Trademarks [TM] Cont’d

I Campbell-Andries

Aim D-To identify emerging issues of new technologies within Trademarks:

Emerging Technologies
“Just a couple of decades ago, companies looking to reach a national audience would have to
spend millions on television and print advertising, direct mail or catalogues. Reaching a global
audience was unthinkable for all but the largest multinational brands. All that has changed.
Today, virtually any brand owner, large or small, can reach customers and prospects around the
world with minimal investment. The barriers to market entry have not merely been lowered –
they have been obliterated.
The Internet, social media, digital streaming media and mobile broadband networks and
smart devices have ushered in a new era of real-time, unfiltered, highly personalised, multi-
channel communications that are literally rewriting the rules of brand management and
marketing. They have also given rise to new threats that are forcing brand owners and their IP
counsel to rethink how they view the challenge of protecting their brands. Fortunately, these
same technologies have given brand owners and IP professionals new tools for managing these
risks.”1

“Trademark infringement in online advertising and marketing:

In the digital era, trademark infringement in online advertising and marketing presents
substantial issues. Many influencers and marketers may abuse trademarks without consent or
endorsement agreements. It entails the unauthorized usage of trademarked names, logos, slogans,
or other protected components in online ads, promoted links, keyword targeting, affiliate
marketing, and social media advertising. Competitors may misuse trademarks in their
advertisements, diverting consumers and generating confusion. Another way is by keyword
targeting; this may activate advertising based on trademarked phrases even when the trademark
is not shown. Brand uniqueness may be diluted, and unauthorized affiliates and brand hijackers
might mislead customers.
Cybersquatting and domain name disputes
The act of registering or utilizing domain names that are identical or confusingly similar to
recognized trademarks to benefit from their goodwill is called "cybersquatting." It is the
unauthorized use of someone else's trademark in a domain name, usually to sell the domain to
the legitimate trademark owner or profit off the brand's reputation.Domain name disputes occur
when trademark owners attempt to safeguard their rights by contesting the registration or use of a
domain name that infringes on their trademark. This is done to make a profit by selling the
domain name to the original brand or service owner. Sometimes a person registers a name with
the intention of selling it to the highest bidder.
Trademark dilution in the age of social media

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The unauthorized use and/or application for a trademark likely to weaken or impair a renowned
mark is referred to as "trademark dilution." In contrast to trademark infringement, trademark
dilution may not always include the unauthorized use of a mark in connection with goods or
services that are confusingly similar to those supplied in connection with the renowned mark.
Most nations recognize some sort of trademark dilution. However, the idea and the
accompanying rules and penalties differ from jurisdiction to jurisdiction. Nevertheless, the
United States, the European Union, South Africa, India, Japan, and numerous Central and South
American nations officially recognize trademark dilution. To be diluted, a trademark must be
well-known. As per US standards, a mark must be widely recognized by the general consumer
population. However, in most nations, fame is decided on a case-by-case basis by courts and
trademark authorities. Secondly, the unauthorized use must likely erode the famous mark's
capacity to identify and differentiate the famous products or services, or it must tarnish the
famous mark. The owner of a famous mark needs only demonstrate the possibility of dilution,
not actual dilution.”2
Counterfeiting on the rise

“Another area of growing risk for brands is counterfeiting. According to the International Anti-
Counterfeiting Coalition, counterfeiting has increased by more than 10,000% over the past 20
years, from an estimated $5 billion in annual revenues in the early 1980s to $600 billion in 2012.
The Internet, social media and other online channels have played a major role is this growth.
Instead of selling fake goods on a street corner, counterfeiters today are sophisticated, marketing
their wares via online auction sites or websites that look like established companies selling
authentic brands. Counterfeiters particularly target luxury goods and pose real risk to some of the
world’s best-known brands.
Counterfeiting may become even more pervasive thanks to the emergence of three-
dimensional (3D) printing technologies. As the cost of this technology drops and availability
increases, virtually anyone with a desktop 3D printer will be able to produce all kinds of
convincing counterfeit goods quickly and cheaply. This technology can also be used to ‘knock
off’ a product’s distinctive 3D packaging or trade dress to deceive consumers.

The mobile revolution

Another dimension of technology that affects brand owners is the ubiquity of mobile smart
devices and the accompanying app explosion. This has been a boon for brand owners, giving
them an effective way to engage with customers. But it has also created tremendous
opportunities for criminals. For those with the right programming skills, creating an app that
infringes on a brand can be even easier than creating a website. This is driving a rapid rise in
apps that use trademarks without authorisation, that pretend to be related to branded products or

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ers%20to
services or that enable sales of counterfeit merchandise – as well as phishing apps designed to
steal personal information and brand abuse in other forms.”3

Aim E- To ascertain how trademark infringement occurs:

Trademark infringement is defined as the unauthorized use of a trademark or service mark. This
use can be in connection with goods or services and may lead to confusion, deception, or a
misunderstanding about the actual company a product or service came from.4 Other scholars
notes, Trademark infringement occurs when someone uses a trademark in a way that violates the
exclusive rights of the trademark owner.5
See Guyana’s Trademark Act Cap 90:01 arts (4-10) for Effect of registration and the action for
infringement:
- 4 No action for infringement of unregistered Trademark
- 5 Registration to be in respect of particular goods.
- 6 Right given by registration in Part A, and infringement thereof.
- 7 Right given by registration in Part B, and infringement thereof.
- 8 Infringement by breach of certain restrictions.
- 9 Saving for vested right
- 10 Saving for use of name, address, or description of goods.
To prevail on a claim of trademark infringement, a plaintiff must establish that:
1) Its mark is valid, legally protected and owned
Mark must be valid (legally protected via registration due to it being inherently distinctive) and
is owned by the (person/ proprietor) listed on the registration.

Reminder that a trademark, in order to function, must be distinctive. A sign that is not distinctive
cannot help the consumer to identify the goods of his choice. The distinctiveness of a sign is not
an absolute and unchangeable factor. Depending on the steps taken by the user of the sign or
third parties, it can be acquired or increased or even lost.

In the Lewis Hamilton case [2020]it was notes that Common names mean tricky trade
marks.This case highlights the difficulties of using common surnames as trade marks.
Invariably there are others out there using the same or similar names and acquiring rights
which can make it difficult to secure protection and make your brand distinctive. It also
highlights the importance of conducting searches to see if your mark is free to use and
register and acting quickly to secure registration. Lewis Hamilton may have won a record

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https://www.winston.com/en/legal-glossary/trademark-
infringement#:~:text=Trademark%20infringement%20is%20defined%20as,product%20or%20service%20came%20f
rom.
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 equaling seventh Formula 1 world title in 2020, but he failed to cancel a registration for
the trade mark HAMILTON. The company responsible for Lewis’ IP rights, 44IP
Limited, attempted to register the trade mark LEWIS HAMILTON but found their
application opposed by Hamilton International AG part of the Swiss watch giant
SWATCH. In response 44IP applied to cancel the EU registration for HAMILTON
owned by Hamilton International AG. Hamilton International AG had EU registrations
dated 1998 and 2014 and found their 2014 registration under attack. If an EU trade mark
registration has not been used for a continuous period of 5 years after registration it can
be revoked. 44IP claimed that the 2014 registration had been filed for the purpose of
circumventing the requirement to prove use and therefore, had been filed in bad faith.
The claim for bad faith failed as 44IP failed to establish that this was the case. It
was shown that the mark HAMILTON was in use and that there was a genuine
commercial reason for filing a new application in 2014.

“The requirements for what can be registered differ from country to country and this case gives
an insight to how the US Patent and Trade Mark Office view generic terms. Generally speaking,
trade marks are not protectable if they lack distinctive character or are entirely descriptive of the
goods or services for which protection is sought. However, what is deemed ‘distinctive’ can vary
greatly from one country to another. The US generally take a more relaxed view on such terms
when compared to the UK and EU Trade Mark Registries…”6

USPTO v Booking.com [2020] The well-known hotel booking website, Booking.com, sought
to register ‘Booking.com’ as a trade mark. The USPTO rejected the application on the basis
that the term ‘booking’ was generic for the services and did not serve the function of a trade
mark, which is to designate the origin of the services. Furthermore, the USPTO argued that
the addition of a top level domain name, such as ‘.com,’ to a generic term should result in a
generic combination and they requested that a ‘per se’ rule be created. Public perception
matters- In the decision, written by the late Ruth Bader Ginsburg, the Court ruled that the
term ‘Booking.com’ has become a term that is not generic as to source for consumers and is
therefore, not generic. This decision supports the principle of ‘acquired distinctiveness,’
which means that non-distinctive terms can become distinctive and protectable by trade mark
registration, if the Applicant can demonstrate that the public perceive the term as an
indication of origin rather than a descriptor, as a result of the use made of that trade mark. If
you are looking to adopt seemingly descriptive or generic brand names it is important to
conduct a trade mark search to ascertain whether the mark has been registered by a third
party before commencing use to avoid falling foul of a trade mark infringement action.

2) Likelihood of deception or confusion in the course of trade

The defendant uses a mark identical with it or so nearly resembling it as to be likely to deceive or
cause confusion in the course of trade (is likely to cause confusion in the minds of consumers
about the source or sponsorship of the goods or services offered under the parties' marks). Court
will consider the degree of similarity between the marks.

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See Red Bull v Big Horn In a battle of hoofed animal logos, Red Bull triumphed in a High Court
Judgement. Big Horn UK Limited had begun selling energy drinks bearing the following (and
quite familiar) logos and get up in 2017: No free riders allowed Whilst the ruling stated that
there was no likelihood of confusion, there were visual and conceptual similarities between the
marks and the public were deemed to be likely to make an association between the trade marks.
Consequently, the judge decided that the similarities were sufficient to ‘enable Big Horn to free-
ride on the reputation of Red Bull.’Where brand owners can establish a significant reputation in
their trade mark rights they can enjoy an enhanced level of protection that allows them to prevent
use of third party marks that give other businesses an advantage as a result of association, even
where the public are unlikely to be confused. Red Bull have such a reputation and consequently
Big Horn were deemed to infringe their trade mark rights. See heading other cases for more
details. See A&H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198 (3rd Cir.
2000)):
See also US case Interpace Corp. v. Lapp, Inc., 721 F.2d 460 (3d Cir. 1983) Factors relevant to a
determination of likelihood of confusion include:

1. the strength of the trademark owner's mark;

2. the degree of similarity between the trademark owner's mark and the allegedly infringing
mark;
3. evidence of actual consumer confusion;
4. the marketing channels used;
5. the type of goods involved and the degree of care likely to be exercised by the purchaser;
6. the alleged infringer's intent in selecting the mark;
7. other facts showing that the consuming public is likely to expect the trademark owner to
manufacture a product in the alleged infringer's market, or is likely to expand into that
market.

The Lapp test is a non-exhaustive list of factors to be considered in determining whether

there is a likelihood of confusion between marks.

3) Use in Commerce
In a manner that renders the use of the mark in an advertising circular or other
advertisement issued to the public importing a reference that some person either as a
registered user or proprietor has a right to use the trademark or goods in the course of
trade. The defendant used the same or a similar mark in commerce in connection with the
sale or advertising of goods or services without the plaintiff's consent.
Note Guyana’s TM Act does not allow a person to “institute any proceeding to prevent, or to
recover damages for, the infringement of an unregistered trade mark, but nothing in this Act
shall be deemed to affect the rights of action against any person for passing off goods as the
goods of another person or the remedies in respect thereof.”7 More so, if the trademark is
unregistered but is so well -known it can be protected. See Defensive registration of well-
known trademark art (29) Guyana Trade Mark Act.

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Guyana’s Trademark Act Cap 90:01 art (4)
 Guyana’s Act does not go into detail on the passing off exception, however, under the UK
Trademark act it notes: The Intellectual Property Office states that passing off an unregistered
trademark can depend on the following circumstances:

• Whether, and to what extent, the owner of the unregistered trade mark was trading under the
name at the time the later trade mark was in use.
• Whether the two trademarks are sufficiently similar, with regard to their fields of trade.
• The extent of the damage that such confusion would cause to the goodwill in the business of
the initial unregistered trade mark user.”8

Other factors that courts example in the US typically consider include how and where the parties'
goods or services are advertised, marketed, and sold; the purchasing conditions; the range of
prospective purchasers of the goods or services; whether there is any evidence of actual
confusion caused by the allegedly infringing mark; the defendant's intent in adopting its mark;
and the strength of the plaintiff's mark. In addition to claiming likelihood of confusion, a
trademark owner may claim trademark "dilution," asserting that it owns a famous mark and the
use of your mark diminishes the strength or value of the trademark owner's mark by "blurring"
the mark's distinctiveness or "tarnishing" the mark's image by connecting it to something
distasteful or objectionable-even if there is no likelihood of confusion.
If the trademark owner is able to prove infringement, available remedies may include the
following:
• a court order (injunction) that the defendant stop using the accused mark;
• an order requiring the destruction or forfeiture of infringing articles;
• monetary relief, including defendant's profits, any damages sustained by the plaintiff, and
the costs of the action; and
• an order that the defendant, in certain cases, pay the plaintiffs' attorneys' fees.

Other cases:
“Montres Breguet SA v Samsung Electronics Co. Ltd [2022] EWHC 1895 (Ch) (July 2022)

Samsung was being held directly liable for infringing several registered trade marks owned by
watchmakers, where consumers had downloaded the digital watch face apps that were created by
a third-party developer from Samsung’s online app store to its smart watches. Samsung
submitted that it provided a platform in the form of a store in which third party app developers
provided apps.
It was concluded that Samsung had infringed several trade marks, therefore the claim was
allowed. The claimant was granted an injunction restraining the defendant from further
infringement. In relation to costs Samsung were ordered to pay 85% of the claimants’ costs.The
Judge did grant permission to appeal in relation to – (a) the correct approach for app stores in
relation to Article 14 of the e-Commerce Directive and (b) the issues around “use” specifically
whether there was an error of law in taking the “look at everything” approach in determining
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whether there was use by Samsung in the course of trade.This could be an important case as
platforms such as Samsung have been able to benefit from using its own platforms to potentially
benefit from infringement against rightsholders.

Societe des Produits Nestle SA v Cadbury UK Ltd [2022] EWHC1671 (Ch) (July 2022)

Nestle appealed against a hearing officer’s decision to register a shade of purple (Pantone
2685C) as a trade mark for chocolate on Cadbury’s application. Cadbury applied to register three
marks in class 30. Nestle opposed all three marks on the grounds that the marks did not meet the
requirements of a sign.The UKIPO held:

Mark 362 – Applied to the whole surface of the packaging of the goods. This opposition was
dismissed as the wording of the mark was found to be clear and precise.

Mark 361 – Applied to the packaging of the goods. This was rejected by the UKIPO as it was
deemed ambiguous.

Mark 822 – This mark was rejected as it was deemed as more ambiguous than mark 361 and
representing a multiplicity of forms without explaining how the colour is used at all. However,
on appeal the registration was upheld.

It can be suggested that the UK should be more open to register colour marks and other non-
traditional marks. However, it is unlikely that this case will be sufficient enough to change the
outlook on the matter as all the marks had already acquired distinctiveness.

3.Standard International Management v EUIPO Case T-768/20 (July 2022)

This case addresses a key issue regarding hotel and leisure brands within the EU with the
physical hotel being outside the EU jurisdiction. In this case Standard International Management
LLC had a trade mark registered in the EU. Asia Standard Management Services Ltd applied for
the mark to be revoked as it was not put to genuine use in the EU. The Cancellation Division and
the Board of Appeal held that the mark was not put into genuine use because the hotel services
were outside of the EU regardless of advertisements and customers. However, on appeal the
General Court said that it would be wrong to conclude that the mark could not be put to genuine
use in the EU because the physical hotel services are in the U.S. Therefore, the court considered
evidence of advertisement and customers in the EU.
This decision provides non-EU hotel owners with significant comfort and control
regarding EU trade marks if they have significant customers in the EU along with targeted
advertising and branding.

SkyKick UK Ltd (Appellants) v Sky Ltd (Respondents) UKSC 2021/0181 (July 2022)

Sky issued proceedings against cloud management and software provider, SkyKick. Sky claimed
that that SkyKick were infringing on their EU trade marks. SkyKick disputed the claims and
lodged a counterclaim to the High Court. The court concluded that Sky registered the trade
marks in bad faith due to broad categories used and that they had no intention of ever using the
trade marks in those categories. Therefore, the marks were partially invalid.

Sky appealed the decision. The Court of Appeal said that whilst Sky’s specifications of the
marks were broad and there was no real prospect of using the mark, it was held that neither of
these were indications of bad faith. Consequently, the High Court’s decision was overturned. The
case is now due to proceed to the Supreme Court as SkyKick attempt to overturn the decision
made by the Court of Appeal. The Supreme Court’s decision will have a huge impact as a
reversal of the decision would mean that Sky may lose their monopoly on ‘computer software’
trade marks.

Monster Energy Company v Red Bull GmbH [2022] EWHC 2155 (Ch) (August 2022)

Both Monster Energy and Red Bull were involved in a trade mark dispute. Monster Energy have
attempted to register the mark ‘Red Dawg’ under covering non-alcoholic beverages (Class 32).
At the original hearing Red Bull made a successful opposition of the mark on the basis that the
Red Bull mark had a reputation in the energy drink market, under S.5(3) Trade Marks Act 1994.
On appeal, Monster Energy claimed that there was no evidence of ‘free riding’ or to take
advantage of the Red Bull mark. Moreover, Monster Energy further argued that Red Bull were
required to show that there was a serious risk of unfair advantage and that due to Monster
Energy’s stature and reputation of their global brand, there was no need for them to seek an
unfair advantage from the similarities of the two marks.
However, the judge was not persuaded by this argument as based on the analysis that was
undertaken, there was an implicit assumption that Monster Energy chose the mark ‘Red Dawg’
for the purpose of influencing consumer behaviour and due to it being similar to the Red Bull
mark, they would see an increase in sales. Therefore, the appeal was dismissed.It can be argued
that this is a highly debateable decision as it essentially gives Red Bull a monopoly in relation to
‘Red’ being used for non-alcoholic drinks.

Lidl Great Britain v Tesco Stores [2022] EWCA Civ 1433 (November 2022)

Since September 2020 Tesco has been using a logo that consists of yellow circle with a blue
background with the words ‘CLUBCARD PRICES’ within the yellow circle. Lidl claims that the
sign used by Tesco constitutes a trade mark infringement as it is allegedly similar to the well-
known Lidl logo which is a registered mark. Tesco have denied that they have infringed the trade
mark and issued a counterclaim for invalidity and revocation of Lidl’s wordless mark on the
grounds of bad faith and non-use as the mark has never been used in the UK in the form that it
was registered for. Lidl applied to the High Court for a strike out application which was
successful, this meant that Tesco could not proceed with their counterclaim of bad faith and the
declaration of invalidity.

Tesco appealed the decision; the Court of Appeal held that the High Court Judge failed to
consider that bad faith is a developing area of law. Moreover, it was decided that the High Court
Judge failed to properly apply the facts that were pleaded in relation to the bad faith
counterclaim. The Court of Appeal concluded that Tesco’s bad faith counterclaim has a real
prospect of success and should not be struck out.

The successful appeal reinstates the counterclaim Tesco had. It will be interesting to see how the
court approach the wordless mark dispute.

Combe International v Dr August Wolff GmbH & Co KG Arzneimittel [2022] EWCA Civ 1562
(November 2022)

Combe claimed that the defendant infringed on their three UK trade marks for VAGISAL with
the use of the mark VAGISAN. The High Court held that not only was there likelihood of
confusion, but the claimants were also able to demonstrate actual confusion.

The defendants appealed the decision however it was rejected. One of the grounds of appeal was
under S.48. which states:

“Where the proprietor of an earlier trade mark or other earlier right has acquiesced for a
continuous period of five years in the use of a registered trade mark in the United
Kingdom, being aware of that use, there shall cease to be any entitlement on the basis of that
earlier trade mark or other right”

The defendant stated that the claimants acquiesced in the use in the UK by the first defendant of
its registered trade mark for the mark VAGISAN for more than 5 years. It was common
knowledge that the claimants had become aware of the registration and use of the VAGISAN
mark by late 2014. However, the Court of Appeal rejected this stating that hat the claimants were
not aware of the use of VAGISAN for a long period during 2015 and 2016, despite keeping a
watch for such use. In those circumstances, it was reasonable for the claimants to assume that
VAGISAN had been withdrawn from the UK market.

This case suggests that if a registered trade mark owner wants to avoid the risk of an action for
infringement being defeated on the basis of a S. 48(1) acquiescence defence, then they need to
bring legal proceedings against the infringer.

Louboutin v Amazon Cases C-148/21 and C-184/21, Court of Justice of the EU (December
2022)

In this case fake, red-soled shoes were being sold by third party vendors on the Amazon
platform, infringing Louboutin’s red sole registered EU trade mark. Louboutin brought
infringement actions against Amazon for the alleged use and sale by Amazon of signs identical
to Louboutin’s registered EU trade mark without their consent.

The CJEU held that an operator of an online marketplace, which integrates its own sales platform
and the sale of third-party goods, can be held liable for third party advertisements that infringe a
third party’s trade mark if the average consumer would be confused as to the origin of the advert.
This can occur when the operator (a) displays offers for its products and its sellers’ products in
the same way side by side; (b) where it places its own logo on its sellers’ products as the
distributor; and (c) where it offers to store and ship the goods of its sellers. Therefore, can be
held directly liable for infringement of its market place sellers.”9

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