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Wednesday, 20 October 2010

Passing off and the CTM - three questions from Japan

The IPKat has been contacted by his learned friend Japanese attorney Masahiro Tomabechi with three detailed questions concerning "passing off" and Community trade marks.

Masahiro has spent the last few weeks on secondment in London to 'carefully and sincerely' study European and UK trade mark laws and he has clearly made good use of his time as his three questions below serve to prove. This Kat, herself originally coming from a non-Common Law jurisdiction, has given Masahiro answers to his questions but thought it would be so much more fun to see what our readers think the answers should be -- somewhat reminiscent of the old German saying that 'if you ask two lawyers the same question, you will at least get three different answers' ('yes', 'no', 'perhaps, but I have never seen it...'). Merpel, however, wonders whether the German Kat might perhaps not trust her own answers....

Please post your responses in the comment field below.

[Question 1]
In a case where a French company (hereinafter called “the proprietor”) owns a Community Trade Mark right, if the Community Trade Mark is threatened by infringement activities of a British company in the UK and then the proprietor sues before a CTM court in the UK, is it possible to claim the “Passing-Off” right together with the CTM’s right in order to prohibit the British company from using its mark in the UK?

[Question 2]
If the Community Trade Mark is threatened by the infringement activities of the British company not only in the UK but also in France and then the proprietor sues before the CTM court in the UK, is it possible to claim the “Passing-Off” right together with the CTM’s right in order to prohibit the British company from using its mark in France and the UK? That is, when the “Passing-Off” right is claimed together with the CTM right, is the “Passing-Off” right applicable in France as well as the UK, although France is not a common-law country?

[Question 3]
If the Community Trade Mark is threatened by infringement activities of a German company in the UK and then the proprietor sues before a CTM court in Germany, is it possible to claim the “passing-off” right together with the CTM’s right in order to prohibit the German company from using its mark in the UK? That is, does the German court have ability to examine the existence of the “Passing Off” right, although the “Passing Off” right is a right derived from the UK Common Law?

10 comments:

foreignkat said...

Q1: 'yes',
Q2: 'no',
Q3: 'perhaps, but I have never seen it...'

???

Filemot said...

yes no no

Anonymous said...

yes, non, nein/ja

Anonymous said...

we all agree on questions 1 and 2 but what about question 3? what if the national court acts as a "community trade mark court" should they not be able to decide on passing off? ohim does

Anonymous said...

The "yes" responses above to the first question are perplexing me. Surely it comes down to whether the company, French or otherwise, has sufficient goodwill or reputation in the UK. If not, then no, it cannot bring a passing off claim here. If on the other hand it does, then yes, it could.

Perhaps we should be taking that as a given, and this French company has well-founded unregistered rights in all relevant jurisdictions...

Anonymous said...

Q1 yes
Q2 no
Q2 no

Anonymous said...

If I must avoid the third possible lawyerly answer, I'd suggest the following:

1) Yes, provided that: a) the CTM owner has goodwill in that mark within the UK; b) there has been a misrepresentation by the Defendant as to a connection between itself and the owner of the goodwill; and c) that misrep has caused (or is likely to cause) damage to said goodwill.

2) No - you can only claim passing-off in relation to the UK acts. The claimant may be able to persuade the UK court to apply the French equivalent of passing-off (unfair competition) under Art 8, Rome II, but that wouldn't be a "true" passing-off claim and there will, of course, be enforcement considerations for the claimant.

3) Yes, but only insofar as the German courts are able to decide the question under UK law by virtue of the UK being the lex loci protectionis under Art 8, Rome II. Whether it has jurisdiction to issue injunctions to take effect outside its borders is another question.

Ben Mooneapillay said...

Question 1

A successful claim for “passing off” in the UK requires the claimant to own goodwill in the UK. Goodwill is acquired through trading in the UK (this is separate from reputation, which a company can own without trading in the UK). If the French proprietor of the CTM has not traded in the UK then it cannot rely on “passing off”. If it has traded in the UK and owns goodwill, etc. then it may seek to rely on “passing off” as well as infringement of the CTM.

Question 2

No. An injunction or other remedy resulting from a successful “passing off” claim in the UK cannot be extended to Member States where passing off has not occurred (whether because the local law does not recognise the tort or because passing off has not been established).

Passing off is a local right, in the sense that it exists where the law provides for it and where the claimant’s customers are to be found. It does not have the “unitary character” of the CTM. A claim for “passing off” must be proven in each jurisdiction where the law provides for it.

Question 3

Sorry, I don’t know, would need to check, but I doubt it.

bunkey said...

2 mre questions:

1) since passign off doesn't exist in france and germany how do they enforce unregd trademarks? any special law?

2) any judgments which has questioned the territoriality requirement in passign off cases ? cases from any common law country will do.

Anonymous said...

Q3: yes - the German Unfair Act covers acts of causing confusion. The court would apply either German unfair competition law or the UK passing off claim. The latter depends on where the confusion occurs as a matter of applicable competition law.

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