LES Annual Conference What’s New at the UK Trade Marks Registry? Ruth Annand June, 2004

New Trade Mark Rules Opposition Cooling off Preliminary view Statement of use Invalidity Proof of use Appeal AP to decide appeal on the papers

DOUBLEMINT Practice – s. 3(1)(c) Is the TM likely to serve a descriptive purpose in trade? New uses BABY-DRY covers unusual juxtapositions and omissions S. 3(1)(c) and 3(1)(b) are independent grounds

Distinctive Character – s. 3(1)(b) Non-descriptive not necessarily distinctive Mark must identify origin Effect of third party use Public perception of TM c.f. goods or services Origin specific or neutral Average consumer test

Registration Refused MEZZANINE – catering and entertainment QUICK WASH ACTION – detergents, fabric softeners GO COOK! – foodstuffs HOLIDAY TEAM – travel agency MATERNITY – jewellery YOU CAN DO IT – financial services

ELIZABETH EMANUEL 1 st reference by AP to ECJ Arts. 3(1)(g) and 12(2)(b) Directive Is TM liable to deceive if following assignment public wrongly believe X involved in design and making of goods?

Conflict Between Pharmaceutical Marks Higher or lower threshold of confusion? No special rules Stable confusion Examples OROPRAM/SEROPRAM EPISTAT/EPTISET EVARISE/EVONISE HUMICADE/REMICADE

House Marks CAMORIS/AVON COMORES Public would perceive AVON as a house mark CAMORIS and COMORES similar Likelihood of confusion made out MALTIN POLAR/POLAR ELVEDEN IT’S OUR NATURE/IT’S IN OUR NATURE

Scope of Enquiry for Sections 5(4)(a) and 3(6) Application for FAIRLIGHT for tobacco and cigarettes Opposed by Rothmans Applicant to use FAIRLIGHT with get up deceptively similar to Rothman’s King Size cigarette pack Reference by Appointed Person to High Court at request of Registry

POLICE Non-use Qualitative or quantitative test? Non-token, small scale use may suffice Size of undertaking may be relevant La Mer

LES Annual Conference 2004 What’s New from the UK Trade Marks Registry?