EBS Law Term 2013 Intellectual Property Law Trademark Law: Introduction Prof. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

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,


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


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


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

(-)

(+)(-)


Trademark Law: Acquisition



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


Trademark Law: Protection



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.’


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...’


‘…provided that the interests of the owner

of the registered trademark are likely to be

damaged by such use.’


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: [email protected]

Documents

EBS Law Term 2013 Intellectual Property Law Trademark Law: Introduction Prof. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague