Source Theory”

In other words, what the registered mark does nowadays is to ensure that the wares or services are the wares and services of a particular person and no one else, that is, the source of the goods is guaranteed.

United Artists Corp v Pink Panther Beauty Corp 80 CPR (3d) 247 (FCA) at 256

[T]he traditionally accepted premise that the only legally relevant function of a trademark is to impart information as to the source or sponsorship of the product.

Smith v Chanel, Inc, 402 F2d 562 (9th Cir 1968) at 566: Slide14

Source Theory

Contrast source theory with

Guarantee theory

The function of the mark is to guarantee the quality of the goods

Property theory

Ownership of the mark

Dilution theorySlide15

Ciba-Geigy v

Apotex

Gontier

J suggests that “the passing-off action is intended to protect a form of ownership”

“the passing off injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business”

The suggestion that trade-marks are a form of property is dangerous, as it suggests that the owner can control

any use of the trade-mark, even those which do not cause any confusion

Eg

What’s in Jeremy’s walletSlide16

Ciba-Geigy v

Apotex

The suggestion that trade-marks law protects the property of the owner stems from the fact that the owner of the mark, not the consumer, brings the action

[

i

]t should never be overlooked that unfair competition cases are affected with a public interest. A dealer's good will is protected, not merely for his profit, but in order that the purchasing public may not be enticed into buying A's product when it wants B's product

.

Ciba-Geigy

But if the law is really about protecting the consumer, why is the T-M owner given the right of action?Slide17

Ciba-Geigy v

Apotex

The interests of the owner and the consumer are aligned when a forger uses a confusing mark

Since the owner has more at stake than any individual consumer, the owner brings the action

But the interests of the owner and the consumer are

not aligned in the case of non-confusing uses

This is when it is necessary to determine who the law is really intended to protectSlide18

Dilution and Passing Off

Trade-mark ‘dilution’ has been recognized in the US

Arises when defendant “blurs” or “tarnishes” a markSlide19

Dilution

Blurring applies to famous marks

Kodak bicycles would blur the distinctiveness of Kodak film, even without confusion

An extension of traditional source theorySlide20

Dilution

Tarnishment

Derogatory use of a mark

“Enjoy Cocaine”

Dallas Cowboys Cheerleaders, Inc v Pussycat Cinema, Ltd, 604 F2d 200 (2d Cir 1979)

Plaintiff's distinctive uniform diluted by defendant's use of a similar uniform in an X-rated movie

Pillsbury Co v Milky Way Prods, Inc, 215 USPQ 124 (ND

Ga

1981)

Plaintiff's trade characters "

Poppin

" Fresh" and "

Poppie

Fresh" diluted by depiction of them engaged in sexual

acts

MTD v John Deere

John Deere lawn tractor being chased by MTD tractor

“Nothing runs like a Deere”

Much closer to property right in the mark itselfSlide21

Google

AdWords

Use in Commerce?

In Canada “sells

, distributes or advertises wares or services in association

…”

Yes

Google

France v Louis

Vuitton

, A-G ECJ Sept 2009

Rescuecom

Corp. v. Google, Inc., (2009, 2

nd

Cir.)

Confusing Use?

No – Google France

Maybe -

RescuecomSlide22

Passing Off – Elements

Despite some waffling, the traditional elements of passing off remain:

(1) A reputation

An association in the mind of the public between the mark and the source

(2) A misrepresentation leading or likely to lead to confusion in the mind of the public

(3) Damage to the plaintiffSlide23

Passing Off –

Intent

Intent to confuse is

not an element

For this reason it is sometimes said that the right is “proprietary”

This does not mean that the owner owns the mark in the sense that they can prohibit any use whatsoever of the

mark

Confusion remains a requirementSlide24

Passing Off – Elements

Intent to confuse is

not an element

For this reason it is sometimes said that the right is “proprietary”

This does

not mean that the owner owns the mark in the sense that they can prohibit any use whatsoever of the markSlide25

Trade-marks & Passing Off

Differences between registered and unregistered marks relate to

reputation

Not necessary to prove a reputation

Registration is permitted upon use

Nationwide protection

Passing off protects only in the geographical areas in which a reputation has been gained