Use of a mark in a form differing in elements which do not alter its distinctive character - practice and examples - Мр Мирела Бошковић

Use of a mark in a form differing in elements which Use of a mark in a form differing in elements which do not alter its distinctive characterdo not alter its distinctive character

- practice and examples -- practice and examples -

Мр Мирела Бошковић

• Basic principles (obligation to use a trademark)Basic principles (obligation to use a trademark)

• Admissiblity of variations – standards Admissiblity of variations – standards

• Types of trademarks (word, figurative, composed trademarks)Types of trademarks (word, figurative, composed trademarks)

• ExamplesExamples

GENERAL PRINCIPLE

• A trademark holder must use a trademark (Art. 46 TML).

• A trademark must be used as registered.

A trademark holder has the exclusive right to use a sign protected by a trademark for goods and/or services for which it is registered (Art. 38.1. TML).

Sanctions for the non-use of a registered trademark:

- invalidation of trademark for the reasons of similarity or identity with an earlier trademark;

- revocation of registered trademark due to its non-use

INVALIDATION AND REVOCATION OF TRADEMARK

• INVALIDATION - The registered trademark may not be declared invalid if the earlier trademark had not been used in Serbia for the purposes of marking goods or services comprised, for a period of five years preceding the submission of the request for invalidation, unless the applicant for the registration of the later trademark had not acted in good faith. (Art 63.3. TML)

• REVOCATION - At the request of an interested party, the competent authority may issue a decision on revocation of a trademark if the holder of the trademark or a person authorized by him fail, without a justified reason, to seriously use trademark on the domestic market for marking of goods and/or services comprised, for an uninterrupted period of five years as of the day on which the trademark was entered in the Trademark Register or from the day of its last use. During the proceedings for termination of a trademark due to its non-use, the trademark holder or a person authorized by him must prove that the trademark has been used. (Art. 64.1. TML)

ADMISSIBILITY OF VARIATIONS

• Differences between the form in which the mark is used on the market and the registered form are acceptable as long as the DISTINCTIVE CHARACTER OF THE MARK IS NOT ALTERED.

• In each individual case it should be examined does the differences alter the distinctive character of the trademark as registered.

Use of the trademark, within the meaning of Art. 60.3 and Art. 64.1 shall also mean the use of the sign protected by the trademark in a form which differ in elements that do not alter the distinctive character of the trademark, as well as the use of the protected trademark on goods or packaging of goods intended exclusively for export. (Art. 64.2.TML)

ADMISSIBILITY OF VARIATIONS – what should be examined?

• What elements of the sign are to be considered as distinctive characterstics of the trademark as registered;

• Does the sign as used in the market alters this distincitve character.

WORD TRADEMARKS

• As a general rule they are considered used as registered if the typeface is different.

EXCALIBUR excalibur – Excalibur – EXCALIBUR (acceptable variations)

• unless the typeface is a particular one so that overall appearance of the word mark is changed to that of a figurative mark

EXCALIBUR - EXcaliBUR (not acceptable variations)

FIGURATIVE TRADEMARKS

• As a general rule alterations shall be acceptable as long as the distincive character of the trademark as registered is not altered.

FIGURATIVE TRADEMARKS

• Alterations shall not be acceptable when the distincive character of the trademark as registered is altered.

FIGURATIVE TRADEMARKS

• When a registered trademark is used together with a generic indication of the product or descriptive term that is not integrated into the trademark as registered (kind, quality, quantity etc.) this will be considered as use of of the registered trademark.

acceptableacceptable

FIGURATIVE TRADEMARKS

• In the case of composed trademark, where only one or some elements makes a trademark distinctive at whole (generic term in combination of distinctive combination of colors), an alteration of any of these elements will alter the distinctive character of the trademark.

Not acceptableNot acceptable FRESH - LIME

FIGURATIVE TRADEMARKS

• When the composed trademark consists of both word and figurative elements as distinctive, and when figurative element is dominant in the overall impression of the trademark, alteration in a dominant figurative element or its omission will alter its overall distinctive character even if the word element remains unchanged.

Not acceptableNot acceptable

CONCLUSION

• Admissibility of variations in some situations, is a result of the need to adapt the use of a registered trademark with respect of the specific circumstances of the market such a form o packaging of the product etc.

Thank you for your attentionMirela Bošković, LL.M.assistant director

www.zis.gov.rs

[email protected]