The Legal Eagle Study Notes
Trademarks 2. Similarity of Held: Both for alcoholic Evidence of Confusion
Relative Grounds Goods drinks. Used in noisy If TM not used:
Part 2 of 3 3. Likelihood of nightclub. The way the ● Court must guess
L.O: -Identify the relative confusion two words sounded –held If TM in use:
grounds for refusal of a -Canon v MGM Three similar ● Evidence of actual
TM interdependent issues Pfizer v Eurofood confusion e.g.
-Understand concepts of under s5(2). i.e. if you VIAGARA/VIAGRENE testimony
dilution blurring and have goods which are Held: Similar, The first part ● Probative conduct
tarnishing really similar but the of the word is more e.g. misdirected
Relative grounds are marks are less similar, the dominant. mail/phone calls
about comparing one TM high degree of similarity Spotting Similar Goods to wrong business
with another, s5 TMA for the goods can offset ● Expert evidence –
Canon v MGM
S10 – infringement of the less degree of to inform about
Consider:
registered trade mark similarity for marks and market
-Nature of goods
Grounds vice versa. ● Survey Evidence
-Method of use
1. Identical Marks s5(1) – This is different to old -Trade Channels through S5 “Global Appreciation
application for approach used by the which they are sold Test”
identical mark to an English Courts (which was -End users –purpose? Canon v MGM – The
earlier mark, and s5(1) a step by step approach) -Are they in competition degree of distinctiveness
is also for identical -Sabel v Puma [1998] – or complementary? of the registered TM can
goods/services i.e. if Facts: an application for British Sugar: Two be decisive. Canon was
the mark is identical the leaping cat with words identical TM, “Treat” as owner of CANON, MGM
the good/service will puma was proposed by TM for dessert sauces, sought to register
be refused the owners of Sabel. and “Silver spoon treat” CANNON. Canon argued
-Must have a very high Consider three elements: for dressing for dessert. s10 (3) TMA 1994. Video
level of identicalness. (1) Consider the mark James Robertson used camera v Video tape. Is
Diffusion v SA Sadas from a visual perspective “Robertson’s Toffee Treat” one being bought in the
[2003] – “Differences (2) Consider overall for a spread. case of each other> No
so insignificant that similarity, It was found goods were they are not substitution,
may go unnoticed by (3) Consider conceptual not similar you would not but we need to look
an average consumer” similarity buy one instead of the further into reputation.
-Two words, All from the point of view other. Held: ECJ distinctive
ANIMAL/ANIMALE in from the average Meaning of Confusion character of a TM, and
French, not identical consumer. -Wagamama v City Centre particular its reputation,
2. Similar Marks: s5(2) –
What is Consumer’s Restaurants: confusion as should be considered
(a) TM will not be
to badge of
registered if point of view? when assessing similarity
origin/commercial of goods, greater
identical with ● Look at TM as a connection.
earlier TM and whole likelihood of confusion
Facts: Doctrine of where distinctive marks
registered for ● Doctrine of Imperfect recollection.
similar imperfect are involved. Therefore,
“Wagamama vs marks with highly
goods/services recollection: Rajamama” Also notion of distinctive characters
(b) An application for Consumers don’t Distinctiveness of a word; enjoyed greater protection
a similar TM and compare side by more distinctive the than marks whose
identical or similar side greater the likelihood of character was less
goods/services. ● Focus on confusion.
-s5(2): introduces the distinctive distinctive.
-Marca Mode v Adidas:
element of likelihood of elements Facts: TM in relation to S5(3) – Dilution,
confusion/association] ● Consider buying sports and leisurewear. Tarnishing
The Global Appreciation conditions Two parallel stripes vs Important to protect the
Test Examples three stripes. Not very advertising function of a
1. Similarity of Mark Mystery Drinks v OHIM: distinctive. (look at view of trademark.
MYSTERY/MIXERY avg. consumer) Elements of s5 (3):
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Trademarks 2. Similarity of Held: Both for alcoholic Evidence of Confusion
Relative Grounds Goods drinks. Used in noisy If TM not used:
Part 2 of 3 3. Likelihood of nightclub. The way the ● Court must guess
L.O: -Identify the relative confusion two words sounded –held If TM in use:
grounds for refusal of a -Canon v MGM Three similar ● Evidence of actual
TM interdependent issues Pfizer v Eurofood confusion e.g.
-Understand concepts of under s5(2). i.e. if you VIAGARA/VIAGRENE testimony
dilution blurring and have goods which are Held: Similar, The first part ● Probative conduct
tarnishing really similar but the of the word is more e.g. misdirected
Relative grounds are marks are less similar, the dominant. mail/phone calls
about comparing one TM high degree of similarity Spotting Similar Goods to wrong business
with another, s5 TMA for the goods can offset ● Expert evidence –
Canon v MGM
S10 – infringement of the less degree of to inform about
Consider:
registered trade mark similarity for marks and market
-Nature of goods
Grounds vice versa. ● Survey Evidence
-Method of use
1. Identical Marks s5(1) – This is different to old -Trade Channels through S5 “Global Appreciation
application for approach used by the which they are sold Test”
identical mark to an English Courts (which was -End users –purpose? Canon v MGM – The
earlier mark, and s5(1) a step by step approach) -Are they in competition degree of distinctiveness
is also for identical -Sabel v Puma [1998] – or complementary? of the registered TM can
goods/services i.e. if Facts: an application for British Sugar: Two be decisive. Canon was
the mark is identical the leaping cat with words identical TM, “Treat” as owner of CANON, MGM
the good/service will puma was proposed by TM for dessert sauces, sought to register
be refused the owners of Sabel. and “Silver spoon treat” CANNON. Canon argued
-Must have a very high Consider three elements: for dressing for dessert. s10 (3) TMA 1994. Video
level of identicalness. (1) Consider the mark James Robertson used camera v Video tape. Is
Diffusion v SA Sadas from a visual perspective “Robertson’s Toffee Treat” one being bought in the
[2003] – “Differences (2) Consider overall for a spread. case of each other> No
so insignificant that similarity, It was found goods were they are not substitution,
may go unnoticed by (3) Consider conceptual not similar you would not but we need to look
an average consumer” similarity buy one instead of the further into reputation.
-Two words, All from the point of view other. Held: ECJ distinctive
ANIMAL/ANIMALE in from the average Meaning of Confusion character of a TM, and
French, not identical consumer. -Wagamama v City Centre particular its reputation,
2. Similar Marks: s5(2) –
What is Consumer’s Restaurants: confusion as should be considered
(a) TM will not be
to badge of
registered if point of view? when assessing similarity
origin/commercial of goods, greater
identical with ● Look at TM as a connection.
earlier TM and whole likelihood of confusion
Facts: Doctrine of where distinctive marks
registered for ● Doctrine of Imperfect recollection.
similar imperfect are involved. Therefore,
“Wagamama vs marks with highly
goods/services recollection: Rajamama” Also notion of distinctive characters
(b) An application for Consumers don’t Distinctiveness of a word; enjoyed greater protection
a similar TM and compare side by more distinctive the than marks whose
identical or similar side greater the likelihood of character was less
goods/services. ● Focus on confusion.
-s5(2): introduces the distinctive distinctive.
-Marca Mode v Adidas:
element of likelihood of elements Facts: TM in relation to S5(3) – Dilution,
confusion/association] ● Consider buying sports and leisurewear. Tarnishing
The Global Appreciation conditions Two parallel stripes vs Important to protect the
Test Examples three stripes. Not very advertising function of a
1. Similarity of Mark Mystery Drinks v OHIM: distinctive. (look at view of trademark.
MYSTERY/MIXERY avg. consumer) Elements of s5 (3):
© 2021
