Trade Marks Act 1994

  • Trade Marks Act 1994

4.1 Under the 1994 Act it is stated that trade mark infringement can occur where one uses, “in the course of trade” a sign identical with the trade mark in relation to goods or services which are identical with those for which it is registered.[1] From this, it can be gathered that a sign used to sell goods or services identical to an existing and registered trade mark is an infringement of that trade mark. The case of Arsenal Football Club[2] illustrates this concept of “course of trade” and further expands by focusing on the economic context in which the infringement occurred. It is evident that a view to profit is crucial in determining that infringement of a trade mark has occurred. The CJEU further emphasized the importance of a trade mark, notwithstanding its function as a sign of origin, but further denoting the trademarks wider economic functions, thereby widening the definition of “in the course of trade.”[3] Another aspect to be considered is the use “in the course of trade” in relation to goods or services. This can be understood as meaning to use a trade mark to distinguish goods or services from a particular origin, therefore, as shown in the case BMW v Deenik[4] the use of a trade mark for a descriptive reason does not constitute the infringement of a trade mark. In the case an independent trader operating a maintenance and repair shop used the BMW trade mark to identify that the associated motor vehicles and engines could be repaired there and to convey this to the public. The use of the BMW trade mark was determined not to be an infringement of the trade mark.

4.2 The 1994 Act also covers infringement wherein a sign may be identical or similar to a registered trade mark and is used in relation to goods or services similar to those for which the trade mark is registered and this similarity may cause likelihood of association.[5] This is illustrated in the case Bimbo[6] where a word-mark BIMBO DOUGHNUTS was challenged by the registered Spanish word mark DOGHNUTS. The likelihood of association was dismissed however, as the examination to conclude if there was possibility of association was determined to have to be conducted on the word mark as a whole, rather than in part. Therefore, by not assessing the similarity of the dominant part of a word mark, in which case here it would be “DOUGHNUTS” and “DOGHNUTS”, the word marks were deemed to not confuse the public by creating likelihood of association, as the word marks, on the whole, where two distinct entities.

[1] Trade Marks Act 1994 c. 26, s. 10 (1)

[2] Arsenal Football Club Plc. v Elite Sports Distribution Ltd [2002] EWHC 3057 (QB)

[3] Alice Blythe “Internal company emails: should the inclusion of trade marks be regarded as use in the course of trade or a private matter?” E.I.P.R. [2014] 36(2), 106-111

[4] Case C-63/97 Bayerische Motorenwerke AG v Deenik [1999] E.C.R. I-905

[5] Trade Marks Act 1994 c. 26, s. 10 (2), abogados de accidentes de trafico

[6] Case C-519/12 P Bimbo SA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM)

Law of Succession – Past Paper Help!

Q1) Facility & Circumvention and Undue Influence. Explain both and simple procedures to prevent this.

In Scots law, for a will to be valid it must have been created by a testator who possess two things at the time it was made; capacity and intention to test. For it to formally valid, it must meet the statutory requirements which are laid out in the Requirements of writing act 1995. The decisive factor to raise a case is whether or not the testator’s had been misguided to allow someone else to take advantage of their wishes.  Problems can arise from allegations that the will was made under pressure.

An individual may suffer a degree of mental deterioration which, without amounting to insanity, leaves him vulnerable and easy to take advantage of. When this is the case, three elements must be present at the time the will was made. These are; being in a weakened state of mind, signs of fraud and also lesion. In other words, not being able to freely express his intention to allow personal gain for beneficiary. Lady Smith summarised this in the case of Horne v Whyte 2005 where it was stated that:

“… Three elements are clearly interrelated, they require to be looked at as a whole and the strength of the pursuer’s case on one matter may compensate for weakness on other matters.”

The concept of facility is clear, when an individual can be easily misled who suffers from a weakened state of mind, but not diagnosed with insanity. Where the water becomes clouded is when defining facility. If the testator is under the influence of drugs or alcohol or suffers from a mental illness, facility may arise from these however, it does not automatically qualify the testator to be facile. The facts of each case must be questioned and analysed. Lord Justice Clerk described it as where

“A person is in such a mental state that he is unable to resist pressure and… someone else can mould and fashion his conduct as he pleases.”

Bearing this in mind, the court are not quick to label a testator as facile. The views of medical practitioners hold a heavy weight in the decisions made as their opinions are conclusive. In Rennie v Stephen 1991 it was held that mild dementia was concluded by medical experts to not interfere with a person’s judgement. This highlights how strong medial opinions are, as they are objective.

Thus, the question to be asked will be the testator’s state of mind morally and constitutionally: Openness to machination, not a lack of understanding. The Perception of persuasion is vital in this matter.

Circumvention is defined as fraud or deceit. It is an intimidation operating on the mind as to bring the individual within entire control. This is challenging to prove as, it is generally only witnessed by the testator and by the time the challenge has been brought to light the testator may have already passed. When the alleged facile person is still alive, facility must be proved and also specific acts of circumvention or facts of circumvention for the court to infer. In Parnie v Maclean it was held that the degree of circumvention would depend on the degree of facility.

In the Horne v Whyte 2005 case, a housekeeper who was included in the homeowners will could only have been caused by her circumvention which amended his will.

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