Trade-marks

Trade-marks

A trade-mark is any mark which identifies the source of the wares

Trademark in the US Trade mark in the UK

Trade-marks

Trade-marks are protected by The common law of passing off

Passing off was once known as unfair competition And still is in the US

The Trade-marks Act The Act applies only to marks which are registered Unfair Competition Act was predecessor of Trade-

Marks Act

Hence trade-marks may be registered or unregistered

Passing Off & Trade-marks

Passing off and the Trade-marks Act offer very similar protection It is very common to allege both passing off and

an infringement of the TMA in the same action Differences are procedural

Territorial extent PO is limited to region in which the mark is actually

known TMA protection it national on registration

Establishing of reputation PO requires reputation be established by evidence TMA requires only use as prerequisite to registration

Principles Trade-marks law protects an association between

a mark and the source of the wares Contrast trade-marks with patent and copyright in

which the wares themselves are protected The operation of the market relies extensively on

brands The goodwill associated with them is considered to be a most valuable form of property However, despite its connection with a product, a mark must not be confused with the product – it is something else, a symbol of a connection between a source of a product and the product itself.

Kirkbi v Rivtik SCC

Principles

Corollary Functionality is not protected by trade-

marks law To achieve protection for functional aspects

of a work, copyright or patent protection must be sought

Principles

Why is it important to protect the association between the mark and the wares?

In many cases the quality of the wares cannot be determined by direct inspection at the time of the purchase Only experience – and hindsight – tells

the quality of the goods Reputation is the basis of the sale

Principles

A good reputation sets up a virtuous circle Consumers buy the manufacturer’s

goods because of the reputation The manufacturer keeps up its

reputation because this leads consumers to purchase

Note that it is expensive to produce high quality wares A good reputation allows a provider to

charge commensurately more for their wares

Principles

Once the reputation is established a forger can exploit the mark by selling inferior quality goods at the same price as is commanded by the owner’s higher quality goods

The forger could choose to offer high quality goods

But it won’t The forger can make extraordinary profits

by offering inferior goods at the same price

Elements

Trade-marks law protects reputation by protecting the link between the source and the wares The mark may be a manufacturer’s mark A distributor’s mark A retailer’s mark A service mark

This allows the reputation of the source to develop through consumers’ experience with wares associated with the mark

Elements

Because trade-marks law is aimed at protecting reputation the key element is confusion in the mind of the consumers as to the source of the wares

The mark must be Confusingly similar, and Confusing as to the source of the wares

Using the mark to refer to the source of the wares is not confusing

Eg “I own a Honda™”

“Source Theory”

This is encapsulated in the traditional “source theory”

The function of a trademark is to impart information as to the source or sponsorship of the product.

Singer Mfg Co v Loog (1880) 18 ChD 395

“Source Theory”

In other words, what the registered mark does nowadays is to ensure that the wares or services are the wares and services of a particular person and no one else, that is, the source of the goods is guaranteed.

United Artists Corp v Pink Panther Beauty Corp 80 CPR (3d) 247 (FCA) at 256

[T]he traditionally accepted premise that the only legally relevant function of a trademark is to impart information as to the source or sponsorship of the product.

Smith v Chanel, Inc, 402 F2d 562 (9th Cir 1968) at 566:

Source Theory

Contrast source theory with Guarantee theory

The function of the mark is to guarantee the quality of the goods

Property theory Ownership of the mark Dilution theory

Ciba-Geigy v Apotex

Gontier J suggests that “the passing-off action is intended to protect a form of ownership”

“the passing off injures the right of property in the plaintiff, that right of property being his right to the goodwill of his business”

The suggestion that trade-marks are a form of property is dangerous, as it suggests that the owner can control any use of the trade-mark, even those which do not cause any confusion Eg What’s in Jeremy’s wallet

Ciba-Geigy v Apotex The suggestion that trade-marks law protects the

property of the owner stems from the fact that the owner of the mark, not the consumer, brings the action [i]t should never be overlooked that unfair competition

cases are affected with a public interest. A dealer's good will is protected, not merely for his profit, but in order that the purchasing public may not be enticed into buying A's product when it wants B's product.

Ciba-Geigy

But if the law is really about protecting the consumer, why is the T-M owner given the right of action?

Ciba-Geigy v Apotex

The interests of the owner and the consumer are aligned when a forger uses a confusing mark Since the owner has more at stake than any

individual consumer, the owner brings the action

But the interests of the owner and the consumer are not aligned in the case of non-confusing uses This is when it is necessary to determine who

the law is really intended to protect

Dilution and Passing Off

Trade-mark ‘dilution’ has been recognized in the US

Arises when defendant “blurs” or “tarnishes” a mark

Dilution

Blurring applies to famous marks Kodak bicycles would blur the

distinctiveness of Kodak film, even without confusion

An extension of traditional source theory

Dilution Tarnishment

Derogatory use of a mark “Enjoy Cocaine” Dallas Cowboys Cheerleaders, Inc v Pussycat Cinema, Ltd,

604 F2d 200 (2d Cir 1979) Plaintiff's distinctive uniform diluted by defendant's use of a similar

uniform in an X-rated movie Pillsbury Co v Milky Way Prods, Inc, 215 USPQ 124 (ND Ga

1981) Plaintiff's trade characters "Poppin" Fresh" and "Poppie Fresh" diluted

by depiction of them engaged in sexual acts

MTD v John Deere John Deere lawn tractor being chased by MTD tractor “Nothing runs like a Deere”

Much closer to property right in the mark itself

Google AdWords

Use in Commerce? In Canada “sells, distributes or advertises

wares or services in association …” Yes

Google France v Louis Vuitton, A-G ECJ Sept 2009

Rescuecom Corp. v. Google, Inc., (2009, 2nd Cir.)

Confusing Use? No – Google France Maybe - Rescuecom

Passing Off – Elements

Despite some waffling, the traditional elements of passing off remain: (1) A reputation

An association in the mind of the public between the mark and the source

(2) A misrepresentation leading or likely to lead to confusion in the mind of the public

(3) Damage to the plaintiff

Passing Off – Intent

Intent to confuse is not an element For this reason it is sometimes said that

the right is “proprietary” This does not mean that the owner

owns the mark in the sense that they can prohibit any use whatsoever of the mark

Confusion remains a requirement

Passing Off – Elements

Intent to confuse is not an element For this reason it is sometimes said that

the right is “proprietary” This does not mean that the owner

owns the mark in the sense that they can prohibit any use whatsoever of the mark

Trade-marks & Passing Off

Differences between registered and unregistered marks relate to reputation Not necessary to prove a reputation

Registration is permitted upon use Nationwide protection

Passing off protects only in the geographical areas in which a reputation has been gained