Trade mark law in UK has been thoroughly revitalized

The trade mark law in UK has been thoroughly revitalized by the 1994 Act. Before this act the previous law was considered to be unsatisfactory and the Trade Mark Act 1938 was not enough to cover all the modern issues of trade mark therefore that act was replaced by the Trade Mark Act 1994. Historically in U.K the trade mark started in 1876 and the very first trade mark was given to Bass Red Triangle and quite amazingly it is in use till today. The trade marks are used by commercial and industrial sectors. The main use of trade mark is that it helps the consumer to identify the relevant good while looking for it. The marks are also considered as sign of reputation and good will and in current times the symbols performs very important role in the success and failure of a business or a commodity.

Even in Roman times marks were used on the pottery to show the world they belong to Romans or they are manufacturer of this article and merchant’s marks had been used in Britain since 13th century and even gold and silvers were hall marked in the 14th century. The Industrial revolution saw a tremendous use in signs and symbols for advertisement.

In this assignment we will discuss what rights are provided to the trade mark owner to stop the importation of the goods under his trade mark and what defenses or exceptions are available to the trade mark owner and how this right of trade mark owner can be limited.

The logic of having a trade mark

Basically there are two simple reasons to have a trade mark. The first is that the mark helps to protect the reputation and good image of the business or a merchant who is doing that specific work and secondly the mark helps the people not to be cheated who help the people not to purchase a low quality product or a commodity. This law has helped the manufactures to fight against the counterfeiters as criminal and civil action can be taken against those who violate this law and most importantly it also helps to stop unfair competition among the merchants and manufacturers.

The importance of trade marks

A trade mark is consider as a symbol of identity and the first importance of a trade mark is that the mark tells the consumer to which company the product belongs or who has manufactured it. And with the mark comes the standard of quality because the consumers knows which company has high standard and which has low standard of products and most importantly the trade mark allows one merchant to distinguish his commodities from his rivals commodities. And at last but not least the trade mark helps to promote the goods.

Any sign that has no distinctive character can not be registered as they can’t have any identity neither of the good nor of any type of service which they have promised to provides as the consumer will not be able to repeat there experience with the same organization or a trader [1] 

The violation of the trade mark

The registered trade mark owner has a sole right to own the mark and use it for the business or for any business and any other person who uses the registered symbol of any product without the wish of the owner of the mark than according to the U.K law he has violated the law. The person will also violate the trade mark law if he uses the symbol which is similar with other symbol and the purpose of the business is same also and in this case there exists a possibility that people will people will be confused from the sign as both signs the one which is registered and the other which is not are offering the same services and legal action will betaken against the violator of the law.

The person will also violate the trade mark law is he or she uses the registered trade mark in his own business and that sign is almost same as the registered one and it also applies to the cases where the goods are being imported or exported and shows commodities for selling or uses the sign for marketing.

Now we will have an overview of case laws which will help us to comprehend the topic

Arsenal football club V Reed

Arsenal football is one of the famous football clubs in England and they are also involve in the business of selling club shirts, sports wears , badges and many more stuff having the name of “Arsenal" and “Gunners" and the club have registered the mark. Reed an ordinary man was involved in selling the same products outside the club stadium and the products were not official and he ahs also affix a notice which makes it clear that he has no connection that he ahs no kind of association with the club and when he was sued for the violation of the trade mark it was found out by Laddie J that the products of the Reed doesn’t create any confusion over the trade mark of the arsenal as the symbols were understood as the mark of loyalty with the football club. But when the case was referred to ECJ the court decided that it was infringement as there was similarity of mark and commodity and than it was decided that it will be consider infringement even if the use does not indicate the origin of the trade. [2] 

When there is no violation of a trade mark

Any trade mark which is registered and the mark is used by some one else who can be merchant or a trader having its own trade mark which is also registered which provides good and services and three common scenario when the mark cannot be violated when it is used by a person on his own name and when the mark is used to show the quality, purpose or the origin which is to be geographical and at last there will be no violation of the trade mark where it is necessary to show the purpose of product.

A trade mark will not be violated if the mark is used in a specific locality and in that area non registered mark was being used previously before the registered trade mark

Any mark which is registered will not be violated from the use of the mark if the mark is being used in European Economic Area by the owner himself or with his consent but this clause of law will not apply when there is legal reason for the owner to challenge any further business in his commodity

The case laws relating to topic

Now we know what are the rights of trade mark owner and when his right expires now we will have an over view of number of cases relating to the topic.

Wagamama V City Center Restaurants

In this case the claimants had a successful restaurant under the name of “Wagamama". And this name was legally registered and the defendant opened a restaurant under the name of “Rajamama" which was later change to Raja mama. The names created confusion among the customers so the act was consider infringement of the trade mark as the name created the likelihood of the association which is consider as the violation of the trade mark. The judge come to the conclusion the defendants mark is almost same as that of claimant and there is a possibility of confusion among the masses as some will think the marks are same and others will consider some sort of association and as a result the claimant was successful in his case [3] 

General Motors V Yplon

General motors were a registered owner of the mark “Chevy" for motor vehicles and this mark was specifically used on vans. Yaplon held that the mark “Chevy" is being used in cleaning products or other detergents. The General motors tried to stop the Yplon from using the mark on its commodities. They argue that Yplon use of trade mark on other dissimilar commodity is not helping the image of General motors. The court of justice in the end decided that if the condition of the reputation if completed then the second condition which is laid down in article 5 must also be fulfilled [4] 

Euro mark Designs Inc v Peters and Crate & Barrel

In this case the defendant had a shop in Dublin and in that shop furniture was on sale and gave the advertisement of that sale in a magazine which was being sold in Ireland and UK and the shop had no feature of delivery through the mail orders. The defendant the owner of shop used the sign which was similar to the trade mark of the claimant and as a result of this act the claimant brought the issue to the court and it was held by the court that the sign is not the trade in UK. [5] 

Perfume Christian Dior SA V Evora BV

In this case the claimant used to produce perfumes of high quality and other cosmetic commodities. The company had registered the trade mark on the packing of the bottles in which the perfumes were sold so it had the copy right of certain bottles of commodity and also the packaging. The defendants got the commodity of the claimant by importation and later on he advertise the commodity in the bottles and packaging whose trade mark rights were owned by claimant. The clamant raised voice against this type of advertisement as he thought that this will harm the reputation of his trade mark and he begun the proceedings against the defendant in the court of law. The court held the defendant responsible for the violation of the trade mark. [6] 

Bayerische Motorenwerke (BMW) V Deenik

The vehicle manufacturer had BMW as the there registered trade mark and Mr. Deenik had a vast experience with BMWs and he started the work bearing the name" Repairs and Maintenance of BMWs"and he was also involved in the business of second hand vehicles and sold them with the name of “Specialists in BMWs “but he was not a nominated agent of BMW. The court of justice found out that this act constitutes violation of trade mark as it is given in section 10 of the Trade Mark Act 1994 [7] 

Barclays Bank V RBS Advanta

The clamant bank had a credit card with the name of “Barclaycard" and this card was for credit services and it had another card named “Barclay" and this card was for any financial services. The Barclaycard was also providing the service of “Visa" card along with many other services. A joint business was started by defendant in whom RBS and Advanta were partners they were planning to launch a “RBS Advanta Visa Card". They started the advertisement campaign with the distribution of a leaflet in which it was told that this card is better than any other card around and along the advertisement a table was also made which compared this credit card with eight other credit cards including “Barclaycard". In the table comparison was made on annual fee. APR on purchases and on advances and monthly rate percent

The trade mark of claimant was under attack according to section 10 (6) of the trade mark act and after noting the strict terms of the act Laddie J held that under the previous law of trade mark in advertising through which comparison is made among the rivals this act amounts to violation of law [8] . But this point of law was consider to be not acceptable and Lord Strathelyde said at the passing of the act in 1994 that there is no harm in having comparative advertising as this act provides fair information to the public.

This point of is very beautifully explained in the current act of trade mark which states that no one will be prevented from using a trademark by any person if the aim of the act is to identify the services which are being provided or the commodities that are being sold but the violation of law depends on the honest intentions in industrial or commercial matters because as a result of this act the party can take un fair advantage. The court took consideration of the section 10(6) and the court decided that people will simply understand that this comparative analysis of the card on a chart is just to give information and general impression was given to the public that advanta was a better card and this act was not misleading the public and the second requirement was that it must damage the reputation of the mark and advanta failed to mention that and Barclays was offering similar services and this was not affecting the mark of Barclays as people are wise enough to know who is providing better services [9] 

Vodafone Group plc V Orange Personal Communications

In this case the court of justice allowed some sort of elasticity in comparative analysis of the two companies. In this case the defendant had said that if a consumer will use there product than as result of this they will be able to save 20 pounds. The honorable court decided that any men of normal prudence will know that this is practically not possible so it was held the provision of trade mark act was not violated [10] 

Cable Wireless plc V British Telecommunications

in this case the trader used false information for his business to gain advantage but in this case it was made clear by the court of law that any trader who is wise enough will suspect that the information given by trader is incorrect and will not be able to influence it hence the person who will give false information will fail in his objective [11] 

British Airways V Ryanair

The British airways sued the defendant airline for the violation of the law relating to its trade mark and for false information that was given in advertisement published in 1999. in both the add a detail was given on the price and there was comparison of the prices with the headlines “Expensive BA……..DS" and the other headline was “Expensive BA".BA had a registered trade mark consisting of two alphabetical letters BA for air travel and other relating services.

Ryanair accepted the fact that it has used the same registered trade mark in both the advertisements but argued that this act doesn’t amount to the violation of trade mark act but his advertisement was based on the point and people had the belief that BA had denoted the claimant. The Ryanair argued that it had defense under section 10(6) and 11 (2) (b) of the Trade mark Act 1994 and BA argued against this stance of the Ryanair and BA said the above mentioned section say nothing about the use of a trade mark by the third party and use of comparative advertising against the rival trade mark is not permitted the court rejected this stance and said if this point is accepted than no one in trade will be allowed to describe there goods or services comfortably by referring to another trade mark. As we in see in our life people do make comparison of one product with another product in very simple style as many time we heard people saying the food of shop A is better that the food of shop B or vice versa and in both cases no trade mark is being used as both are being used as a rival for each other and in the same way the traders do mention each other prices while using respective trademarks and in all these cases the trade mark is only being used as a indication of the characteristic of commodity.

The argument of the British Airways that use of description doesn’t include the use of description by the use of the trade mark to describe goods was completely rejected and the other point of BA was also rejected by the court they argued that there case should be regulated by comparative advertising directive [12] 

Daimler Chrysler AG V Javid Alavi

In this case the claimant had six UK registered trade marks which registered in the period between 1903 and 1985 including Mercedes and Mercedes Benz for motor vehicle and clothing and of community trade marks Mercedes Benz for all types of commodities and MERC for motors. The defendant was involved in the business of clothing and shoe some of which were marked MERC and some of these products were sold in his London store named MERC and he was trading with this name since 1967.

The claimant was not successful to establish any kind of violation of law relating to the Trade mark act 1994 according to section 10(2) (b) relating to the UK clothes but on the allegation of the violation of the UK vehicle marks under 10(3) the court of justice decided that in trade law there is no confusion because this provides different standards of violation of trade mark the court pointed out the three main points the first one is that protection is given to that mark which has a reputation and secondly the protection is only given in that case when the mark is registered for giving services and goods and the violator is using it for the same purpose and last the nature of harm to the trade mark is to be specified. This area of law is very ambiguous due to various kinds of national approaches to the issue but in this case the judge said that no extensive protection should be given to the trade marks when there is no possibility of unfair advantage and to consider a act to be violation of law there must be some kind of link or association between the sign that is used by the defendant and the mark and its reputation. [13] 

The end of rights of trade mark owner

This principle of right is applicable when ever the commodity is placed on the shop within a community by the owner himself or through his consent. This principle stops the owner from interfering relating to the commercialization of the product. Which means any third person can get the commodity on sale within the community with the consent of the owner than can import them to another area and can resell them there and the owner of the trade mark owner cannot ban the use of the mark relating to the commodity which is available in the shop due to the wish of owner or the owner himself has placed that product on the shop. The consent of the owner is some sort of license to the other person to sell or provide services which mean if trade mark owner sells a fragrance to which the trademark is applied in Belgium than the person having the consent of the person can import it to another country and can re sell it there. His act will not amount to the violation of the trade mark even if the fragrance has been imported into another country and put on sale by the third person.

The logic of this principle is that without it the undertaking will have full grip on the commercialization of their goods and this will help them to move the market on any way as they like and they can take advantage of the economic conditions of the people as some will be poor some will not be in any country the consumers will not get any benefit to stop this practice this principle of consent is necessary to implement.

Defense to the violation of trade mark

There are number of defenses which are available and having these then the act will not amount to the violation of the trade mark law. The very first one is that if a person uses the registered trade mark with the consent of the person who ahs registered the mark than the use of the mark by that person will not amount to the violation of the trade mark law. And the second defense provided in the act is that when the mark is used by another person whose trade mark is also registered and is providing the same services and is involved in the business of the same commodities in which the owner of trade mark owner is also involved and the third defense is that if the mark is used by the owner himself and the intention of the person is very honest while using the mark and this act will not mislead the customer or consumer.

NAD Electronics Inc V NAD Computer Systems

In this case the point of discussion was the intention of the defendant. The defendant selected the name with good intentions but after some time he begun using the name in negative manner the sole purpose of that act was to give bad reputation to the claimant company and the court of justice decided that it is the name of the company which is important not the wish or intention so no defense was given [14] 

Asprey & Garrard Ltd v WRA (Guns) Ltd (t/a William R Asprey Esquire)

In this case the Asprey had a trade mark named as “ASPREY" which was used to deal in luxurious goods. The Asprey brought a case of the violation of the trade mark he brought the action against two defendants who used the mark in the same goods without his consent the court decided that the defendants had violated the law of trade mark. [15] 

Bravado Merchandising Services Ltd v Mainstream Publishing (Edinburgh) Ltd

In this case a book was printed having the title of ‘A sweet little mystery- Wet Wet Wet inside story". The WWW argued that the name of book is violation of the law of trade mark and this name is bringing bad reputation to their trade mark WWW. The court is justice decided that there is no violation of the trade mark law as the purpose of the book and WWW is pole apart there is no percentage of matches in their description so there is no breach of law. [16] 

Conclusion

The trade mark act has provided protection to all the owners of trade mark despite having protection of their trade mark there are some limitations and exceptions on the use of trademark. A specific trade mark helps the people to know from which company or organization they are dealing with and this mark is consider as a symbol of pride for the owners and people purchase product after seeing the mark. Trade marks not only given identification but also helps the people not to be cheated by the counterfeiters who can use the famous trade mark to gain ulterior motives. In this modern world the consumer’s gives consideration to the well established and famous trade marks and this approach of people has also been taken into notice by the legislation that’s why they have legislated such a law which covers every aspect of the trade marks.

In this assignment I have tried to explain the rights of the trade mark owner while importing a good along with various casa laws and when any act will be consider as a breach of the law of trade mark and in this assignment I have also tried to explain how important it is to have the consent of the trade mark owner while using his trade mark and I have also explained the situations when there will be no breach of the trade mark. The defenses relating to the breach of the trade mark are very clearly explained in section 12 of the Trade mark Act 1994 and this section thoroughly explains when the right of trade mark owner exhausts and what defenses are provided to the trade mark owner to protect the use of his trade mark while dealing in services or any kind of products.