38. Relative grounds for refusal

2018 ◽  
Author(s):  
L. Bently ◽  
B. Sherman ◽  
D. Gangjee ◽  
P. Johnson
Keyword(s):  
European Union ◽  
Trade Mark ◽  
The European Union ◽  
Trade Marks ◽  
Likelihood Of Confusion ◽  
The Uk

This chapter focuses on ‘relative grounds’ for denying an application to register a trade mark as set out in section 5 of the Trade Marks Act 1994 and Article 8 of the European Union Trade Marks Regulation (EUTMR). It identifies ‘earlier trade marks’ and ‘earlier rights’ before turning to the tests which allow a prior mark to oppose the registration of a subsequent one. First, it reviews the so-called double identity ground, where an identical (later) mark is applied for, in the context of identical products. Second, it considers when likelihood of confusion may be established. Third, it surveys three situations referred to collectively as ‘dilution’, where the later mark may mentally evoke the earlier one in a way that is not confusing, yet still wrongful. It also explains the ‘advertising function’ of a trade mark, along with requirements relating to reputation and ‘due cause’. Finally, the chapter discusses relevant provisions governing unregistered trade marks, copyright, design right, and registered design right in the UK.

35. Trade mark registration

2018 ◽  
Author(s):  
L. Bently ◽  
B. Sherman ◽  
D. Gangjee ◽  
P. Johnson
Keyword(s):  
European Union ◽  
Intellectual Property ◽  
Trade Mark ◽  
The European Union ◽  
Trade Marks ◽  
The Uk ◽  
Trade Mark Registration ◽  
The Eu

This chapter focuses on the process of registration for trade marks in the UK, the European Union, and other countries. It begins by explaining the differences in procedures and documentation needed in filing trade mark applications at the national, regional, and international levels. The role of the European Union Intellectual Property Office (EUIPO) in processing applications in the EU is considered, along with the international filing systems established under the 1891 Madrid Agreement and the 1989 Madrid Protocol. The chapter concludes by presenting possible avenues through which to acquire trade mark protection. It briefly considers the possible impacts of Brexit.

Distinctiveness of the Marks

2019 ◽  
Author(s):  
Ilanah Fhima ◽  
Dev S. Gangjee
Keyword(s):  
European Union ◽  
Trade Mark ◽  
The European Union ◽  
Trade Marks ◽  
Likelihood Of Confusion ◽  
European Trade ◽  
The Impact ◽  
Scope Of Protection ◽  
Practical Level

The role of distinctiveness is perhaps the least understood element of the likelihood of confusion analysis. Obscure in its origins, the idea that the more distinctive a mark is, the more likely confusion should be has been repeatedly accepted by the Court of Justice of the European Union (CJEU), but this is also strongly criticised by commentators and UK judges in particular. This chapter seeks to understand the role that distinctiveness plays in the assessment of confusion, explaining how it entered the European trade mark system and critically evaluating its role. On a practical level, this chapter seeks to understand the impact of distinctiveness through examples of levels of distinctiveness that have and have not been accepted to result in enhanced protection, and also to consider how tribunals have dealt with the overlap between distinctiveness for registrablity and likelihood of confusion purposes. However, the chapter ends with a note of warning: although it is possible to find a significant number of cases where distinctiveness is employed to enhance the scope of protection trade marks, in the vast majority of cases, this factor is either not mentioned or deemed irrelevant.

scholarly journals ОБИМ СУБЈЕКТИВНОГ ПРАВА НА ЖИГ У ПРАВУ ЕВРОПСКЕ УНИЈЕ

TEME ◽  
2017 ◽  
pp. 193
Author(s):  
Vukašin Petrović
Keyword(s):  
European Union ◽  
Trade Mark ◽  
Regulatory Framework ◽  
The European Union ◽  
Concrete Case ◽  
Court Of Justice ◽  
Likelihood Of Confusion ◽  
The Individual

In this paper, we analyze the appropriate regulatory framework of the European Union which is related to the issue of the scope of trade mark, i.e. its application in practice, through appropriate judgements of the Court of Justice of the European Union. More particularly, the focus of the analysis is on the factors on the basis of which the scope of trade mark as a subjective right is determined, i.e. the limits of protection acquired by the concrete trade mark. In that sense, this paper will aim to provide a detailed view of, primarily, the concept of likelihood of confusion which represents the key element for determining the scope of trade mark as a subjective right, through the view of the individual elements from which it consists, i.e. on the basis of which the existence of the mentioned likelihood is determined in each concrete case.

Similarity of Marks

2019 ◽  
Author(s):  
Ilanah Fhima ◽  
Dev S. Gangjee
Keyword(s):  
European Union ◽  
Crucial Role ◽  
Trade Mark ◽  
The European Union ◽  
Conceptual Similarity ◽  
Average Consumer ◽  
Court Of Justice ◽  
Likelihood Of Confusion ◽  
Constituent Elements

The test for similarity of marks has changed very little since it was laid down by the Court of Justice of the European Union (CJEU) in SABEL v Puma. Given that the court has adopted a strict approach to when marks will be identical, similarity of marks plays a crucial role in ensuring that the interests of trade mark owners are adequately protected. There the court stated that a ‘global appreciation of the visual, aural or conceptual similarity of the marks in question, must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ with a view to determining whether the signs in question are similar enough to lead to a likelihood of confusion in the minds of the average consumer of the goods or services in question. It has subsequently been suggested that, where marks have other sensory aspects, as would be the case with, for example, an olfactory mark, these too should be considered. The court also noted that average consumers tend to view marks as a whole, rather than dividing them into their constituent elements.

39. Revocation

2018 ◽  
Author(s):  
L. Bently ◽  
B. Sherman ◽  
D. Gangjee ◽  
P. Johnson
Keyword(s):  
European Union ◽  
Trade Mark ◽  
The European Union ◽  
Trade Marks ◽  
The Public ◽  
Goods And Services ◽  
The Common

This chapter examines revocation as a reason for removing a mark from the register and the grounds for revocation as set out in section 46 of the Trade Marks Act 1994 and Article 57 of the European Union Trade Marks Regulation. It begins by discussing the first ground on which a mark may be revoked: ‘non-use’ (the trade mark has not been used for five years following the date of completion of the registration). It considers the relevant period of non-use and proper reasons for non-use, along with the issue of rewriting the specification with respect to goods and services. The chapter then looks at the second ground for the revocation of trade marks: if the mark has become the ‘common name in the trade’ (that is, generic marks). The final reason for revocation is if the mark has been used in a way that misleads the public (that is, deception is involved).

9. Passing-off and trade marks

2017 ◽  
Author(s):  
Tim Press
Keyword(s):  
European Union ◽  
Common Law ◽  
Trade Mark ◽  
The European Union ◽  
Brand Name ◽  
Trade Marks ◽  
Passing Off ◽  
The Law

Passing-off is a common law cause of action that protects traders with goodwill in their business against misrepresentations made by their competitors which confuse customers as to the source of goods or services. The typical passing-off scenario is where a trader, by the use of a brand name, logo, slogan, or packaging, deceives customers into thinking that its products or services are associated with another trader. Trade marks can be registered for signs or symbols that identify products or services as coming from a particular trader, so to be registrable a trade mark must be distinctive of a trader’s goods and not similar to any earlier registered mark, or a non-registered mark that is in use. Registration of a trade mark gives substantial advantages over relying on passing-off. The law of registered trade marks has been harmonized by the European Union.

27. Grounds for invalidity: novelty, individual character, and relative grounds

2018 ◽  
Author(s):  
L. Bently ◽  
B. Sherman ◽  
D. Gangjee ◽  
P. Johnson
Keyword(s):  
European Union ◽  
Trade Mark ◽  
Community Design ◽  
The European Union ◽  
Prior Art ◽  
Individual Character ◽  
The Uk ◽  
The Right

This chapter explores the criteria that are applied to determine the validity of a design —whether a registered design in the UK and the European Union or an unregistered Community design: the design must be ‘new’; the design must have ‘individual character’; the applicant or the right holder must be entitled to the protected design; and the design must not conflict with earlier relevant rights (including earlier design applications, copyright, trade mark rights, and rights relating to certain types of emblem). The factors to take into account to determine the novelty of a design, such as prior art, are also considered. The chapter concludes by looking at relative grounds for design invalidity.

Trade Marks in Europe and the Court of Justice of the European Union

2016 ◽  
Author(s):  
Alexander Mühlendahl ◽  
Dimitris Botis ◽  
Spyros Maniatis ◽  
Imogen Wiseman
Keyword(s):  
European Union ◽  
Trade Mark ◽  
The European Union ◽  
Trade Marks ◽  
Court Of Justice ◽  
Trade Mark Law

The purpose of this chapter is to offer an introduction on the role of the Court of Justice and its effect on the development of trade mark law in Europe.

Trade Marks as Objects of Property

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

Harmonized EU trade mark law contains rules on trade marks as objects of property in Articles 16 to 24a of the European Union Trade Mark Regulation (EUTMR) and Articles 22 to 26 of the Trade Mark Directive (TMD). These rules cover transfer and assignment, the possibility of giving trade marks as security and granting rights in rem, the levy of execution, the involvement of EUTMs in insolvency proceedings, and issues of trade mark licensing. The substantive provisions are accompanied by procedural rules concerning the recordal of corresponding legal transactions in the register. While the TMD only guarantees the possibility of registration, the EUTMR contains more detailed registration requirements.

9. Passing-off and trade marks

2019 ◽  
pp. 148-178
Author(s):  
Tim Press
Keyword(s):  
European Union ◽  
Common Law ◽  
Trade Mark ◽  
The European Union ◽  
Brand Name ◽  
Trade Marks ◽  
Passing Off ◽  
The Law

Passing-off is a common law cause of action that protects traders with goodwill in their business against misrepresentations made by their competitors which confuse customers as to the source of goods or services. The typical passing-off scenario is where a trader, by the use of a brand name, logo, slogan, or packaging, deceives customers into thinking that its products or services are associated with another trader. Trade marks can be registered for signs or symbols that identify products or services as coming from a particular trader, so to be registrable a trade mark must be distinctive of a trader’s goods and not similar to any earlier registered mark, or a non-registered mark that is in use. Registration of a trade mark gives substantial advantages over relying on passing-off. The law of registered trade marks has been harmonized by the European Union.

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