Magoosh GRE

Trademark law draft

| March 5, 2015

Fashion brands are often pitched at the centre of this ongoing struggle between competing companies, multinationals and street vendors alike, and individuals: the international counterfeiting fashion industry was reported in 2005 to be worth €500 billion and can justifiably be said to be undermining the protection which UK Trademark law offers by flooding markets with cheap counterfeit goods which are in one sense undetectable by the law. Are fashion brands right to think that Trade Mark law cannot keep up and take the law into their own hands? The counterfeiting industry is, however, the extreme end of Trade Mark violation: what of two retailers who genuinely believe they are selling a unique and distinct product, one of which is already registered? The distinction here is sometimes extremely subtle and this dissertation will articulate these nuanced positions. The regulatory regime in the UK does provide a measure of protection to brands, but it is wise to recount Lewison J’s observations:
“English law does not, however, protect brands as such. It will protect good will (via the law of passing off); trade marks (via trade mark infringement); the use of particular words, sounds and images (via the law of copyright); and configurations of articles (via the law of unregistered design right) and so on. But to the extent that a brand is greater than the sum of the parts that English law will protect; it is defenceless against the chill wind of competition” .
Introduction
Alligator and Crocodile . A crocodile which faces left and a crocodile which faces right . “Criminal” and “Criminal Damage” . Two bounding felines . “Amaze Collection” and “Ama Zing” . “The Gunners” and “Arsenal Gunners” . By such finely nuanced words and concepts the battleground of Trade Marks in the fashion industry is defined. The need to protect products stems from the industrial revolution and has been swept along by the current of modern capitalism which has seen the field of Trade Mark registration encroach into almost every field of human industry covering sounds, smells and even 3-dimensional images.

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Fashion brands are often pitched at the centre of this ongoing struggle between competing companies, multinationals and street vendors alike, and individuals: the international counterfeiting fashion industry was reported in 2005 to be worth €500 billion and can justifiably be said to be undermining the protection which UK Trademark law offers by flooding markets with cheap counterfeit goods which are in one sense undetectable by the law. Are fashion brands right to think that Trade Mark law cannot keep up and take the law into their own hands? The counterfeiting industry is, however, the extreme end of Trade Mark violation: what of two retailers who genuinely believe they are selling a unique and distinct product, one of which is already registered? The distinction here is sometimes extremely subtle and this dissertation will articulate these nuanced positions. The regulatory regime in the UK does provide a measure of protection to brands, but it is wise to recount Lewison J’s observations:
“English law does not, however, protect brands as such. It will protect good will (via the law of passing off); trade marks (via trade mark infringement); the use of particular words, sounds and images (via the law of copyright); and configurations of articles (via the law of unregistered design right) and so on. But to the extent that a brand is greater than the sum of the parts that English law will protect; it is defenceless against the chill wind of competition” . cyWithin the context of Lewison J’s definition there are two distinct areas of protection in the modern law of Trade Mark in the UK: the common law action of passing-off in tort and the registration regime under the Trade Mark Act 1994 which both enable the protection and enforcement of rights. This Project will address the application of both of these aspects of Trade Mark law in the UK specifically to the fashion industry. This aspect of trade mark law is a neglected one and a field which deserves closer scrutiny given that the fashion industry contributes £21 billion to the British economy as well as ethical, creative and market justifications for protection . One traditional view of research, adopted by the Harvard School and articulated by Pickering in this field is that the protection afforded to brands effectively creates a monopoly to the detriment of the customer. A recent landmark case from 2010, however, which marked the end of a 4-year legal battle, has ended in victory for a small clothing retailer against an international company, La Chemise Lacoste . This decision can be directly contrasted with the 40-year legal siege which finally came to an end in

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2008 between La Chemise Lacoste v Crocodile International Pte Ltd and recent Lacoste trademark rulings in China.

This project will argue, in light of both recent developments in China and Australia regarding Lacoste and the Chemise Lacoste case itself in the UK, that the UK Trade Mark regime does provide sufficient protection both at common law and at a statutory level from the smallest street vendors to the largest Multi National Corporations and that anti-competitive arguments against trade marks are becoming less relevant: if David can beat Goliath in the landmark fashion law case of the 21st century so far, then surely the law is fulfilling its role? The role of passing-off however, is clearly diminishing as the statutory framework grows and it is possible that when there are no holes left in the Trade Mark Act 1994 this tort will not have a role .
This project will use statute, textbooks, journals and newspaper articles to address the hypothesis that UK trademark law is sufficient enough for the protection of internal disputes but inadequate to deal with the blight of sophisticated international counterfeit operations. The breadth of the scholarship and sources used will be complemented by recent case law to bring the research into 2011. Such a research project can later form the basis forlo_001

further research and study in the field and can be drawn upon in the future for further development and study.
Literature Review
The Development of Trade Mark Law
Cornish and Lleweleyn trace the history of Trade Mark law and note that in 1875 a campaign for a registration system succeeded in the historic Trade Marks Registration Act 1875. Pickering , Bently and Sherman , Torremans and Bainbridge all note the development with Pickering noting that: “the

rtyadvantages of protection by this method are clear: it is no longer necessary to go through the costly and laborious process of proving that a mark has an acquired reputation connected with the plaintiff” . The 1905 Act saw certain advancements upon the advent of registration in 1875, notably making non-use for the previous five years a ground for the mark being removed from the Register, something which is preserved under the Trade Mark Act 1994 s.46(1)(b).
Cornish and Llewelyn also observe that the inter-war years saw an increase in the commercial significance of trade marks by “the spread of production, the growth of a popular press with is immense prospects for advertising, the increase of transnational business in successful products and the consequent need to shield high-priced markets against parallel imports from elsewhere” . There were Acts in 1883, 1905 and 1919 but the key Act, foreshadowing the current regime, was the 1938 Trade Marks Act. This Act, as Bently and Sherman note, allowed the assignment of marks separate from the good will of the business. The criteria for registration under this Act has been widely criticised as being too complex and unduly restrictive , plagued by obscure drafting and kyaunclear over the consequences for non-registration . Several amending acts were subsequently passed in the UK but these only added to the difficulties in the interpretation of the 1938 Act. The 1984 Trade Marks (Amendment) Act which tried to incorporate service marks into the regime was “clumsy” according to Bainbridge and Torremans .
External pressures overtook the 1938 Act and its amendments and soon the case for a regime more in line with European countries was irresistible. Indeed, the EC directive on the harmonisation of trade mark law has been hailed as the single largest driving force behind the 1994 Act . Frank Schechter, the leading historian of trade marks, is also seen as a precursor to the 1994 Act. He argued, radically at the time, for a single rational basis for trade marks and, such marks being a species of property which necessarily protects both similar and dissimilar marks, the only reason for protection is preservation of the unique nature of the mark .
The modern regime is enshrined in the 1994 Trade Mark Act which, in the words of Bainbridge: “brought a welcome breath of fresh air to trade mark law…Gone is wasthe obscure drafting of the 1938 Act.” Under the 1994 Act the significant changes were that the criteria for registration were relaxed and broadened, the scope of protection for registration was enlarged and the previous formalities eradicated. Such formalities were for so long a barrier to transnational businesses who, in the words of Cornish and Llewelyn, “want simple, certain and cheap registration without having to apply country by country using systems encrusted with individual idiosyncracies” .
Trade Mark for fashion brands: an exposition of relevant case law (1) passing off cases
The earliest case which incorporates both fashion and Trade Mark law is Southern v How , a case from 1618 which involved two clothes makers, one putting the others mark on his inferior product and thus giving rise to a common law action in deceit. The modern common law tort of passing off is quite different, being comprised of three elements as advocated by contemporary opinion: “that confusion being generated by the activity of a trader in causing his goods or services and/or their presentation to become confused with those of the claimant, and that protection being afforded by the grant of a right of action daivdto the trader whose economic interests and trading goodwill are harmed by the confusion” .
The first significant fashion case under passing off comes in 1988 in Unidoor v Marks & Spencer where M&S were marketing t-shirts with the slogan “COAST TO COAST” underneath the words “Marine girl”. The plaintiffs in this action had a part B trademark for “Coast to Coast” and complained of the defendants’ use while the defendants challenged the validity of the plaintiff’s trade mark.

The High Court of Justiciary, Chancery division, held that both under statute and the common law tort of passing off there was no case as the plaintiff had not acquainted the purchasing public with the fact that “Coast to Coast” was a trademark of theirs. In AMAZE Collection Trade Mark the distinction was a fine one between “Amaze Collection” and “Ama Zing”, the plaintiffs owning the latter and the defenders owning the former. The plaintiffs applied for a declaration of invalidity under s.5(4)(a) using passing off as a former right to rely upon. The court refused the application, holding that A had failed to establish he had owned the relevant goodwill in the company before the relevant date and in any event held that the words wouldn’t create any confusion in the minds of the public. pelic
In Criminal Clothing Ltd’s Trade Mark Application the words involved were “Criminal” and “Criminal Damage”. This case concerned an appeal by a clothing manufacturer (C) who sought to challenge the decision of the Trade Marks Registry to uphold a decision supporting M which prevented from registering a trade mark. M had opposed C’s mark as confusingly similar and for identical goods, and had claimed that because of the goodwill and reputation enjoyed by M, use of C’s mark would amount to the tort of passing off. The appeal in relation to s.5(4)(a) failed as there was an acute risk of confusion according to the Chancery Division.
The final case I have selected for analysis is a very recent one: Zaba’ish v Zebaish Clothing Ltd where a company using the same name as another company to sell the same goods with a lower quality was guilty of passing off because the deceptive similarity of their names was likely to damage the goodwill of the earlier company. Judge Fysh QC put the test in the following way:
“A claimant alleging passing off had first to prove a reputation or goodwill in association with a particular word or mark associated with its business; secondly, a misrepresentation of some sort in the course of trade on the part of the defendant had then to be shown; finally, that misrepresentation had to be calculated or, at least, likely to damage the claimant’s goodwill or business.”
Case Law relating to Trade Mark protection in the fashion industry under TA 1994: s.5 relative grounds of refusal

brAs noted above the recent case of Chemise Lacoste and Baker Street Clothing
Ltd has heralded a significant victory for a very small clothing manufacturer against the giant Lacoste under the Trade Mark Act 1994. A predecessor to the Lacoste legal wrangles under s.5 of the 1994 Act (the relative grounds of refusal) is firstly the ZIPPO Trade Mark case where P registered the trademark in class 18 in respect of items of fashion. A had three prior registrations for an identical named mark for lighters. A thus applied for a declaration of invalidity on the grounds that P’s mark was identical to theirs and this could lead to confusion under s.5(2). A also tried revocation on the grounds of non-use under s.46 for 5 years. The Trade Marks Registry held that the challenge of invalidity failed under s.5(2) as A had not challenged the registration of the trade mark in 1986 and secondly the s.46 revocation failed to an extent as the trunks, umbrellas and parasols had not been in use while the bags, cases and wallets had been despite the very minimal amount of use.
The LOADED Trade Mark case also came under s.5 in respect of the proprietor of a magazine called LOADED who appealed against the dismissal of their application opposing the registration of an identical trademark in respect of clothing. IPC contended that the application should be refused inter alia under s.5(3): damage to their reputation. The appeal was allowed as LOADED had built sarup significant reputation in the men’s magazine sector and dilution of the market as had happened could compromise advertising revenues.
In Baker Street Clothing Ltd v La Chemise Lacoste (SA) Trade Mark Registry 9/12/2009, Lacoste tried to revocate the registration of Baker Street’s alligator mark under s.46(1)(b) and succeeded in part. The court observed that the minimal use of certain products qualified them to escape revocation but others did not: “Therefore, the evidence collectively established that in 2005 B was making preparations to secure customers and create a market share for its clothing and that that should be considered to satisfy the requirements for there to be genuine use.”
This case proved only a stepping stone to the landmark decision in November 2010 where Baker Street finally won over their multinational rival. Sections 5(2)(b), 5(3), 5(4)(a) and 56 of the Trade Marks Act 1994 were invoked by Lacoste to oppose the applications to register ALLIGATOR as a Trade Mark.
The Registry significantly pointed out at paragraph 50 that:
“The Applicant’s word mark ALLIGATOR would naturally be perceived
and remembered as an allusion to alligators in general. Pairing and matching it with the particular images of the Respondent’s marks, in circumstances where they had come to be firmly associated and identified with the name LACOSTE, looks to me like a process of

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