“You know, like the colour of the Miracle, we spend a lot of time choosing it. Actually what is quite interesting is that at the time I was working in an international team and I was working in the same corridor as the person who was developing Miracle. You cannot imagine the number of tests, like making sure that this is the right pink, that it has a slight pearlised effect. So, yes, you have a lot of pink fragrances, but when we choose a colour it is not just a random pink. There is a lot of effort put into it and a lot of test to make sure that it is the right colour. You have a baby pink that can evoke softness and you have a vibrant deep fuchsia pink that can evoke something else. It is also very, very important to make sure that the colour that we choose is perfect. So it is not only about just a pink.”
“a wink of an eye to existing branded product.”
“To make it sell easily for those who recognise it.”
“FROM CREATION LAMIS BRAND NEW BOXED AND SEALED 100ML (3.3. FL. OZ.) SWEET PEARLS (“NOA”
“I suspect, as I hope any thorough researcher would do, I probably carried over thinking ideas, hypotheses, from other interviews into this particular one, but again that is not an uncommon technique in any way whatsoever. As I say, the process of research is continual learning and understanding not treating every interview exactly the same, otherwise you just stagnate and you do not actually develop thinking.”
“(1) A person infringes a registered trade mark if he uses in the course of 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.”
“Limitation of the effects of a trade mark 1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, … (b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services … provided he uses them in accordance with honest practices in industrial or commercial matters.” provided he uses them in accordance with honest practices in industrial or commercial matters.”
“(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because … (b) the sign is similar to the trade mark and is used in relation to goods or services identical with … those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.”
“(3) A person infringes a registered trade mark if he uses in the course of trade in relation to goods or services a sign which (a) is identical with or similar to the trade mark, … where the 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.”
“A brand is a whole bunch of things that coordinate to express some kind of message to a customer. I do not think you can just say that there is the logo on the one hand and the intangible attributes on the other.”
“66 It is important to note that, under the provisions of Regulation No 40/94 governing examination of opposition to registration of a Community trade mark, the purpose of demonstrating genuine use of an earlier national mark is to provide a means for its proprietor, at the express request of the Community trade mark applicant, to furnish proof that during the period of five years preceding the date of publication of the Community trade mark application its mark has been put to actual and genuine use on the market. In accordance with Article 15(2) (a) and Article 43(2) and (3) of Regulation No 40/94, that proof also applies where the sign used differs from the earlier mark as it was registered in elements which do not alter the distinctive character of the mark. In the absence of such demonstration, in particular if the elements used alter the distinctive character of the earlier mark, or in the absence of demonstration of justifiable grounds for lack of use, the opposition must be dismissed. Accordingly, demonstration of genuine use of an earlier mark in connection with opposition proceedings has neither the aim nor the effect of granting its proprietor protection for a sign or elements of a sign which have not been registered. Accepting the opposite argument would lead to unlawful extension of the protection enjoyed by the proprietor of an earlier mark which is the basis of an opposition to registration of a Community trade mark. 67 In this case, since the applicant registered only the earlier mark as reproduced in paragraph 5 above, which is the basis of the opposition on which the Board of Appeal was asked to rule in the contested decision, only that mark enjoys the protection accorded to earlier registered trade marks.”
“If a man chooses to apply for his mark in colour to overcome an objection of non-distinctiveness, I do not see why he should not be stuck with a corresponding limitation of rights. It is true that he will have more limited rights than if there had been no limitation – but that is because he was not entitled to more at the time of his application. If, after use and proof that the non-distinctive part of his mark has become distinctive he can register a mark with wider rights, well and good. That is what a prudent trade mark owner would do.”
“An applicant who agrees that the rights conferred by registration shall be subject to a limitation is agreeing, in effect, that the use of the mark outside the limitation is not to be treated as an infringement of the mark notwithstanding that such use would, otherwise, fall within s.10 of the Act.”
“9. Recognising the greater effect that limitations of rights had under s.13 of the 1994 Act, the Trade Mark Rules were amended in 1998 so as to provide applicants with an alternative means of drawing attention to the fact that their mark was being registered in colour, without having to submit to a colour limitation. Rule 5(3) of the amended 1994 Rules introduced a filing requirement so that, where colour was to be regarded as a feature of the mark, the colours were to be stated. This is what Caudwell Holdings Ltd did when making application 2185824. The application was filed with the statement: “The colours red, white and blue are claimed in respect of the first mark in the series” 10. This meant no more than that “The mark is in the colours red, white and blue”.Following an objection from the examiner that the 'Phones 4u' element was non-distinctive, the applicant agreed to enter the colour limitation, which has at all relevant times appeared in the register.”
“Registration of this mark shall give no right to the exclusive use of the device of a container.”
“2 (1) Existing registered marks (whether registered in Part A or B of the register kept under the 1938 Act) shall be transferred on the commencement of this Act to the register kept under this Act and have effect, subject to the provisions of this Schedule, as if registered under this Act. 3 (2) A disclaimer or limitation entered on the former register in relation to an existing registered mark immediately before the commencement of this Act shall be transferred to the new register and have effect as if entered on the register in pursuance of section 13 of this Act.”
“The ECJ looks at the function of a trade mark not whether the use is trade mark use. Unchecked use of the mark by a third party, which is not descriptive use, is likely to damage the function of the trade mark right because the registered trade mark can no longer guarantee origin, that being an essential function of a trade mark.”
“"Trade mark use" is a convenient shorthand expression for use of a registered trade mark for its proper purpose (that is, identifying and guaranteeing the trade origin of the goods to which it is applied) rather than for some other purpose.”
“40 … it has to be noted that the trade mark works not only as an indication of origin, but also serves as a communication tool which must be protected as well.”
“It seems to me to be simplistic reductionism to limit the function of the trade mark to an indication of trade origin.”
“Under Art 5(1) (b) [section 10 (2)] the comparison is not a straightforward mark for sign comparison. On the contrary, it involves a global assessment of the likelihood of confusion as to origin of the goods or services concerned. This involves an assessment of the distinctiveness of the mark, and involves the assessment of many factors familiar in passing-off cases.”
“Of importance here is the recognition that an addition in the defendant's sign to a registered mark may take the case outside one of "identity" (see para. 51). This is obviously sensible – one word can qualify another so as to change its impact, "Harry" qualifies "Potter" and vice versa, for instance. It is particularly in the recognition that additions can change identity that the ECJ has moved on from the rather rigid view taken under the old UK law.”
“(1) where the public confuses the sign and the mark in question (likelihood of direct confusion); (2) where the public makes a connection between the proprietors of the sign and those of the mark and confuses them (likelihood of indirect confusion or association); (3) where the public considers the sign to be similar to the mark and perception of the sign calls to mind the memory of the mark, although the two are not confused (likelihood of association in the strict sense).”
“28 The condition of similarity between the mark and the sign, referred to in article 5(2) of the Directive, requires the existence, in particular, of elements of visual, aural or conceptual similarity: see, in respect of article 5(1)(b) of the Directive, SABEL BV v Puma AG, Rudolf Dassler Sport (Case C-251/95 )[1997] ECR I-6191 , 6224 et seq, para 23 in fine, and Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (Case C-342/97 )[1999] ECR I-3819 , 3841 et seq, paras 25 and 27 in fine. 29 The infringements referred to in article 5(2) of the Directive, where they occur, are the consequence of a certain degree of similarity between the mark and the sign, by virtue of which the relevant section of the public makes a connection between the sign and the mark, that is to say, establishes a link between them even though it does not confuse them: see, to that effect, General Motors Corpn v Yplon SA (Case C-375/97 )[1999] ECR I-5421 , 5445- 5446, para 23. 30 The existence of such a link must, just like a likelihood of confusion in the context of article 5(1)(b) of the Directive, be appreciated globally, taking into account all factors relevant to the circumstances of the case: see, in respect of the likelihood of confusion, SABEL, para 22, and Marca Mode, para 40. 31 The answer to question 2(a) must therefore be that the protection conferred by article 5(2) of the Directive is not conditional on a finding of a degree of similarity between the mark with a reputation and the sign such that there exists a likelihood of confusion between them on the part of the relevant section of the public. It is sufficient for the degree of similarity between the mark with a reputation and the sign to have the effect that the relevant section of the public establishes a link between the sign and the mark.”
“26 The degree of knowledge required must be considered to be reached when the earlier mark is known by a significant part of the public concerned by the products or services covered by that trade mark. 27 In examining whether this condition is fulfilled, the national court must take into consideration all the relevant facts of the case, in particular the market share held by the trade mark, the intensity, geographical extent and duration of its use, and the size of the investment made by the undertaking in promoting it.”
“Q. Can you explain why the packaging and, in particular, the bottle is often given star billing in marketing communications? A. As has been rightfully said, it is the link between the marketing communication, which could be in Vogue, and then the consumer talking at the point of sale. If I can use the word, it provides a bridge, a visual clue, a visual bridge. Q. So the appearance of the bottle and packaging reinforces the emotional responses of the consumer to the brand. Is that fair? A. It is all part of the integrated mix in which all parts have their part to play, correct.” “Q. So this is fair, is it not, the way in which the packaging and bottle are advertised become part of the reputation of the prestige fine fragrance? A. They become part of the integrated brand package, yes.” “Q. Interested consumers remember the packaging of their favourite fragrance, do they not? A. Quite intimately. Q. Because the bottle is not just some throwaway object? A. They are, as you well know, collectible items. Q. Indeed. It is a decorative item in itself and consumers will remember it and associate it with their perfume? A. That is correct.”
“As to unfair advantage, which is in issue here since that was the condition for the rejection of the mark applied for, that is taken when another undertaking exploits the distinctive character or repute of the earlier mark to the benefit of its own marketing efforts. In that situation that undertaking effectively uses the renowned mark as a vehicle for generating consumer interest in its own products. The advantage for the third party arises in the substantial saving on investment in promotion and publicity for its own goods, since it is able to "free ride" on that already undertaken by the earlier reputed mark. It is unfair since the reward for the costs of promoting, maintaining and enhancing a particular trade mark should belong to the owner of the earlier trade mark in question.”
“41 The message incorporated into the trade mark, whether it is informative or symbolic, may refer to the product's qualities, or indeed to intangible values such as luxury, lifestyle, exclusivity, adventure, youth, etc. It may result from the qualities of the product or service for which it is used, but also from its proprietor's reputation or other elements based on the particular presentation of the product or service or on the exclusivity of sales networks…. 42 Hence, once an image associated with a trade mark which has a reputation has been shown to exist, the fact that the contested sign is detrimental to this image, must still be demonstrated. 43 It must, therefore, be shown that the trade mark is sullied or debased by its association with something unseemly. This may happen when the applied for trade mark, to which the mark with reputation may be associated, is used, on the one hand, in an unpleasant, obscene or degrading context or, on the other hand, in a context which is not inherently unpleasant but which proves to be incompatible with the trade mark's image. In all cases, there is a comparison which is injurious to the trademark's image and what is known in English as dilution by tarnishment.”
“the concept of detriment to the repute of a trade mark, often referred to as degradation or tarnishment of the mark, describes the situation where …the goods for which the infringing sign is used appeal to the public's senses in such a way that the trade mark's power of attraction is affected.”
“[The advertisement] does not take unfair advantage of the reputation of a trade mark, trade name or other distinguishing marks of a competitor or of the designation of origin of competing products.”
“A registered trade mark is not infringed by— (a) the use by a person of his own name or address, (b) the use of indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services, or (c) the use of the trade mark where it is necessary to indicate the intended purpose of a product or service (in particular, as accessories or spare parts), provided the use is in accordance with honest practices in industrial or commercial matters.” provided the use is in accordance with honest practices in industrial or commercial matters.”
“five characteristics which must be present in order to create a valid cause of action for passing off: (1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.”
“The law of passing off can be summarised in one short general proposition -- no man may pass off his goods as those of another. More specifically, it may be expressed in terms of the elements which the plaintiff in such an action has to prove in order to succeed. These are three in number. First, he must establish a goodwill or reputation attached to the goods or services which he supplies in the mind of the purchasing public by association with the identifying "get-up" (whether it consists simply of a brand name or a trade description, or the individual features of labelling or packaging) under which his particular goods or services are offered to the public, such that the get-up is recognised by the public as distinctive specifically of the plaintiff's goods or services. Secondly, he must demonstrate a misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by him are the goods or services of the plaintiff. Whether the public is aware of the plaintiff's identity as the manufacturer or supplier of the goods or services is immaterial, as long as they are identified with a particular source which is in fact the plaintiff. For example, if the public is accustomed to rely upon a particular brand name in purchasing goods of a particular description, it matters not at all that there is little or no public awareness of the identity of the proprietor of the brand name. Thirdly, he must demonstrate that he suffers or, in a quia timet action, that he is likely to suffer damage by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the plaintiff.”
“[70] I realise that there was no appeal on the conclusion reached by the judge on the cause of action traditionally called passing off, perhaps best referred to as unfair competition. However I am not convinced that his reasoning was correct. The traditional form of passing off as enunciated in such cases as Reddaway v Banham [1896] A.C. 199 is no longer definitive of the ambit of the cause of action. [71] As Cross J. said in Vine Products Ltd v Mackenzie & Co Ltd [1969] R.P.C. 1 of the decision in the Spanish Champagne cases (Bollinger J. v Costa Brava Wine Coy. Ltd [1960] R.P.C. 16 and [1961] R.P.C. 116): "A man who does not know where Champagne comes from can have not the slightest reason for thinking that a bottle labelled 'Spanish Champagne' contains a wine produced in France. But what he may very well think is that he is buying the genuine article--real Champagne-and that, I have no doubt, was the sort of deception which the judge had in mind. He thought, as I read his judgment, that if people were allowed to call sparkling wine not produced in Champagne 'Champagne,' even though preceded by an adjective denoting the country of origin, the distinction between genuine Champagne and 'champagne type wines produced elsewhere would become blurred; that the word 'Champagne' would come gradually to mean no more than 'sparkling wine;' and that the part of the plaintiff's goodwill which consisted in the name would be diluted and gradually destroyed. If I may say so without impertinence I agree entirely with the decision in the Spanish Champagne case--but as I see it uncovered a piece of common law or equity which had till then escaped notice--for in such a case there is not, in any ordinary sense, any representation that the goods of the defendant are the goods of the plaintiffs, and evidence that no-one has been confused or deceived in that way is quite beside the mark. In truth the decision went beyond the well-trodden paths of passing-off into the unmapped area of 'unfair trading' or ' unlawful competition'."”
“At the heart of passing off lies deception or its likelihood, deception of the ultimate consumer in particular. Over the years passing off has developed from the classic case of the defendant selling his goods as and for those of the plaintiff to cover other kinds of deception, e.g. that the defendant's goods are the same as those of the plaintiff when they are not, e.g. Combe International Ltd v. Scholl (UK) Ltd [1980] R.P.C. 1; or that the defendant's goods are the same as goods sold by a class of persons of which the plaintiff is a member when they are not, e.g. Warnink (Erven) Besloten Vennootschap v. J. Townend Sons Ltd [1980] R.P.C. 29. Never has the tort shown even a slight tendency to stray beyond cases of deception. Were it to do so it would enter the field of honest competition, declared unlawful for some reason other than deceptiveness. Why there should be any such reason I cannot imagine. It would serve only to stifle competition.”
“In my view there can be discerned from the cases a jurisdiction to grant injunctive relief where a defendant is equipped with or is intending to equip another with an instrument of fraud. Whether any name is an instrument of fraud will depend upon all the circumstances. A name which will, by reason of its similarity to the name of another, inherently lead to passing off is such an instrument. If it would not inherently lead to passing off, it does not follow that it is not an instrument of fraud. The court should consider the similarity of the names, the intention of the defendant, the type of trade and all the surrounding circumstances. If it be the intention of the defendant to appropriate the goodwill of another or enable others to do so, I can see no reason why the court should not infer that it will happen, even if there is a possibility that such an appropriation would not take place. If, taking all the circumstances into account the court should conclude that the name was produced to enable passing off, is adapted to be used for passing off and, if used, is likely to be fraudulently used, an injunction will be appropriate. It follows that a court will intervene by way of injunction in passing off cases in three types of case. First, where there is passing off established or it is threatened. Second, where the defendant is a joint tortfeasor with another in passing off either actual or threatened. Third, where the defendant has equipped himself with or intends to equip another with an instrument of fraud. This third type is probably a mere quia timet action.”
“It was contended, that the acts of the defendant enabled his wholesale customers to show these documents to their own retail customers, for the purpose of passing off the goods bought from the defendant as the plaintiffs' manufacture. The answer is, that, unless the documents were fabricated with a view to such a fraudulent use of them, or unless they were in themselves of such a nature as to suggest, or readily and easily lend themselves to, such a fraud, (which in my opinion they were not), the supposed consequence is too remote, speculative, and improbable to be imputed to the defendant, or to be a ground for the interference of a court of justice with the course of the defendant's business. There is no evidence that, in point of fact, any such use was ever made of them. The 'directions for use' spoke unmistakably of 'Frister and Rossmann's shuttle sewing machine;' and no one, however careless, could read, in that document, the words 'on Singer's improved system' without seeing and understanding their context.”
“I believe, when Chitty J. referred to the “means of deceiving the ultimate purchaser,” he had in mind a name or a get-up which made a false representation. That was the instrument of fraud. He could not have contemplated that a manufacturer of goods which did not themselves make a false representation was liable for the fraud of a retailer. For example a wine producer cannot be liable for passing off if a waiter covers a bottle with a cloth and serves it as champagne when it is not. In any case, the suggestion that a manufacturer of goods, which did not by their get-up make a false representation, would be liable for the passing off was rejected in Payton & Co. Ltd. v. Snelling, Lampard & Co. Ltd. [1901] A.C. 308 and in subsequent cases.”