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IP TM essay question

Guys can anybody advise how to break up this statement: “Causing confusion as to origin is no longer the benchmark by which we judge whether a defendant has acted illegally. This is a welcome development.”

Any advise would be greatly appreciated.

Reply 1

Mimir

Causing confusion as to origin is no longer the benchmark by which we judge whether a defendant has acted illegally. This is a welcome development.

These are your key terms to address.

You need to define the important terms by working through the statutes concerning Trademarks.
How do the rights subsist (work through the statute), and what cannot be registered as a Trademark.
Use case law to discuss and distinguish where confusion may occur and how the courts have interpreted this.
What was, and is, the 'benchmark'. Use case law to compare.

Discuss possible offences, infringements, then remedies for the Trademark owner and which are most commercially sensible.
Outline defences available to the accused.

Form an informed opinion using your commercial awareness and produce some advice.

Reply 2

fred_1111

Hi,

thanks so much for your reply. I actually have done a coursework on trademarks, but on the trademark infringement specifically. That is why I asked help on this specific topic.

I thought after having done the earlier coursework on trademark I would be confident to tackle this question. However I feel helpless as how to approach this question.

Whether only section 10(3) is relevant here as no confusion required for this section as long as the company is reputable,

or whether the likelihood of confusion is relevant instead, as there is no need anymore for proof of confusion.

This is where I am and if anybody enlightens me any further I would be immensely grateful.

Best,

Fred

Reply 3

Mimir

Original post by fred_1111

Hi,

Whether only section 10(3) is relevant here as no confusion required for this section as long as the company is reputable,

or whether the likelihood of confusion is relevant instead, as there is no need anymore for proof of confusion.

I'm unsure what you are asking, but you cannot just use statute, as you know. Company reputation has nothing to do with it in any way except within the mind of the consumer. I shan't touch on Passing Off since you've asked about confusion, but I hope I've managed to answer what you're looking for:

If you are looking at confusion over registered trade marks, you need to consider case law:

Sabel v Puma - only a confusion as to the origin is sufficient (do they look similar, do they sound similar, what are the meanings of the marks and their associations in the mind of the public)

Intel Corporation v CPM UK - Can be sufficient to merely establish a thought of the reputation of the registered, IE: Less than confusion.

You might need to think about the Tort of passing off (Jif Lemon) and misrepresentation as to origin (United Biscuits UK Ltd v Asda - "Penguins Case" :wink:

If looking at ss9,10 of TMA, once the mark is on the register, the claimant can bring a claim for infringement if another comes too close for using the same mark as that registered.

In essence, s10 addresses the infringing act in its use in the course of trade. You should also consider the reputation, unfair advantage, or detriment, and find the 'link' between the mark (using case law precedents).

The way in which the claimant uses the mark is not relevant to the claim. They are simply enforcing a registered right. For that reason, must look at the claimant's registered/registration and compare the infringing mark against that. Use case law to see what would be sufficient (not an authority but the Cannon case is a good insight into the minimum threshold).

Your structure to consider confusion would be:
Subsistence, validity, ownership.
Infringing act.
The compare the claimant's mark as it is on the register with the mark the defendant is using. Use case law.
Consider defences (factual then statutory at s11).
Talk about remedies/advice.

(edited 7 years ago)

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