IPKAT RIDDLE: A DISTINCTLY PROBLEMATIC PARAGRAPH

Back in September 2003, Lord Justice Jacob delivered a paper(which has recently become available) at the Third European Trade Mark Judges’ Symposium on “Relative grounds for refusal: extent of the trade mark proprietor’s rights”, which he co-wrote with Geoffrey Hobbs QC. The piece contains many insights into the thinking of two of the UK’s most eminent IP specialists. Of note is:

♦ their discussion, and grudging partial dismissal of, a three-layered scheme of infringement protection involving mutually exclusive umbras and penumbras of protection;
♦ the highlighting of the need for their to be an “outer limit” to where unregistrability/infringement can be found under Article 4(1)(b) and 4(1)(b) of Directive 89/104
♦ various suggestions made by them about the desirable scope of Article 5(2) e.g. a need for trade mark use by a defendant and the need to properly substantiate the existence or likelihood of misappropriation or impairment of the earlier mark.
♦ their condemnation of specifications of goods or services that are excessive relative to the commercial interests of the proprietor, including the OHIM practice of allowing registrations of CTMs for whole class heading provided for in the Nice Classification, even if the proprietor will only use the mark for some of the goods/services contained therein.

The IPKat needs some help though. At one stage (para 17), the authors claim:

“Marks which converge upon a particular mode or element of expression may or may not be found upon due consideration to be distinctively similar. The position varies according to the propensity of the particular mode or element of expression to be perceived in the context of the marks as a whole, as origin specific or origin netural.”

Anyone who can explain to the IPKat (i) what this paragraph means and/or (ii) what the term “distinctively similar” means – after all, if something is distinctive from another thing, it usually means that it’s different from it - is in line for the IPKat’s usual lavish yet tasteful prize.

More three-layered schemes here, here and here
Outer limits here