ip4inno 1

A. CopyrightB. ‘Reputation’ and common law trade marksC. Unregistered designsD. Semiconductor topography right

ip4inno 2

Definition of Trade Marks

• A trade mark is a distinctive sign, usually in the form of brand name but also in other forms such as picture, signature, colour, numeral, shape, configuration or a pattern used in order to distinctive signs, used to differentiate between identical or similar goods and services different producers or services providers

ip4inno 3

Types

Trade Marks

Registered Trade Marks

Common Law Trade Marks

(Unregistered Trade Marks)

• What are the differences between use of a trademark and registration of a trademark?

• What are the benefits of registration?

ip4inno 4

Registered Trade Marks

• Application for registration must be filed on a national or regional trade mark office

• When a trade mark is registered: – the proprietor shall have the exclusive right to use the mark in relation to

the categories of goods and services for which it is registered– it extends to similar marks and similar goods/services in circumstances

where the similiarity is likely to lead to confusion in the market place– it may extend beyond the precise categories of goods and services for

which it has been registered

ip4inno 5

Examples (1)

ip4inno 6ip4inno 6

Examples (2)

ip4inno 7

Common Law Trade Marks

• When a person developes a reputation, this gives raise to a common law trademark which is protected by the legal mechanism named “passing off”

• Passing off is a cause of legal action in Anglosaxon IP law. It also referred to as “unregistered trade mark” which is an alternative way of implementing unfair competition law in the UK

ip4inno 8

Passing off (1)

• If a business does not have a registered trade mark or is unable to obtain a registered trade mark (e.g. if the name is too descriptive to qualify for trade mark registration) the law of passing off may protect a brand

• For passing-off action the claimant must show:

– goodwill or reputation– misrepresentation– damage

ip4inno 9

Passing off (2)• Goodwill (or reputation):

The benefit and advantage of the good name, reputation, and connection of a business. It is the one thing which distinguishes an old-established from a new business at its first start

Specifics related to Goodwill: Duration of goodwill, geographical extent, trade fields, collective goodwill and range of goodwill protected

ip4inno 10

Passing off (3)

• Misrepresentation

– use of the name, get-up or trading style has to confuse or deceive the public

• must be compared from visual, phonetic and cultural points of view • must be considered in the circumstances in which they are used,

merchandised or marketed• deception or confusion of a substantial, number of consumers

ip4inno 11

Example of infringement

.

ip4inno 12

Passing off (4)

• Damage– a real and tangible probability of damage is sufficient– two common heads of damage are (not exhaustive):

• in case of competition between the claimant and the defendant, the claimant would lose sales

• if the defendant’s goods or services are inferior in quality the claimant may suffer a loss of business opportunity

ip4inno 13

Example of infringement

.

ip4inno 14

Unregistered Trade Marks in Continental Europe

• It is also possible to base an opposition on an unregistered trade mark, provided the national law of the country where the trade mark is used allows the owner to prohibit the use of a subsequent national trade mark.

ip4inno 15

A. CopyrightB. ‘Reputation’ and common law trade marksC. Unregistered designsD. Semiconductor topography right

ip4inno 16

Necessity Of Unregistered Design

• Particular industries support unregistered designs: – textile industry

• necessity of quick protection due to their short marketlife

– fashion industry • necessity of quick protection due to seasonal or

short life products

ip4inno 17

Examples

ip4inno 18

Advantages and Disadvantages

• Advantages:– free and quick protection

• Disadvantages:– uncertainty– a third form of protection– copying only

ip4inno 19

Unregistered Community Design (UCD)Registered Community Design (RCD)

• UCD arises from a Community Regulation

• Community Regulation provides two types of protection:– Registered Community Design – Unregistered Community Design

ip4inno 20

Examples

ip4inno 21

• Basis of protection is the same for both RCD and UCD– it must be new– it must have “individual character”

• Main differences between RCD and UCD – degree of protection: need to prove copying for UCD– duration: 3 years UCD (5-25 RCD)– automatic protection

ip4inno 22

Features of UCD - Summary

• Right holder:– any physical or legal person

• Scope Of Protection:– scope of whole or part of a design, commences with the

availability for public• Criteria for Protection:

– novelty and individual character are required• Infringement:

– copying only

ip4inno 23

Examples