I named it after myself not just because both cats and Kats are notoriously vain, but - importantly - because it was intended to be neither authoritative nor exhaustive.
Now that I have finished the trade mark part of my undergraduate intellectual property law course at the University of Southampton, I have prepared another checklist, this time for alleged trade mark infringement cases.
Again, the aim is simply to help my students when thinking about potential infringement issues, considering that (again) I have not been able to find many useful summaries/tables.
Any feedback/suggestions on how to improve it are - as usual - very welcome.
ROSATI TRADE MARK Infringement Checklist*
Main aspects to consider when addressing potential infringement issues
Trade mark infringement is about 7 essential things
(1) Use (NB: non-exhaustive list!)[1]
i. Person affixes sign to goods or packaging thereof;
ii. Person offers or exposes goods for sale, put them on the market or stocks them for those purposes under the sign[2]or offers or supplies services under the sign, or offers or supplies services under the sign;
iii. Person imports or exports goods under the sign (NB: currently goods in mere transit do not fall under this category);
iv. Person uses the sign on business papers or in advertising, including comparative advertising.[3]
(2) Without consent[4]
(3) In the course of trade (= “used in the course of a commercial activity with a view to gain and not as a private matter”)[5]
(4) In the relevant territory
· UK for UK trade marks, EU for Community trade marks;[6]
· For online uses, Bently and Sherman hold the view that targeting required.
(5) Of a sign
· Same hyphoteses as in relative grounds for refusal of registration:
1) Identical marks for identical goods/services[7];
2) Identical marks for similar goods/services[8]+ likelihood of confusion (including association)[9];
3) Similar marks[10] for identical/similar goods/services + likelihood of confusion (including association);
4) Identical/similar marks for dissimilar goods/services + earlier trade mark has a reputation + use would take unfair advantage of/be detrimental to character/repute trade mark.[11]
(6) Where such use affects one of the functions of the registered trade mark[12], eg:
· Indication of origin;
· Quality;
· Advertising;
· Investment.
(7) And no defences are available to defendant (NB: for some defences additional “honest practices” requirement)
· Trade mark should be removed from register;
1) Because it is invalid = should have not been registered in the first place
i. Absolute grounds for refusal of registration, eglack of distinctive character, descriptive, “forbidden” shape, public policy/morality, bad faith, etc;
ii. Relative grounds.[13]
2) Because it should be revoked
i. Non-use
· Within 5 years from registration;
· Use suspended for uninterrupted period of 5 years.
ii. Trade mark has become generic;
iii. Trade mark used to deceive consumers.
· Use of another trade mark (UK trade marks only);
· Use of one’s own name/address;[14]
· Descriptive use, including use to indicate intended purpose;
· Comparative advertising[15];
· Local use;
· Exhaustion;
1) “put on the market”[16]
2) “without consent”[17]
3) no “legitimate reasons”
i. Alteration of goods
ii. Change of packaging
iii. Change of mark
iv. Advertising
· Freedom of expression (NB: no codified defence as such).
* The addition of “Rosati” not only means that I am the author of the checklist, but also (and most importantly) that this is not (necessarily) authoritative. It is just something to consider when dealing with potential infringement issues.
[1] Key case on notion of “use” is Google France.
[4] Cftrade mark exhaustion sub (7).
[11] Key cases on trade marks with a reputation are Yplon, Adidas-Salomon(use of a trade mark as embellishment) Intel(notion of “link”), L’Oréal, Interflora.
[12] Key case on functions of a trade mark is Interflora.
[13] Seesupra sub (5).