295 no 9 chancery division jacob j this recital

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295 [No. 9] Chancery Division Jacob J. This recital relates to the protection to be given. It is the precursor to Article 5(l)(b) and thus is the basis of section 10(2). The question of similarity is separated in the recital from the question of confusion. The recital goes on to 5 deal with confusion later and in particular notes that it may depend upon the degree of similarity. But at that point it is not dealing with the scope of protection. So I think the recital makes it clear that questions of similarity are independent of a particular likelihood of confusion. 10 It is true that the recital goes on to say: "whereas it is indispensable to give an interpretation of the concept of similarity in relation to the likelihood of confusion" 15 I do not think it is here saying more than in judging the question of similarity one should bear in mind the fact that the purpose to be considered is a trade mark purpose. It is not saying that goods are similar if there is confusion, no matter how dissimilar the goods may be. That is a matter for Article 5(2) (which is the basis of our section 10(3)). Then the trade mark owner must go on to show that: 20 "the mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the mark." 25 The construction of this phrase I leave for another day. I only note that it might cater for the case where the goods were vastly different but the marks the same or similar and the proprietor could show that the repute of his mark was likely to be affected. The sort of circumstances of the Dutch case of Claeryn/KLarein 12 (mark for gin infringed by identical sounding mark for detergent, damage to the 30 gin mark image), may fall within this kind of infringement, even though they do not fall within section 10(2) because there is no likelihood of confusion as to trade origin, see Wagamama Ltd. v. City Centre Restaurants Plc. n How then is the court to approach the question of similarity? Neither the Act 35 nor Directive (save in the case of the latter for the somewhat cryptic recital I have quoted) provide assistance. Given that is so I think I must consider the matter as a matter of principle. First it should be noted that the wider the scope of the concept, the wider the absolute scope of protection of a mark may be. In effect a registration covers the goods of the specification plus similar goods. No 40 one may use the registered mark or a similar mark for any of those goods unless he has some other defence. This suggests caution. Otherwise, however narrow a specification, the actual protection will be wide. In particular this would be so in the important sort of case where a mark owner only got registration on the basis of actual distinctiveness for a narrow class of goods. It would surely be wrong 45 that he should then in practice get protection for a wide range of goods. If a man wants wide protection he can always ask for it and will get it only if his claim is justified. The old rule that you could not infringe if your goods were even just
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  • Fall '19
  • The Land, Makerere University, SONS LTD, James Robertson, Jacob J

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