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Passing off and the CTM - three questions from Japan

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The IPKat has been contacted by his learned friend Japanese attorney Masahiro Tomabechi with three detailed questions concerning "passing off" and Community trade marks.

Masahiro has spent the last few weeks on secondment in London to 'carefully and sincerely' study European and UK trade mark laws and he has clearly made good use of his time as his three questions below serve to prove. This Kat, herself originally coming from a non-Common Law jurisdiction, has given Masahiro answers to his questions but thought it would be so much more fun to see what our readers think the answers should be -- somewhat reminiscent of the old German saying that 'if you ask two lawyers the same question, you will at least get three different answers' ('yes', 'no', 'perhaps, but I have never seen it...'). Merpel, however, wonders whether the German Kat might perhaps not trust her own answers....

Please post your responses in the comment field below.

[Question 1]
In a case where a French company (hereinafter called ?the proprietor?) owns a Community Trade Mark right, if the Community Trade Mark is threatened by infringement activities of a British company in the UK and then the proprietor sues before a CTM court in the UK, is it possible to claim the ?Passing-Off? right together with the CTM?s right in order to prohibit the British company from using its mark in the UK?

[Question 2]
If the Community Trade Mark is threatened by the infringement activities of the British company not only in the UK but also in France and then the proprietor sues before the CTM court in the UK, is it possible to claim the ?Passing-Off? right together with the CTM?s right in order to prohibit the British company from using its mark in France and the UK? That is, when the ?Passing-Off? right is claimed together with the CTM right, is the ?Passing-Off? right applicable in France as well as the UK, although France is not a common-law country?

[Question 3]
If the Community Trade Mark is threatened by infringement activities of a German company in the UK and then the proprietor sues before a CTM court in Germany, is it possible to claim the ?passing-off? right together with the CTM?s right in order to prohibit the German company from using its mark in the UK? That is, does the German court have ability to examine the existence of the ?Passing Off? right, although the ?Passing Off? right is a right derived from the UK Common Law?

Full post as published by IPKat on October 20, 2010 (boomark / email).