2015

KINGS COLLEGE LONDON

School of Law

INTELLECTUAL PROPERTY 2 TRADE MARKS AND

PASSING OFF
Handout
Please note that the reading for seminars is set out under the equivalent under
the designated topic in the lecture handout. Seminar 1 is a general introduction.
Seminars will be given by Barbara Lauriat and Michael Zymler.
barbara.lauriat@kcl.ac.uk
justin.koo@kcl.ac.uk

SEMINAR 1 CONTEXT AND REGISTRATION

1. What do you understand by a trade mark? Why are trade marks given legal
protection?
2. Why is it necessary to register a trademark and what avenues are there
available to do so? Do some avenues have advantages over others?

SEMINAR 2 AND 3 SUBJECT MATTER AND ABSOLUTE GROUNDS FOR

REFUSAL

1.

Discuss the registrability of the following under the 1994 Act, stating, where
necessary, what further information you would require before making your
determination.
(a)

The scent of roses for cigarettes and perfumes. The scent disguises the odour
of stale tobacco associated with most other cigarettes on the market.

(b)

A musical refrain for a television news service (for example, the music
introducing the 10 oclock news).

(c)

The colour red for toothpaste.

(d)

The shape of a toothbrush, which has a pleasing eye-catching appearance. It

also enables better cleaning of teeth in the lower jaw. Only 5 or 6 shapes of
toothbrush have this advantage.

(e)

An hexagonal bottle of beer. The bottle has vertical grooving on the top half
of the bottle and horizontal grooving on the lower half

(f)

The shape of a Jaguar grille

(g)

Elvis Presley for guitars

(h)

Have a break for chocolate

(i)

Roehoe for rotary hoes

(j)

Bala for woollen clothes (Bala is a market town in the Welsh hills, where
sheep farming is carried on)

(k)

Hoover for vacuum cleaners

(l)

Orlwoola for clothing

(m)

PERFECTION for soap and toiletries. The registered proprietor sells soap
in specialist retail outlets under the label absolute PERFECTION (with the
word absolute in much smaller letters), and has captured 40% of the soap
market. Eighty eight per cent of the public recognise the name Perfection for
luxury soap and say yes to the question can you guess the maker of the
soap?

(n)

NICEWIT for shoes; the Registry had previously rejected an application by

the same applicant for NICEFIT, which is the only name it has used so far in
relation to its shoes.

SEMINAR 4 RELATIVE GROUNDS OF REFUSAL

Stating what further information, if any, you require, discuss the registrability of the following
under the 1994 Trade Marks Act:
i)

MARS(in Roman script) for chocolate, MARS (without Roman script) is already
registered in the UK for confectionery and biscuits.

ii)

DOVE for cough lozenges; DOVE is registered in the UK for sweets and chocolate,
but has not been used so far in respect of chocolate.

iii)

SCRABBOLA for a word game where competitors write down as many anagrams as
they can from a word in 60 seconds; a UK registration already exists for SCRABBLE, a
game;

iv)

FCUK for furniture. FCUK is already registered for clothing.

v)

ROLEX for drain cleaner. ROLEX is already registered for watches and jewellery.

vi)

ZARA for garden furniture. ZARA is registered for furniture. The registered
proprietor sells very expensive Italian imported sofas and does not sell garden furniture,
which is a separate market. It is accepted that the consumer will not be confused.

vii)

EMU for soft drinks; EMU is renowned Australian mark for beer, but there has been
no registration or marketing of the beer in this country.

SEMINAR 5 INFRINGEMENT
1.

Do you think Trade Mark law is now anti-competitive?

2.

In 1996 Frank Black set up a distillery business selling a high class whisky on
the market under the mark VALKYRIE. The launch of the whisky was
accompanied by a well funded advertising campaign and the name quickly
achieved a high level of recognition. VALKYRIE was registered as a trade mark
for whisky in Class 33 and for clothing in Class 25.
Advise Frank Black in the following circumstances: a) The Salvation Army have launched an anti-alcohol campaign featuring a
photograph of an alcoholic lying in the gutter holding a bottle of Valkyrie;
b) The English National Opera sells T-shirts bearing the words The Ride of the
VALKYRIE;
c) Ian uses the mark VALKYRIESSE for beer in Belgium. The beer is
advertised on the internet and in Belgium magazines which are also
distributed in some UK bookshops. The beer is not sold in the UK.
d) Sarah OHiggins has marketed a household disinfectant under the name
VALKYRIE, with the slogan Frightens away the most stubborn germs.

SEMINAR 6 - DEFENCES

Two cousins, John Walker and Jack MacGuire, set up a distillery. In 1992 they put a
high quality whisky on the market under the name JACKIE WALKER. The whisky is
very expensive and is only sold through elite shops. Soon after the launch (which was
coupled with heavy advertising) the name JACKIE WALKER was registered as a
trade mark by the partnership for alcoholic beverages in Class 33. It was also
registered in the Benelux Registry. In 1994 the two cousins fell out and John Walker
left the business to set up a rival distillery. Part of the agreement by which John
assigned his share in the partnership was that the Benelux mark be assigned to him.
Advise Jack MacGuire in the following circumstances:
(a) John Walker markets poor quality whisky under the name JACK SIMMONS.
His advertising states that drinkers of JACK SIMMONS save 5 per week over
drinkers of JACKIE WALKER. Although this is true in terms of average volume of
consumption, to get the same level of alcohol by drinking Jack Simmons would cost
5 more than drinking Jackie Walker.
(b) Kevin imports JACKIE WALKER whisky from Holland. This is the whisky
produced by John Walker and is of a different quality from that produced by Jack
MacGuire. The bottles are marked not for export.
(c) Lenny is planning to import JACKIE WALKER from the United States. The
whisky was marketed there with Jack MacGuires consent, but as a result of effective
health campaigning the price has plummeted.
(d) John Walker has begun to sell gin in the United Kingdom under the name J.
WALKER.
(e) Martin is planning to import JACKIE WALKER from France. This is whisky sold
with the consent of Jack MacGuire. However, the whisky is sold in France in litre
bottles, whereas in the United Kingdom it is sold in 75 centilitre bottles. Martin
therefore plans to transfer the whisky into the appropriate sized bottles. He maintains
the process will not alter the quality of the whisky and he points out that he has a
hygiene certificate from the French authorities. He plans to distribute the whisky
through discount warehouses and to launch an advertising campaign using leaflets.
(f) Jack MacGuire sells some unrefined whisky to Norman for use exclusively in the
preparation of Dundee cakes. Norman, who has suffered from falling sales, has sold
some of the unrefined whisky to Pauline who is now marketing it as unrefined
whisky from the Jackie Walker distillery.

SEMINAR 7 OWNERSHIP AND EXPLOITATION OF RIGHTS;

MAINTENANCE AND LOSS OF REGISTRATION
1. Leisure Sportsgear is the registered proprietor in the United Kingdom of the mark
Leopard written in a handwritten flowing script. The mark is registered in respect of
clothing and sports shoes. Another trader wishes to use and/or register the mark. Can the
trader do so in the following alternative circumstances?:
a) The trader is a distributor previously contracted to Leisure Sportsgear in the Highlands of
Scotland. The distribution agreement was terminated six years ago, but the trader has
continued to use the mark in his own right. Leisure Sportsgear has since distributed its
products in the Highlands of Scotland directly through its own travelling sales staff.
b) Leisure Sportsgear does not use the mark on either clothing or sportsgear for a period of
fours years.
c) Leisure Sportsgear does not use the mark on either clothing or sportsgear for a period of
four and a half years, but then uses the mark in respect of a small quantity of high quality
running shoes. The use of the mark is then discontinued when the shoes do not sell well since
the launch of the new shoe coincides with the start of an economic recession. Leisure
Sportsgear can demonstrate it was genuine in its attempt to enter a new sector of the market,
but admit that another purpose of the production and sales of the new shoe was to prevent
others using the mark.
d) The mark is not used for four years, but then Leisure Sportsgear writes to its three
suppliers of rubber soles, ordering significant quantities of the soles (according to precise
specifications) and indicating that it will be launching a new shoe under the mark Leopard
but not utilising the hand written flowing script and with the word Leopard appearing in a
circle. Advertisements carrying this mark are also sent to numerous retail outlets
e) The mark has been extensively used by Leisure Sportsgear on clothing since registration
and also on ice skates, but on no other goods.
f) In the last five years Leisure Sportsgear has used the mark extensively on sportshoes, but
only sparingly on clothing and then only on cheap tee-shirts advertising its luxury sportshoes.
The tee-shirts are given away free with each pair of shoes purchased.
2. What is meant by a generic mark?
What steps can a proprietor take to prevent the mark becoming generic?

SEMINAR 8 AND 9 PASSING OFF

1. Is there a single legal test for passing off?

2. Should the UK introduce a tort of unfair competition?

3. (a) Mungojerry, a cartoon about a cat, is published in the Morning Cloud, a daily
newspaper. Eatup Ltd has begun marketing Munjogerry catfood with a
photograph of a cat in a pose that typifies the cartoon character. It is also planning
to put out Mungojerry T-shirts bearing the word Mungojerry and a copy of the
photograph.
Advise the newspaper
(b) John Phillips is a famous international cricketer. A close up of picture of him
batting appears in newspaper advertisements for CARBOFLAKES, a new brand
of cereal, together with the following words if you eat delicious Carboflakes
every day youre more likely to make a century
Advise John
(c) Richard runs a shop in the Mile End road selling end of range products at very
low prices, including sweatshirts made in the UK. with (on the front) the words:
Brad Pitt & Jennifer Annis : Because shes worth it and a photograph of the
couple. Richard knows that Brad and Jennifer have registered their names as trade
marks for clothing and also that Jennifer models for LOreal , which uses the
phrase Because shes worth it to advertise their haircare products.
Advise Richard
4. Giggle Ltd is an English company which makes and sells kitchen equipment,
including food mixers and processors. Some years ago it registered the mark HOME
as a trade mark in respect of blenders and mixers for home and commercial use. The
company has an outstanding reputation for making high-quality and well-designed
products but unfortunately its factory burnt down at the end of 2008 and it has not
been able to make any products for the last 8 months.
Giggle is now ready to relaunch its HOME food mixers and processors. However, it
has just discovered the following and asks for advice on what it can do about each of
them, under trade mark law and/or the law of passing off.
(a) The department store chain, John Laws, has started selling carpets and curtains
under the name HOMELY;
(b) A kitchen accessories company is advertising a new range of oven gloves under
the mark HOMEWEAR;

(c) The TV presenter Julia Homes is advertising a competitors food mixers under the
slogan HOMES RECOMMENDS THESE FOR THE KITCHEN;
(d) The discount warehouse chain A & Q is selling food processors which are labelled
prominently FOR HOME USE ONLY.