Trademarks and Passing Off

Mermaid Shaped Bottle:

Glamix may acquire goodwill though the use of this specific ‘packaging, get-up and trade dress.’  It is essential that this component of the product is protected particularly where customers identify products by their external features.  A prime example is Reckitt & Colman v Borden in which the claimant sold lemon juice in plastic containers that resembled a lemon in size, shape and colour.  The House of Lords held that the defendant had passed off its juice as the claimant’s by using similar packaging to the claimant.  The claimant succeeded in persuading the public that lemon juice sold in plastic lemon sized containers had been manufactured by it.  Glamix must also be able to demonstrate that the get up is distinctive of Lumos shampoo.  However it is difficult to show that consumers pay attention to the origin of the product or understand functional features which indicate the source.  The point is illustrated in Hodgkinson & Corby v Wards Mobility Services, in which the court found the defendant had not passed off cushions designed to relieve bed sores as the claimant’s, despite their similar appearance.  Jacob J acknowledged that consumers buy products for the function they perform regardless of their origin.

‘Super Shine!’:

In certain situations goodwill may arise through descriptive words of the goods.  However the courts have become reluctant to grant a monopoly in descriptive words as such words should be free for all to use.  Moreover it is difficult to demonstrate that descriptive words indicate the source of the product.  For Glamix to show that they have goodwill in ‘Super Shine!’ they are obliged to prove that the words have become ‘distinctive in fact’ or has taken on a ‘secondary meaning.’  A case which illustrates this point is Reddaway v Banham, in which the House of Lords approved that the words ‘Camel Hair’ used to describe belts had acquired a secondary meaning. Further examples include ‘Mothercare’ for clothing for expectant mothers, and ‘Oven Chips’ for potato chips.

The second element for a passing off action is misrepresentation.  This occurs when the defendant says or does something that implies that the defendant’s goods originate from the claimant. In short, a misrepresentation is a false statement of fact relating to the quality of goods which suggest that there is a connection with the claimant.  Mere confusion is insufficient to justify an action for passing off.  The main concern is the consequences of the defendant’s actions and the effect these actions have upon the public.  It is irrelevant whether the misrepresentation is conscious, deliberate, fraudulent or intentional.  Moreover the fact that a statement is true does not matter as long as it causes confusion in the minds of the public. 

Misrepresentation can arise through the use of words and action.  In this case the relevant misrepresentation can be inferred from both the words and action of the defendant.  Supergiant has used the words ‘Super Gleam!’ on their shampoo, which is similar to the phrase ‘Super Shine!’ used on Glamix’s shampoo.  In Taittinger v All Bev the Court of Appeal held that by labelling their drink ‘Elderflower Champagne’, the defendant’s had made a misrepresentation that they were part of the group of champagne producers.  In relation to action, Supergiant has manufactured their shampoo to look like Glamix’s shampoo in the mermaid shaped bottle.  This conduct could lead to consequences such as misrepresentation as to the source, quality and as to control or responsibility over the claimant’s goods.  Glamix needs to demonstrate that Supergiant’s misrepresentation is deceptive and has confused a substantial number of persons among the publicor is likely to do so.  

The third element of an action for passing off is proof that the misrepresentation damages the goodwill of the claimant.  In this situation damage may occur in several forms: loss of existing trade and profit, loss of potential trade and profit, and damage to reputation.

If Glamix can fulfil the necessary requirements for the three elements for passing off they will be able to prevent Supergiant from selling Reflex Shampoo.  According to relevant case law it is likely that Glamix will succeed in such a claim.

 (b) The legal regime for the registration of trademarks is enshrined in the Trade Marks Act 1994.  The key advantage of registering a trademark is the mark is afforded greater legal protection and there is no need to prove elements and passing off in the mark.  For a mark to be registered as a valid trademark it is necessary to show that there is: (i) a sign, (ii) which can be represented graphically, (iii) which is capable of distinguishing the goods or services of one undertaking from those of other undertakings.’ However not all marks are capable of being registered as trademarks.  The grounds for refusal are divided into two categories: (1) Absolute grounds for refusal: concerned with objections based on the mark itself, and (2) relative grounds for refusal: concerned with conflict with third party rights.

Alaska:

There are three possible trademark applications Glamix could make for Alaska: (1) word mark, (2) shape mark, and (3) smell mark.

(1) Word mark – ‘Alaska’:

Alaska does not satisfy the definition of a trademark under S1(1)  of the Trademarks Act 1994.  The word Alaska is devoid of distinctive character under S3(1)(b).   The word Alaska also a geographical word.  Therefore this constitutes an absolute ground for refusal of registration.

(2) Shape mark – bear shaped bottle: 

For shapes a verbal description of the shape or packaging will not be adequate for an application. Design, drawings or photographs are necessary to depict the precise appearance of the sign.  In Swizzels Matlow’s Trade Application the description read: ‘the trade mark consists of a chewy sweet on a stick.’  The application was rejected on the terms that it was neither possible nor practical to determine the trade mark from the description provided.  Limits on the registration of shapes include,  shapes which: ‘(i) results from the nature of the goods themselves, (ii) is necessary to obtain a technical result; or (iii) gives substantial value to the goods.’ The bear shaped bottle fulfils the criteria of a trademark in S1(1) of the  Trademarks Act 1994.  Moreover this shape does not fall under the limitations of trademarks.  Therefore it is likely that Glamix will be able to register this shape as a trademark.

(3) Scent mark – tropical fruit scent:

A ‘scent mark’ is a non conventional mark which is more difficult to register due to the difficulty of representing a scent graphically. A sign must be represented in such a way that it is possible for a third party to determine and understand what the sign is.  In the case of Ralf Sieckmann v Deutsches Patent und Markenamt, the European Court of Justice constructed a test which provides that graphic representation must be: ‘(i) clear, (ii) precise, (iii) self contained, (iv) easily accessible and intelligible, (v) durable, and (vi) objective.’  Sieckmann wanted to register the smell of cinnamon as a trademark, and as well as providing a verbal description also included a representation of the mark by a chemical formula and sample.  The European Court of Justice indicated that these devices would not meet the requirements of graphical representation.  As a result it is highly unlikely that Glamix will be able to register this scent mark.  

Hands Clean:

For Hands Clean there are two trademark applications Glamix can make: (1) word mark, and (2) shape mark.

Word mark – ‘Hands Clean’:

Hands Clean also falls at the hurdle of distinctive character as a word mark.  Hands Clean relates to the function of the product, and the registration of this mark will prevent other similar traders from making use of this term.

Shape mark – fish shaped bottle:

The fish shaped bottle also satisfies the criteria under S1(1) of the Trademarks Act 1994, and  is not restricted by the limitations of shape  marks.  

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