Trade Marks: Comparative and International Perspectives
3 questions, the writer can choose one of them:
a) Critically discuss and compare the protection given to registered trade marks against tarnishment, blurring and unfair advantage in the EU and US.
b) Answer parts (i) and (ii)
Fat Freddie’s Surf Shack is a bar and restaurant which was established in 2006 on Huntington Beach in California, USA. Huntington Beach is one of California’s most popular surfing beaches. Fat Freddie’s was set up by Fred Warski, who is a very large man, and he also established a merchandising business through which surfing accessories and leisure clothing were sold under the “Fat Freddie’s” and “Fat Freddie’s Surf Shack” brands. Fred sold the merchandising business in 2012 to Tyco Marketing Inc., a US corporation. Fred continues to run the bar and restaurant business. As part of the agreement for the sale of the merchandising business, Fred agreed not to use the names “Fat Freddie’s” or “Fat Freddie’s Surf Shack” other than in relation to the business of a bar and restaurant at Huntington Beach.
Tyco marketing invested heavily in the Fat Freddie’s brand and Fat Freddie’s products are now available throughout the USA. It decided to sell products exclusively through a chain of “Fat Freddie’s” shops, so they are not available through other stores. Fat Freddies products are also available from the official website operated by Tyco, fatfreddies.com. Tyco have also opened Fat Freddie’s shops in Australia. They have registered the marks FAT FREDDIE’S and FAT FREDDIE’S SURF SHACK in both the USA and Australia in respect of clothing and surfing accessories.
There are no Fat Freddie’s shops in the UK and fatfreddies.com does not deliver orders to addresses outside of areas where there are Fat Freddie’s shops. Tyco sponsors a number of top international surfing competitions and exhibition events, such as the “Fat Freddie’s big wave invitational” in Hawaii. These events achieve worldwide coverage in the surfing press, on YouTube and so on.
Fat Freddie’s Cafe is a cafe situated on the sea-front in Porthcawl, Wales. It has become very popular with surfers and kite-surfers who take advantage of the excellent wind and waves which frequently occur at Porthcawl. It is owned by Fred Morgan, who is extremely thin – he says he acquired the nick-name Fat Freddie as a joke and so last month he changed the name of his cafe from “The Albany” to “Fat Freddie’s”. He says the place needed a complete refurbishment anyway.
Tyco wish to expand into Europe and they have identified the UK, Spain and Portugal as the first countries where they will open Fat Freddie’s shops. They intend to sponsor surfing competitions in key surfing spots in those countries to tie in with the opening of the shops. Thus they have entered into a sponsorship agreement with the promoters of the Newquay Masters competition which will be held in Newquay, Cornwall in July 2016. Tyco have asked for your advice on protecting their brand in Europe. They are aware of Fred Morgan’s cafe and are suspicious of his motives for changing his trading name a year ago. They point out that his cafe has also been re-decorated with a Hawaiian theme – as is Fred Warski’s cafe on Huntington Beach and all Fat Freddie’s shops.
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You have conducted a brief search and found that the mark “FAST FREDDIES” is registered by the hamburger chain Fast Freddies, which has outlets in major cities in the UK. Details of the registration are at the end of this question.
(i) Advise Tyco of the steps it can take to protect the Fat Freddie’s brand in the UK and other countries in Europe and of any problems they may face as a result of Fred Morgan’s café and the Fast Freddie’s restaurant business and trade marks. You should base your answer on the facts given in this question, do not conduct any factual research yourself.
Before Tyco get a chance to act on your advice, you learn that Fred Morgan has applied for a trade mark at the UK Intellectual Property Office. The mark he is applying for is FAT FREDDIES and he is applying for it in relation to “restaurant and catering services” in Class 43 and “T-shirts, hoodies and sweatshirts” in Class 25.
(ii) Advise Tyco of how they can oppose Fred Morgan’s application and of the grounds on which they may oppose it.
09 February 2008
Date of entry in register
04 July 2008
09 February 2018
List of goods and services
Pencils and pens.
Clothes and baseball caps.
Cafe, restaurant and catering services for the provision and preparation of fast food, takeaway food and alcoholic drink.
Name and Address details
Fast Freddie’s (UK) Limited
Belsize House, Belsize Road, Dundee, United Kingdom, DD5 1NE
IPO representative name
Thorntons Law LLP
Whitehall House, 33 Yeaman Shore, Dundee, United Kingdom, DD1 4BJ
Journal : 6728 Date of publication : 28 March 2008
a) ” Davis [‘Why the United Kingdom should have a law against misappropriation’  C.L.J. 561] is right to underline the tendency in some cases to refocus the tort of passing off on misappropriation or unfair competition lines. However, I fundamentally disagree with her that we should embrace such an action (whether or not via statutory enactment).”
Hazel Carty Passing Off frameworks of liability debated I.P.Q., 2012, 2, 106-122 @ P121
Critically evaluate the arguments for and against the introduction of a civil action against misappropriation or unfair competition in English and Welsh law.
SimpleMotors PLC is a nationwide second-hand car warehouse chain, founded by entrepreneur Harry Billet, which advertises heavily on television. The mark SIMPLEMOTORS is registered to them for “hire-purchase and loan services” (SimpleMotors offers finance packages with its vehicles) and also for “motor vehicle inspection and valuation services”. SimpleMotors makes extensive use of a logo consisting of a stylised car with some human features on its premises, documents and advertising. SimpleMotors PLC staff gave the car the name “Brian” and this is what the car has come to be known as.
Harry has recently launched a mobile phone network called SimpleTalk. Harry has registered the word SIMPLETALK as a trade mark for “communications services”. Harry has websites promoting both his businesses: simplemotors.com and simpletalk.com.
SimpleMotors PLC sponsors the Rhondda Warriors rugby club and their name and the Brian logo appear on all Rhondda players’ kit. As part of the sponsorship deal with Rhondda, in September 2014 soft toys in the shape of Brian and dressed in Rhondda kit were sold in the Rhondda club shop. SimpleMotors PLC obtained these from Glamorgan Sourcing Ltd, a company which specialises in supplying marketing and promotional gifts to corporations.
Tony Phillips has just set up simplefinance.com, a web site which enables users to easily compare the offers available from various financial services companies in such fields as mortgages, loans, investments and insurance.
To publicise his site, Tony made a promotional video, which he has distributed by email and by posting on various internet forums and discussion boards (so-called “viral marketing”). This video is based on a film Tony made whilst watching Rhondda Warriors play in a seven-a-side rugby tournament. It shows Grant Keston, Rhondda’s star winger, using his laptop computer whilst waiting in between matches. Grant is wearing the sponsored kit, and the logo (though not the name SimpleMotors) is clearly visible. Tony mixed this video with other material to make an amusing video with the message “simplefinance.com – the even quicker way to get results”. The simplefinance.com website does not contain any pictures of Brian and its design is different from that of Harry’s websites.
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Harry has recently learned of Tony’s activities and Grant has just seen Tony’s video. They both think that Tony has infringed their rights.
– what rights Grant Keston may have to stop Tony making use of the video of him in this way; and
– what Harry can do about Tony’s use of the name and website simplefinance.com and the video.
In your answers you should indicate how your answer would differ if the facts of this question took place in the USA
ii) Explain what further steps Harry should take to ensure he has the best possible trade mark protection in relation to his businesses
a) Critically evaluate and compare the restrictions on registering functional signs as trade marks in European Union and United States law.
b) The Indian Tea Growers Association (ITGA) are seeking to protect the ‘Yellow Pekoe’ tea designation within the European Union. ‘Yellow Pekoe’ is a green breakfast tea from a variety of tea grown in the Indian state of Assam. This tea, most of which is grown at or near sea level, is known for its body, briskness, malty flavour, and strong, bright colour. The specification indicates that the tea leaves are drawn from tea plantations within 25 miles either side of the Brahmaputra River in Assam and in tea plantations no more than 500 feet above sea level. This part of India experiences high precipitation; during the monsoon period, as much as 10 to 12 inches (250–300 mm) of rain per day. The daytime temperature rises to about 103F (40 °C), creating greenhouse-like conditions of extreme humidity and heat. This tropical climate contributes to Assam’s teas unique malty taste, a feature for which Yellow Pekoe tea is well known. The IGTA are seeking to obtain a share of the expanding market for green teas in the European Union because of the alleged health benefits which flow from drinking such teas.
To help them market this product and other teas in export markets, the IGTA have commissioned a logo incorporating a device of tea leaves and the slogan “Guaranteed 100% Assam tea”. They have acquired copyright in the logo and intend to licence it for use only on genuine product.
The IGTA seek you advice on the following. Explain the advice you would give them.
(i) Whether an Indian geographical designation can obtain protection in the European Union and under what conditions?
(ii) Objections that have been raised by a number of UK tea importers that claim that in fact the brand “Yellow Pekoe” had become generic and is applied to a range of teas from Assam including black and white teas as well as this green tea;
(iii) An objection raised by Cheapside Tea Importers of the UK who have registered the trade mark “Yellow Pekoe” in a two-dimensional figurative form as a Community Trade Mark at the Office for the Harmonisation of the Internal Market (OHIM) on 18 November 2010.