DEFENSES AGAINST CLAIMS OF TRADE MARK INFRINGEMENT

Professor Dr. Alexander von Mühlendahl, J.D., LL.M.ALICANTE4 July 2018

DEFENSES AGAINST CLAIMS OF TRADE MARK INFRINGEMENT

Professor Dr. Alexander von Mühlendahl, J.D., LL.M.Alicante

4 July 2018

DEFENSES AGAINST CLAIMS OF TRADE MARK INFRINGEMENT

Overview

The principal defenses

Examples (EU)

• Exhaustion

• Fair use

• Defense of absence of genuine use

• Defense of acquiescence

Trade mark infringement: Defenses

No infringement (no trademark use, no likelihood of confusion, no reputation, no detriment to reputation/distinctiveness)

Counterattacks (invalidity or revocation)

“Defensive” defenses (exhaustion, fair use, absence of genuine use, acquiescence, statute of limitations, intervening rights)

The statutory framework: The example of the European Union

Counterattacks

• Revocation

• Invalidation

Article 58 - Grounds for revocation (1) The rights of the proprietor of the EU trade mark shall be declared to be revoked on application to the Office or on the basis of a counterclaim in infringement proceedings:

Article 58 - Grounds for revocation …(a) if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non- use; however, no person may claim that the proprietor's rights in an EU trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed; the commencement or resumption of use within a period of three months preceding the filing of the application or counterclaim which began at the earliest on expiry of the continuous period of five years of non-use shall, however, be disregarded where preparations for the commencement or resumption occur only after the proprietor becomes aware that the application or counterclaim may be filed;

Article 58 - Grounds for revocation …(b) if, in consequence of acts or inactivity of the proprietor, the trade mark has become the common name in the trade for a product or service in respect of which it is registered; (c) if, in consequence of the use made of the trade mark by the proprietor of the trade mark or with his consent in respect of the goods or services for which it is registered, the trade mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services. (2) …

Counterattacks: Revocation

Grounds of revocation

• Absence of genuine use

• Trade mark has become generic name

• Trade mark has become misleading

Counterattacks: Revocation

Asserting grounds of revocation

• Action before IP office (EUIPO)

• Counterclaim in infringement action

• Defense

Counterattacks: Invalidation

Grounds of invalidation

• Absolute grounds

• Bad faith

• Relative grounds

Counterattacks: Invalidation

Asserting grounds of invalidation

• Action before IP Office (EUIPO)

• Counterclaim in infringement action

• Defense?

“Defensive” defenses: Examples in the European Union

Exhaustion

Fair use

Genuine use

Acquiescence

Exhaustion: The European approach

Exhaustion of rights – Article 15 EUTMR

(1) An EU trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent. (2) Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

Exhaustion

The issues

• Placing on the market

• International vs. regional vs. national exhaustion

• Exceptions

• Parallel importation of pharmaceutical products

“Defensive” defenses: The international framework

Article 17 TRIPS Agreement

Members may provide limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.

“Defensive” defenses: The European approachExample: Fair use

Fair use – Article 14 EUTMR

(1) An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade: (a) the name or address of the third party, where that third party is a natural person; (b) signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of the goods or services;

Fair use – Article 14 EUTMR

(1) An EU trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade: …(c) the EU trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts.

(2) Paragraph 1 shall only apply where the use made by the third party is in accordance with honest practices in industrial or commercial matters.

Fair use: The cases and the issues

Use of names

Use of descriptive and non-distinctive indications

Referential use

Use of names

• Only family names

• Absolute right to use? “Fairness”

Use of descriptive or non-distinctive indications

• Manner of use

• “Fairness”

Referential use

• Replacement goods (spare parts) and services

• “Fairness”

Genuine use: The international framework


1. 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. Circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to the use of the trademark, such as import restrictions on or other government requirements for goods or services protected by the trademark, shall be recognized as valid reasons for non-use. …

Genuine use: The international framework


…2. When subject to the control of its owner, use of a trademark by another person shall be recognized as use of the trademark for the purpose of maintaining the registration.

Genuine use: The European approach

Article 18 EUTMR

(1) If, within a period of five years following registration, the proprietor has not put the EU trade mark to genuine use in the Union in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the EU trade mark shall be subject to the sanctions provided for in this Regulation, unless there are proper reasons for non-use. …


Article 18 EUTMR

… The following shall also constitute use within the meaning of the first subparagraph: (a) use of the EU trade mark in a form differing in elements which do not alter the distinctive character of the mark in the form in which it was registered, regardless of whether or not the trade mark in the form as used is also registered in the name of the proprietor; (b) affixing of the EU trade mark to goods or to the packaging thereof in the Union solely for export purposes. (2) Use of the EU trade mark with the consent of the proprietor shall be deemed to constitute use by the proprietor.


Article 127 - Presumption of validity — Defence as to the merits

(1) The EU trade mark courts shall treat the EU trade mark as valid unless its validity is put in issue by the defendant with a counterclaim for revocation or for a declaration of invalidity. …(3) In the actions referred to in points (a) and (c) of Article 124, a plea relating to revocation of the EU trade mark submitted otherwise than by way of a counterclaim shall be admissible where the defendant claims that the EU trade mark could be revoked for lack of genuine use at the time the infringement action was brought.


The principal issues

• The grace period

• The territorial extent of use

• The use of a variant of the registered mark

• Partial use

• Justification of absence of use

Acquiescence: The European approach

Article 61 - Limitation in consequence of acquiescence

(1) Where the proprietor of an EU trade mark has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the Union while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith. …


Article 61 - Limitation in consequence of acquiescence ...(2) Where the proprietor of an earlier national trade mark as referred to in Article 8(2) or of another earlier sign referred to in Article 8(4) has acquiesced, for a period of five successive years, in the use of a later EU trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign to apply for a declaration that the later trade mark is invalid in respect of the goods or services for which the later trade mark has been used, unless registration of the later EU trade mark was applied for in bad faith. 3.In the cases referred to in paragraphs 1 and 2, the proprietor of a later EU trade mark shall not be entitled to oppose the use of the earlier right, even though that right may no longer be invoked against the later EU trade mark.


Article 16 - Intervening right of the proprietor of a later registered trade mark as a defence in infringement proceedings

(1) In infringement proceedings, the proprietor of an EU trade mark shall not be entitled to prohibit the use of a later registered EU trade mark where that later trade mark would not be declared invalid pursuant to … Article 61(1) or (2), … of this Regulation.

Acquiescence: The issues

Continuous use

Place of use

Knowledge of use

Defenses: Conclusions

Defenses

Q & A

Documents

DEFENSES AGAINST CLAIMS OF TRADE MARK INFRINGEMENT