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Published: Fri, 02 Feb 2018
Protection of trade marks advertising function
The trade marks function as a vehicle for advertising is recognised in section 5(3) of the 1994 Trade Mark Act (TMA). As a result, the proprietor of a mark which already has a reputation in the United Kingdom is given greater protection against the interference with the mark. And likelihood of confusion is not a requisite condition for section 5(3) to be invoked. It is always argued that section 5(3) which introduced the concept of dilution into the trade mark paradigm has the sweeping effect of prohibiting the registration of any mark which is identical or similar to a trade mark with reputations. In response, the Registrar has indicated clearly that section 5(3) is designed to provide protection against parasitic use rather than having that sweeping effect.
Protection of trade marks’ advertising function
As a result of implementation of the EC Trade Marks Directive which is designed to
harmonise the general requirements for registering as a trade mark and the rights
conferred by a trade mark,
section 5(3) of the 1994 TMA is introduced to protect
marks with a reputation in the UK.
Pursuant to section 5(3), the registration of a trade mark will be refused where: (i) the
later mark is the same as or similar to an earlier mark; (ii) the goods or services for
which the later mark applied for are dissimilar to those for which the earlier mark is
protected; (iii) “the earlier trade mark has a reputation in the UK”; (iv) “the use of the
later mark would take unfair advantage of, or be detrimental to, the distinctive
character or the repute of the earlier trade mark.”
1. Balmoral Trade Mark  RPC 297, 299.
2. Inlima SL’s Application  ETMR 325, 335.
3. Trade Marks Directive, Recital 7, Arts. 5, 6 and 7.2
In contrast with section 5(1) and 5(2) which focus on the source-distinguishing
function of trade marks
, section 5(3) emphasises the trade marks’ advertising
As was stated in Souza Cruz SA v. Hollywood SAS .
, a trade mark is regarded
as a “vehicle for communicating a message to the public, and itself represents
7 Accordingly, various forms of interference with the trade mark such
as dilution, blurring will be redeemed as undermining the benefit of trade marks with
While the judgement of some earlier UK cases suggested that where there is no risk of
confusion to the consumer, neither the distinctive character or nor the reputation of
the earlier trade mark is negatively influenced,
the ECJ has adopted contrary
approach in the implementation of section 5(3). In a recent case Adidas-Salomon AG
and Adidas Benelux BV v. Fitnessworld9
the ECJ has said that “unlike Article 5(1)(b)
of the Directive, which is designed to apply only if there exists a likelihood of
confusion on the part of the public, Article 5(2) of the Directive establishes,…,a form
of protection whose implementation does not require the existence of such a
10 Consequently, likelihood of confusion is not a requisite condition for
section 5(3) to be invoked.
In addition, despite the wording of section 5(3), the ECJ held that the provision
applied to goods or services which are identical and similar, as well as to those which
are not similar.
The removal of the distinction between identical, similar and
4. Scandecor Developments AB v. Scandecor Marketing AB  FSR 122, para. 133.
5. Ferrero SpA v. Kinder are Learning Centers Inc., R1004/2000-1 (Oct. 2003), para. 24.
6. R283/1999-3  ETMR (64) 705.
7. Ibid, para. 7.
8. Baywatch Production v. The Home Video Channel  FSR 22.
9. Case C-408/01,  1 CMLR 448.
10. Ibid, paragraph 27.
11. Ibid, para. 20.3
dissimilar goods or services confers greater protection to the owner of a mark with
reputations. Actually, those who found it difficult in proving a likelihood of confusion
under section 5(2) could try to argue their cases under section 5(3).
Therefore, the issues need to be considered in assessing whether a mark falls foul of
section 5(3) are: first, what is an earlier mark? Secondly, when the marks are identical
or similar? Thirdly, when does a mark have reputations in the United Kingdom? And
fourthly, when the use of the later mark would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the earlier one? Each will be
treated in turn.
Since section 10(3) of the 1994 TMA corresponds to section 5(3), the circumstances
in which a mark will be objected on the basis of an earlier mark will be exactly the
same as in which use of the later mark would give rise to an infringement under
section 10(3). The infringement cases will be discussed below as well where relevant.
2.1 What is an earlier mark?
According to the 1994 Act, an earlier mark is “a registered British mark, international
mark or Community trade mark which has a priority date earlier than the trade mark
or “a Community trade mark which has a valid claim to seniority from
an earlier registered trade mark or international trade mark”
or “an application for
marks which, when registered, would be an earlier trade mark.”
2.2 When the marks are identical or similar?
12. TMA s. 6(1)(a).
13. TMA s. 6(1)(b).
14. TMA s. 6(2).4
When the definition of identity is interpreted in the strict sense, the applicant’s (or
infringer’s) mark should be exactly the same as the earlier mark in all aspects when
considered as whole.
The similarity of marks is viewed from the point of the average consumer who
normally perceives a mark as a whole and does not examine its details.
16 The degree
of aural, visual or conceptual similarity as well as the distinctive and dominant parts
of the marks should be taken into consideration by the courts when assessing the
2.3 When does a mark have reputations in the United Kingdom?
Some guidance has been made in General Motors Corporation v. Yplon18
concept of reputation. The Court of Justice said that for a mark to have a reputation, it
should be known “by a significant part of the public concerned by the products or
services covered by the trade mark.”
And an association might be made between the
two marks by the public when confronting with the later mark because of the
sufficient amount of knowledge of the mark with a reputation in the public’s mind.
The test for existence of reputation is elaborated on the basis of four criteria: “the
market share held by the trade mark; the intensity; geographical extent; the duration
of it use and the size of the investment made by the undertaking in promoting it.”
2.4 When the use of the later mark would take unfair advantage of the earlier
15. SA Societe LTJ Diffusion v. SA Sadas, Case C-291/00  ETMR (83) 1005, para.51.
16. Sabel BV v. Puma AG, Rudolf Dassler sport, Case C-251/95  ECR I-6191, I-6224 para. 23.
18. Case C-375/97  3 CMLR 427.
19. Ibid, 442 para.22.
20. Ibid, 442-443 para.22.
21. Ibid, 443 para.27.5
First of all, the opponent must shown that connection would be made by the consumer
between the two marks in order to a great chance of success under section 5(3).
Moreover, in Oasis Stores, it was held that the link should point out that a specific
aspect of the reputation of the earlier mark is used by the later one so that repute from
the earlier mark could be transferred to the later one, thus benefiting the later one
Where the both the earlier mark and the later one are not newly coined marks, an
unfair advantage would be difficult to prove. It was held in Oasis Stores that the
applicant was better regarded as taking advantage of words in the public domain
instead of taking unfair advantage of the distinctive character or repute of the
2.5 When the use of the later mark would be detrimental to, the distinctive
character or the repute of the earlier one?
Although it is argued that the distinctive character of the earlier mark would not be
damaged by the later one without the consumer to be confused ,
it is held that any
use of the identical or similar mark for similar or dissimilar goods or services may, to
some degree, dilute or blurring the distinctive character of the earlier mark.
example, the use of “Nokia” on different goods may dilute the distinctive character of
the mark, and therefore reduce the ability of the mark to distinguish mobiles.
22. See n9, para. 39.
23. Oasis Stores’ Trade Mark Application  RPC 631, 649.
25. T Martino, Trademark Dilution, Oxford University Press , 82-85.
26. See n23, 649.
27. Hearings Before the House Comm. on Patents, 72d Cong. 15 (1932) cited in T Martino, Trademark Dilution, 28.6
Damage to the reputation is usually referred to as “tarnishment”, whereby the repute
of the earlier mark becomes tainted by the use of the later one.
The tarnishment might occur under three circumstances
: first, the use of the later
mark brings out undesirable associations which conflict with the image created by the
secondly, the later mark is connected with goods which discredit the
quality or prestige linked with the earlier mark;
thirdly, word or figurative element
of the earlier mark is amended or altered by the later mark negatively.
Furthermore, in considering the question of tarnishment, real damage must be caused
to the earlier mark due to the use of the later one in a negative way.
As was presented above, the proprietor’s interest in a mark could be justified under
section 5(3) even where the consumer is not confused. But it is not unconditional, the
owner of the earlier mark must show the similarity between the two marks,
reputations of his mark in the United Kingdom, the considerable amount of benefit the
later mark derives from the his mark or any detriment the use of the later mark has
caused to the distinctive character or repute of his mark.
28. Souza Cruz SA v. Hollywood SAS (Hollywood/Hollywood), R283/1999-3  ETMR (64) 705, para. 85-86.
29. Ibid, para. 95.
30. Sihra’s Trade Mark Application  RPC (44) 789.
31. DaimlerChrysler AG v. Alavi  RPC (42) 813, 844 para. 94.7
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