Intellectual Property Law EX1

This homework assignment explores the concepts of trademarks and passing off in intellectual property law. It analyzes case studies, examines trademark infringement, and discusses the importance of 'common field of activity' in passing off claims. The assignment provides a detailed explanation of these legal concepts and their practical application.

Intellectual Property
Law EX1 - Referral

Table of Contents
INTRODUCTION...........................................................................................................................1
SECTION A.....................................................................................................................................1
Question 1...................................................................................................................................1
SECTION B.....................................................................................................................................3
Question 4...................................................................................................................................3
CONCLUSION................................................................................................................................6
REFERENCES................................................................................................................................7

INTRODUCTION
The intangible creations by human intellect is intellectual property. Intellectual property
rights refers to the generic term for the allocation of property rights by using different tools like
patents, copyrights and trademarks. These property rights enables the individual to practice a
monopoly on the use of item protected under intellectual property rights. In this context, the
report focuses on analysing and evaluating key case studies and identifying principle rules. The
key principles and rules of the law of intellectual property will be identified in this assignment.
Eventually the applicability of the laws in the cases will be determined and elaborates in the
report in detail and explicit manner.
SECTION A
Question 1
Trade Mark
Trademark is the symbol or word legally registered or established by use as representing
an organisation or product. It is the symbol or word which is used to represent organisational
products and services which are distinctive from that of competitors1. It is the mark that
represented any organisation in the marketplace. In today's very highly competitive world,
trademarks plays significant role. It provides exclusivity in identity for organisational goods and
services. Its how the consumer identify the organisation and it reflects the brand image, goodwill
and reputation. Trademark is considered to be most important asset of the organisation the
purpose of it is to provide protection, enhances brand trust and increases credibility. It can either
be image, text or composite.
Trade Mark Act 1994
The Trade Mark Act in United Kingdom was established in 1994 by replacing earlier
Trade Mark Act 1938. The act regulates both civil and criminal sanctions for misusing of
registered trade marks. Section 10 (1) of Trade Mark Act mandates that any individual or
organisation my infringe a registered trade mark where the sign is identical with trade mark in
regards with products and services which are also similar with those for which it is registered2.
1 Hedley, Steve. The Law of Electronic Commerce and the Internet in the UK and Ireland.
Routledge-Cavendish, 2017.
2 Vaver, David. "Towards a Distinctive Trademark Law for the 21st Century." Intellectual Property
Journal 30, no. 2 (2018): 183-203.
1

The major purpose of trade mark is to provide protection against imitation of products and
services launched by any organisation. As per Potential UK trade mark infringements:
 Section 10 (1): It mandates that unauthorised third party used mark or name which is
similar to mark registered with trademark and placed on like-for-like goods and services3.
It is considered to be trade mark infringement if even modification is observable from
consumer perception.
 Section 10 (2)(a) & (b): This section mandates that unauthorised third party puts
identical registered trademark on same products and services or identical trademark on
identical goods and services, thereby creating confusion as to the origin of goods or
services and the possibility of an association between the two trade mark.
 Section 10 (3): This section mandates unauthorised third party who utilises similar trade
mark on different products and services and thus getting benefits from registered trade
mark existing in United Kingdom and European Union and gaining unfair advantage and
damaging operating registered trademark as per the act is considered to be infringement
of trademark4.
If the trademark violation occurred, the claimant needs to seek trademark attorney. It is the duty
and responsibility to halt the violation and provide the claim as per sections mandates in the act.
As per the Intellectual Property Office, no such provision has been established for infringement
of trade mark if it is unregistered. The law however provides information regarding unregistered
trademarks can be protected under common law and this protection is referred as “Passing Off”5.
Albeit it possess certain conditions. The first condition is to seek to what extent the owner of
unregistered trademark was operating under the name at the time the later trade mark was use.
The second condition is to seek whether the two trademarks are adequately identical in relation
with their field of trade and the last condition is to seek the detriment faced by the organisation in
such confusion of the initial unregistered trademark user.
Analysing Case of Bikes 4U
3 Lorenzoni, Irene, and David Benson. "Radical institutional change in environmental governance:
Explaining the origins of the UK Climate Change Act 2008 through discursive and streams
perspectives." Global Environmental Change 29 (2014): 10-21.
4 Sng, Claire. "Appointed Person upholds opposition to registration of UK mark ‘ALEXANDER’on
grounds of bad faith." Journal of Intellectual Property Law & Practice 13, no. 6 (2018): 437-439.
5 Bently, Lionel, and Brad Sherman. Intellectual property law. Oxford University Press, USA, 2014.
2

From the analysis of case study of Bikes 4U it was identified that it was an independent
business which specialised in producing hybrid bicycles which opened in Buckwyc four years
ago. The owners Davis Family decided to embark on the production of 'Fellera Hybrid Bike' for
sale in larger retail market across United Kingdom. It was registered under Trade Mark Act 1994
three years ago. The owner identified that a competitor begin producing its own version of
hybrid bike under name Ballera. From the case study analysis it can be understood that the
competitor company has been producing modified or their own version of hybrid bicycle which
was different from that of Bikes 4U. Furthermore, the name they gave is modified to Ballera.
Thus, it can be understood that no infringement has been done by the as it is no where mentioned
in the sections of Trade Mark Act 19946. Thus, no claim will be provided to Davis Family as
there was no infringement of trademark done by the competitor organisation.
Analysing Case of Razor Sole
'Razor Sole' is registered under trade mark act for children skateboard. Robinsons family
is the owner of the business and have been in business since 1980s. The owners identified that
another company has started using the name 'Razor Sole' for new men's shaver. According to
Section 10 (3) of Trade Mark Act 1994, Robinsons Family can apply for claim agains the
unauthorised use of registered trade mark. This section mandates unauthorised third party who
utilises similar trade mark on different products and services and thus getting benefits from
registered trade mark existing in United Kingdom and European Union and gaining unfair
advantage and damaging operating registered trademark as per the act is considered to be
infringement of trademark7. As it can be said that another company has been using the registered
name for their benefits, thus, Robinsons family can seek the trademark attorney and apply for
claim regarding infringement of trade mark.
SECTION B
Question 4
The importance of the requirement of a ‘common field of activity’ for a claim in passing
off.
6 Marett, Paul. Information law in practice. Routledge, 2018.
7 Sng, Claire. "Appointed Person upholds opposition to registration of UK mark ‘ALEXANDER’on
grounds of bad faith." Journal of Intellectual Property Law & Practice 13, no. 6 (2018): 437-439.
3

The tort of passing off was created in order to enhance the protection of reputation, brand
image and goodwill which is attached to trademarks. In early 17th century the concept of passing
off was first identified in United Kingdom and in 19th century it reached to United States of
America and India8. Passing off was first established in the common law long before trade mark
become registrable. Trade mark became more renowned as trade increased after industrial
revolution as it became efficient tools to spread awareness in public by the traders regarding
quality and authenticity of goods and services. Once the product admired in the public and
discovered with specific source there was no dearth of corrupt traders who desire to snatch the
benefits of the fruits of another efforts. Thus, in order to protect traders, tort of passing off was
developed to circulate the message that nobody possess rights to represent his or her products
and services under the name of somebody else. Common field of activity refers to the
organisation working in the same sector or in same industry producing goods and services which
fulfils identical needs and expectations of the consumers.
The requirement of common field activity was an element of historical baggage in the
establishment of tort. Passing off first appeared to protect businessman whose products were
being substituted by the goods of another. As in identical industry, corrupt traders in order to
generate more and more profits by stealing name of reputed businessman used tactics to steal the
name of their products and placed on their own manufactured products to deceive the customers9.
Passing off is considered to be essential requirement in the common field of activity as the tort
provides protection and preservation of the rights of traders who innovated particular goods or
services from corrupt one. Though, after establishment of Trade Mark Act, the significance of
passing off got diminish.
However, there are still numerous things which are not registered under trade marks and
thus the common law tort of passing off is by no means become redundant. Where descriptive
words are concerned law of passing off is applicable instead of trade mark as under Trade Mark
Act, registration of descriptive words are prevented 10. Three distinctive elements constitutes the
8 Lewis, Olivia. "Starbucks (HK) Case Note: The Ambiguous Limb of Goodwill and the Tort of
Passing off." Victoria U. Wellington L. Rev. 48 (2017): 55.
9 Jaszi, Peter. "The commercial appropriation of fame: A cultural analysis of the right of publicity
and passing off [Book Review]." Singapore Journal of Legal Studies Sep 2017 (2017): 391.
10 Davis, Jennifer. "THE CONTINUING IMPORTANCE OF LOCAL GOODWILL IN PASSING
OFF." The Cambridge Law Journal 74, no. 3 (2015): 419-422.
4

common law tort of passing off which are Goodwill, Misrepresentation and Damage. Passing off
has significance in protecting the rights of traders and enhances their goodwill. Through this law,
traders can provide goods and services to the customers and furthermore they can make changes
and registered it under the law so that competitors or corrupt traders would not be able to utilise
their goods and services. Any trader who have registered his or her product under passing off law
has been provided with protection that the product name would not be utilised by any third party
organisation. In order to enhance the protection of traders goods and services, passing off law
was created and is very significant for the businesses working in the common field. The tort of
deceit is the root of passing off action11. It is single common law cause of action which is
applicable to very broad range of factual conditions. The aspect of passing off is type of tort
which has undergone transformation in the period of time.
The substantive lagoods or services offered by him are the goods or services of w of
passing off is particularly based on common law which is case law. The regulation deals with
only rules of procedures and remedies available. Conducting business be using products and
services of other traders is actionable at common law. The usual remedies provided under tort of
passing off are injunctions, delivery up of offending items and inquiries as to the damage or
profits. It is considered to be very important law as affected parties could apply for claim if they
have registered under the passing off law. Passing off enables a class of traders to prevent rivals
from incorrectly implying descriptive terms. The common law is very important requirement for
businesses doing common activity. In order to protect one's innovation passing off law
established. The law provides protection to the traders and helps them in doing their trade in
harmonious and efficient manner. It is considered as an action in tort12. Thus, it can be explictly
understood that passing off is very significant and important intellectual property rights law
which provide immense assistance to the businessman and traders through which they can
protect their products and services from being getting used by unauthorised third party company.
The claim can be applied by the claimant if they found that other traders are using their ideas in
order to earn profits and revenue. The claim can be analysed by the attorney and decision will be
11 Saha, Ishaan. "Supreme Court of India supplants the doctrine of transborder reputation with the
territoriality principle in passing off actions." Journal of Intellectual Property Law & Practice 13, no. 6
(2018): 442-444.
12 Parsons, Giles. "Custom in the UK is required to sustain a passing off case." Journal of
Intellectual Property Law & Practice 10, no. 10 (2015): 739-740.
5

made by him only. In United Kingdom, passing off plays significant role in providing protection
to the traders from other traders regarding the imitation of ideas13. In order to sustain in the
competitive environment, it becomes essential for business organisation to registered their
organisation name and products under intellectual property rights law so that imitation of goods
and services can be prohibited and forbidden.
CONCLUSION
From the above report it can be understood that intellectual protection rights are The
intangible creations by human intellect. They are meant to provide protection and security to the
innovative ideas and products or services either created by organisation or individual. In this
context, the above report demonstrates the meaning of trade mark and sections describing trade
mark infringements. In today's very highly competitive world, trademarks plays significant role.
It provides exclusivity in identity for organisational goods and services. Trademark is the symbol
or word legally registered or established by use as representing an organisation or product. The
case of Bike 4U and Razor Sole has been analysed and relevant solution has been provided as
per the law in this report. The importance of the requirement of a ‘common field of activity’ for a
claim in passing off has been assessed.
13 Austin, Graeme W. "The consumer in cross-border passing off cases." Victoria U. Wellington L.
Rev. 47 (2016): 209.
6

REFERENCES
Books and Journals
Austin, Graeme W. "The consumer in cross-border passing off cases." Victoria U. Wellington L.
Rev. 47 (2016): 209.
Bently, Lionel, and Brad Sherman. Intellectual property law. Oxford University Press, USA,
2014.
Davis, Jennifer. "THE CONTINUING IMPORTANCE OF LOCAL GOODWILL IN PASSING
OFF." The Cambridge Law Journal 74, no. 3 (2015): 419-422.
Hedley, Steve. The Law of Electronic Commerce and the Internet in the UK and Ireland.
Routledge-Cavendish, 2017.
Jaszi, Peter. "The commercial appropriation of fame: A cultural analysis of the right of publicity
and passing off [Book Review]." Singapore Journal of Legal Studies Sep 2017 (2017):
391.
Lewis, Olivia. "Starbucks (HK) Case Note: The Ambiguous Limb of Goodwill and the Tort of
Passing off." Victoria U. Wellington L. Rev. 48 (2017): 55.
Lorenzoni, Irene, and David Benson. "Radical institutional change in environmental governance:
Explaining the origins of the UK Climate Change Act 2008 through discursive and streams
perspectives." Global Environmental Change 29 (2014): 10-21.
Marett, Paul. Information law in practice. Routledge, 2018.
Parsons, Giles. "Custom in the UK is required to sustain a passing off case." Journal of
Intellectual Property Law & Practice 10, no. 10 (2015): 739-740.
Saha, Ishaan. "Supreme Court of India supplants the doctrine of transborder reputation with the
territoriality principle in passing off actions." Journal of Intellectual Property Law &
Practice 13, no. 6 (2018): 442-444.
Sng, Claire. "Appointed Person upholds opposition to registration of UK mark
‘ALEXANDER’on grounds of bad faith." Journal of Intellectual Property Law &
Practice 13, no. 6 (2018): 437-439.
Sng, Claire. "Appointed Person upholds opposition to registration of UK mark
‘ALEXANDER’on grounds of bad faith." Journal of Intellectual Property Law &
Practice 13, no. 6 (2018): 437-439.
7

Vaver, David. "Towards a Distinctive Trademark Law for the 21st Century." Intellectual
Property Journal 30, no. 2 (2018): 183-203.
8