John Lambert
3 March
2004, last updated 14 Aug 2005
This
article first appeared on the NIPCLAW website
The difference between the absolute and relative grounds of refusal are outlined on the absolute grounds page. The relative grounds are so called because they require the claims of an applicant for registration of a sign to be weighed against those of some other rights holder, such as the proprietor of another British or Community trade mark, or one who would be entitled to bring an action for passing off.
The Directive
Art 4 of the First Trade Marks Directive prohibits the registration of a
mark, or requires the invalidation of such registration, in the
following circumstances:
if the mark is identical with an earlier trade mark, and the goods or services for which the trade mark is applied for or is registered are identical with the goods or services for which the earlier trade mark is protected (art 4 (1) (a));
if 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, which includes the likelihood of association with the earlier trade mark (art 4 (1) (b)); and
if it is identical with, or similar to, an earlier CTM for goods or services which are not similar to those for which the earlier Community trade mark is registered, where the earlier CTM has a reputation in the EC and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier CTM.
Further, art 4 (4) of the directive also permits member states to deny registration, or require invalidation, of marks in any of the following further circumstances:
if the trade mark is identical with, or similar to, an earlier national mark and is to he, or has been, registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier trade mark has a reputation in the member state concerned and where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark (art 4 (4) (a));
if the mark conflicts with rights in a non-registered trade mark, or other sign used in the course of trade, that were acquired prior to the date of application for registration of such mark or the priority date (art 4 (4) (b));
if it conflicts with some other right such as a right to a name, a right of personal portrayal, a copyright or an industrial property right (art 4 (4) (c));
if it the mark is identical with, or similar to, an earlier collective mark conferring a right that expired within a period of a maximum of 3 years preceding application (art 4 (4) (d));
if it is identical with, or similar to, an earlier guarantee or certification mark conferring a right which expired within a period preceding application the length of which is fixed by the member state (art 4 (4) (e));
if the trade mark is identical with, or similar to, an earlier trade mark which was registered for identical or similar goods or services and conferred on them a right which has expired for failure to renew within a period of a maximum of 2 years preceding application, unless the proprietor of the earlier trade mark gave his agreement for the registration of the later mark or did not use his trade mark (art 4 (4) (f));
if the trade
mark is liable to be confused with a mark which was in use abroad on
the filing date of the application and which is still in use there,
provided that at the date of the application the applicant was
acting in bad faith (art 4 (4) (g)).
Art 4 (5) permits member states to permit registration in
appropriate circumstances where the proprietor of the earlier trade
mark or other earlier right consents to registration. Member state
may also provide that the grounds for, refusal of registration, or,
invalidity, in force before the date on which the directive should
have been implemented shall apply to trade marks for which
application has been made prior to that date (art 4 (6).
Meaning of
"Earlier Trade Mark"
An "earlier trade mark" is defined by art 4 (2) (a) and (c) of the
directive as a trade mark, or application for a trade mark, of one of
the following kinds, namely a Community trade mark ("CTM"), a
national (or in the case of Belgium, the Netherlands and Luxembourg a
"Benelux") mark or trade marks registered under international
arrangements which have effect in a member state, with a date of
application for registration that is earlier than the date of
application for registration of the mark in suit, taking account, where
appropriate, of the priorities claimed in respect of those trade marks.
Art 4 (2) (b) and (c) extend the definition to CTM or CTM applications
that claim seniority from a national or Benelux registration even where
such registration has been surrendered or allowed to lapse. Finally, an
"earlier trade mark" includes "well known marks" or applications for
such marks within the meaning of art 6bis of the Paris Convention.
Parallels with the Infringement Provisions
It will be noted that the circumstances under which an application for
registration of a trade mark may be refused pursuant to art 4 (1) (a),
(b) and (c) are identical to those upon which a claim may be made for
infringement of a CTM. Similarly, those under art 4 (1) (a) and (b) and
the optional art 4 (4) (a) are the same as the grounds upon which an
action for infringement of a national trade mark may be brought.
Identical Marks and Identical Goods
Art 4 (1) (a) of the directive is implemented in the UK by s.5 (1) of
the Trade Marks Act 1994 ("TMA"). The parallel provision of the
CTM regulation is art 8 (1) (a).
In Case C-291/00, LTJ Diffusion SA v
Sadas Vertbaudet SA, (20 March 2003) OHIM, the European
Court held that the criterion of identity of the sign, the subject of
the application, and any earlier trade mark must be interpreted
strictly. The very definition of identity implies that the two elements
compared should be the same in all respects. Indeed, the absolute
protection in the case of a sign which is identical with the trade mark
in relation to goods or services which are identical with those for
which the trade mark is registered, which is guaranteed by art 5 (1) (a)
of the directive, cannot be extended beyond the situations for which it
was envisaged, in particular, to those situations which are more
specifically protected by art 5(1) (b). There is identity between the
sign and the trade mark where the former reproduces, without any
modification or addition, all the elements constituting the latter. The
court added, however, that the perception of identity between the sign
and the trade mark must be assessed globally with respect to an average
consumer who is deemed to be reasonably well informed, reasonably
observant and circumspect. Since the perception of identity between the
sign and the trade mark is not the result of a direct comparison of all
the characteristics of the elements compared, insignificant differences
between the sign and the trade mark may go unnoticed by an average
consumer. It follows that art 5 (1) (a) and, of course, the
corresponding provisions of the TMA and CTM regulation) must be
interpreted as meaning that a sign is identical with the trade mark
where it reproduces, without any modification or addition, all the
elements constituting the trade mark or where, viewed as a whole, it
contains differences so insignificant that they may go unnoticed by an
average consumer. Although Jacob LJ described this reasoning as opaque
in
Reed Executive Plc and others v
Reed Business Information Ltd and others
[2004] EWCA Civ 159 at paragraph [25] he effectively followed
it in holding that "Reed Business Information" and "Reed Elsevier" were
not identical for the purposes of s.5 (1).
Similarity of Marks and Goods giving Rise to Likelihood of Confusion
including the Likelihood of Association with the Earlier Trade Mark
Art 5 (1) (b) is implemented by s.5 (2) of the TMA and the equivalent
provision of the CTM regulation is art 8 (1) (b). The ECJ has formulated
a number of guidelines on the application of those provisions in
C251/95 Sabel BV v Puma AG
[1998] ETMR. 1,
C-39/97 Canon Kabushiki Kaisha v
Metro-Goldwyn-Mayer Inc [1999] ETMR. 1,
C-342/97Lloyd Schuhfabrik Meyer & Co
GmbH v Klijsen Handel BV. [2000] FSR. 77 and
C425/98 Marca Mode CV v Adidas AG
[2000] ETMR. 723:
the likelihood of confusion must be appreciated globally, taking account of all relevant factors (Sabel, para [22]);
the matter must be judged through the eyes of the average consumer of the goods/services in question (Sabel para 23) who is deemed to be reasonably well informed and reasonably circumspect and observant - but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind (Lloyd, para [27]);
the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details (Sabel, para [23]);
the visual, aural and conceptual similarities of the marks must therefore be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components (Sabel, para [23]);
a lesser degree of similarity between the marks may be offset by a greater degree of similarity between the goods, and vice versa; (Canon, para [17]);
there is a greater likelihood of confusion where the earlier trade mark has a highly distinctive character, either per se or because of the use that has been made of it (Sabel, para [24]);
mere association, in the sense that the later mark brings the earlier mark to mind, is not sufficient for the purposes of s. 5 (2) (Sabel, para 26);
further, the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; (Marca Mode, para [41]);
but if the association between the marks causes the public to wrongly believe that the respective goods come from the same or economically linked undertakings, there is a likelihood of confusion within the meaning of the section (Canon, para [29]).
Similar Marks
where the Use of the Later Mark would take Unfair Advantage of or be
Detrimental to the Distinctive Character of the Earlier Mark
S.5 (3) of the TMA implements art 4 (1) (c) and (4) (a) of the directive
and the corresponding provision of the CTM regulation is art 8 (5). in
C-375/97 General Motors Corporation
v Yplon SA (14 Sep 1999) OHIM, the ECJ held that the
words "has a reputation" in those provisions require the mark known only
by a significant part of the public concerned by the products or
services which it covers. It is not necessary for the mark to be a "well
known mark" within the meaning of art 6bis of Paris. It was once widely
believed that art 4 (1) (c) and (4) (4) and the corresponding provisions
of the CTM regulation applied only where the goods were dissimilar and
indeed there is a judgment to that effect of Mr Simon Thorley QC in
Pfizer Ltd. v Another v Eurofood
Link (UK) Ltd. at paragraphs [30] and [54]. Two recent
judgments of the ECJ indicate that that approach was wrong. In C-292/00,
Davidoff & Cie SA and another v Gofkid Ltd,,(9 Jan 2003) the Court held
that member states were entitled to provide specific protection for
registered trade marks with a reputation in cases where a later mark or
sign, which is identical with or similar to the registered mark, is
intended to be used or is used for goods or services identical with or
similar to those covered by the registered mark. A few months later, it
held in
C-408/01, Adidas-Salomon AG and another v Fitnessworld Trading
Ltd. (23 Oct 2003) OHIM that where a member state exercises the option
under art 4 (4) (a) it is bound to grant the specific protection in
question in cases of use by a third party of a later mark or sign which
is identical with or similar to the registered mark with a reputation,
both in relation to goods or services which are not similar and also in
relation to goods or services which are identical with or similar to
those covered by that mark. The court added that such protection is not
conditional on a finding of a degree of similarity between the mark with
a reputation and the sign such that there exists a likelihood of
confusion between them on the part of the relevant section of the
public. It is sufficient for the degree of similarity between the mark
with a reputation and the sign to have the effect that the relevant
section of the public establishes a link between the sign and the mark.
Earlier Rights
Parliament has exercised the options provided by art 4 (4) (b) and (c)
of the directive. As to the first of those options, s.5 (4) (a) of the
TMA provides that a trade mark shall not be registered if, or to the
extent that, its use in the UK may be prevented by the law of passing
off or any other law protecting an unregistered trade mark or other sign
used in the course of trade. The probanda for determining whether use of
a mark may be prevented under s.5 (4) are those of an action for passing
off, namely reputation, misrepresentation and damage (see
Wild Child (17
Feb 1998) Patent Office) with the important difference that there is
rarely any scope for cross-examination. S.4 (4) (b) also provides that a
trade mark may not be registered if its use is likely to be prevented by
copyright, design right, a design registration or some other
intellectual property right.
Proof of Use Regulations
If an application for a declaration of invalidity of a British mark is made on the grounds of an earlier mark or earlier right, it is now necessary to prove use of the earlier right or mark by virtue of s.47 (2A) to (2E) of the Act. These new sections were inserted by the The Trade Marks (Proof of Use, etc.) Regulations 2004.
Important
Articles
John
Lambert The Trade Marks Act 1994
John Lambert The Trade
Marks Rules 2000
3 May 2000
John Lambert Community
Trade Marks
9 April 2003
