Trade Mark Infringement Law Part 2 Landmark cases that shape Trade Marks in the UK

This series of articles examines the legislative framework underpinning trade mark infringement, the conditions under which infringement occurs, and the remedies available to trade mark proprietors. Understanding these principles is vital for businesses to safeguard their intellectual property and navigate potential disputes effectively. By all means, cross-refer to our sister company Trademarkroom.com which files trade marks in the UK and across the world. ( www.trademarkroom.com)

The development of trade mark infringement law in the UK has been significantly influenced by landmark case law, both domestic and from the Court of Justice of the European Union (CJEU). While the UK’s withdrawal from the EU marked a shift towards an independent legal framework, these cases continue to provide essential guidance on interpreting the Trade Marks Act 1994 (TMA). Key rulings have clarified the scope of infringement, the assessment of confusion, and the protection afforded to marks with a reputation.

In this article, we examine pivotal cases that have shaped the interpretation of trade mark infringement under the TMA, focusing on their practical implications for trade mark proprietors and users.

Sabel BV v Puma AG (Case C-251/95)

This foundational case established the principles for assessing the likelihood of confusion under section 10(2) of the TMA. Sabel sought to register a bounding cat device as a trade mark for goods similar to those covered by Puma’s earlier registrations for similar devices. Puma opposed the registration, citing the similarity of the marks and goods.

The Court of Justice of the European Union (CJEU) ruled:

1. Overall Impression Matters:
   • The likelihood of confusion must be assessed by considering the overall impression created by the marks, including their visual, aural, and conceptual similarities.
2. Dominant Components:
   • The assessment should focus on the distinctive and dominant components of the marks, as these are most likely to influence consumer perception.

Trade Mark Infringement Law Practical Implications:

• Trade mark proprietors should ensure their marks have strong distinctive elements to reduce the risk of conflict.
• The case highlights the importance of considering the perception of the average consumer, who may rely on imperfect recollection of marks.

Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (Case C-39/97)

This case clarified the role of distinctiveness in assessing similarity between marks and goods or services. Canon opposed MGM’s registration of the mark “CANNON” for video cassettes, arguing that it conflicted with their “CANON” mark for cameras.

The CJEU held:

1. Distinctive Marks Enjoy Greater Protection:
   • Marks with a high degree of inherent or acquired distinctiveness are entitled to broader protection against similar marks.
2. Similarity Assessment:
   • The court must consider the similarity of goods or services, as well as the likelihood of confusion arising from the distinctiveness of the earlier mark.

Trade Mark Infringement Law Practical Implications:

• Proprietors of highly distinctive marks, such as those with strong reputations or unique features, are better positioned to challenge similar marks.
• Businesses should evaluate the distinctiveness of their marks during registration to ensure robust protection.

Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (Case C-342/97)

This case elaborated on the global assessment of likelihood of confusion, emphasising the need to consider all relevant factors, including the mark’s distinctiveness and the similarity of goods or services.

The CJEU outlined:

1. Increased Confusion Risk for Distinctive Marks:
   • The more distinctive a trade mark, the greater the likelihood of confusion when a similar mark is used.
2. Consumer Perception:
   • The average consumer, who is reasonably well-informed and observant, plays a central role in determining confusion. However, consumers may still rely on imperfect recollection.

Trade Mark Infringement Law Practical Implications:

• Proprietors should ensure their marks stand out in the market to bolster claims of confusion.
• Businesses accused of infringement must demonstrate clear differentiation in their marks to avoid liability.

British Sugar plc v James Robertson & Sons Ltd [1996] RPC 281

This UK case provided guidance on assessing the similarity of goods or services for infringement claims under section 10(2) of the TMA. British Sugar claimed that Robertson’s use of the mark “TREAT” for a dessert sauce infringed their “TREAT” mark for a toffee spread.

The High Court identified six key factors for assessing similarity:

1. Uses:
   • The purpose for which the goods or services are used.
2. Users:
   • The respective users of the goods or services.
3. Nature:
   • The physical nature of the goods.
4. Trade Channels:
   • The channels through which the goods are marketed and distributed.
5. Proximity:
   • The location of goods in retail settings, such as whether they are on the same shelves.
6. Competition:
   • The extent to which the goods compete with each other.

Outcome:

• The court found the goods dissimilar, as the spread and dessert sauce had different uses, users, and retail placements.

Trade Mark Infringement Law Practical Implications:

• This case emphasises the need for a detailed, fact-based analysis when comparing goods or services in infringement disputes.
• Businesses should be cautious about using marks in markets that overlap with those of registered trade marks.

Wagamama Ltd v City Centre Restaurants plc [1995] FSR 713

This case addressed the concept of “association” under section 10(2). Wagamama opposed the use of the name “Rajamama” for an Indian restaurant, arguing that it infringed their “WAGAMAMA” mark for noodle restaurants.

The High Court ruled:

1. Association Alone is Insufficient:
   • Mere association, where one mark calls another to mind, is not enough to prove infringement. There must be actual confusion as to the origin of goods or services.
2. Likelihood of Confusion:
   • The court found a likelihood of confusion due to the visual and phonetic similarities between the marks.

Trade Mark Infringement Law Practical Implications:

• Businesses must avoid marks that merely evoke well-known brands, as this may lead to actionable confusion.
• Proprietors should document instances of consumer confusion to strengthen their claims.

Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2014] EWHC 185 (Ch)

This case addressed “wrong way round” confusion, where consumers mistakenly associate the claimant’s business with the defendant’s. Comic Enterprises, owner of “The Glee Club” comedy venues, alleged that Fox’s TV show “Glee” infringed their trade mark.

The High Court held:

1. Actionable Confusion:
   • Wrong way round confusion is actionable if it impacts the claimant’s business. In this case, consumers believed “The Glee Club” was connected to the TV show, discouraging attendance.
2. Likelihood of Confusion:
   • Evidence of consumer confusion was critical in establishing infringement.

Trade Mark Infringement Law Practical Implications:

• Businesses should monitor consumer perceptions of their brand to identify and address confusion.
• Proprietors should gather evidence of confusion, such as customer complaints or market surveys, to support infringement claims.

Interflora Inc v Marks & Spencer plc [2014] EWCA Civ 1403

This case clarified the concept of “initial interest confusion” in the context of keyword advertising. Interflora alleged that Marks & Spencer’s use of “Interflora” as a Google AdWords keyword infringed their trade mark.

The Court of Appeal ruled:

1. Initial Interest Confusion Rejected:
   • The US-derived doctrine of initial interest confusion, where consumers are momentarily misled before purchase, has no place in UK trade mark law.
2. Adverse Effect on Origin Function:
   • The key issue is whether the use of the trade mark adversely affects its ability to indicate the origin of goods or services.

Trade Mark Infringement Law Practical Implications:

• Businesses using competitors’ trade marks in online advertising must ensure their use does not mislead consumers.
• Proprietors should monitor online marketing practices to prevent unauthorized use of their marks.

Conclusion

These landmark cases have played a pivotal role in shaping the interpretation and application of trade mark infringement law in the UK. By providing clarity on key principles such as likelihood of confusion, distinctiveness, and actionable harm, they offer valuable guidance for both trade mark proprietors and businesses navigating potential conflicts. In Part 3, we will explore the evolving role of reputation in trade mark infringement and its practical implications for enforcement.

Sources

• https://curia.europa.eu/juris/liste.jsf?num=C-251/95
• https://curia.europa.eu/juris/liste.jsf?num=C-39/97
• https://www.ipo.gov.uk/c34297.pdf
• http://www.peteryu.com/intip_msu/britishsugar.pdf

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