A User's Guide to Intellectual Property in Life Sciences

807 Pages·2021·2.592 MB·English

by  Paul England, Simon Cohen

A User’s Guide to Trade Marks
and Passing Off
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Other titles in the ‘A User’s Guide’ series:
A User’s Guide to Intellectual Property in Life Sciences
March 2021
9781526511751
£125
A User’s Guide to Data Protection, Fourth Edition
August 2020
9781526515704
£115
A User’s Guide to Patents, Fifth Edition
June 2019
9781526508683
£125
A User’s Guide to Copyright, Seventh Edition
December 2017
9781847666857
£135
www.bloomsburyprofessional.com/usersguide
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A User’s Guide to
Trade Marks and
Passing Off
Fifth edition
Nicholas Caddick QC
Barrister of Hogarth Chambers
Ben Longstaff
Barrister of Hogarth Chambers
Jamie Muir Wood
Barrister of Hogarth Chambers
Charlotte Duly
Chartered Trade Mark Attorney, Head of Brand Protection at Charles
Russell Speechlys LLP
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Other titles in the ‘A User’s Guide’ series:
A User’s Guide to Intellectual Property in Life Sciences
March 2021
9781526511751
£125
A User’s Guide to Data Protection, Fourth Edition
August 2020
9781526515704
£115
A User’s Guide to Patents, Fifth Edition
June 2019
9781526508683
£125
A User’s Guide to Copyright, Seventh Edition
December 2017
9781847666857
£135
www.bloomsburyprofessional.com/usersguide
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Preface
This is the fifth edition of the User’s Guide to Trade Marks and Passing
Off, one of Bloomsbury Professional’s series of User’s Guides. Like the
other Guides, this book provides practical guidance as to both the law
and practice in relation to its subject matter
Previous editions of this work reflected the extent to which, as a result
of the UK’s membership of the European Union, modern trade mark law
in the UK has been shaped by European legislation and decisions of the
European Court. This present edition is being published in the aftermath
of the ending of that membership and seeks to provide assistance as to
the state of trade mark law as a result of Brexit. Most significant is the
ending of protection in the UK for European Union trade marks and the
automatic replacement of such marks in existence as at 31 December
2020 with corresponding rights in the UK. Otherwise, for the time being
at least, UK trade mark law is likely to remain on a parallel track to EU
trade mark law given that the UK’s Trade Marks Act 1994 was enacted
and amended to implement various EU directives intended to harmonise
trade mark law across the EU, and the provisions of those directives are
mirrored in the European Union Trade Marks Regulation (2017/1001)
which governs EU trade marks. Also, European decisions made and
European legislation enacted prior to 31 December 2020 will remain
in effect in the UK as part of ‘EU retained law’, although subsequent
decisions and legislation will not be binding on UK courts but merely
matters to which UK courts can have regard.
Whilst EU trade marks are no longer effective in the UK and the UK
courts will no longer sit as EU trade mark courts, this edition continues
to address the law with regard to both UK and EU trade marks as
practitioners are likely to continue to need to deal with both types of
right.
This edition reflects the law as at August 2021. In addition to dealing
with the fallout of Brexit, it deals with the coming into effect of the
EU Trade Marks Regulation 2017. Other areas updated include:
•• Chapter 2 – changes to the definition of a sign capable of registration
(the removal of the requirement that it be capable of graphical
representation) and a consideration of decisions as regards the
significance of colours with regard to registrability.
v
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Preface
•• Chapter 3 – the introduction of European Union certification marks.
•• Chapter 4 – the impact of the London Taxi and Jaguar Land Rover
cases as regards the issue of distinctiveness and, in relation to the law
on bad faith, the significant guidance provided by the CJEU in the
Koton and Skykick cases.
•• Chapter 5 – the effect of the Court of Appeal’s decision in Comic
Enterprises as regards the relative grounds of opposition to
registrability.
•• Chapters 7, 8 and 10 – the latest practice of the UKIPO and the
EUIPO as regards the registration of trade marks and rights of
representation.
•• Chapter 13 – changes in the law as regards licensees and their right
to sue for infringement.
•• Chapter 17 – the impact of Brexit on remedies, changes in the law as
regards notifications to the Customs authorities and with important
guidance as to the law of search orders and imaging orders given by
the Court of Appeal in the TBD case.
•• Chapter 18 – rewritten to reflect changes made in the law by the
Intellectual Property (Unjustified Threats) Act 2017.
For this edition, we are pleased to welcome Jamie Muir Wood (a fellow
barrister at Hogarth Chambers) and Charlotte Duly (Head of Brand
Protection at Charles Russell Speechlys LLP) to the editorial team and,
as always, we are grateful to all our colleagues for their input on issues of
interest to trade mark lawyers – particularly Brexit – and to our publishers
for their patience and support.
Nicholas Caddick QC
Ben Longstaff
Jamie Muir Wood
Charlotte Duly
London, 2021
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Contents
Preface v
Table of Cases xxi
Table of Statutes xlv
Table of Statutory Instruments li
Table of EC and International Material lv
Chapter 1 Introduction 1
Registered trade marks 1.02
Well-known trade marks 1.09
Certification and collective marks 1.10
Geographical indications, designations of origin, traditional
speciality guarantees 1.11
International conventions 1.12
Passing off 1.13
Olympic symbols 1.14
Chapter 2 What is a trade mark? 7
Trade mark: the statutory definition 2.01
A ‘sign’ 2.03
Capable of being represented clearly and precisely 2.04
Capable of distinguishing goods or services of one
undertaking from those of other undertakings 2.10
Registration in respect of goods or services 2.11
Undertakings 2.12
Unregistered trade marks 2.13
Passing off, s 2(2) 2.14
Impediment to registration 2.15
Defence to infringement, s 11(3) 2.16
Well-known trade marks 2.17
Well-known trade marks 2.18
Who is entitled to protection—meaning of ‘Convention
country’ 2.19
Meaning of ‘well known’ 2.20
Well-known marks—basis for opposing registration of later
marks 2.23
vii