From what i have said there was an unnecessary

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From what I have said, there was an unnecessary concession by counsel for the defendant in Wet Wet Wet. It was conceded that: 45 "for there to be infringement the registered traded mark had to be used by the infringer 'in a trade mark sense' but that was exactly what the respondent was doing" 50 [1996] F.S.R. 205 9 [1993]A.C. 593 Downloaded from by Makerere University user on 03 September 2019
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293 [No. 9] Chancery Division Jacob J. I do not see why the concession was made and it seems to have led to a muddle. One would have thought that Wet Wet Wet was used in the title simply to refer to the pop group. So it was not being used in relation to goods covered by the 5 registration (section 10(1)) or to similar goods or services (section 10(2)). Whilst added matter or other surrounding circumstances is irrelevant to the question of confusion, it must be relevant to decide in relation to what goods or services the sign is being used. 10 In the result Lord McCluskey found for the defendants, basing himself on section 11(2). To this I shall return. However I have no doubt that the learned judge reached the right result. It would be fantastic if the new trade mark legislation had the effect of enabling a quasi-censorship of books about people or companies just because those people or companies had registered their names as 15 trade marks for books. (c) Infringement pursuant to section 10(1) ? On my finding about the specification of goods this question does not arise. I 20 will, however, give my view briefly. A further point was argued which I must consider anyway because it also relates to section 10(2). In Origins Natural Resources Inc. v. Origin Clothing Ltd. case 10 (which was under section 10(2) because the marks were slightly different) I said that section 25 10: "requires the court to assume the mark of the plaintiff is used in a normal and fair manner in relation to goods for which it is registered and then to assess a likelihood of confusion in relation to the way the defendant uses its mark, 30 discounting added matter or circumstances." This is essentially the same rule as under the old law. Thus Sir Wilfred Greene MR in Saville Perfumery Ltd. v. June Perfect Ltd. and F.W. Woolworth Ltd. n said: 35 "the statutory protection is absolute in the sense that once a mark is shown to offend, the user of it cannot escape by showing that by something outside the actual mark itself he has distinguished his goods from those of the registered proprietor." 40 I think the rule is the same under the 1994 Act because it follows from the language of section 10 which merely requires the court to look to see what sign the defendant is using and says nothing about anything else. Strictly in Origins I should have said under the 1994 Act that the comparison is "mark for sign" 45 rather than "mark for mark" because section 10 uses sign for what the defendant is using. Assuming I was right (and the defendants reserve this point should the matter go on appeal) one still has to identify the defendant's sign for the purposes 5 0 10 [1995] F.S.R. 280 at page 284
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  • Fall '19
  • The Land, Makerere University, SONS LTD, James Robertson, Jacob J

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