CPD session on trade mark law

[Question 3]

The senior partners have been invited to attend a CPD session on trade mark law. Review the case law concerning s10 of the Trade Mark Act 1994 and clearly establish the various heads of claim available to a pursuer depending on the nature of the ‘infringing’ conduct to aid their preparation.

I am asked to address the following issues in this opinion:

  1. The infringement of a registered trade mark
  2. The heads of claim available to a pursuer
  • Trade mark definition

1.1 In order to consider these questions, it is important to consider the definition of a trademark. Trade Marks Act 1994 provides that a trade mark is “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”.[1] The main purpose and function of a trade mark, besides the aforementioned indication of origin of the goods or services, is the capability of a specific trade mark distinguishing its goods or services from that of another business.[2]

1.2 It is evident from this that a trade mark functions as a “badge of origin”.[3] This “badge” serves the function of being distinctive and therefore ensuring the recognition of particular goods or services by a substantial amount of consumers. It was stated in the case of Perry v Truefitt[4] that a merchant “cannot be allowed to use names, marks, letters or other indicia, by which he may induce purchasers to believe that the goods which he is selling are the manufacture of another person”,[5] which shows that UK common law, in as early as the 19th century, was familiar with what a trade mark represents, – the goods or services of one producer/manufacturer that has an established reputation in the area they operate and that needs to be safeguarded.

[1] Trade Marks Act 1994 c. 26, s.1 (1),  Visit the abogados de accidentes website

[2] White Paper, Reform of Trade Marks Law, DTI, September 1990, Cm 1203, ch.2

[3] David I. Bainbridge “Smell, sound, colour and shape trademarks: an unhappy flirtation?” J.B.L. [2004 Mar] 219-246

[4] Perry v. Truefitt, 5 Beavan 66 (1842)

[5] ibid. para 73


Rights (Residence) CD 04 replaced 68/360


The rights of free movement for workers are under Article 45 (3) TFEU[1].  Through case law it is easier to gain a better understanding of the principles that Article 45 TFEU lays down. Under Article 45 (2); it has abolished discrimination in employment based on nationality between workers of member states. Article 18 TFEU reinforces this concept by stating; “Any discrimination on grounds of nationality will be prohibited. Article 7-9[2] prohibits discrimination on grounds of remuneration, dismissal or re-employment on becoming unemployed. In the Wurttembergische case,[3] the court of justice concluded that it is indeed a breach of the regulation[4] to subject differences in conditions of pay, dismissal etc in regards to migrant workers and national workers in member states. The court of justice also took the view that it was indirectly discriminatory for German nationals to qualify for higher allowances than people whose family home was not in Germany.[5] Article 45 (2) also has horizontal direct effect as illustrated in the case of Angonese,[6] Mr Agonies was required to obtain a certificate of bilingusilm to prove his linguestive knowledge in order to participate in a requirement competition. The courts took the view that the prohibiting of discrimination musty be valid towards individuals too in regards to nationality. Thus, concluding that the requirement amounted to discrimination which was not in line of Article 45.[7]

The emerging concept of EU Citizenship has been the main drive behind the development of the free movement of workers which emerged from the treaty of Maastricht in 1992. EU citizenship is not determined by EU law however, it is determined under national law. Article 21 states that: ‘every citizen of the Union shall have the right to move and reside freely within the territory of the Member State, subject to the limitations and conditions laid down in this Treaty and by the measures adopted to give them effect.’ These limitations are set out in Article 45[8] which will be discussed later on. .[9] In the case of Baumbast and R[10] the courts held that Article 21 TFEU was directly effective in both of these cases where in both scenarios, the court held that without a primary carer for children; it would deprive their rights under the regulation.[11] Respect for family life is a fundamental right in the eyes of EU law and refusing this right infringes Article 12 of the regulation.


Continue reading “q4”

Q3 –

This post is sponsored by SEO Glasgow

Hearsay evidence was long rejected by the common law. Hearsay evidence is not the best evidence. The essence of the trial is orality, the witness present, on oath or affirmation, subject to cross-examination, displaying his demeanour. Hearsay evidence could be inaccurate, distorted, or fabricated, remain uncorrected, and mislead the jury or magistrates. The trial could be lengthened by irrelevant or unreliable evidence.

“Primary hearsay” is evidence of the fact that the statement by the other person was made, irrespective of its truth or falsehood.Evidence that a statement was made may be allowed, if relevant, for that limited purpose. The general rule of Common Law is that Hearsay evidence, inadmissible to prove factual content or veracity, but is admissible to prove that remark was made, Witnesses are confined to giving evidence of firsthand, personal perceptions, experience & knowledge.

The most comprehensive is Hearsay rule is;

“An assertion other than one made by a person while giving oral evidence in the proceedings is inadmissible as evidence of any fact or opinion asserted”in R. v. Sharp


This highlights the fact that not all evidence of what a witness not present in court has said is hearsay: it is essential to determine the purpose for which the evidence is tendered. A question of hearsay only arises where the words spoken are relied on a‘testimonially”, that is, as establishing some fact narrated by the words. Statements not given for the purpose of asserting the truth of the matter asserted fall outside the hearsay rule.

Hearsay evidence is inherently unreliable, misleading,  can’t be tested in cross, objectionable and thus inadmissible generally. The Admissibility of Primary Hearsay as Original  was seen in McLaren v McLeod 1913,  where Leith brothel keeping charge, police witnesses allowed to give evidence of overheard conversations (not for truth of content) despite accused not present at time & persons overheard not called to give evidence


Continue reading “Q3 –”

Q2. Supremacy

Supremacy is a tricky question. This guide is sponsored by: Abogados de accidentes florida

Since the Treaty of Rome 1957, questions have been raised concerning the effect of community law upon national law. In this conflict what should take precedence? Under Article 249 EC, Regulations were noted to be directly applicable. Article 292 EC, disputes which had conflict were to be had only to Community dispute settlement methods. In addition Article 10 EC, MS are under a duty to refrain from adopting measures which would compromise the attainment of the objectives of the treaty.

European Court of Justice held that the law of European community should have supremacy over conflicting national law. The judgement of the Van Gend En Loos case emphasises the nature of community law. The judgment is significant as it sets out the courts view of the legal order created by treaty of Rome. It is based upon the idea that MS have limited their sovereign rights in certain areas.

Establishing supremacy of community law, while the Van Gend did not explicitly establish the supremacy of community law over national law, its significance to the development of the principles lies in the view taken by EC of the “special” nature of the legal order created by EC treaty. This vision was advanced in the Costa case where it marked the first statement of confirmation by the Court of justice that community law does in fact enjoy supremacy over conflicting national law.


Continue reading “Q2. Supremacy”

Public law exam tips!

Q1. Role of Commission (powers, duties, composition and relationship with other institutions)

(Articles 211-219 EC). This guideline is brought to you by Notary public London

Members of the European Commission are called “commissioners”. There is one for every member state. The commission and the council both have powers to make legislation. Both can make regulations and directives however, it doesn’t mean the commissioner acts other than in an executive fashion. The treaty of Lisbon provides that the number of commissioners will correspond to two thirds of the number of member states.

The method by which they are appointed is that after consulting the European Parliament, the MS will first nominate the president of the commission by qualified majority. For a 5 yr term on grounds of general competence and “whose independence is beyond doubt”

The duties and powers are set of the commission are set out in Article 211 of the EC treaty.

  1. i) Guardian of the Treaties – the commission has been given the power to ensure that the provision of the treaty and the measures adopted for their implementation are applied. It monitors performance of the MS in complying with their treaty obligations and may receive complaints from individuals or companies when MS infringe their rights. Under Article 226, the commission may investigate the MS in breach and prosecute. Obligations are known as the “loyalty clause” set out in Article 10 which states “MS must take all appropriate measures, whether general or particular to ensure fulfilment of obligations arising from treaty”.
  2. ii) Initiator of Community action – Treaty of European Union now allows the Council and Parliament to request that the commission submits appropriate proposals for legislation where these are required for the purpose of implementing the treaty. It will issue Green papers containing the description of the problem and the solution and then a White paper outlining the proposed legislation for consultation.

Continue reading “Public law exam tips!”