Struggling to understand trade mark infringement issues? Here's my checklist

IPKat readers might remember that a few months ago I posted my Copyright Infringement Checklist, ie a list of the main aspects to consider when addressing potential infringement issues. 

I named it after myself not just because both cats and Kats are notoriously vain, but - importantly - because it was intended to be neither authoritative nor exhaustive.

Now that I have finished the trade mark part of my undergraduate intellectual property law course at the University of Southampton, I have prepared another checklist, this time for alleged trade mark infringement cases. 

Again, the aim is simply to help my students when thinking about potential infringement issues, considering that (again) I have not been able to find many useful summaries/tables.

Any feedback/suggestions on how to improve it are - as usual - very welcome.

ROSATI TRADE MARK Infringement Checklist*

Main aspects to consider when addressing potential infringement issues

Trade mark infringement is about 7 essential things

(1)  Use (NB: non-exhaustive list!)[1]

                            i.          Person affixes sign to goods or packaging thereof;

                          ii.          Person offers or exposes goods for sale, put them on the market or stocks them for those purposes under the sign[2] or offers or supplies services under the sign, or offers or supplies services under the sign;

                         iii.          Person imports or exports goods under the sign (NB: currently goods in mere transit do not fall under this category);

                         iv.          Person uses the sign on business papers or in advertising, including comparative advertising.[3]

(2)  Without consent[4]

(3)  In the course of trade (= “used in the course of a commercial activity with a view to gain and not as a private matter”)[5]

(4)  In the relevant territory

·        UK for UK trade marks, EU for Community trade marks;[6]

·       For online uses, Bently and Sherman hold the view that targeting required.

(5)  Of a sign

·        Same hyphoteses as in relative grounds for refusal of registration:

1)  Identical marks for identical goods/services[7];

2)  Identical marks for similar goods/services[8] + likelihood of confusion (including association)[9];

3)  Similar marks[10]  for identical/similar goods/services + likelihood of confusion (including association);

4)  Identical/similar marks for dissimilar goods/services + earlier trade mark has a reputation + use would take unfair advantage of/be detrimental to character/repute trade mark.[11]

(6)  Where such use affects one of the functions of the registered trade mark[12], eg:

·        Indication of origin;

·        Quality;

·        Advertising;

·        Investment.

(7)  And no defences are available to defendant (NB: for some defences additional “honest practices” requirement)

·        Trade mark should be removed from register;

1)  Because it is invalid = should have not been registered in the first place

                                                                    i.          Absolute grounds for refusal of registration, eg lack of distinctive character, descriptive, “forbidden” shape, public policy/morality, bad faith, etc;

                                                                  ii.          Relative grounds.[13]

2)  Because it should be revoked

                                                                    i.          Non-use

·        Within 5 years from registration;

·        Use suspended for uninterrupted period of 5 years.

                                                                  ii.          Trade mark has become generic;

                                                                 iii.          Trade mark used to deceive consumers.

·        Use of another trade mark (UK trade marks only);

·        Use of one’s own name/address;[14]

·        Descriptive use, including use to indicate intended purpose;

·        Comparative advertising[15];

·        Local use;

·        Exhaustion;

1) “put on the market”[16]

2)  “without consent”[17]

3)  no “legitimate reasons”

                                                                    i.          Alteration of goods

                                                                  ii.          Change of packaging

                                                                 iii.          Change of mark

                                                                 iv.          Advertising

·        Freedom of expression (NB: no codified defence as such).

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* The addition of “Rosati” not only means that I am the author of the checklist, but also (and most importantly) that this is not (necessarily) authoritative. It is just something to consider when dealing with potential infringement issues.

[1] Key case on notion of “use” is Google France.

[2] Key case on notion of “under the sign” is Céline.

[3] Key case on comparative advertising is L’Oréal.

[4] Cf trade mark exhaustion sub (7).

[5] Key cases on notion of “use in the course of trade” are Arsenal and Céline.

[6] Use in one Member State alone can suffice: see DHL.

[7] Key case on notion of identity is Sadas.

[8] Key case on notion of similarity of goods/service is Canon.

[9] Key case on likelihood of confusion is Puma.

[10] Key case on notion of similarity of signs is Puma.

[11] Key cases on trade marks with a reputation are Yplon, Adidas-Salomon (use of a trade mark as embellishment) Intel (notion of “link”), L’Oréal, Interflora.

[12] Key case on functions of a trade mark is Interflora.

[13] See supra sub (5).

[14] Key case is Céline.

[15] Key case is L’Oréal.

[16] Key case is eBay.

[17] Might be problematic when a licence is in place: see Dior.