Trade Marks and Brands

Trade Marks 2
Relative grounds for refusal
Aims and objectives
The aim of this seminar is to identify and assess the UK/EU trade
mark rules on the relative grounds for refusal of registration of
a trade mark.
By the end of the preparation for, and participation in the seminar
for this topic, you should be able to:
• Identify the differences between the relative and absolute
grounds for refusal;
• Discuss the role of the ‘consumer’ in the assessment of trade
mark validity;
• Analyse the relative grounds for refusal of registration;
• Evaluate the relative grounds for refusal of registration in light of
the functions of trade marks and their economic, social and
cultural significance.
Overview
• Relative grounds for refusal of registration
– Double identity
– Confusion
– Reputation

• Well-known marks (dilution)

 Overview – relative grounds
A trade mark will not be registered where:
Identical mark and identical goods/services
s. 5(1)(a) and (b) TMA, Art. 8(1)(a) TMR
Identical mark and similar goods/services, and likelihood of confusion
s. 5(2)(a), Art. 8(1)(b) TMR
Similar mark and similar/identical goods/services, and likelihood of
confusion incl. association
s. 5(2)(b) TMA, Art. 8(1)(b) TMR
Identical or similar mark where earlier mark well-known, and detriment
s. 5(3) TMA, Art. 8(5) TMR

Note esp. meaning of ‘earlier mark’: s. 6(1)(a) and (c); s. 7 on honest concurrent use and
relative grounds; s. 47 (cancellation)
Relative grounds: TMA
s. 5(2) TMA
A trade mark shall not be registered if because—
(a) it is identical with an earlier trade mark and is to be registered
for goods or services similar to those for which the earlier trade
mark is protected, or
(b) it is similar to an earlier trade mark and is to be registered for
goods or services identical with or similar to those for which the
earlier trade mark is protected,
there exists a likelihood of confusion of the part of the public,
which includes the likelihood of association with the earlier
trade mark.
Trade mark basics – validity
A mark will not be registered unless it meets the following
TMA/EUTMR requirements:

SIGN + REPRESENTABLE + DISTINCTIVE – (ABSOLUTE

GROUNDS FOR REFUSAL OR RELATIVE GROUNDS
FOR REFUSAL)
Overview – relative grounds
Invalid where:
1 Identical mark + identical goods
OR
2 Similar or identical mark + same or similar class of goods
AND likelihood of confusion
OR
3 Similar or identical mark + earlier mark has a reputation
(regardless of class of goods) + use would take unfair
advantage of distinctiveness
Relative grounds: Identical marks

s. 5(1) TMA

A trade mark shall not be registered if it is identical with an

earlier trade mark and the goods or services for which the
trade mark is applied for are identical with the goods or
services for which the earlier trade mark is protected.
Relative grounds: Identical marks
LTJ Diffusion v SA Sadas Case C-291/000 [2003] ETMR 83 at
paras 51-52:

“There is therefore identity between the sign and the trade mark
where the former reproduces, without any modification or
addition, all the elements constituting the latter.
However, 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. The sign
produces an overall impression on such a consumer. […].”
Class activity

Are these marks identical?

Reed

Reed Business Information

Reed Executive plc v Reed

Buisness Information Ltd [2004]
EWCA Civ 159
Relative grounds: Identical class
• Exact category
• Within broader category claimed by earlier mark
• TM specification – interpreted via natural or ordinary
meaning

e.g. Avnet Inc v Isoact Ltd [1997] ETMR 562

Word:

AVNET
Relative grounds: Identical class
Avnet Inc v Isoact Ltd [1997] ETMR 562 per Jacob J at 565:
“In my view, specifications for services should be scrutinised
carefully and they should not be given a wide construction
covering a vast range of activities. They should be confined to
the substance, as it were, the core of the possible meanings
attributable to the rather general phrase.
[…] The essence of what these defendants are doing is not
providing advertising and promotional services in the way that,
for example, an advertising agent does. They do no more than
provide a place where their customers can put up whatever they
like. […] I do not think that in substance what these defendants
are doing is providing “advertising and promotional services”.”
Relative grounds: Identical class
Avnet Inc v Isoact Ltd [1997] ETMR 562 per Jacob J at
565:
“[…] These words “included in class X” in a specification of
goods not infrequently cause difficulty. You have to look at
the specification preceding these final words to see
whether what the defendant is doing is within the scope of
that and then you have to ask the extra question: are they
included in class X? […]
I do not think that what the defendants do falls within Class
35 […] So I do not think there is infringement of the mark
established on that ground.”
Relative grounds: Similarity and confusion
Registration refused where:
• There is confusion as to origin i.e. it is identical or similar
to an earlier mark;
• The mark is for the same or similar class of goods; and
• The combination of the above points is likely to lead to
consumer confusion

See e.g. British Sugar v James Robertson [1997] ETMR 118

NB unlike double identity ground this ground does require

confusion.
Relative grounds: Confusion

Elements to consider – the trade mark

• What are the visual, aural and conceptual similarities
between the two marks?
• To what extent is the earlier mark distinctive (or has
acquired distinctiveness) in the relevant class?
Relative grounds: Confusion

Elements to consider – the trade mark

• What are the visual, aural and conceptual similarities
between the two marks?
• To what extent is the earlier mark distinctive (or has
acquired distinctiveness) in the relevant class?
Relative grounds: Confusion

Elements to consider – the trade mark

• What are the visual, aural and conceptual similarities
between the two marks?
• To what extent is the earlier mark distinctive (or has
acquired distinctiveness) in the relevant class?
Elements to consider – the average consumer
• Is there a likelihood of confusion amongst a significant
number of consumers as to the origin of the goods?
• How do you prove it?
– E.g. surveys, expert evidence, evidence from other traders
Class activity
Sabel BV v Puma Ag and Rudolf
Dassler Sport Case C-251/95 “… where the earlier mark is not
[1998] ETMR 1 at ara 25-26
(emphasis added)
especially well known to the
public and consists of an image
with little imaginative content, the
mere fact that the two marks are
Key: ‘global conceptually similar is not
appreciation’ sufficient to give rise to a
approach – how likelihood of confusion.
does a consumer […] [The] mere association
perceive the mark which the public might make
between two trade marks as a
normally? result of their analogous semantic
content is not in itself a sufficient
ground for concluding that there is
a likelihood of confusion within the
meaning of that provision.”
Relative grounds: Confusion
Lloyd Schuhfabrik Meyer & Co GmBH v Klijsen Handel BV
Case C-342/97 [1999] FSR 627
Relative grounds: Confusion
Lloyd Schuhfabrik Meyer & Co GmBH v Klijsen Handel BV
Case C-342/97 [1999] FSR 627, Opinion of AG Jacobs at
para 12:

“[W]hile “Lloyd” and “Loint's” may seem to have little aural or

visual similarity to an English-speaker, that may not be the
case for a German-speaker given that the letter “t” and a final
“d” are pronounced similarly in German. Consequently, it
seems appropriate that the national courts of a Member State
should assess the likelihood of confusion in the minds of the
public of that State. ”
Relative grounds: Dilution of well-known marks
s. 5(3) TMA

[…] shall not be registered if, or to the extent that, the

earlier trade mark has a reputation in the United Kingdom
[…] and the use of the later mark without due cause would
take unfair advantage of, or be detrimental to, the
distinctive character or the repute of the earlier trade
mark.
Relative grounds: Dilution
s. 5(3) TMA

Types:
• Unfair advantage by free-riding
• Blurring (harm to the distinctive character of the mark)
• Tarnishing the mark (damaging reputation of the mark)

Without due cause

Relative grounds: Dilution
Key elements re well-known mark protection
1. Does the earlier mark have a reputation?
2. Are the marks identical or similar?
a. Degree of similarity of mark
b. Similarity of goods/services
c. Reputation and distinctiveness of earlier mark
d. The intention of the user of the later mark
3. Has this resulted in unfair advantage or detriment?

The class of goods/services is not relevant.

Relative grounds: Dilution
Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld
Trading Ltd Case C-408/01 [2004] ETMR 10
Relative grounds: Dilution
General Motors v Yplon case C-375/97 [1999] ECR I-5421

CHEVY
Car or detergent…?

Reputation determined by:

• Market share
• Intensity of use incl. time and geography
• Investment (i.e. promoting the mark)
Discussion question
General Motors v Yplon Was it appropriate to
case C-375/97 [1999] allow registration in this
ECR I-5421 case? Why?
Relative grounds: Dilution
Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld Trading Ltd
Case C-408/01 [2004] ETMR 10 at paras 39-40:

“The fact that a sign is viewed as an embellishment by the relevant

section of the public is not, in itself, an obstacle to the protection
conferred by Art.5(2) of the Directive where the degree of similarity is
none the less such that the relevant section of the public establishes a
link between the sign and the mark.
By contrast, where, according to a finding of fact by the national court,
the relevant section of the public views the sign purely as an
embellishment, it does not necessarily establish any link with a
registered mark. That therefore means that the degree of similarity
between the sign and the mark is not sufficient for such a link to be
established.”
Relative grounds: Dilution
Intel Corp Inc v CPM United Kingdom Ltd Case C-252/07
[2009] ETMR 13

Words:

INTEL INTELMARK
Relative grounds: Dilution
Intel Corp Ltd v CPM United Kingdom Ltd [2007] RPC 3,
AG’s Opinion at [5]

“To put it more graphically, around each trade mark there is

an “exclusion zone” which other marks may not enter.”
Relative grounds: Dilution
Intel Corp Ltd v CPM United Kingdom Ltd [2007] RPC 35 at
para 37

“Trade mark law is there to protect a proper system of

competition, not to provide trade mark owners with
overreaching rights that may obstruct trade.”
Marks with a reputation
L’Oréal v Bellure NV [2008] ETMR 1 (Court of Appeal)
• Sale of ‘smell-alike perfumes’
Marks with a reputation (dilution provisions)
L’Oréal v Bellure NV [2009] ETMR 55 at [49] (CJEU)
“[W]here a third party attempts, through the use of a sign
similar to a mark with a reputation, to ride on the coat-tails
of that mark in order to benefit from its power of
attraction, its reputation and its prestige, and to exploit,
without paying any financial compensation and without being
required to make efforts of his own in that regard, the
marketing effort expended by the proprietor of that mark
in order to create and maintain the image of that mark, the
advantage resulting from such use must be considered to
be an advantage that has been unfairly taken of the
distinctive character or the repute of that mark.”
Relative grounds: Dilution
L’Oreal v Bellure NV [2010] RPC 1 at para 40:

“[T]he trade mark’s power of attraction is reduced. […]

[Where] the goods or services offered by the third party
possess a characteristic or quality which is liable to have a
negative impact on the image of the mark.”
Relative grounds: Dilution
Copad SA v Christian Dior Couture SA Case C-59/08 [2009]
ETMR 40
Relative grounds: summary
Comparison of mark in question and another mark or sign –
the mark will not be registered where:
• Confusion; or
• Dilution.
Relative grounds: summary
Comparison of mark in question and another mark or sign –
the mark will not be registered where:
• Confusion; or
• Dilution.
Note – no registration where there is an earlier unregistered
trade mark that can be protected by:
- passing off, or
- copyright, or
- design right (registered or unregistered)