EBS Law Term 2013 Intellectual Property Law Trademark Law: Introduction Prof. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague.
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EBS Law Term 2013 Intellectual Property Law
Trademark Law: Introduction
Prof. Martin SenftlebenVU University Amsterdam
Bird & Bird, The Hague
Intellectual property domains
technology
commerce
culture
patent law
trademark law
copyright law
Contents
• Legislation
• Definition
• Function
• Protection requirements
– graphical representation
– distinctiveness
Legislation
International treaties
• WIPO
– Paris Convention for the Protection of
Industrial Property (PC, 1883/1967)
– Madrid Agreement (1891/1967) and Madrid
Protocol (1989) = Madrid System
• WTO
– Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS, 1994)
= Annex 1C to the General Agreement on
Tariffs and Trade (GATT, 1994)
Definition
‘Any sign, or any combination of signs,
capable of distinguishing the goods or
services of one undertaking from those
of other undertakings, shall be capable
of constituting a trademark.’
(art. 15(1) TRIPS Agreement)
Distinctive signs
• “American Express”, “Boss”, “Holiday Inn”,
“Microsoft”, “Pizza Hut”, “Puma”
• “Mars”, “McDonald’s”, “Mercedes Benz”,
“Ralph Lauren”, “Jil Sander”
• “Adidas”, “Kit Kat”, “Kodak”, “Reebok”
• “BMW”, “CNN”, “IBM”, “M&M”, “YSL”
• “A6”, “501”, “No. 5”, “S 500”, “4711”
Words, letters, numerals
Drawings, pictures, colors
Shapes
• the roar of a lion?
• the tune of a mobile phone?
• an engine noise?
• the smell of fresh-cut green grass?
Audio marks, smell marks
Function
producer competitor
consumer
Function (macro): market transparency
• ensuring honest commercial practices
• consumer protection
• contribution to a functioning market
• origin function
– identification of enterprises as the
commercial source of goods or services
• quality function– expectations of consumers– encouragement to maintain the attained
quality standard
• communication function– additional information: lifestyle, attitudes– trademark image
Function (micro): business strategy
Protection requirements
‘Any sign, or any combination of signs,
capable of distinguishing the goods or
services of one undertaking from those
of other undertakings, shall be capable
of constituting a trademark.’
= requirement of distinctiveness
Art. 15(1) TRIPS Agreement
‘Members may require, as a condition
of registration, that signs be visually
perceptible.’
= optional requirement of visual
perceptibility
Art. 15(1) TRIPS Agreement
Example: Art. 2 EU Trademark Directive
‘A trade mark may consist of any sign 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.’
Core requirements
procedural:
graphical representation
(register transparancy)
substantial:
distinctive character
(market transparancy)
Graphical representation
• at issue: registration of a smell mark
(cinnamic acid methyl ester)
‘...that a trade mark may consist of a sign which is
not in itself capable of being perceived visually,
provided that it can be represented graphically,
particularly by means of images, lines or
characters, and that the representation is clear,
precise, self-contained, easily accessible,
intelligible, durable and objective.’
CJEU, 27 December 2002, case C-273/00, Sieckmann
• in case of an olfactory sign (-)
‘In respect of an olfactory sign, the requirements
of graphic representability are not satisfied by a
chemical formula, by a description in written
words, by the deposit of an odour sample or by
a combination of those elements.’
CJEU, 27 December 2002, case C-273/00, Sieckmann
• notation:
‘On the other hand, those requirements are satisfied
where the sign is represented by a stave divided into
measures and showing, in particular, a clef, musical
notes and rests whose form indicates the relative
value and, where necessary, accidentals.’
CJEU, 27 November 2003, case C-283/01, Shield Mark/Joost Kist
Distinctiveness
Distinctiveness
• trademark = means of distinction
• distinctiveness = basic requirement
• to be determined with regard to specific
goods or services (principle of speciality)
– ‘Ajax’ for a soccer team
– ‘Ajax’ for a cleaning detergent
• depends on social and cultural context
• case-by-case analysis
Distinctive signs?
• indication of product features– ‘makes clean’ for a
cleaning detergent
• use of generic terms– ‘apple’ for apples
– ‘camel’ for camels
... (-)
• fanciful signs– ‘persil’ for a cleaning
detergent
• signs adopted arbitrarily with regard to the goods or services– ‘apple’ for computers
– ‘camel’ for cigarettes
... (+)
• may exist from the very beginning
(arbitrarily-chosen, strong trademark)
• can be acquired or become stronger
through use (secondary meaning)
• but may also decrease (dilution)
• may even be lost (trademark becoming
a generic term)
No constant level of distinctiveness
secondary meaning
genericism
dilution
Overview of influence factors
(-)
(+)(-)
EBS Law Term 2013 Intellectual Property Law
Trademark Law: Acquisition
Prof. Martin SenftlebenVU University Amsterdam
Bird & Bird, The Hague
Contents
• Acquisition of rights
• Registration procedure
• Registration strategies
• Well-Known Marks
Acquisition of rights
use registration
mixed systems
first-to-register (prior use may be recognized)
first-to-use(prior registration may be recognized)
Acquiring trademark rights
use
• first user obtains right
• no formalities
• no transparency
• problem of how to determine priority
• uncertainty before launching a product
registration
• first applicant obtains right
• registration formalities
• transparent
• priority can precisely be determined
• international standard: priority right
Comparison of the systems
Paris Union
filing in one country of the
Paris Union
6 months
filing in other Union countries
Right of priority (Art. 4 PC)
Registration procedure
Example: Community Trade Mark (EU)
application
publication
opposition registrationexaminationconditions of filing
absolute grounds
refusal
relative grounds
Descriptive signs consisting
exclusively of signs indicating the...
kind, quality, quantity
value, intended purpose
place of origin
other characteristics
…of the goods or services.
Which signs may be denied registration? (Art. 6quinquies(B) PC)
need to
keep free
Rationale?
• deceptive signs
“Orwooola” for goods made 100% of
synthetic material
• signs contrary to morality or public order
– “Jesus” for jeans
– “Cannabia” for foodstuff
Which signs may be denied registration? (Art. 6quinquies(B) PC)
• emblems of States or intergovernmental organizations
Which signs may not be registered or used as trademarks? (Art. 6ter(1) and (2) PC)
Registration
• acquisition of trademark rights
• term of protection: 10 years
• indefinitely renewable
Still possible: application to the office/
counterclaim in infringement
proceedings:
• revocation
• invalidation
‘If use is required to maintain a registration,
the registration may be cancelled only after
an uninterrupted period of at least three
years of non-use, unless valid reasons
based on the existence of obstacles to such
use are shown by the trademark owner.’
(art. 19(1) TRIPS Agreement)
Requirement of use
Registration strategies
solution 1:
harmonisation of national procedures
solution 2:
bundle of registrations via central procedure
national route
• file in many Offices
• in many languages
• fees in many currencies
• numerous national agents
• results in many national registrations
• requires many renewals
• changes to be recorded via each national Office
solution 3:
transnational trademark law system
Facilitating transnational registrations
national registrations
OHIM: Community Trade
Mark (CTM)
unitary right for the entire EU
territory
Madrid System: international registration
Facilitating transnational registrations
• Madrid Agreement (A) of 1891
• Madrid Protocol (P) of 1989
• Common Regulations
• Administrative instructions
• national interface
A closer look at the Madrid System
• basic principle: extension of protection in one
Member of the Union to other Members
• one international registration leading to a
bundle of rights in designated Members
– central recording of changes
(name, address, new holder)
– central renewal (online)
– subsequent designations (new markets)
• language regime: EN, FR, ES
A closer look at the Madrid System
Agreement only Protocol only both treaties
(including EC)
Madrid Union
certifies: particulars in international application = contents national basis
formal examination, internationalregistration and publication, notifies designated Contracting Parties
substantial examinationwithin
12/18/18+ months
refusal acceptance = effectof a national registration
OFFICE OF ORIGIN
INTERNATIONALBUREAU
OFFICE OFDESIGNATED
CONTRACTINGPARTY
International
Application
national basis: registration (A/P), application (P)
Overview of the procedure
APSwitzerland
P
AP
P
P
AP
European Community
China
AP
P
Example: Switzerland as a basis
United States
P
P
AP
AP
AP
European Community
China
P
Egypt
Example: EC as a basis
Switzerland
P
P
first step: designation of Union Members in the initial
application
further steps: subsequent designations
(further markets)
Stages of extension
• one international registration
• effect of a bundle of national registrations
• efficient management– changes (name, address, ownership)
– renewal
• flexibility– subsequent designations
– limitation, renunciation, cancellation
• cost savings
Advantages
Exemption from registration
free riders country B
right owners country A
reproduction imitation
translation
liable to create
confusion
Art. 6bis PC: well-known marks
• competent authority in the country
concerned determines whether mark
is ‘well-known’
• conflicting signs must be used for
identical or similar goods
• protection does not depend on the
registration of the well-known mark
Art. 6bis PC: well-known marks
EBS Law Term 2013 Intellectual Property Law
Trademark Law: Protection
Prof. Martin SenftlebenVU University Amsterdam
Bird & Bird, The Hague
Contents
• Overview
• Protection against confusion
– identical signs and goods/services
– similar signs and goods/services
• Protection against dilution
– well-known marks
Rights of the
trademark owner
The exclusive right to prevent all third
parties not having the owner’s consent
from using
– offering goods or services under the mark
– affixing the mark to the goods or their packaging
– putting goods on the market
– stocking goods for that purpose
– importing or exporting goods under the mark
– use on business papers or in advertising
in the course of trade…
Exclusive right (art. 16(1) TRIPS)
…of conflicting signs?
similarity+
similarity
identity
…of goods or services involved?
Areas of protection
Protection against
confusion
‘…the exclusive right to prevent all third
parties not having the owner’s 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.’
Art. 16(1) TRIPS Agreement
Similarity
similar signs similar goods or services
likelihood of confusion as to the origin of the goods or services must be
proven (art. 16(1) TRIPS)
“Lowcost” for shirts
“Swotch” for watches
“Toy-yoh-tah” for cars
“Lacoste” for trousers
“Swatch” for thermometers
“Toyota” for bicycles
• aural
– Claeryn/Klarein
• visual
– Bally/Baileys
• conceptual
– Mars/Venus
• differences can
compensate
similar features:
– Obelix/Mobilix
• decisive: overall
impression
Similarity between signs
Identity
identical signs identical goods or services
likelihood of confusion as to the
origin of the goods or services can
be presumed (art. 16(1) TRIPS)
“Lacoste” for shirts
“Swatch” for watches
“Toyota” for cars
Protection against
dilution
‘…to goods or services which are not similar
to those in respect of which a trademark is
registered, provided that use of that
trademark in relation to those goods or
services would indicate a connection
between those goods or services and the
owner of the registered trademark and...’
Art. 16(3) TRIPS Agreement
‘…provided that the interests of the owner
of the registered trademark are likely to be
damaged by such use.’
Art. 16(3) TRIPS Agreement
Similarity+
reproduction, imitation, translation of
a well-known mark
dissimilar goods or services!
indication of connection with the owner of the
well-known mark and likelihood of damage
(art. 16(3) TRIPS)
...unfair competition: dilution, blurring, tarnishment, free-riding
Subject matter of protection
‘…In determining whether a trademark is
well-known, Members shall take account
of the knowledge of the trademark in the
relevant sector of the public, including
knowledge in the Member concerned
that has been obtained as a result of
the promotion of the trademark.’
International: well-known marks (art. 16(2) TRIPS)
actual and potential consumers
persons involved in channels of distribution
business circles dealing with the type of goods or services to which the mark applies
Relevant sectors of the public shall include, but shall not necessarily be limited to:
The standard of well-known marks (art. 2(2) WIPO Joint Recommendation)
‘Where a mark is determined to be well
known in at least one relevant sector of
the public in a Member State, the mark
shall be considered by the Member State
to be a well-known mark.’
The standard of well-known marks (art. 2(2) WIPO Joint Recommendation)
…niche knowledge (+)
Damage
‘…the gradual whittling away or dispersion
of the identity and the hold upon the public
mind of the mark or name by its use upon
non-competing goods.’
(Schechter, Harvard Law Review 1927)
• objective: safeguarding the exclusive link in
the minds of consumers
Dilution theory
secondary meaning
dilution
Damage to distinctiveness/uniqueness (blurring)
(-)
(+)
…for pianos, perfume,
clothing, books
Damage to repute/goodwill (tarnishment)
‘…a sign similar to the trademark used […]
under such circumstances that prejudice to
the trademark owner may be caused by
encroaching upon the trademark’s potential
for raising a desire to buy…’
(Benelux Court of Justice, case A74/1,
1 March 1975, Claeryn/Klarein)
Example Claeryn/Klarein
Unfair free riding
damage brought to the
well-known mark
advantage taken from the
well-known mark
Change of perspective
…for perfume,
pianos, precious
watches
Unfair free riding
…for fast food, toilet
cleaning, a (lousy)
Amsterdam nightclub
Relation with tarnishment and blurring
unfair free riding
damage to repute/goodwill damage to
distinctiveness
The end.
contact: m.r.f.senftleben@vu.nl
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