TRADEMARKS IN EU

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Twinning Project Strengthening the Protection
and Enforcement of Intellectual Property Rights
in Ukraine

• TRADEMARKS IN EU
• Monica POP, Prosecutor IPR Unit
• Prosecutor's Office attached to High Court of
  Cassation and Justice, ROMANIA

Kiev 18 June 2015
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Enforcement of Intellectual Property Rights

• International Conventions and Treaties (Berne,
  Rome and Paris Conventions and WIPO Treaties)
• Directives Infosoc, Trademark directive,
  Directive 2004/48/EC on the civil enforcement of
  intellectual property rights
• Customs Regulations
• TRIPS Agreement, 1994 Criminal provisions
  (Agreement on trade related aspects of IPR is
  the Annex 1C to Marrakesh Agreement Establishing
  World Trade Organization)
• European Court of Justice case law

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Directive 2008/95/EC amending Directive
89/104/EC

• Definition
• A trade mark may consist of
• any signs capable of being represented
  graphically, particularly
• words, including personal names,
• designs, letters, numerals,
• the shape of goods or of their packaging,
• provided that such signs are capable of
  distinguishing the goods or services of one
  undertaking from those of other undertakings.
• Function
• to guarantee the identity of origin of the
  marked goods or services to the consumer or end
  user

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Examples of trademarks

• COKE bottle
• Conical top of CROSS pen
• TOBLERONE chocolate packaging

A Shape of a Container or Packaging
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Brake pads

• Counterfeited package Original
  package

Test results for braking efficiency For a 130
km/h speed, the braking distance is 30 m higher
for counterfeited products compare to the
original! Source Grup Renault
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Absolute grounds for refusal

• Article 7 Council Regulation (EC) No 207/2009
  on the Community trade mark
• Article 3 Directive 2008/95/EC of the European
  Parliament and of Council to approximate the laws
  of the Member States relating to trademarks
  (Codified version)

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Relative ground of refusal

• Reputation and well - known TM's
• OSIM doesn't examine ex officio the reputation/
  well-known TM
• bad faith in registration allows an action for
  invalidity, not a refuse of protection
• OHIM and OSIM examine it during the opposition
  procedure.

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Directive 2008/95/EC amending Directive
89/104/EC

• Rights conferred by a trade mark
• Exclusive right
• Prohibit anyone from using a sign which is
  identical or so similar as to lead to a
  likelihood of confusion in the consumers mind.
• Limits the use of the trade mark in the course
  of trade, where the following need to be
  indicated
• a name or address
• features of goods or services covered by the
  trade mark
• the intended purpose of goods or services.

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Scheme of infringements

• Use of an identical sign in relation to identical
  goods and services for which the trade mark is
  registered .
• (A) Use of an identical sign in relation to goods
  and services similar to those for which the trade
  mark is registered with the proviso that there is
  a likelihood of confusion on the part of the
  public including the likelihood of association
• (B) Use of a similar sign in relation to
  goods and services identical or similar to those
  for which the mark is registered and the proviso
  applies
• 3. Use of an identical sign where the mark has a
  reputation in Romania with the proviso that the
  use of the sign, being without due cause, takes
  unfair advantage of, or is detrimental to, the
  distinctive character or repute of the mark.

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Likelihood of confusion

• Art. 16 TRIPS si recital 11 Trademarks Directive
  2008/95/CE
• Identity presumed
• The likelihood of confusion
• 1. on the recognition of the trade mark on the
  market,
• 2. the association which can be made with the
  used or registered sign,
• 3. the degree of similarity between the trade
  mark and the sign and between the goods or
  services identified
• 4. the relevant public

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Identical Trademarks

• LTJ Diffusion v Sadas the "identity" test. P
  claimed the trade mark ARTHUR ET FÉLICIE used on
  children's clothing was identical to its trade
  mark registration for ARTHUR, also used on
  children's clothing. Interpreted strictly and
  globally
• LTJ Diffusion v Sadas Vertbaudet

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ECJ considers Identity of signs presumption
of confusion

• Identical TMs? The question of how closely the
  signs must resemble each other becomes
  significant to the scope of trademark rights and
  the question of strict liability.
• LTJ Diffusion SA and Sadas Vertbaudet SA, Case
  C-291/00, 2003 the ECJ refers to Art. 16 of
  TRIPS and its equivalent in Article 5(1)(a) of EC
  TM Directive to the effect that likelihood of
  confusion may be presumed (i.e. no evidence
  needed) only in the case of identity between the
  mark and the sign and between the goods covered.

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Likelihood of confusion

• Art. 5 (2) lit. b TM Directive
• Comparison of the marks Sabel vs. Puma (1998)

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Likelihood of confusion

• The global appreciation of the visual, aural or
  conceptual similarity of the trade marks in
  questions, must be based on the overall
  impression given by the marks, bearing in mind in
  particular, their distinctive and dominant
  components
• Perception of marks in the mind of the average
  consumer of the type of goods or services in
  question plays a decisive role in the global
  appreciation of the likelihood of the confusion.
  The average consumer normally perceives a mark as
  whole and does not proceed to analyse its various
  details.

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Likelihood of confusion

• For the purpose of that global appreciation, the
  average consumer of the category of the products
  concerned is deemed to be
• Reasonably well informed
• Reasonably observant and circumspect
• The average consumer only rarely has the chance
  to make a direct comparison between the different
  marks but must place his trust in the imperfect
  picture of them that he has kept in his mind.
• Loyd Shuhfabrik, C-342/97

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Visual Similarity

• Lacoste Registered Trademark

• Similar trademarks

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Aural Similarity

• Test is based on the pronunciation of the
  trademark.
• Exemple
• Knife - Nyphe.
• Adidas - Adibas.
• Panasonic - Panasoanic.
• Goldstar - Goldstart.
• Sunlake - Sunsilk.
• Louis Vuitton - Luis Viton.

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Determination of Whether a Mark is aWell-Known
Mark in a Member State

• ECJ General Motors Corp. v. Yplon S.A. (CHEVY)
  1999 3 C.M.L.R. 427.
• The ECJ listed five non-exclusive factors to be
  considered
• the market share occupied by goods or services
  sold under the mark
• the intensity of use of the mark
• the geographic extent of use of the mark
• the duration of use of the mark and
• the amount of investment in promoting and
  advertising the mark.

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WIPO Joint Resolution on well-known marks

• Article 2 (1) Factors for Consideration (a) In
  determining whether a mark is a well-known mark.
• 1. the degree of knowledge or recognition of the
  mark in the relevant sector of the public
• 2. the duration, extent and geographical area of
  any use of the mark
• 3. the duration, extent and geographical area of
  any promotion of the mark, including advertising
  or publicity and the presentation, of the goods
  and/or services to which the mark applies
• 6. the value associated with the mark. CM 77.
• - Joint Resolution on well-known marks was
  adopted in the General Assembly of WIPO and the
  Assembly of the Paris Union in September, 1999
  at lthttp//www.wipo.int/aboutip/en/development_ip
  law/pub833.htmgt

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Well - known vs. reputed TM
Well known TM non - registered article 8 (2) c
CTMR Enhanced protection against similar goods in
case of likelihood of confusion (via 8 (1) b
CTMR) Reputed TM registered article
8 (1) b CTMR Enhanced protection against similar
goods in case of likelihood of confusion via
article 8 (5) CTMR Protection for detriment or
unfair advantage also against dissimilar goods

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What is CP?
According to the TRIPS Agreement Counterfeit
trademark goods any goods, including
packaging, bearing without authorization a
trademark which is identical to the trademark
validly registered in respect of such goods, or
which cannot be distinguished in its essential
aspects from such a trademark, and which thereby
infringes the rights of the owner of the
trademark in question under the law of the
country of importation.

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Thank you for your attention!Monica POPIPR
Unit - ProsecutorProsecutors Office attached to
High Court of Cassation an Justicepop_monica_at_mpu
blic.roTel 4021 319 38 94Mobile [phone]
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