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TRADE MARKS

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Andris Taurins

on 19 January 2016

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Transcript of TRADE MARKS

TRADE MARKS
Subject matter
Lecture 3
Revocation of TM
The TM can be revoked from the register (A 51 CTMR/A 12 TMD)
Absolute grounds for refusal to register TM
term "absolute" grounds relates to the sign itself and not the rights of third parties (owners of other TM)
term "absolute" grounds relates to public or general interest
the registry performs the check
Plan for lecture 1
Introduction to TM
Trade mark registration
Subject matter
History
Farming (branded cattle, earmarked sheep)
Sea trade (to identify ownership after a shipwreck)
Guilds (trade organizations) - identification of quality, origin
Industrial revolution - advertising
20th century - TM as valuable assets
"silent salesman" that could sell products without knowledge of the origin
More recently - creation of consumer identity (
Nike or Adidas
?)
Confusing similarities
low levels of similarity between goods might be offset by a high degree of similarity between marks
Infringement
A 5 TMD/A 9 CTMR - The registered TM 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:
(a) any sign which is identical with the TM in relation to goods or services which are identical with those for which the TM is registered; (
double-identity
)
(b) any sign where, because of its identity with, or similarity to, the TM and the identity or similarity of the goods or services covered by the TM and the sign, there exists a likelihood of confusion on the part of the public (
confusing similarity
)
(c) any sign which is identical with, or similar to, the TM in relation to goods or services which
are not similar
to those for which the TM is registered, where the latter has a
reputation in the MS
and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the TM (
blurring/tarnishment /free-riding
) (e.g. Olympic casino)
Relative Grounds for refusal
A 8 CTMR
Basis for opposition to registration or cancellation proceedings
(1) Non-use as grounds for revocation
protection of TM justified, if TM are used
" A trade mark shall be liable to revocation if, within a
continuous period of five years
, it has not been put to
genuine use
in the Member State in connection with the goods or services in respect of which it is registered, and there are
no proper reasons
..." (A 12 TMD)
History of protection of TM
protection by common law courts - 16th century
fraud committed on the public
UK concept of passing off - 19th century
protection of reputation or "goodwill"
Registration of TM introduced in 1875
protection of TM before use
In 1927 claims that TM must be protected as property
Justifications for TM protection
TM are monopolies but why justified?
Creativity
creation of goodwill (i.e. TM are invented)
Reward for investment (encourages production of quality products)
Supply of information to consumers (informed purchasing choices)
Ethical justifications (fairness and justice)
unfair to take advantage of the goodwill generated by the earlier trader
International and regional dimensions
International registration (due to growth in trade)
Paris Convention 1883 - the principle of national treatment
Madrid Agreement on the International Registration of TM 1891 and Madrid Protocol 1989
mechanism for international application trough WIPO after "home" registration application" leads to foreign national registrations
International standards
protection of well-known TM
Community TM - Office for Harmonization in the Internal Market (OHIM)
Harmonization of national laws via EU TM directive
to provide free movement of goods
TM registration
Registration enables traders to protect TM before they are put on the market
Presumption that the registration is valid (not always true - invalidation action possible)
Reduces disputes and increases certainty
National TM registration
determined by national law
stages:
(1) the filing of the application
specification of the goods/services; classification
representation of the sign (words, graphic etc.)
(2) examination on absolute grounds (appeal possible)
(3) publication, (observation- UK), opposition on relative grounds (appeal possible)
(4) registration (last 10 years, may be renewed for 10 years)
Registration of Community TM
determined by EU TM Regulation
close similarity with the national registration
single TM that operates for the whole EU
filed by trade mark agents
duration 10 years
International Registration of TM
NO "international trade mark"
facilitates the acquisition of national TM
protection in a range of jurisdictions with a single application
Madrid Agr. on the International Registr. of TM 1891 (56 MS)
prerequisite - registration in the home country
national office sends the application to the WIPO (Geneva)
after a formal check WIPO sends to designated offices
national offices can reject the application
registration lasts for 20 years
"central attack" - 5 years
Madrid Protocol 1989 (91)
international application can be based on application (not only registration)
registration lasts for 10 years
if "central attack", possibility to replace with national applications
Which route to take?
depends on commercial judgement as to the likely markets in which protection is desired compared with the cost of obtaining registrations for such territories
In order to register a TM, there should be:
a sign
which can be represented graphically
which is capable to distinguish the goods of one undertaking from those of others
What is a sign?
words
designs
numerals
letters
three-dimensional shapes. (limited by law)
e.g. technical solutions like
Lego
bricks
sounds
smells (restrictive)
Capable of being represented graphically
Graphical representation must be clear, precise, self-contained, easily accessible, intelligible, durable and objective (see judgment of 12/12/2002, C -273
/00, ‘Sieckmann’).
"Representative registration" rather than depositing a sample
Graphic representation utilizes images, lines or characters
Enables publication
Defines the scope of TM owners rights
Graphic representation requirement under reform
Capacity to distinguish
TM must be capble of distinguishing the goods/services of one undertaking from the goods or services of another
if a sign is descriptive, it lacks capacity to distinguish , e.g. "apple" for apples.
1st category - subject matter
signs are not capable of distinguishing the goods or services of one undertaking from those of other undertakings, e.g. "Trademark"
mark cannot be represented graphically (clear, precise, self-contained, easily accessible, intelligible, durable and objective)
smell
taste
2nd category - non-distinctive marks
(1) Non-distinctive TM
;
(2) Descriptive TM
- designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods ;
(3) Generic TM
- consist of signs which have become customary;
the assessment of the sign should be done from the perspective of the average consumer of the category of goods
Average consumer is "reasonably well informed and reasonably observant and circumspect"
Language issue
German word
Matratzen
in Spain for mattresses
Overall impression that the TM makes on the average consumer - aurally, conceptually, and visually
The average consumer
a) Devoid of distinctive character
Article 7 (1) CTMR - TM which are devoid of any distinctive character shall not be registered
the assessment by the registry
indication whether the goods come from a single source
in most cases single letters, numbers, grammatical signs, and simple geometric shapes will meet the requirement
Colour marks
Simple colours will most likely be devoid of distinctive character
Consumers do not assume the origin of goods merely based on the colours of packaging
ECJ - strong public interest to keep colours free
unjustified competitive advantage for a single trader
exceptions if very specific and narrow cases
Cadbury's purple is protected by trademark only for chocolate products
Shapes
Consumers usually do not think of a shape as communicating, save in specific cases like Coca Cola bottle
appraisal whether the shape significantly departs from the norm or customs of the relevant business sector and fulfills its essential original function
Lindt chocolate rabbit
was not significant departure from what was common in the trade
Shape of the grill of a Jeep could serve
as a TM
Packaging of a product or
trade-dress
in most cases devoid of distinctive character
because decorative, protective, not indicating source
b) Descriptive marks
Article 7 (1) (c) CTMR - no registration of marks that consist exclusively of signs which may serve to designate the
kind, quality, quantity, intended purpose, value, geographical origin, or the time of production
of the goods or of rendering of the service, or other characteristics of the goods;
The requirement of availability to avoid dramatic impact on other traders
c) Customary and generic marks
A 7 (1) (d) CTMR - TM which consist exclusively of signs which have become customary in the current language and established practices of the trade;
ASPRIN (for drugs), LINOLEUM (for floor covering)
TM owners may take steps to reduce the risk, including educating consumers on appropriate trademark use, avoiding use of their marks in a generic manner, and systematically and effectively enforcing their trademark rights.
Xerox corporation adopted an extensive public relations campaign advising consumers to "photocopy" instead of "xerox" documents.
Other absolute grounds for invalidity
Public policy and morality
Deceptive marks
Marks prohibited by law
Bad faith
Public policy and morality
interpretation in the light of freedom of speech
Tiny penis (for clothing)- against morality
Jesus (for clothing) - against
But "FCUK" acceptable
MH17 ?
Je Suis Charlie ?
Deceptive marks
TM contains some kind of suggestion that is inaccurate
TM deceives, misleads consumers
the risk of deception must be a real one
OHIM rejected TITAN for building units made of non-metallic materials
Marks prohibited by law
Flags
Coat of arms
Religious symbols
"Red Cross"
Bad faith
unclear definition
what the applicant knew?
whether the applicant's behavior (applying to registration) is dishonest
national court should take into acount "all relevant factors"
e.g. Lindt chocolate bunny preventing competitors to sell their chocolate bunnies
Relative grounds
1. Upon opposition by the proprietor of an earlier TM,
the TM applied for shall not be registered:
(a) TM are identical
and
the goods/services
are
identical (
Double identity
);
(b) TM are
identical
,
and
the goods/services are
similar
,
and

likelihood of confusion
(including association) with the earlier TM;
(c) TM are
similar
,
and
the goods/services are either
similar
or
identical
,
and

likelihood of confusion
;
d) TM are identical or similar, the earlier TM has a reputation, and use of the applicant's TM would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier TM .
Relative grounds - double identity
when TM are identical?
when goods/services are identical?
Identical marks
the comparison is between TM as registered and as in the application
elements should be the same in all aspects
even if TM are slightly different they may be treated as identical
average consumer assesses the TM globally, overall impression
If the TM are identical in some aspects (visual, phonetic or conceptual) but not in others, they are not identical overall
MOMO - MoMo
identical
not identical
identical
Identical goods/services
specification of goods/services
Nice classification
Identity does not only exist when the goods and services completely coincide , but also when goods/services fall within the broader category of the earlier mark
Full identity: identical terms or synonyms
Bicycle is a synonym for cycle.
Partial identity: The earlier TM includes the goods/services of the contested TM
Temporary accommodation
(Class 43) includes
youth hostel services
(Class 43)
Similarity of marks
global appreciation
average consumer does not analyze details
visual, aural and conceptual similarity
emphasis on dominant components
consumers may not able to remember TM perfectly
consumers rarely have a chance to make a direct comparison between TM
Similarity of marks
Distinctiveness
the less distinctive the earlier TM, the higher possibility the later TM is dissimilar
ask.com
v
ask.fm?
similar
similar
dissimilar
aural similarity
conceptual similarity
Similarity of goods
all the relevant factors should be taken into account
product nature,
end-users,
method of use,
in competition
complementary
distribution channels
Wheelchairs v bicycles
wine and whiskey
similar - found on the same shops
dissimilar - not in the same shops
different purpose and method of use; not in competition or complementary. However, share the same nature (dairy goods) and usual origin (dairy company) is, thus similar.
Milk and cheese
Likelihood of confusion
interdependent factors including:
(i) the similarity of the goods
and services,
(ii) the similarity of the signs,
(iii) the distinctive and dominant elements of
the conflicting signs,
(iv) the distinctiveness of the earlier mark, and
(v) the relevant public - level of attention
Likelihood of confusion
Judgment of 29/09/1998, C-39/97 ‘Canon’ :
The risk that the public might believe that the goods come from the same undertaking or from economically-linked undertakings, constitutes a likelihood of confusion
Marks with a highly distinctive character, either per se or because of the reputation they possess on the market, enjoy broader protection than marks with a less distinctive character
Andris Tauriņš
Sound marks
Three - dimensional marks
A three - dimensional mark is a mark consisting of a three -dimensional shape (including containers, packaging and the product itself).
Figurative marks
Word marks
Colour marks
The Nice Classification, established by the Nice Agreement (1957)
a system of classifying goods and services for the purpose of registering trademarks.
updated every five years and its latest 10th version of the system groups products into 45 classes (classes 1-34 include goods and classes 35-45 embrace services),
allows users seeking to trademark a good or service to choose from these classes as appropriate
International (Nice) Classification of Goods and Services
Lecture 2
Word marks - terms merely denoting a particular positive or appealing quality or function cannot be registered
ECO - as denoting ecological
PLUS - as denoting additional, extra
Graphic signs - simple figurative elements
Commonplace figurative elements
The above sign was refused, as representations of cows are commonly used in relation to milk and milk products.
Typographical symbols
Typographical symbols such as dot, coma, semicolon, quotation mark or exclamation mark will not be considered by the public as an indication of origin. Consumers will perceive them as a sign meant to catch the consumer’s attention but not as a sign that indicates commercial origin.
Quality
"Light, extra light, fresh, hyperlight"
Quantity
"six pack" for beer
Intended purpose
‘SLIM BELLY’ for fitness training apparatus, sport activities
Value
"cheap"
1) TM has not been used for 5 y following the registration (non-use)
2) TM has become the common name in the trade (generic)
3) TM has been used to mislead the public, particularly as to the nature, quality or geographical origin (deceptive)
Who must prove?
relevant period - continuous period of five years
no interruption
genuine use
use as a TM
sales of articles
advertising
use must be noticeable to consumers, internal not sufficient
to maintain or establish marketplace
if TM is changed (style/fashion), still use as long as the distinctive character (d.ch. is "striking and memorable" )
use in relation to goods for which the TM is registered
Proper reasons for non-use
TM can be revoked due to non-use unless proper reasons exist
E.g.
German supermarket chain
Lidl
faced bureaucratic obstacles in opening its supermarkets in Austria (TM "Le chef de cuisine")
ECJ (C-246/05):
the obstacle independent of the will of the TM owner
direct relationship between the obstacle and the failure to use the TM
the obstacle makes the use of TM impossible or unreasonable
Difficulties to obtain building permits not sufficiently direct relationship w TM "Le chef de cuisine" for foodstuff
(2) Becoming generic as grounds for revocation
"TM shall be declared to be revoked in consequence of
acts or inactivity
of the proprietor, it has become the
common name in the trade
for a product or service in respect of which it is registered.." (A 12 TMD)
TM loses its capacity to distinguish goods, hence consumers harmed (e.g.Asprin, Linoleum)
Competitors harmed - not able to use the term that most consumers refer
Only name marks concerned
Assessment from the point of view of consumers
only due to fault of proprietor of TM
ECJ "requirement of vigilant conduct" - not only to abstain from using a TM in way that makes TM generic, but take action against other operators
reasonable steps to prevent generci use, like inform consumers, e.g. Xerox campaign
How about "Crocs"?, any other examples?
(3) Misleading use as grounds for revocation
TM shall be revoked "in consequence of the use made of it
by the proprietor
of the TM or with
his consent
in respect of the goods or services for which it is registered, it is liable to
mislead the public
, particularly as to the nature, quality or geographical origin of those goods or services"
requirement of fault, also licensees obliged
exist actual deceit or serious risk
e.g. garment made of wool marketed with ORLWOOLA, subsequently manufactured with nylon
similar to relative grounds for refusal to register but actual use differs
Types of use
Non-exhaustive list of the use:
(a) affixing the sign to the goods or to the packaging thereof;
(b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder;
e.g. Google adwords - to use other TM in order to promote own goods
(c) importing or exporting the goods under the sign;
TM owner can divide up markets and control prices in different countries
(d) using the sign on business papers and in advertising.
Use in the course of trade
use in the course of trade - where it is used in the context of commercial activity with a view to economic advantage and not as a private matter (ECJ,
Arsenal v Reed
)
use as a mark:
decorative use does not violate TM rights
e.g. Opel scale models (
Adam Opel v Autec AG
). No infringement on double -identity
ECJ: as long as the consumers did not think that the toys came from Opel, the use did not affect the essential function of the TM
Trade mark defences
A 12 CTMR/A 6 TMD - " TM shall not entitle the proprietor to prohibit a third party from using in the course of trade:
(a) his own name or address;
(b) indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
(c) the TM where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts,
provided he uses them in accordance with
honest practices
in industrial or commercial matters."
Well known marks
protection granted even if dissimilar goods
e.g. Coca Cola, BMW, Apple
The factors to be taken into account:
the degree of knowledge or recognition of the mark in the relevant sector of the public;
the duration, extent and geographical area of any use of the TM;
the duration, extent and geographical area of any promotion of the TM;
the duration, extent and geographical area of any registrations to the effect they reflect use or recognition of the mark;
the record of successful enforcement of rights in the mark; and
the value associated with the mark.
Honest practices
ECJ: a use will not be in accordance with honest practices if it is done in such a manner that it gives impression that there is a commercial link between the re-seller and the TM proprietor
Descriptive use
TM is not infringed if the mark is used to indicate the kind, quality, quantity, intended purpose, value, geographical origin...
Where trader uses a TM to describe his own goods, e.g. BABY DRY. "Guaranteed to keep your baby dry"
INBOX
Intended purpose
TM is not infringed if it is necessary to use the TM to indicate the purpose of a product, in particular as accessories or spare parts
E.g. A car service repairs particular brand cars
Seller of non-original batteries of BOSCH drills/drivers
Comparative advertising
TM is not infringed if it is used in comparative advertising in which the goods of one trader are compared with the goods of another trader
usually compared price, value, durability or quality
e.g. banks often compare deposit rates or profitability of pension funds
Directive on misleading and comparative advertising (2006/114/EC );
The comparison should:
relate to goods or services which meet the same needs or are intended for the same purpose;
relate to products with the same designation of origin;
deal objectively with the material, relevant, verifiable and representative features of those goods or services, which may include price;
avoid creating confusion between traders, and should not discredit, imitate or take advantage of the trade mark or trade names of a competitor.
Freedom of speech
No infringement of TM if justified by freedom of expression (fundamental right)
Mattel, Inc. v. MCA Records, Inc.
In December 2000, Mattel sued MCA Records, the recording company of Aqua, saying the song violated the Barbie TM and turned Barbie into a sex object
They alleged the song had violated their copyrights and TM of Barbie, and that its lyrics had
tarnished the reputation
of their TM
Supreme court of the USA ruled the song was protected as a parody
Differs from invalidation (relative/absolute grounds) actions that it does not violate TM rights of other traders.
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