Follow
Publications: 35 | Followers: 0

_-Part 1 Security Interests in Personal Property_ The PPSA ...

Publish on Category: Birds 0

Trade-marks
Trade-marks
A trade-mark is any mark which identifies the source of the waresTrademark in the USTrade mark in the UK
Trade-marks
Trade-marks are protected byThe common law of passing offPassing off was once known as unfair competitionAnd still is in the USTheTrade-marks ActThe Act applies only to marks which are registeredUnfair Competition Act was predecessor of Trade-Marks ActHence trade-marks may be registered or unregistered
Passing Off & Trade-marks
Passing off and theTrade-marks Actoffer very similar protectionIt is very common to allege both passing off and an infringement of the TMA in the same actionDifferences are proceduralTerritorial extentPO is limited to region in which the mark is actually knownTMA protection it national on registrationEstablishing of reputationPO requires reputation be established by evidenceTMA requires only use as prerequisite to registration
Principles
Trade-marks law protects an association between a mark and the source of the waresContrast trade-marks with patent and copyright in which the wares themselves are protectedThe 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 markmust not be confused with the product – itissomething else, a symbol of a connection between a source of a product and the product itself.KirkbivRivtikSCC
Principles
CorollaryFunctionality is not protected by trade-marks lawTo 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 purchaseOnly experience – and hindsight – tells the quality of the goodsReputation is the basis of the sale
Principles
A good reputation sets up a virtuous circleConsumers buy the manufacturer’s goods because of the reputationThe manufacturer keeps up its reputation because this leads consumers to purchaseNote that it is expensive to produce high quality waresA 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 goodsThe forgercould choose to offer high quality goodsBut it won’tThe 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 waresThe mark may be a manufacturer’s markA distributor’s markA retailer’s markA service markThis 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 isconfusion in the mind of the consumers as to the source of the waresThe mark must beConfusingly similar, andConfusing as to the source of the waresUsing the mark to refer to the source of the wares is not confusingEg“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 vLoog(1880) 18ChD395
“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 withGuarantee theoryThe function of the mark is to guarantee the quality of the goodsProperty theoryOwnership of the markDilution theory
Ciba-Geigy vApotex
GontierJ 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 controlany use of the trade-mark, even those which do not cause any confusionEgWhat’s in Jeremy’s wallet
Ciba-Geigy vApotex
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-GeigyBut if the law is really about protecting the consumer, why is the T-M owner given the right of action?
Ciba-Geigy vApotex
The interests of the owner and the consumer are aligned when a forger uses a confusing markSince the owner has more at stake than any individual consumer, the owner brings the actionBut the interests of the owner and the consumer arenot aligned in the case of non-confusing usesThis 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 USArises when defendant “blurs” or “tarnishes” a mark
Dilution
Blurring applies to famous marksKodak bicycles would blur the distinctiveness of Kodak film, even without confusionAn extension of traditional source theory
Dilution
TarnishmentDerogatory 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 moviePillsbury Co v Milky Way Prods, Inc, 215 USPQ 124 (NDGa1981)Plaintiff's trade characters "Poppin" Fresh" and "PoppieFresh" diluted by depiction of them engaged in sexualactsMTD v John DeereJohn Deere lawn tractor being chased by MTD tractor“Nothing runs like a Deere”Much closer to property right in the mark itself
GoogleAdWords
Use in Commerce?In Canada “sells, distributes or advertises wares or services in association…”YesGoogleFrance v LouisVuitton, A-G ECJ Sept 2009RescuecomCorp. v. Google, Inc., (2009, 2ndCir.)Confusing Use?No – Google FranceMaybe -Rescuecom
Passing Off – Elements
Despite some waffling, the traditional elements of passing off remain:(1) A reputationAn 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 isnot an elementFor 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 themarkConfusion remains a requirement
Passing Off – Elements
Intent to confuse isnot an elementFor this reason it is sometimes said that the right is “proprietary”This doesnot 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 toreputationNot necessary to prove a reputationRegistration is permitted upon useNationwide protectionPassing off protects only in the geographical areas in which a reputation has been gained

0

Embed

Share

Upload

Make amazing presentation for free
_-Part 1 Security Interests in Personal Property_ The PPSA ...