The Legal Eagle Study Notes
Trademark Law customer confusion because but did not because copyright the meaning of use. Adhered
Part 3 of 3 they knew buying replica kit” expires. to Arsenal – TM use if
-Not clear under act whether R v Johnstone – criminal affected the wider function of
Infringement, Remedies & it would be trademark use for case, concerned copies of the TM.
Defences infringement to take place. CDs for concert The notion of what a TM is for
L.O OR whether the definition performances. Performers has been expanded from the
-Recognise TM
was wider and other use can register trademarks. Question original idea of denoting
infringement
come into it. Referred to ECJ. –whether fixing the names of origin to encompassing the
-Understand defences to an
infringement action Held: Use of a trademark the performer to the CDs broader understanding about
-Identify remedies for TM which was likely to affect the constituted infringement. J brand identity!
infringement. essential function of a TM argued that he was not Trademark - Defences
Infringement could be affected by the TM making a statement of origin and Remedies
-S9 describes the right of the owner. but describing what is on the Best defence is attack for TM;
TM owner. Infringement is Reed would be infringing, CD. HoL: not TM use it was do not argue whether there
defines in relation to these effecting the essential descriptive use. Controversial has been an infringement but
rights. S9(1) TM owner has function of the TM i.e. the –not following Arsenal or get the claimants TM
exclusive rights to use the TM ability of the TM to determine taking into account the wider invalidated or revoked or
and TM is going to be origin. function of a trademark attack the substance of the
infringed by use in the UK ECJ Held – applied the law to –which is establishing a
without consent. claim. Look at the substantive
the facts. R use would be brand identity. case at the time it is put
-s10 TMA – how trademark infringing. ECJ went beyond Holterhoff v Freiseleben –
can be infringed. This mirrors forward and show that a key
their jurisdiction to apply to specific cut of diamonds – element has not been proven
s5 TMA –relative grounds
being refused. facts. Back to high court >> context cut. That was e.g. s10(1) claim argue that it
-The benefit is that you can Laddie decided in favour of registered as a TM. During is not identical.
look at the same cases for Reed anyway –no negotiations a jeweller S10 (2) argue no similarity
them. infringement. described diamond he was and no likelihood of
-For infringement need to CoA: Original purchasers selling as a diamonds like a confusion. Attack evidence
establish that the mark is would not be confused. No context cut. Question whether that has been put forward
used in the UK in the course damage to the source this is use in the course of about confusion.
of trade. function of the TM consumers trade because just using it as
[See table insert App.1] Defences for an action
knew not licenced by Arsenal. a description. Held: not
Basically, s10(1) – if you have 1. -Revocation, s46
But CoA – people who saw infringement because did not
identical marks being used for 2. -Invalidity, s47
the customers wearing the affect the essential function of 3. -Comparative
identical goods/services then
shirts would be confused. a TM. advertising, s10(6)
it is infringement.
People who receive the shirt Adam Opel AG v Autec AG 4. -Use defences, s11
S10(3) –protection for
well-known marks. as a gift. Post-Sale -miniature toy cars made by Revocation for non-use
Is TM use required? Confusion – not only about Opel who make cars and -s46(1)(a) – non-use for 5Y
-Arsenal v Reed – Mr Reed the purchaser of the good. have a TM registration that from registration. Sometimes
selling Arsenal memorabilia Impact of Arsenal Case covers toy cars. Autec make threatening to revoke can get
and replica shirts that were -Use in the course of trade is toy cars and used the Opel the other side to drop the
not licenced by Arsenal. Logo infringing if it damages central Trademark. Sued for TM action.
function of a TM infringement because using -s46(1)(b) – non-use for
on shirt, sign on the store
-Consider post-sale confusion TM on goods. Have got uninterrupted period of 5Y:
–not licenced by Arsenal.
-Underlying the decision is identical mark. Identical when you apply for a TM
Sued for trademark must state the goods/services
infringement. Mr Reed argued the economic argument that goods do not need to prove
likelihood of confusion – the TM is going to be used in
not using the logo as a TM in the Football club as the relation to. What may happen
the course of trade, but as a monopoly on their use of s10(1). Only way defendant
the TM is only used for some
badge of allegiance; logos/sale of goods. Price of can counter is saying it is of those goods/services. After
customers knew just shirts football shirts then go up purely descriptive and not use 5Y someone else can apply
not official; High Court – given this. in the course of trade to have that TM limited.
Laddie J “was using as -N.B: Arsenal could have BECAUSE we are making a -N.B: if period of 5Y if
badge of allegiance. No relied on copyright in court tiny Opel car. ECJ – Question non-use and TM owner starts
Page 1 of 3
2021 ©
Trademark Law customer confusion because but did not because copyright the meaning of use. Adhered
Part 3 of 3 they knew buying replica kit” expires. to Arsenal – TM use if
-Not clear under act whether R v Johnstone – criminal affected the wider function of
Infringement, Remedies & it would be trademark use for case, concerned copies of the TM.
Defences infringement to take place. CDs for concert The notion of what a TM is for
L.O OR whether the definition performances. Performers has been expanded from the
-Recognise TM
was wider and other use can register trademarks. Question original idea of denoting
infringement
come into it. Referred to ECJ. –whether fixing the names of origin to encompassing the
-Understand defences to an
infringement action Held: Use of a trademark the performer to the CDs broader understanding about
-Identify remedies for TM which was likely to affect the constituted infringement. J brand identity!
infringement. essential function of a TM argued that he was not Trademark - Defences
Infringement could be affected by the TM making a statement of origin and Remedies
-S9 describes the right of the owner. but describing what is on the Best defence is attack for TM;
TM owner. Infringement is Reed would be infringing, CD. HoL: not TM use it was do not argue whether there
defines in relation to these effecting the essential descriptive use. Controversial has been an infringement but
rights. S9(1) TM owner has function of the TM i.e. the –not following Arsenal or get the claimants TM
exclusive rights to use the TM ability of the TM to determine taking into account the wider invalidated or revoked or
and TM is going to be origin. function of a trademark attack the substance of the
infringed by use in the UK ECJ Held – applied the law to –which is establishing a
without consent. claim. Look at the substantive
the facts. R use would be brand identity. case at the time it is put
-s10 TMA – how trademark infringing. ECJ went beyond Holterhoff v Freiseleben –
can be infringed. This mirrors forward and show that a key
their jurisdiction to apply to specific cut of diamonds – element has not been proven
s5 TMA –relative grounds
being refused. facts. Back to high court >> context cut. That was e.g. s10(1) claim argue that it
-The benefit is that you can Laddie decided in favour of registered as a TM. During is not identical.
look at the same cases for Reed anyway –no negotiations a jeweller S10 (2) argue no similarity
them. infringement. described diamond he was and no likelihood of
-For infringement need to CoA: Original purchasers selling as a diamonds like a confusion. Attack evidence
establish that the mark is would not be confused. No context cut. Question whether that has been put forward
used in the UK in the course damage to the source this is use in the course of about confusion.
of trade. function of the TM consumers trade because just using it as
[See table insert App.1] Defences for an action
knew not licenced by Arsenal. a description. Held: not
Basically, s10(1) – if you have 1. -Revocation, s46
But CoA – people who saw infringement because did not
identical marks being used for 2. -Invalidity, s47
the customers wearing the affect the essential function of 3. -Comparative
identical goods/services then
shirts would be confused. a TM. advertising, s10(6)
it is infringement.
People who receive the shirt Adam Opel AG v Autec AG 4. -Use defences, s11
S10(3) –protection for
well-known marks. as a gift. Post-Sale -miniature toy cars made by Revocation for non-use
Is TM use required? Confusion – not only about Opel who make cars and -s46(1)(a) – non-use for 5Y
-Arsenal v Reed – Mr Reed the purchaser of the good. have a TM registration that from registration. Sometimes
selling Arsenal memorabilia Impact of Arsenal Case covers toy cars. Autec make threatening to revoke can get
and replica shirts that were -Use in the course of trade is toy cars and used the Opel the other side to drop the
not licenced by Arsenal. Logo infringing if it damages central Trademark. Sued for TM action.
function of a TM infringement because using -s46(1)(b) – non-use for
on shirt, sign on the store
-Consider post-sale confusion TM on goods. Have got uninterrupted period of 5Y:
–not licenced by Arsenal.
-Underlying the decision is identical mark. Identical when you apply for a TM
Sued for trademark must state the goods/services
infringement. Mr Reed argued the economic argument that goods do not need to prove
likelihood of confusion – the TM is going to be used in
not using the logo as a TM in the Football club as the relation to. What may happen
the course of trade, but as a monopoly on their use of s10(1). Only way defendant
the TM is only used for some
badge of allegiance; logos/sale of goods. Price of can counter is saying it is of those goods/services. After
customers knew just shirts football shirts then go up purely descriptive and not use 5Y someone else can apply
not official; High Court – given this. in the course of trade to have that TM limited.
Laddie J “was using as -N.B: Arsenal could have BECAUSE we are making a -N.B: if period of 5Y if
badge of allegiance. No relied on copyright in court tiny Opel car. ECJ – Question non-use and TM owner starts
Page 1 of 3
2021 ©
