The claimants challenged award of a trade mark saying they were owners of many marks incorporating the word ‘Master’ associated with credit, and the applicants mark was too similar to its own.
Held: Applying Davidoff, the words can also be read as extending to goods or services which are identical with or similar to those covered by the registered mark. The Officer had found that in this situation, confusion was unlikely since consumers would be likely to select their service after close scrutiny – it was not a ‘bag of sweets’ case. The decision stood.
Judges:
The Honourable Mr Justice Peter Smith
Citations:
[2004] EWHC 1623 (Ch)
Links:
Statutes:
Trade Marks Act 1994, Council Directive 89/104/EEC 4(4)(a)
Jurisdiction:
England and Wales
Citing:
Cited – Mehdi Norowzian v Arks Ltd and Guinness Brewing Worldwide Limited (No 2) CA 11-Nov-1999
The claimant film artist showed a film to an advertising agency, who did not make use of it, but later appeared to use techniques and styles displayed in the film in subsequent material sold to third parties.
Held: A film was protected as a . .
Cited – Bessant and others v South Cone Incorporated; in re REEF Trade Mark CA 28-May-2002
The Reef pop group applied to register ‘REEF’ for Classes 25 and 26 – e.g. T-shirts, badges, etc. South Cone opposed them as registered proprietors of ‘Reef Brazil’ for the footwear which also was included in Class 25. South’s reputation was . .
Applied – E I Du Pont De Nemours and Company v S T Dupont; Du Pont Trade Mark CA 10-Oct-2003
The court considered the circumstances under which a Hearing Officer’s decision could be reversed on appeal: ‘Those experienced in cases such as these, such as the Hearing Officer, would have known that the sort of evidence normally adduced on . .
Cited – Davidoff et Cle SA and Another v Gofkid Ltd ECJ 9-Jan-2003
The claimant distributed cosmetics and other goods in Germany under the mark ‘Davidoff’, and the defendants used a similar registered mark for their own and similar goods. They sought protection under the directive.
Held: The directive . .
Cited – Adidas-Salomon AG and Another v Fitnessworld Training Ltd ECJ 23-Oct-2003
The claimants had trade marks consisting of three parallel lines of contrasting colour to the underlying garment. They alleged infringement by the use of similar designs with two lines by the defendant. The directive allowed member states to elect . .
Cited – Cobbold v London Borough of Greenwich CA 9-Aug-1999
The tenant had sought an order against the council landlord for failure to repair her dwelling. The defendant appealed refusal of leave to amend the pleadings in anticipation of the trial, now due to start on the following day.
Held: Leave was . .
Cited – General Motors Corporation v Yplon SA ECJ 14-Sep-1999
Europa Article 5(2) of First Council Directive 89/104 concerning trade marks – which extends the protection of a registered trade mark to products or services which are neither identical nor similar to those for . .
Cited – Daimler Chysler AG v Javid Alavi (t/a Merc) ChD 18-Dec-2000
Where a trader was involved in an activity quite outside any activity which might be undertaken by the holder of the registered trade mark, and there was no real likelihood of confusion, the owner of the mark could not claim that the value of his . .
Cited – Intel Corporation v Sihra ChD 2003
The court considered the observations of Pumfrey J in the Chrysler case as requiring proof of real future unfair advantage or detriment and not merely risk, and emphasised both the need for a causal connection between similarity on the one hand and . .
Cited – Sabel BV v Puma AG, Rudolf Dassler Sport ECJ 11-Nov-1997
The test of whether a sign is confusing is how the use of the sign would be perceived by the average consumer of the type of goods in question. ‘The likelihood of confusion must therefore be appreciated globally, taking into account all factors . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 04 October 2022; Ref: scu.198598