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Twinning Project “Strengthening the Protection and Enforcement of Intellectual

Property Rights in Ukraine”

TRADEMARKS IN EU

Monica POP, Prosecutor IPR UnitProsecutor's Office attached to High Court

of Cassation and Justice, ROMANIA

Kiev 18 June 2015

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 rightsCustoms RegulationsTRIPS – 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

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

Examples of trademarks

COKE bottle

Conical top of CROSS pen

TOBLERONE chocolate packaging

A Shape of a Container or Packaging

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

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)

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.

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 consumer’s 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.

Scheme of infringements

1.Use of an identical sign in relation to identical goods and services for which the trade mark is registered .

2.(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.

Likelihood of confusion

Art. 16 TRIPS şi 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

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

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.

Likelihood of confusion

Art. 5 (2) lit. b TM Directive Comparison of the marks:

Sabel vs. Puma (1998)

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.

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

Visual Similarity

Lacoste Registered Trademark Similar trademarks

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.

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: 1)the market share occupied by goods or services sold under the mark;

2)the intensity of use of the mark;

3)the geographic extent of use of the mark;

4)the duration of use of the mark; and

5)the amount of investment in promoting and advertising the

mark.

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: <http://www.wipo.int/aboutip/en/development_iplaw/pub833.htm>

Well - known vs. reputed TM

Well known TM: non - registeredarticle 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) CTMRProtection for detriment or unfair advantage also against dissimilar goods

What is C&P?

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.”

Thank you for your attention!

Monica POPIPR Unit - Prosecutor

Prosecutor’s Office attached to High Court of Cassation an Justice

pop_monica@mpublic.roTel: +4021 319 38 94

Mobile: +40 722 88 77 13