Intellectual Property Law - Lecture 4 (Part 1) - Trademarks
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Intellectual Property Law (LAW09115)
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Edinburgh Napier University (ENU)
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Intellectual Property Law Essentials
Lecture notes for the Intellectual Property Law module linked to Intellectual Property Law Essentials.
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Intellectual Property Law - Lecture 3 (Part 1) - Patents
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Lecture 4 (Part 1) – Trademarks
• What is a trade mark? Basically, a trademark is a sign for a brand which is registered with the
Register of Trademarks.
• The Trade Marks Act 1994 s.1 as amended by the Trademarks Regulations 2018 states:
– “In this Act “trade mark” means any sign which is capable—
– (a) of being represented in the register in a manner which enables the registrar and
other competent authorities and the public to determine the clear and precise subject
matter of the protection afforded to the proprietor, and
– (b) of distinguishing goods or services of one undertaking from those of other
undertakings. A trade mark may, in particular, consist of words (including personal
names), designs, letters, numerals, colours, sounds or the shape of goods or their
packaging.
The two essential parts are that it has to be capable of being registered in the register and as
a result, the regulations will now indicate when a mark, a sign can be registered.
• Formerly …
• The Trade Marks Act 1994 s.1(1) defined a trade mark as:
– “any sign capable of being represented graphically which is capable of distinguishing
goods or services of one undertaking from those of other undertakings. A trade mark
may, in particular, consist of words (including personal names), designs, letters,
numerals or the shape of goods or their packaging.”
Trade marks can be registered under the 1994 Act or left unregistered.
• Registered current law is Trade Marks Act 1994 which gives statutory rights, protections and
remedies.
• Unregistered – relies on the Common Law of passing off – common law requires a number
of steps to prove ownership and use which are rendered unnecessary by registration.
– Proof of use of mark.
– Proof that mark is unique or at least well known in the trade as distinctive.
– Proof that mark is recognised by consumers.
– Proof that infringer is using mark to gain sales on the basis of confusion with the
goods of the mark owner.
In short, these provisions prove the right to use a trade mark and to prevent others from trespassing
upon that right.
Trade marks are personal property and may therefore be bought, sold, assigned or licensed.
, • Advantages of registered Trade Marks:
– Legal title - No need to prove the elements of passing off, just production of the
extract from the Register of Trade marks shows that you have legal title.
– Hence legal proceedings are simpler and cheaper. You don't have to go to the same
expense to prove your mark. Certain kinds of disputes about ownership and use of
the mark are rendered unnecessary so that if the defence raises these matters, they
can be dismissed easily.
– Some disputes may be resolved by the Trade Marks Registrar without the use of the
courts.
– Certainty and public interest - Consumers and traders benefit from a system which
places limits on what may be registered.
• Note that the earlier Trade Marks Act of 1938 had problems that the 1994 Act sorted:
– Need to harmonise with EEC law – these were harmonised by the 1994 Act
– The definition of trade marks was felt to be too restrictive – e.g. there was a market
desire to use shapes, smells, sounds, etc.
– Did not allow registration of distinctive packaging (Coca Cola had tried unsuccessfully
to have their cola pod shaped bottle trade mark protected without success in UK)
– Did not allow registration of more than one class at a time. What is a class? Part of a
classification system for goods and services.
– Made a distinction between Part A and Part B of the register – (B was cheaper and
easier). Now there is one system.
– Did not allow registration of characters – American Greetings Corps Application [1984]
RPC 329 – Hollie Hobbie case
• Involving a drawing of a little girl called Holly Hobbie in a distinctive dress. It
was felt that this was attempting to deal in the trade mark as a commodity in
its own right and not as a mark for identifying and promoting merchandise.
• Functions of trade marks:
– To differentiate goods - enable recognition, consumers are able to recognise your
trade mark and they like the quality of your goods or a balance of quality and price
which is optimised for your goods, they will they will then choose to purchase your
goods rather than those of your competitors.
– To be sign of quality - if you're producing high quality goods at a reasonable price,
then consumers who are familiar with one of your goods may elect to purchase other
goods that you produce on the basis that they will also be of such high quality in
balance with the price of the goods.
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