Whose trade mark rights? What the Microsoft case means for trade mark owners

Legal context. The article considers the influence of the commissionruling in the Microsoft case, forcing Microsoft to use its WINDOWS-trademark for an ‘unbundled’ version of the program inthe light of the trade mark owner's properties rights. The scopeof these rights is determined by the function of the trade markand the rights that the trade mark laws confer to the ownerin case of infringement. Key points. Trade marks are protected as property rights undercommunity law. They are the embodiment of past investments andtransform the reputation of the owner into a bankable asset.Consumers rely on trade mark owners' control over quality. Thisis mirrored by the rights of the trade mark owner to stop interferencewith quality and image, in particular in the context of resaleof altered products. Any interference that would be considereda trade mark infringement if committed by a private party shouldbe considered an interference with the protected property rightif caused by a government agency. This interference is not justifiedby the public interest because trade mark rights also embodyimportant public interests. Practical significance. If the analysis proposed in the articleis followed, intellectual property rights have to be given greaterweight in shaping antitrust remedies.     

Trade mark use in transit: EU-phony or cacophony?

Legal context The present article discusses the opinion of Advocate-GeneralJacobs in Case C-405/05 Class International BV v Unilever NVand others, according to which trade mark owners cannot opposethe entry into the European Union of grey market non-Communitygoods placed in external transit, on the grounds of Article5(1) of the Trade Mark Directive, or any equivalent provision,as such entry does not constitute trade mark use. Key points We examine the consistency of this approach withprior case law of the European Court of Justice, namely in theCommission v France, Rioglass, The Polo/Lauren and Rolex casesand draw a parallelism with Council Regulation (EC) 1383/2003. Practical significance We conclude that trade mark owners shouldbe allowed to prohibit the placing in transit of goods whichwould infringe an intellectual property right under the lawof the transit country, unless the owner or consignor of thelitigious goods can undeniably prove that the goods are notdestined for the internal market. Stop press. At the end of the article the authors provide abrief analysis of the European Court of Justice's decision of18th October 2005 in this case.     

The irresistible force of freedom of speech meets the immovable object: trade mark law in South Africa

Legal context. The right of freedom of expression is a fundamentalright entrenched in the Bill of Rights incorporated in the SouthAfrican Constitution. While intellectual property rights donot enjoy this status, they are internationally recognised rightsgranted by a law of general application and may thus in termsof the Constitution limit the fundamental rights protected inthe Bill of Rights, and more particularly the right of freedomof expression. Where the enforcement of trade mark rights comes into conflictwith the right of freedom of expression, the two rights mustbe weighed up against one another and the competing interestsof the owner of the trade mark against the claim of expressionof a user without permission must be considered. The departurepoint of the weighing up process is that neither right is superiorto the other. Key points. This article discusses an action brought by SabmarkInternational, which claimed that Laugh It Off Promotions CCinfringed its registered trade mark BLACK LABEL in respect ofbeer by using a corruption of this mark with strong politicalundertones as ornamentation on T-shirts sold by it. It was claimedthat the offending use diluted Sabmark's registered trade mark.In an appeal, the Constitutional Court rejected the claim onthe basis that Sabmark had not shown that the offending usewas likely to cause economic damage to it. Practical significance. The case in effect equated trade markrights with rights enshrined in the Bill of Rights and thusgave important recognition to intellectual property rights.It created a precedent in intellectual property law, if notin South African law in general, in that the constitutionalcourt overruled a decision of the Supreme Court of Appeal (SCA)and in effect ruled that the SCA had not interpreted the relevantprovision of the Trade Marks Act correctly.     

Domain Name DRS Policies: from the sublime to the ridiculous

Legal context. Cybersquatting emerged as a major problem fortrade mark owners in the latter part of the 1990s. Litigationhas proved a heavy and expensive method of resolving disputes.Over the past decade, various alternative dispute resolutionpolicies have been introduced, most notably the UDRP and mostrecently the .eu ADR Procedure. Key points. The article tracks the development of dispute resolutionand associated sunrise policies from the UDRP, via the NOMINETDRS Policy to the new .eu ADR Procedure. The UDRP was designedto assist nobody but trade mark owners. The NOMINET DRS Policyis wider and covers other rights owners without being specificas to the nature of the relevant rights. The .eu ADR Procedureon the other hand expressly extends to a wide variety of rightsranging from trade mark rights to rights in respect of familynames and condemns speculative as well as abusive registrations.The article draws attention to some of the shortcomings of the.eu ADR Procedure and laments the fact that the European Commission,which is responsible for the introduction of the .eu domain,did not consult more widely with a view to arriving at a sensibleworkable result. The author predicts a shambles both in relationto the .eu sunrise policy and the ADR procedure. Practical significance. The UDRP, the NOMINET DRS, and the .euADR Procedure all contain very similarly worded provisions,which help to conceal the significant differences between them.Practitioners formulating and/or responding to complaints underthese policies and procedures need to be aware of the differences.     

Don't be a Martyr to Res Judicata

The High Court rules that a party who unsuccessfully opposesa trade mark application cannot later re-challenge the validityof the same trade mark by way of defence to an infringementclaim.     

One more outing for Arsenal: a case of dilution or one for restitution?

Legal context. This note, which comments on the preceding pieceby Susie Middlemiss and Steven Warner, deals with the implicationsfor the future development of passing-off of the dicta of AldousLJ in Arsenal v Reed, which are considered there. Key points. The article concludes that Aldous LJ was unlikelyto have been contemplating the introduction of a common lawdoctrine of trade mark dilution, or any other extension to passing-offwhich would remove misrepresentation from its central positionas one of the essential elements of the Classical Trinity, andthat the existing state of the authorities rules out any suchdevelopment by the Court of Appeal. Practical significance. It is tentatively suggested that anextension of existing passing-off principles to cases of pureunjust enrichment may have been what Aldous LJ had in mind,and that this would not necessarily be too radical a step forthe common law to accommodate.     

Coexistence in Community trade mark disputes: conditions and implications

Legal context. A defence based on coexistence has no legal basisin the Trade Mark Directive or in the Community Trade Mark Regulation.Still, a practical approach to Community trade mark conflictsrequires attention to the situation in the marketplace whereconflicting marks may be shown to coexist without any currentconfusion or dilution being reported. Key points. Trade mark coexistence may sometimes be persuasive,the strict requirements being laid down by the Community courts.Through a detailed review of the case-law of the Community courtsand OHIM's Boards of Appeal, this article explains the conditionsfor and the consequences of proving the coexistence of the conflictingmarks in cases based on likelihood of confusion or dilution. Practical significance. Consideration must also be given tothe effects of third parties' neighbouring marks which may diminishan earlier mark's distinctive character. Accordingly, this articlefurther addresses the issue of whether the scope of protectionof a mark may be damaged by the use of later marks in the lightof the ECJ Judgment in the preliminary ruling Case C-145/05Levi Strauss v Casucci Spa.     

Pre-sale misrepresentations in passing off: an idea whose time has come or unfair competition by the back door?

Legal context. This article addresses the scope of the tortof passing off in English common law. Key points. The scope of passing off has traditionally beenlimited to confusion at the point of sale. Developments in marketpractice and trade mark law may argue in favour of extendingthat scope to cover both pre- and post-sale confusion. However,such an extension raises commonly voiced concerns about theintroduction of a general tort of unfair competition into Englishlaw. This article considers the specific issue of pre-sale confusionand concludes that there is both the need and the scope to bringit within reach of passing off. To do so would not amount tothe introduction of a general tort of unfair competition, butwould be entirely consistent with the rationale which has alwaysbeen the foundation for the tort. Practical significance. The conclusion advocated in this articlewould expand the range of conduct on which passing off claimscould be based and would increase the protection afforded tothe owners of famous brands.     

The overlap between registered Community designs and Community trade marks

Legal context: Community trade marks and registered Communitydesigns have co-existed since April 2003. The relevant Europeanlegislation permits some subject matter to be registered undereither or both of these regimes. Key points In the absence of an express prohibition, it wasperhaps inevitable that the owners of distinctive designs wouldconsider registering them as trade marks and, conversely, thatthe owners of certain non-conventional trade marks might takeadvantage of opportunities for cheap and speedy registrationunder the designs system. The ability to obtain registered Communitydesigns and trade marks for the same subject matter is consideredhere. Practical significance A party seeking to protect the designof a distinctive product shape or its packaging may be ableto register it as a Community trade mark where it has missedthe boat for claiming novelty as a registered design, or wherea pre-existing design right is about to expire. On the otherhand, a distinctive and new logo or get-up which needs quickand cheap protection may benefit from being registered as aCommunity design. Neither the rights owners, nor those againstwhom they seek to assert their rights, should accept the validityof a registered Community design without question since thereis no substantive examination procedure. However, where valid,it can provide a powerful alternative to a trade mark and auseful additional weapon against unfair competition.     

Navigating the rocky waters of trade mark law

Kerly's Law of Trade Marks and Trade Names, 14th Edition ByDavid Kitchin QC, David Llewelyn, James Mellor, Richard Meade,Tom Moody-Stuart, David Keeling; with Consultant Editor: TheRt. Hon Sir Robin Jacob; Sweet & Maxwell, 2005 Price: £255,Hardback, ISBN: 0421860804, pp. 1,350   Until recently, trade mark practitioners in the United Kingdomhad to make do with the 13th edition of Kerly, the 1st editionof The Modern Law of Trade Marks, or the CIPA/ITMA Handbookwhen navigating the rocky waters of trade mark law and practice.The first two of these texts     

Community registered design invalidated by prior registered trade mark

In a series of four decisions, the OHIM Invalidity Divisionhas declared invalid Community registered designs 00016245-0001to 0004 in the light of international trade mark registration810732, designating various European Union Member States. Thisis believed to be the first time that a Community registereddesign has been declared invalid on the basis of an earliertrade mark right.     

Legal reflections on the Google Print Library Project

Legal context. IP lawyers need a better understanding of theimplications of new technology when advising their clients onlegal strategies for appropriating rents from the exploitationof intellectual property rights in the digital environment.Conversely, clients seeking to ascertain the permissible limitsfor accessing material on the Internet must be made aware ofthe critical distinction between contractual and copyright issues. Key points. Licensing of copyright will continue to be an efficientinstrument for resolving issues relating to compensation andboundaries for permissible use. A sound understanding of thedigital environment will ensure that potential problems associatedwith the scope of the restricted acts under the Copyright, Designsand Patents Act 1988 can be avoided. Lawyers should also beaware of the possible policy developments relating to the exploitationof digital content following the deliberations in the GowersReview. Lawyers should also re-examine the submissions in boththe Grokster and Perfect 10 cases, recognizing the circumstanceswhen copyright arguments raised in other jurisdictions may beimported into the United Kingdom. Practical significance. The absence of any UK legal precedentwith regard to the copyright issues arising from the disputebetween search engine providers and copyright owners providesno excuse for failing to consider how contractual instrumentsmay efficiently resolve issues relating to the appropriationof rents from intellectual property rights. The absence of a‘fair dealing’ exception does not inevitably meanthat, should a similar dispute as that in Google v The Author'sGuild arise in the United Kingdom, a copyright infringementwill have taken place.     

Is there still a hole in this bucket? Confusion and misrepresentation in passing off

Legal context. Passing off is an evolving tort. There may beopportunities to expand the scope of the tort to capture activitiesthat have not previously amounted to passing off. Key points. In Arsenal v Reed, Aldous LJ suggested that thetime has come to abandon the label "passing off" and recognisea tort of "unfair competition". The implication is that certainactivities that would not previously have been censured by thecourts might now constitute passing off. This raises the questionof what circumstances might justify giving claimants greaterrights of action. This article explores the possibility of justifyinga claim in passing off where the misrepresentation does notcause confusion, and dilution of the claimant's trade mark isthe only damage caused. Practical significance. There is no doubt that passing off willevolve still further. The English judiciary is perhaps now moreconscious of the flexibility of passing off than at any timein the recent past. Ambitious – even adventurous –claims may have a chance of success.     

Walking the groundless threats minefield

Legal context. It is one of the peculiarities of UK law thatthreatening litigation of IP rights can, in some circumstances,give rise to an action for "groundless threats". This has thepotential to cause great disruption to the right-holder's case.There is even the potential for professional advisors to endup in the dock where they made the threat on their client'sbehalf, raising the possibility of a conflict of interest preventingthe advisers from continuing to act. Key points. To minimise the risk of these scenarios, intellectualproperty law advisors, be they patent or trade mark attorneysor solicitors, should be aware of the provisions that governgroundless threats actions for the various IP rights, particularlyin light of the recent changes brought in by the Patents Act2004 and the further changes expected to the groundless threatsprovisions relating to designs. These alterations increasinglycomplicate what has always been a nebulous area of the law.In addition, there is considerable tension between the "talkfirst, sue later" philosophy underlying the Civil ProcedureRules and the "sue first, talk later" approach traditionallyused to circumvent threats actions. Reckitt recently confirmedthat the groundless threats provisions, while running counterto the purpose of the CPR, cannot be ignored by the Courts.This article provides an overview of the current state of thegroundless threats provisions that apply to the various IP rights,and considers how IP owners and their advisors can best navigatethe groundless threats minefield. Practical significance. Groundless threats form a complex andchanging area of IP law in the UK, which advisers need to takeinto account in virtually every dispute. Amendments made toSection 70 of the Patents Act 1977 have not provided a threatspanacea to patent holders and it remains to be seen how thesection will be interpreted by the Courts. What is clear isthat the threats provisions contained in the IP legislationwill remain in force in one form or another for the foreseeablefuture and that they remain a trap for the unwary.     

Parallel trade and free trade agreements

Legal context. Free trade agreements seek to remove unjustifiedbarriers to trade. Normally barriers to trade are imposed bystates, such as quotas, tariffs, subsidies and regulatory restrictions.However, sometimes barriers will be imposed by private partiesseeking to prevent parallel trade (arbitrage) of their own products.The aim of this article is to examine the way in which freetrade agreements deal with private barriers to parallel tradeand thus to consider to what extent parallel trade is possiblewithin free trade areas. Key points. The article considers first the situation withinthe European Community, which has long supported parallel tradethrough its provisions on the free movement of goods and competitionlaw, before turning to the approach taken in the Community'sfree trade agreements with third countries. It carries out thesame exercise in relation to the United States and then considershow parallel trade is dealt with by the World Trade Organisation.Finally, as free trade agreements only seek to remove unjustifiedbarriers, it considers possible justifications for the differentapproaches before drawing some tentative conclusions. Practical significance. This article considers the impact whichthe overlap between intellectual property, competition law andtrade law has in relation to parallel trade. As well as reviewingthe current position, which will be of use to businesses andlegal practitioners on both sides of parallel trade, it assessesthe underlying justifications which are relevant to policy makingin this field.     

Mediation of Intellectual Property disputes

Legal and practical context. Mediation can bring real benefitsin avoiding protracted and costly IP litigation and is suitablefor most IP disputes except where a matter of principle, suchas construction of patent claims, requires resolution. Key points. Mediation may be used at any time to resolve a dispute.The courts can give robust encouragement by means of costs sanctionsand ADR orders but cannot compel the use of mediation. The Proceedsof Crime Act 2002 may apply to some mediated settlements, particularlythose involving trade mark and copyright infringement disputes. Practical significance. The courts and the Patent Office areactively seeking ways to encourage mediation of IP disputesand the Patent Office has announced the setting up of a mediationscheme.     

Markem v Zipher--the Court of Appeal provides guidance on entitlement proceedings

Legal and practical context. The Markem v Zipher Court of Appealjudgment provides useful guidance on patent entitlement proceedingsand, more generally, on the conduct of litigation. Key points. (i) Patent entitlement. To bring an entitlementaction under sections 8, 12, and 37 a party must invoke a breachof some rule of law. Validity is only relevant in entitlementproceedings where a patent or part of it is clearly and unarguablyinvalid. A claim-by-claim approach is not appropriate in proceedingsunder sections 8, 12, and 37 and ‘invention’ inthese sections refers to information in the specification. Theproper approach to entitlement should be to identify who contributedto the invention and determine whether he has any rights tothe invention. (ii) Litigation generally. A witness should be cross-examinedas to the truthfulness of his evidence whenever a party wishesto challenge that evidence. Where a party has more than onecause of action relating to the same factual background, considerationshould be given to bringing all causes of action in the sameproceedings to avoid a future claim being struck out for abuseof process. Practical significance. This case highlights the importanceof a properly pleaded case and of the ongoing need to reviewthe case strategy throughout proceedings.     

Dilution in the US, Europe, and beyond: international obligations and basic definitions

Legal context. The efficacy of trade mark dilution as a causeof action has been cast into doubt by the Supreme Court's actualdilution standard. However, Congress is currently consideringthe Trademark Dilution Revision Act 2005, removing the actualdilution standard and resolving other difficulties under thepresent Lanham Act 43(c). This should breathe new life intoblurring and tarnishment. It should also be recalled that theEU already has strong laws against dilution and unfair advantage. Key points. This article identifies international dilution obligationsin order to determine (in Part II) whether the US and EU arecompliant. It identifies problems under the present US dilutionlaw and the solutions offered by the Revision Act. It comparesthe US proposals with EU dilution protection to determiningwhat the two jurisdictions have to learn from each other. Thistheme will be continued in the next part of this article, whichfocuses specifically on blurring/detriment to distinctive character. Practical significance. The introduction of new US legislationwill make successful dilution claims easier and will increasethe frequency of actions under 43(c). It is vital that trademark lawyers are familiar with the changes. At the same time,it should be remembered that many of the same outcomes can beachieved under the current European legislative provisions.To the extent that the jurisdictions do not live up to theirinternational dilution obligations, there is scope for proprietorsto lobby for even stronger protection.     

Strong trade marks and the likelihood of confusion in European law

Legal context. One of the fundamental assumptions of trade marklaw is that provision should be made to prevent the registrationor commercial exploitation of trade marks that are likely tobe confused with earlier marks. The justification for this assumptionis however unclear. Is it to protect the expectation of itsowner that a trade mark will provide a comfort zone, an areawithin which other traders simply may not enter? Is it to encourageinvestment in the development of a relationship between thetrade mark owner and his prospective customers by offering interference-freemarketing opportunities? Is it to protect the efficiency ofthe market by facilitating the making of decisions by consumersas to which product or process they wish to purchase? Or isit to protect the vulnerable consumer against the personal consequencesof his inattention or inability to discern the differences betweenproducts or services? Key points. This article examines the development of Europeanlaw relating to the protection of strong trade marks, thosewhich are highly distinctive or well known, against similarmarks that may or may not be likely to cause consumer confusion.It demonstrates the manner in which the European Court of Justiceseeks to address the likelihood of confusion in terms whichappear to draw more from legal abstractions than from marketrealities. After giving a favourable review of the controversialdecision of that court in the PICARO/PICASSO case, the articlelists further issues which European trade mark litigation hasso far failed to address. Practical significance. Armed with an understanding of the principlesemployed by the European Court of Justice, trade mark proprietorsin Europe will obtain a better appreciation of the strategiesto be used in either challenging competitors' marks in courtor adopting commercial measures to combat them.