Trademarks, Designs, Logos

5 February 2008

By Michael Coyle

The Trade Marks Act (TMA 1994), the Directive and the Regulation contain parallel provisions. The TMA 1994 must, so far as possible, be interpreted in accordance with the Directive, and the relevant provisions of the Directive conform to those of the Regulation.Community trade marks are governed by the Regulation. It is convenient and appropriate, therefore, in the present case to refer principally to TMA 1994 (for the UK Mark) and the Regulation (for the CTM), with reference to the Directive only where necessary.

Section one of the TMA refers to 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.

Section 3 of the TM deals with those marks whch shall not be registered

signs which do not satisfy the requirements of section 1(1)

trade marks which are devoid of any distinctive character

trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of trade:

Provided that, a trade mark shall not be refused registration if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.

In trade mark infringement cases, when the defendant counterclaims for a declaration of invalidity, it is necessary for us to deal with infringement first, and then invalidity. It is justified by the principle that, once registered, a trade mark is presumed to be valid (TMA 1994 s.72) and is assumed by the court to have been in use and to have developed a reputation and goodwill for the specification of goods for which it is registered

The essential function of a trademark is to guarantee the identity of the origin of the marked product or service to the consumer or end-user by enabling him, without any possibility of confusion, to distinguish that product or service from others which have another origin and that, for the trade mark to be able to fulfil its essential role in the system of undistorted competition which the EC Treaty seeks

Distinctiveness must be assessed through the eye of the average consumer.

Michael Coyle is a solicitor advocate who specialises in information technology law and intellectual property law.