scholarly journals The David-And-Goliath-esque Problematic of “Unfair Advantage” in Trade Mark Law: Is the EU Moving Towards a Categorical Protection of Famous Brands?

2021 ◽  
Vol 52 (8) ◽  
pp. 1069-1085
Author(s):  
Heather Taylor
Keyword(s):  
Trade Mark ◽  
Trade Marks ◽  
Goods And Services ◽  
Unfair Advantage ◽  
Similar Sign ◽  
Trade Mark Law ◽  
Investment Function ◽  
David And Goliath ◽  
Exceptional Character ◽  
The Eu

AbstractThe extended protection of trade marks with a reputation is losing its “exceptional” character, making way for an almost categorical bar to the registration of any competing sign; indeed, the “unfair advantage” requirement appears to have been confounded with that of similarity. Certainly, trade marks are recognized as a legitimate restriction of the freedom of commerce and, arguably, in principle, competitors can and should invest their own efforts into conceiving and promoting an original sign under which they can market their goods and services. Nevertheless, trade mark law, insofar as it protects the investment function of a reputed mark, does not for as much shield the proprietor from all competition, even if this means that he must work harder in order to preserve this reputation. Indeed, the use of a similar sign is sometimes deemed to be ineluctable, where the applicant demonstrates that he cannot reasonably be required to abstain from using such a sign as, for example, it would be made necessary for the marketing of his products. This is especially true where the sign makes use of descriptive terms or elements in order to indicate the type of goods or services offered by the applicant under the mark applied for. This paper aims to critically discuss the most recent EU and UK jurisprudence on “unfair advantage” in the context of trade mark registration and infringement, focussing primarily on the components of this EU creation and how they are interpreted by courts on both a national and EU level.

27. Trade marks—European and international aspects

2019 ◽  
pp. 489-514
Author(s):  
Paul Torremans
Keyword(s):  
Competition Law ◽  
Trade Mark ◽  
Free Movement ◽  
Registration System ◽  
Trade Marks ◽  
Trade Mark Law ◽  
Free Movement Of Goods ◽  
International Aspects ◽  
Paris Convention ◽  
The Eu

This chapter discusses the international and European aspects of trade marks. Trade mark law is based on the Paris Convention and the TRIPS Agreement, with the Madrid system offering an international registration system. Inside the EU, one can also register a single trade mark for the whole of the Community by means of the Community Trade Mark Regulation. Trade mark law also has a substantial interaction with the Treaty provisions on the free movement of goods, but minimal conflict with competition law.

7. Trade Marks II

2017 ◽  
Author(s):  
Tanya Aplin ◽  
Jennifer Davis
Keyword(s):  
Trade Mark ◽  
Third Party ◽  
The Internet ◽  
Trade Marks ◽  
Unfair Advantage ◽  
Court Of Justice ◽  
The Eu ◽  
Academic Debate

All books in this flagship series contain carefully selected substantial extracts from key cases, legislation, and academic debate, providing able students with a stand-alone resource. This chapter discusses the relative grounds for refusal to register a trade mark; acts that constitute infringement; and remedies for infringement. It considers the finding of the Court of Justice of the EU that the investment, advertising, and commercial functions of a trade mark will be protected as well as its role as a badge of origin in cases of ‘double identity’ under the Trade Marks Directive. The chapter considers possible changes to the position under the new Trade Marks Directive and looks at the CJEU’s interpretation of cases where a third party is deemed to have taken unfair advantage of a trade mark with a reputation. It also discusses the use of trade marks on the internet and the implications for findings of infringement.

scholarly journals Atbildība par preču zīmes tiesību pārkāpumu

2021 ◽  
pp. 121-127
Author(s):  
Jānis Rozenfelds ◽  
Keyword(s):  
Intellectual Property ◽  
Property Rights ◽  
Member State ◽  
Intellectual Property Rights ◽  
Civil Law ◽  
Trade Mark ◽  
Trade Marks ◽  
Time Period ◽  
Trade Mark Law ◽  
The Eu

The liability for violation of trade mark rights until 2020 was regulated by the law “On Trade Marks and Indications of Geographical Origin” (Trade Mark Law) of 1999, which was in force until 2020. However, during the time period between 2002, when Latvia joined EU, and as late as 2016, the Trade Mark Law referred to the Latvian Civil Law (Civil Law) as the main source of law. The problem was that the traditional methods of damage calculation as established by Civil Law significantly differ from specific methods of calculation of damages caused by violation of IP rights as provided by the Directive No. 2004/48/EK. Latvia as a member state provided for the measures, procedures and remedies necessary to ensure the enforcement of the intellectual property rights covered by the Directive No. 2004/48/EK only in 2007, i.e., three years after the accession to the EU. Those measures, procedures and remedies were only gradually introduced.

Introduction to Procedural EU Trade Mark Law

2017 ◽  
Author(s):  
Annette Kur ◽  
Martin Senftleben
Keyword(s):  
European Union ◽  
Trade Mark ◽  
Trade Marks ◽  
Procedural Law ◽  
Trade Mark Law ◽  
Eu Trade Mark Law ◽  
The Eu

The procedural law that applies to trade marks in the EU depends on whether the mark is a European Union trade mark (EUTM), a national (or, in the case of Benelux marks, regional), or an international mark. As regards international marks, reference is made to Chapter 12.

scholarly journals Facing the 'Bad Faith'

2020 ◽  
Vol 3 (1) ◽  
pp. 107-127
Author(s):  
Tamar Khuchua
Keyword(s):  
European Union ◽  
Trade Mark ◽  
The European Union ◽  
Bad Faith ◽  
Trade Marks ◽  
Court Of Justice ◽  
Legislative Framework ◽  
Trade Mark Law ◽  
Legislative Changes ◽  
The Eu

The Court of Justice of the European Union has suggested that when the concept set out in the EU regulation is not defined by that regulation, it should be understood according to its usual, everyday meaning. There is no doubt that the understanding of ‘bad faith’ might differ from one person to another and especially from one firm to another. Indeed, ‘bad faith’ in trade mark law might take many different forms which are not easy to detect as the large number of cases concerning the issue of ‘bad faith’ in relation to national and EU trade marks illustrate. By analysing the current legislative framework as well as the case law of the Court of Justice of the European Union, the paper suggests that in order to maintain and even extend the smooth functioning of the EU trade mark system, legislative changes should be introduced. In particular, it is argued that it is reasonable to examine the intention of trade mark applicants already at the application stage in order to avoid the waste of resources and the burden of dealing with the trade marks registered in ‘bad faith’ in the invalidity proceedings post factum and to provide a non-exhaustive list of what elements the ‘bad faith’ can consist of. These amendments should also do good in terms of serving the broader goals of the EU law, which amongst others include, undistorted competition, legal certainty and sound administration.

scholarly journals Protecting Trade Mark Proprietors Against Unfair Competition in EU Trade Mark Law

2021 ◽  
Vol 30 ◽  
pp. 152-163
Author(s):  
Gea Lepik
Keyword(s):  
Competition Law ◽  
Trade Mark ◽  
Third Parties ◽  
Unfair Competition ◽  
Eu Law ◽  
Trade Marks ◽  
Unfair Competition Law ◽  
Trade Mark Law ◽  
Eu Trade Mark Law ◽  
The Eu

With aims of protecting trade mark proprietors against commercial practices of third parties that could hinder the use of the trade mark in informing and attracting customers, negatively influence its selling power, or exploit its attractive force, the EU legislator and the Court of Justice of the EU (CJEU) have broadened the protection afforded under trade mark law to cover such acts. At the same time, the CJEU has sought appropriate balance between the exclusive rights of trade mark proprietors and the interests of third parties, in allowing those practices that can be deemed acceptable as part of fair competition. The author argues that, in consequence, EU trade mark law is becoming ever more an EU law of unfair competition with regard to practices that involve the use of trade marks. The article represents an attempt to explain these developments by looking at specific policy choices and decisions of the CJEU on the protection of trade marks, alongside the wider context of EU law dealing with unfair competition. A key conclusion is that, in light of the lack of harmonisation of unfair competition law in the EU (at least pertaining to practices that affect businesses), the widening of the scope of protection under trade mark law helps to ensure the necessary degree of harmonisation while avoiding a parallel system of protection. When compared to pre-existing EU instruments of unfair competition law that prohibit certain uses of trade marks, this approach provides trade mark proprietors with a more efficient mechanism for enforcing their rights. In the course of elucidating this finding, the article gives the reader an understanding of how EU law addresses the protection of the commercial value of trade marks.

Four Dimensions of Diamond T: Combination Trade Marks of Colours And Shapes

2006 ◽  
Vol 37 (4) ◽  
pp. 583
Author(s):  
Michael McGowan
Keyword(s):  
Three Dimensional ◽  
Trade Mark ◽  
Fourth Dimension ◽  
Trade Marks ◽  
Four Dimensions ◽  
Trade Mark Law ◽  
Dimensional Shape ◽  
Three Dimensional Shape

This article examines the relatively new fields of colour and shape trade marks. It was initially feared by some academics that the new marks would encroach on the realms of patent and copyright.  However, the traditional requirements of trade mark law, such as functionality and descriptiveness, have meant that trade marks in colour and shape are extremely hard to acquire if they do not have factual distinctiveness. As colour and shape trade marks have no special restrictions, it is proposed that the combination trade mark theory and analysis from the Diamond T case should be used as a way to make them more accessible. The combination analysis can be easily applied because every product has a three dimensional shape and a fourth dimension of colour.

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