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Published: Fri, 02 Feb 2018

Understanding the evolution of Intellectual Property Law

This is the question that runs throughout this research. But, in order to answer this question, there are some other basic questions that need to be answered. For it is only by understanding the evolution of Intellectual Property Law, the evolution of Trade Mark, functions of trademarks, its features, the reason behind infringement of these trademarks; consequences of infringement could we critically analyse the infringement of trade mark under Section 10(2) in particular. There are many other questions that arise in this research but they are all related to the above question.

The objective of this paper is to protect the trade mark. Trademark depicts distinctiveness of the product/services for the owner. But the unauthorised people could infringe trademarks, confuse the final consumers of the goods/service and thus public could get confused between the original and infringed trademarks and would buy that good/service with infringed trade mark thus causing loss to the original owner of the trade mark. Thus, this research paper critically analyses Section 10(2) of Trade Mark Act 1994.

INTRODUCTION

In the 19th century, Intellectual Property Law was restricted first to the law of copyright that protect the ways an idea is communicated i.e in those days the written form. The era of industrialisation revolution in England, gave importance to the growing needs of commerce for protection, especially patents for news innovation and also protection for trademarks wherein the manufacturer was given whole credit as the creator of goods and designs which held the customers attention. Also businessman of those times were apprehensive protecting there trade secrets from their competitors. This in the 19th century, was referred to as industrial property.

Intellectual property law is that area of law which concerns legal rights associated with creative effort or commercial reputation for goodwill.

One of the most significant part of IPR is the Paris Convention of 1883. Article 1(2) explains that: Industrial property protects patents, utility models, industrial designs, services marks, trademarks, trade names, indication of source or appellation of origin for the repression of unfair competition. [1] 

An intellectual property right owner utilize his rights in one of the following ways:-

He has the liberty to enjoy, utilize or gain from the product.

He has the right to deny others from directly using or imitating what he has done so as to have a clear distinction of his products at the market.

He could also authorise someone else with his rights; but in return for a price.

He could indorse another to use the rights for a stipulated period; again in return for money.

Intellectual property law was initially very abstruse and had immense technical discipline. However, in 1980s, protection of intellectual property was a significant trade – related issue specially for the U.S Intellectual property being one of the most important source of American global leadership, trade here produced around $28.2 billion super fluent increase over the previous years. [2] 

Intellectual property controlled the use of tag lines and symbols thus protecting brand righteousness. Industrialized countries say that technological eminence is the linchpin of their competitiveness. The preference for such nations is to protect their intellectual property rights, since these rights stimulate creativity in technology. If there exists enough protection for these rights, then companies would agree to relocate technology to other foreign nations, both developed and developing, resulting in tremendous economic growth around the world. [3] 

Treaties under IPR :-

One of the most important ways of demonstrating intellectual property protection is execution and application of international agreement.

PARIS CONVENTION – The basic agreement for the protection of industrial property is the paris convention. It covers all properties i.e patents, trademarks, services marks, trade names, utility models, industrial design for conventions. Paris convention is one of the oldest agreement made in 1883 and it received participation from most countries, but the U.S joined in 1887.

The Paris convention is based on reciprocity

The people from states who are members of the convention have the same rights as that of its own nationals.

The foreigners have equal access to any local court to pursue breaching remedy. [4] 

BERNE CONVENTION – The oldest and most compendious international copyright agreement is the Berne convention. This convention mainly establishes the principle of national treatment and also gives protection without formalities, independence of protection and certain other minimum rights. [5] 

TRIPS – Prior TRIPS, most nature offered different levels of protection depending on domestic, political or cultural preferences. But some nation did not protect every category of product namely pharmaceutical drugs. Notaries to the TRIPS agreement agree to follow previous mentioned conventions. Nations that agree to implement TRIPS must give significant protection for patents, copyright and trade mark through their own domestic law. [6] 

INTRODUCTION TO TRADEMARKS ACT 1994

Prior 1875; Trade marks were used long before they were actually being protected. They were used basically to show ownership of goods. Industrial Revolution prompted the need to judicially protect trademarks in the United Kingdom. [7] Two major events occurred in 1875. First, implementation of the first trade mark Registration Act. Second was the Judicature Acts of 1873-5 which amalgamated the administration of common law and equity. [8] 

BACKGROUND TO THE ACT 1994 [9] 

The Trade Mark Act 1938 was the 10th Act of its own kind since 1875 which provided the registration of trade marks.

In 1974, the Mathys Committee suggested reform for this Act, change being introduction of registration of service marks in 1986. This was completely complicated. The registration of service marks provided in trade marks Act 1984, underwent amendment which was then implemented by the patent, design and marks Act 1986. This gave rise to two almost similar versions of the 1938 Act, one which dealt with marks for goods, other which dealt with marks for services.

A white paper, “Reform of Trade Marks Law” published by the government explained the reason why UK Trade marks law was in need for a change:

The 1938 Act was about 50 years old and was quite stagnant.

The need to accredit the 1989 protocol to the Madrid Agreement of 1891.

The upcoming of the community Trade Mark Registration.

The power to get UK domestic law in line with the Directive.

The necessity to bring in the latest version of Paris convention with the domestic law.

TRADE MARK

“A trademark is a word or symbol that identifies the source of goods and may serve as an index of quality” [10] 

It is basically used in the work of trade to distinguish one product or service from another. Laws relating to trademarks are used in order to prevent other parties from making a product with a misleading similar mark. These laws apply for services too.

These trade mark law vary a lot. Some allow services trademarks where as other don’t. There is no particular deadline to register a trademark, but a company might face difficulties if it ventures a foreign market late in the life of a product. Because it would find that its trademark would already have been registered by someone else. Hence, it is important that a trademark be registered in every nation in which protection is desired.

A trade mark is defined as “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of the other undertaking.” [11] 

The mark must meet the following 3 criteria:

The mark should necessarily be a sign.

One must be able to represent it graphically.

The mark should be able to differentiate goods or services of one undertaking from that of another.

Trademark Function

Trademark act as a “badge of origin”: In older days, when a consumer had to purchase particular goods, he simple had to rely on the proficiency of the shopkeeper for advice for determining the origin and quality of goods. During 1875, a register was introduced in UK in response to the increase in international trade. But now a consumer associates trademark with goods and services and not the words of the shopkeeper.

Trademark is an indication of quality: What is important to a consumer is the quality of goods that has particular. A trademark conveys particular perception about the quality of marked goods. The consumer is interested in the origin of the goods/services to determine that goods of the same origin are of the same quality.

A means of advertising: A trader invests not only his efforts, but also large sums in developing a mark in the public eyes. A trademark acts as a vehicle for conveying ascertain message to public. This itself has some financial value. This message is built in the trademark to assure the message itself. The message may depict product’s qualities or some intangible values like luxury, lifestyle, exclusivity, adventure, youth etc.

An investment vehicle: Since a trademark conveys values like luxury, lifestyle, adventure, youth etc. To this the mark has an inbuilt economic value that is independent of goods/services for which they are registered.

INFRINGEMENT [12] 

In order to infringement any trademark, it is not necessary to have knowledge, intension or derivation on the defendant part.

Comparing registered trademark with the one that is alleged as infringing sign, would decide whether a trademark has been infringed. Circumstances that infringe a trademark are: they are where:

The trade are identical and the goods or services are identical.

The marks are identical and the goods or services are similar and there is likelihood of confusion, which incorporates the likelihood of association, with the registered mark.

The mark are similar and the good or services are either identical or similar, and there is a likelihood of confusion, which includes the likelihood of association, between the marks.

The marks either identical or similar, the registered trademark has a reputation in the UK and use of the defendants mark would take unfair advantage of, or be detrimental to, the distinctive character or the reputation of the registered trademark.

PROTECTION: [13] 

There exists two ways of protecting trademarks. One could be registration of one particular mark under, designs and trademark. Second could be by taking an action against an unauthorised user of the mark who is violating rules by passing off. The method of protection decides whether a mark qualifies for protection, its scope of protection, its advantages and disadvantages. It is important to note that the absence of protection (by any way) does not stop someone from using a particular symbol in course of trade, obviously, that it does not clash with the right of others. However, it depends on the trader whether to use a mark for his goods or services at all; but it would be better if he uses it as it would be simple enough to recognize his product with the help of a trademark.

Further Protection:

Schechter aimed for further protection of trademark against dilution. He defined this as the gradual dispersion of identity and grasp upon the minds of public of name or mark by its use on goods which are non-compelling. He said the more unique the mark is, the more deeper would be its impact on public and greater would be its need for protection against dissociation. Thus, the more famous the trademark is, the more likely to damage it is. First of all, the greater the trademark is, more advantage would be gained by the third parties who would use the mark on their own goods. Secondly, the greater the trademark, the more sales it would create, due to its uniqueness. Four principles arised from this which described Schechter point of view of the important function of a trademark and what the law needs to protect.

The value of the modern trade mark depends on how well it is sold.

The selling power of the trade mark depends on the public, on the merit of goods and also on the distinctiveness and singularity of the mark.

The uniqueness of the trade mark is diluted by using it either on related or non related goods.

The degree to which a trade mark could be protected depends on the endeavour of the owner too.

LAW ON INFRINGEMENT

Section 10 – “Infringement of registered trade mark

A person infringes a registered trade mark if he uses in the course of a trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.

A person infringes a registered trade mark if he uses in the course of trade a sign where because-

a – The sign identical with trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or

b – The sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood association with the trade mark.

A person infringes a registered trade mark if he uses in the course of trade a sign which-

Is identical with or similar to the trade mark, and

Is used in relation to goods or services which are not similar to those for which the trade mark is registered,

Where trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

For the purpose of this section a person uses a sign if, in particular, he-

Affixes it to goods or the packaging thereof,

Offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the, sign, or offers or supplies services under the sign;

Imports or exports goods under the sign; or

Uses the sign on business papers or in advertising.

A person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, shall be treated as a party to any use of the material which infringes the registered trade mark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.

Nothing in the preceding provisions of this section shall be construed as preventing the use of a registered trade mark by any person for the purpose of identifying goods or services as those of the proprietor or a licensee.

But any use otherwise than in accordance with honest practices in industrial or commercial matters shall be treated as infringing trade mark if the use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or repute of the trade mark.” [14] 

Infringement of a trade mark takes place if a person uses an identical registered trade mark for his goods/services.

Another reason of infringement would be when a person uses an identical trade mark for similar goods/services for which that trade mark was already been registered or when a person uses a similar trade mark for identical or similar goods and services for which the trade mark was already registered.

One more cause of infringement could be when a person uses an identical or similar registered trade mark in his course of trade or when he uses a registered trade mark in relation to goods/services which are not similar to those for which that mark is registered.

A person uses a trade mark if, he uses it on goods or its packaging, he puts up his goods for sale or puts them on market or stores them for that purpose under that sign or offers services or supplies services under that sign, export or imports under that sign and uses it for advertising on business papers.

If a registered trade mark is allowed to be used by its owner to some other third party by giving him a license then the third party does not influence that section.

Section 10(2): The Likelihood of Confusion

“A person infringes a registered trade mark if he uses in the course of trade a sign where because:

The sign is identical with the trade mark and is used in relation to goods and services similar to those for which the trade mark is registered, or

The sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists the likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.” [15] 

The increase of confusion

Section 10(2) provides the way in which every trade mark is protected from a likelihood of confusion.

There are two ways in which Section 10(2) has expanded confusion. First method is the global appreciation method, which takes all relevant factors of the case into consideration when making a decision. [16] Second method is the incorporation of indirect confusion. [17] In early days, confusion was meant to be direct confusion where a customer directly mistook one trade mark for another. But now, indirect confusion exists where consumers can distinguish that the two trademarks are different but since there exists strong similarities between the two, they assume that there is some link between the two. For example: they could assume that the two companies are sister companies.

Importance of Expansion

Schechter in one of his famous articles ‘The Rational Basis of Trade mark Protection ’ [18] , explained the trademarks could be exploited in a number of ways which do not even come under traditional approach of confusion. Priorly, confusion was related to origin of goods, where consumers mistook one mark for another. He realised since mass consumerism meant that trademark could have been exploited in a wide variety of ways, he thought they could also be exploited unfairly by the traders itself.

4 concepts

I would like to explain 4 concepts. First is the direct confusion, which Schechter clearly hates, which relates confusion to the origin of goods. Next, is indirect confusion which states that consumers know that the two marks are different but they still feel there exists strong similarities between the two. Third is what I would call as old dilution, which is as explained by Schechter as dilution in his article. Fourth is modern dilution which was introduced in section 10(3) of 1994 Act.

Traditional Approach

The best example of this approach would be through British sugar v James Robertson case. [19] 

British Sugar had its trademark “Silver spoon Treat” for sweet syrups used on ice-creams. They were against Robertsons using the trade mark “Robertsons Toffee Treat” as they thought the marks were almost similar as were the products for which they were being used. British sugar thought this would be infringement under section 10(2) of the Act. But later Jacob finalised that this was not under infringement because the trademark was devoid of distinctive character and was not valid. Jacob J. said that three questions arose from this case :-

1). Is the mark actually incorporated during the course of trade?

2). Are the products for which this trade mark is used very similar to those covered under registration?

3). Could this similarity, give rise to likelihood of confusion?

He also criticized British Sugar for this approach because they argued that robertson were using their trade mark for a product which was very similar to a dessert sauce because of the which there could be confusion.

But Jacob argued that the question did not only mean that “would there be any confusion?” it meant “was there similarity of goods” and if yes because of the similarity was there any likelihood of confusion?”. He said if one of the questions is elided, then strong mark would get protection for a wide range of goods than a “weak” mark. This above approach illustrates the narrow view initially taken towards confusion. Schechter said that this approach did not consider the functional development of trade marks. He also said that trademarks symbolized quality and satisfaction. Hence they could increasingly be used with a wide variety of goods. But today consumers are aware that many different businesses use the same trade mark they are legally allowed by the registered proprietor of that mark.

The Global Appreciation Approach

The reason for confusion, as per article 5(1)(b) of the Directive 89/104/E.E.C., which was included into U.K law by section 10(2) of the Trade Mark Act 1994, could be existence of similarity between two marks. In four vital cases the European Court of Justice has ruled on the methods that was to be employed when deciding on the matter. This has resulted in Global Appreciation Approach. The four cases are Sabel v. Puma [20] , Canon v. M.G.M [21] , Lloyd Schuhfabrik v. Klijsen Handel [22] and Marca Mode v. Adidas [23] . These cases convey the procedures to be used and these have lead to the expansion of boundaries of section 10(2).

The fundamental cases

Sabel v. Puma [24] 

In Germany, Sabel had once applied to register a trade mark that had the image of a cheetah over the word ‘Sabel’, this mark was particularly be used for clothing. But Puma, objected to this since, they comprehended that it would create a likelihood of confusion with this trade mark, as Puma’s trade mark consisted of silhouette of a puma. This meant that a mark should not be registered where it would breach an existing trade mark. But German courts thought that both the marks were almost similar, there were also some differences. The question that arises is at what point in time do certain things stop to be similar? The difference was that cheetah had spots all over them and it also had the word Sabel below it. So this case put the court in a dilemma as to whether to focus on significant features of a trade mark or what over all impression does it create on minds?

Sabel v. Puma: The Global Appreciation Approach

The European Court of Justice explained that whenever there would be an overall circumstances of the case must be considered European Court of Justice finalised that “the 10th recital of preamble to the Directive says that if there is likelihood of confusion it depends on a large number of elements, particularly on the appreciation of the trade mark in the market of the association which could be made with the registered sign, of the amount of similarity that exists between the trade mark and the sign and between the products identified. Hence likelihood of confusion must be recognised globally, taking into accounts all factors relevant to the case.

This confusion exists, where the more similar the marks, the more dissimilar the goods are and vice versa. In addition, all the elements of a trade mark are taken into consideration, its image, its pronunciation, the impression it creates as a whole.

“ That global appreciation of the visual, aural or conceptual similarity of the marks, must be based on the overall impression given by then, bearing in mind , in particular, their distinctive and dominant components” [25] 

The explanation behind this is that, a lay man or any consumers takes this mark as a whole and does not go in depth or in detail about the marks. There is a greater likelihood of confusion is the prior mark is more distinctive.

The global appreciation approach thus states that if there is greater degree of similarity between the marks then this could had to a greater degree of dissimilarity in the marks or goods. It also means that a trade mark gets wider protection from section 5(2) and 10(2) because the marks are viewed as a whole with credit given to the fact that consumers do not completely and correctly remember a mark. This is completely opposite to the approach adopted by Jacob J. in British Sugar v. James Robertson. [26] 

Canon v. M.G.M [27] 

The European Court of Justice explained how the issue of similarity of goods which come with global appreciation method.

The facts of this case were that a Japanese electronics brand Canon Kabushiki Kaisha, objected an attempt by Metro-Goldwyn-Mayer who wanted to register the word mark “CANNON” for the video tapes, because they had a trade mark “canon” which was registered in their name for various electrical goods like television, video recorders, video filming equipment etc. the reason for this objection was because they thought those goods could be treated as similar. But it was laid down that the normal public would not get confused about origin of video tapes of recorded films with the origin of video players and T.V sets. Their the national court decided that the common public was aware of the various conditions for the production of recorded cassettes and video recorders do not come from the same manufacturer.” [28] 

To what extent does the global appreciation approach allow for dissimilarity in goods? ECJ decided that, there must be some similarity.

“Even if a mark is identified to another mark with a distinct character, then it become necessary to induce evidence of similarity among the goods or services which were covered.” [29] 

When the issue of similarity is being decided, every factor must be taken into consideration.

“These factors, among other things, include their nature, their ultimate consumers and their way of use and also if they are compititors or move parallel.” [30] 

Other circumstances could also be taken into account such as the place of selling could be the same. There could be a likelihood of confusion, even if the public believe that they are produced in different places. As per the verdict in Sabel v. Puma [31] case, there could be situation where end users think that the goods could have been produced by economically linked undertakings or some kind of commercial license agreements. This could again give rise to likelihood of confusion. Under Article 4(1)(b) of the Directive, there exists likelihood of confusion even where the public think that goods or services are made at different places. But, there could be no likelihood where it does not seem that public could believe that goods or services have the same origin or they come from same economic undertakings. [32] 

Thus in the above case, public knew that videos recodes and video cassette tapes were produced at different places but they were confused that there could be some link between the company that made video cassettes and the company which made tapes to play these cassettes. Finally, M.G.M. failed to register its trade mark as “CANNON”.

LLOYD SCHUHFABRIK MEYER v. KLIJSEN HANDEL [33] 

In the ab


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