Chancery division jacob j a person infringes a

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Chancery Division Jacob J. "A person infringes a registered trade mark if he uses in the course of trade a sign which " 5 It was argued on behalf of Robertson's that there is a gloss which must be read into all the provisions, namely that the sign must be used as a trade mark (I think either for the defendant's or plaintiff's goods). Here it was said, Robertson's do not use "Treat" as a trade mark and so there could be no infringement within section 10. I will return to that point on the facts. For the present assume a use 10 which is plainly not trade mark use, as for example in the phrase "give your child a treat, give it Robertson's marmalade." Does a non-trade mark use fall within any of the provisions of section 10? The argument depends on a departure from the language of section 10 which 15 refers only to the use of a sign. The argument runs something like this: section 9(1) says that exclusive rights in a trade mark are infringed by the use of the trade mark without consent. The contrast is made between trade mark in section 9(1) and sign in section 10. It is said that section 9(1), in providing in general terms for infringement, also is providing an overriding requirement that there be 20 trade mark use. In that respect is said to be like the 1938 Act section 4(1) which specifically, by section 4(1 )(a), provided that the use should be use as a trade mark (in effect for the defendant's goods) or a use which referred to the plaintiff or his goods (section 4(l)(b)). 25 I can see no reason so to limit the provisions of section 10. That is not to say a purely descriptive use is an infringement. It is not, but not because it does not fall within section 10 but because it falls within section 11(2). I see no need to put any gloss upon the language of section 10. It merely requires the court to see whether the sign registered as a trade mark is used in the course of trade and then 30 to consider whether that use falls within one of the three defining subsections. Section 9(1) is really no more than a chatty introduction to the details set out in section 10, itself adding no more than that the acts concerned must be done without consent. 35 Consideration of the Directive upon which the Act is based supports this conclusion. The infringement provisions are supposed to be implementing Article 5. For reasons which baffle me our Parliamentary draftsman did not simply copy this. He set about re-writing it. So section 9(1) has no exact equivalent in Article 5. Article 5(1) reads. 40 "The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade ..." [there then follows language for practical purposes identical to sections 10(1) and 10(2)] 45 The words in section 9(1), by the use of the trade mark, are not in the Directive. The suggested gloss, which depends on these words, could not apply to the Directive. So the argument based on section 9(1) involves a departure from the Directive. This is wholly improbable. I reject it.
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  • Fall '19
  • The Land, Makerere University, SONS LTD, James Robertson, Jacob J

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