Institute of Brand and Innovation Law

Institute of Brand and Innovation Law

CPD Course: The Law of Trade Marks and Brands

About this course:

The aim of this course is to provide students with a detailed understanding of the law of trade marks in the United Kingdom and the European Union. The course will examine the system for registered marks (including the process of registration, revocation, invalidity and infringement) as well as common law marks. At the end of the course you will have:

  • A systematic understanding of the law of trade marks and its operation in the UK and European Union.
  • A critical awareness of issues and problems relating to the system for registered marks, (including the process of registration, revocation, invalidity and infringement) and also common law marks.
  • The ability to critically analyse and interpret relevant legislation, the relevant case law of the UK courts and the European Court of Justice and academic literature in the field.

This course is held on Thursday from 4 - 6pm
Taught by

  • Dr Ilanah Simon Fhima (UCL)
  • Prof. David Llewelyn (KCL)

Course Schedule

Introduction to intellectual property and trade marks
Types of intellectual property, what is a trade mark, functions of a trade mark, relationship with EU law
Passing Off I
Essential elements of the action, goodwill, goodwill in indicia other than names, misrepresentation, protection for packaging, get-up and the design of goods
Passing Off II
Damage and common field of activity, actions by foreign traders, inverse passing off, trade libel/injurious falsehood
Registration and subject matter / Absolute Grounds for the Refusal of Registration I
Definition of a trade mark, graphical representation and non-traditional marks:
colour, smells, sounds
Absolute Grounds for the Refusal of Registration II
Lack of distinctive character, descriptiveness, genericity, acquired distinctiveness, shape marks (distinctiveness and functionality), immoral marks, bad faith, deceptive marks
Relative Grounds for the Refusal of Registration and types of infringement
Double identity, identity of marks, confusion-based infringement, similarity of marks, similarity of goods, role of earlier mark’s reputation, assessing and defining confusion (including global appreciation)
Types of Infringement (continued) - dilution
Dilution, well-known marks, similarity of goods?, role of association, blurring, tarnishment, unfair advantage, lack of due cause, proof levels for dilution, conflicts with earlier rights, consent
Trade Mark Use
Definition of use, meaning of 'in the course of trade', must there be use 'as a trade mark'? – a review of Arsenal, Adam Opel et al, is trade mark use required for dilution?, trade mark use on the internet
Section 11 Defences
Prior registered mark, own name defence, descriptive use, spare parts defence, honest practices proviso, comparative advertising
Revocation & Invalidity
Revocation for non-use, mark has become generic, mark has become deceptive, second bites of the cherry and cause of action estoppel
Parallel Imports
The origins of the doctrine, EEA and international exhaustion, consent to putting goods on the market in the EEA, when are goods put on the market?, repackaging, overstickering, further commercialisation of the goods, passing off and exhaustion

Download the Brochure for the UCL IBIL IP cpd courses for the 2011-12 session