introduction to brands
DESCRIPTION
These are the slides for my introduction to brands which I presented on the 25 September 2013 to an audience of 20 at 4-5 Gray's Inn Square. This talk follows on from my Introduction to IP in June 2013 and if you have not seen those slides or read the manual it is worth doing so. Brands are the handle by which businesses, goods and services are recognized by the market place. They include trade marks and trade names but are so much more. Investment in branding is protected in the UK by a set of legal rules: - the action for passing off; - trade mark registration; - geographical indications; and - domain names. The action for passing off is a judge-made doctrine that has evolved over centuries. Essentially it is a prohibition against misrepresenting one trader's goods, services or business as those of another by adopting the same or a similar sign. Essentially there are three probanda: - reputation or goodwill; - misrepresentation, and - damage. There are however two special types of passing off: - extended passing off where the goodwill is in the product rather than the producer; and - inverse passing off where the defendant claims the goods or services of the claimant as his or her own. Trade marks are signs that can distinguish one trader's goods or services from those of all others. They are registered for specified goods or services which are organized into classes in accordance with the Nice Agreement. The registration of a trade mark confers the exclusive right to use the mark in relation to the specified goods or services. A registered trade mark can be infringed by using: - a sign that is identical to the registered mark in respect of the specified goods or services; - a sign that is the same or similar to the registered mark in relation to the same or similar goods where because of such similarity there is a likelihood of confusion including a likelihood of association with the registered mark; and - a sign in relation to any goods or services that is similar to a mark with a reputation where the use without due cause takes unfair advantage of or is detrimental to the registered mark. There are a number of exceptions to the exclusive rights conferred by registration and a defendant to an infringement action will often counterclaim for the revocation or invalidation of the registered mark. There are two special types of trade mark: - collective marks; and - certification marks. Trade marks may not be registered if such registration is contrary to the public interest (absolute grounds) or conflicts with an earlier trade mark or other IP right. WTO member states have an obligation under TRIPS to protect the iTRANSCRIPT
Law Relating to BrandsTrade Marks, Passing off, Geographical
Indications, Domain Names
Jane Lambert4-5 Gray’s Inn Square, Gray’s Inn, London, WC1R 5AH
Wednesday 25 Sep 201316:00 -18:00
More than just a logo, name or other sign or symbol.
The way a business, product or service is identified in the market.
What is a Brand?
Action of Passing off
Trade Mark Registration
Geographical Indications
Domain Names
Registered Designs, Confidence, etc
Legal Protection of Brands
Judge made law which has developed over centuries
Similar to the Civil Law notion of unfair competition
Basic principles set out by Lord Oliver in the Jif Lemon case (Reckitt & Colman v Borden).
Passing Off
A claimant has to prove:
● Reputation or goodwill;● Misrepresentation; and● Damage.
Sometimes referred to as “the holy trinity”,
Passing Off
Modifications to the “holy trinity”:
● Extended passing off○ Where protection is sought in respect of the
product rather than that of the producer (see the Vodka case);
● Inverse passing off○ Where the defendant claims the work of the
claimant as his own as in Bristol Conservatories.
Passing Off
“A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.”(Art 2 Trade Marks Directive)
Registered Trade Marks
Trade marks can be registered with:● The Intellectual Property Office (“IPO”)
for the UK alone under the provisions of the Trade Marks Act 1994; or
● OHIM (Office of Harmonization in the Internal Market) for the whole EU as a Community trade mark (“CTM”) under the provisions of the CTM Regulation.
Registered Trade Marks
Trade marks are registered for specified goods or services.
Such goods and services are grouped in classes in accordance with the Nice Agreement.
Registered Trade Marks
“The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent.”(s.9 (1) TMA)
Registered Trade Marks
A registered trade mark may be infringed by using a sign that is:● identical to the mark in relation to identical
goods;● identical or similar to the mark in relation to
identical or similar goods where there is a likelihood of confusion including association;
● that is identical or similar to a mark with a reputation that takes unfair advantage of or is detrimental to the reputation of the registered mark.
Registered Trade Marks
“Use” means:“(a) affixing the sign to the goods or to the packaging thereof;(b) offering the goods, putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;(c) importing or exporting the goods under that sign;(d) using the sign on business papers and in advertising.”
Registered Trade Marks
Defences to trade mark infringement:
● Exceptions○ S.10 - S.12 TMA ○ Arts 12 and 13 CTM Reg
● Invalidity○ S.47 TMA
● Revocation○ S.46 TMA
Registered Trade Marks
Applications must contain: (a) a request for the registration of the trade mark,(b) the name and address of the applicant,(c) a statement of the goods or services in relation to which it is sought to register the trade mark, and(d) a representation of the trade mark.
Registered Trade Marks
Anyone opposing an application to register a trade mark may:● oppose the application; or● make representations to the examiner as
to why the mark should not be granted.
Registered Trade Marks
An application may be challenged on:● Absolute Grounds
○ Grounds of public interest
● Relative Grounds○ Registration would conflict with an existing
trade mark registration or application or a right to bring an action for passing off or other intellectual property right.
Registered Trade Marks
Special types of trade marks:● Collective marks
○ a mark distinguishing the goods or services of members of an association from those of other undertakings (s.49 TMA);
● Certification marks○ a mark indicating that the goods or services
are certified by the proprietor of the mark in respect of origin, quality etc (s.50 TMA)
Registered Trade Marks
Definition:“indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”(Art 22 (1) TRIPS)
Geographical Indications
Art 22 (2) TRIPS requires WTO members to prevent:“(a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;(b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967)."
Geographical Indications
● Law of Passing off○ Extended form of passing off
● Trade Marks○ Collective Marks○ Certification Marks
● Reg (EU) No 1151/2012○ Protected designation of origin○ Protected Geographical Indication○ Traditional Speciality Guaranteed
Geographical Indications
● Mnemonics for a string of numbers that identify a server on the internet.
● Traditionally registered on a first come first served basis.
● Became important with the development of the Worldwide Web
● Problem of Cybersquatting● Incorporation of ICANN to regulate
Domain Name System
Domain Names
Types of domain names:● gTLD (Generic top level domains such as
.com, .net, .org and .biz; and● ccTLD (Country code top level top level
domains such as .uk, .fr, .de, .au, .cn, .jp etc)
● gTLD registrars appointed by ICANN;● ccTLD registrars appointed by national
authorities such as Nominet in the UK.
Domain Names
One of the conditions for the appointment of a domain name registrar is that it incorporates a domain name dispute resolution clause into its registration agreements with end-users:● UDRP (Uniform Domain Name Dispute
Resolution Policy) for gTLDs;● DRS (Dispute Resolution Policy) for .uk
domain name disputes.
Domain Names
Jane Lambert4-5 Gray’s Inn SquareGray’s InnLondonWC1R 5AH020 7404 [email protected]
Further Information