Basic Intellectual Property Law: TrademarkLaw

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Basic Intellectual Property Law Trademark Law

• September 2007
• Anu Pitkänen

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trademark functions

• Origin function Marks deserve protection so that
  they may operate as indicators of the trade
  source from which goods and services come, or are
  in some other way connected.
• Quality or guarantee function Marks deserve
  protection because they symbolise qualities
  associated by consumers with certain goods or
  services and guarantee that the goods and
  services measure up to expectations.

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• Investment or advertising function Marks are
  cyphers around which investment in the promotion
  of a product is built and that investment is a
  value which deserves protection as such, even
  when there is no abuse arising from
  misrepresentations either about origin and
  quality.
• (Cornish)

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International Treaties

• The Paris Convention for the Protection of
  Industrial Property, 1883
• The Agreement on Trade Related Aspects of
  Intellectual Property Rights (TRIPS), 1994
• The Madrid Arrangement for the International
  Registration of Marks, 1891 and the Protocol
  Relating to the Madrid Agreement Concerning the
  International Registration of marks, 1989
• The Trade Mark Registration Treaty, 1973

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Community Law

• The Community Trade Mark Regulation
• The Trade Mark Directive

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TRIPS Trademark Provisions

• Registrability (Art. 15)
• - Distinctiveness the ability of a sign to
  distinguish the goods of one undertaking from
  another
• - Types of signs words including personal
  names, letters, numerals, figurative elements and
  combinations of colours and any combination of
  such signs
• - Members may make registrability dependant upon
  distinctiveness acquired throught use
• - Members may require, as a condition of
  registration, that signs be visually perceptible

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b) Rights conferred by a mark (Art. 16)

• The trademark owner have the exclusive right to
  prevent all third parties not having the owners
  consent from using in the course of trade
  identical or similar signs for goods or services
  which are identical or similar to those in
  respect of which the trademark is registered
  where such use would result in a likelihood of
  confusion
• In case of the use of an identical sign for
  identical goods or services, a likelihood of
  confusion shall be presumed
• In determining whether a trademark is well known,
  Member shall take account of the knowledge of the
  trademark in the relevant sector of the public,
  including knowledge in the Member concerned which
  has been obtained as a result of the promotion of
  the trademark

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• c) Term of protection (Art. 18)
• Initial registration, and each renewal of
  registration, of a trademark shall be for a term
  of no less than seven years
• The registration of a trademark shall be
  renewable indefinitely
• d) Requirements of use (Art. 19)
• e) Unjustified requirements (Art. 20)
• f) Licensing and assignment (Art. 21)

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The Trade Mark Directive (89/104/EEC)

• Definition of a trademark
• 1. The sign is capable of being represented
  graphically
• 2. The sign is capable of distinguishing the
  goods or services of one trader from those of
  another
• - ECJ The essential function of a trademark
• - C-383/1999 BABY-DRY

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- Types of signs which may be registered as a
trademark include the following

• word marks including letters, numbers or
  combination of letters, numbers and words
• figurative marks, whether or not including words
• figurative marks in colour
• colours or combinations of colours
• three-dimentional marks
• sound marks
• smell marks
• other special marks hologram mark, animation
  mark, taste mark, gesture mark

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b) Grounds for refusal or invalidity

• Absolute grounds for refusal
• - Mandatory grounds (Art. 3.1)
• a) Signs which cannot constitute a trademark
• b) Descriptive marks
• - C-383/99 BABY-DRY
• - C-191/01 DOUBLEMINT

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c) Signs which are customary in trade -
distinctive character through use

• d) Signs which consist exclusively of
• - the shape which results from the nature of
  the goods themselves
• - the shape of goods which is necessary to
  obtain a technical result
• - the shape which gives substantial value to
  the goods
• e) trademarks which are contrary to public policy
  or to accepted principles of morality

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f) Inherently deceptive marks

• g) trademarks which have not been authorized by
  the competent authorities and are to be refused
  or invalidated pursuant to Article 6ter of the
  Paris Convention
• Optional provisions
• - For example an application made in bad faith

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2. Relative grounds for refusal

• Mandatory grounds
• - Earlier marks for similar goods or services
• a) trademark is identical to an earlier
  trademark in both form and the goods and the
  services covered by the respective
  applications or registration

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• b) trademark is similar to an earlier trademark
  in respect of both the mark and the goods and
  the services covered by the application and
  there is a likelihood of association with the
  earlier mark.
• - CTMs for dissimilar goods and services
• - Optional grounds

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c) Infringement of registered marks

• Mandatory grounds
• - The proprietor is 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
  trademark in relation to the goods or services
  which are identical for those which the
  trademark is registered
• b) any sign where because, of its identity
  with, or similarity to, the trademark and the
  identity or similarity of the goods or services
  covered by the trademark and the sign, there
  exists a likelihood of association between the
  sign and the mark

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• - Identical marks
• a sign is identical with the trademark
  where it reproduces, without any modification
  or addition, all the elements constituting the
  trademark or where, viewed as a whole, it
  contains differences
• so insignificant that they may go unnoticed by
  an average consumer.
• - LTJ Diffusion SA v Sadas Vertbaudet SA
• (Case C-291-00)

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• Likelihood of confusion
• - must be assessed throught the eyes of the
  average consumer of the goods/services in
  question
• - the visual, aural and conceptual similarities
  of the marks must be assessed by reference to
  the overall impressions created by the marks
• - Optional provisions

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d) Grounds for revocation of registered trademarks

• 1. Non-use of registered trademark
• - a trademark shall be liable to revocation if,
  within a continuous period of five years, it
  has not 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 reason for non-use.
• 2. Mark has become generic
• - in consequence of acts or inactivity of the
  proprietor, mark has become the common name in
  the trade for a product or service in respect of
  which it is registered

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• 3. Mark liable to mislead
• - mark liable to mislead the public,
  particularly as to the nature, quality or
  geographical origin of those goods or services

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Community Trade Mark (CTM)

• Council Regulation (E.C.) No. 40/94 on the
  Community Trade Mark
• The CTM Regulation is directly applicable in all
  Member States of the E.U.
• A single filing for the registration covering the
  whole of the community as single unitary
  territority
• The CTM Regulation operates alongside Member
  States national trademark systems

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• Applications for CTM are administered by the
  Office for Harmonisation in the Internal market
  (OHIM) in Alicante, Spain
• The enforcement of CTMs is the responsibility of
  national CTM courts, which are required to be
  designated by the Member states

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Rights conferred by a CTM

• Exclusive right to use the trademark
• Right to prevent the reproduction or imitation of
  a trademark
• Right to transfer a trademark or to grant
  licenses for some or all of the goods or services
  to wich the trademark is registered, in part or
  the whole of the Community
• Right to oppose the registration of similar
  Community or national trademarks which could
  cause confusion to the consumer

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Registration

• - Requirements for registrability
• - Absolute and relative grounds for refusal
• Revocation and declaration of invalidity of a CTM
• - Application for a CTM
• - The priority claim
• - The seniority claim
• - The official languages of the Community

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• The procedure for registration
• - Examination of the application
• - Publication of the application
• - Opposition proceedings
• - Duration and renewal of a CTM
• - Applications for revocation or for a
  declaration of invalidity
• - Enforcement of a CTM in Community trade mark
  courts
• - Appeals