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.

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.

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.

The Interaction with Other Areas of the Law

2016 ◽  
Author(s):  
Alexander Mühlendahl ◽  
Dimitris Botis ◽  
Spyros Maniatis ◽  
Imogen Wiseman
Keyword(s):  
Competition Law ◽  
Trade Mark ◽  
Bad Faith ◽  
Trade Marks ◽  
Domain Names ◽  
The Third ◽  
Trade Mark Law ◽  
The Common ◽  
The Relationship

Competition law and the free movement of goods principles have guided the development of trade mark law in Europe. This chapter will examine other relationships. The first part considers the use of trade marks in comparative advertisements. We have seen in Chapter 7 how comparative advertising has delineated the limits of trade mark law. Here the other side of the relationship is examined. Chapter 5 considered whether a geographical name can function and be protected as a trade mark and the limits of such protection. The second part of this chapter gives a flavour of the system of protecting product designations as geographical indications of origin. The third part looks at the clash between trade marks and domain names and the catalysing role of the concept of bad faith. The fourth part is a good example of how one dispute between distinguishing signs can become the common theme of distinct plots performed before different European audiences;

EU Law in the UK

2020 ◽  
Author(s):  
Sylvia de Mars
Keyword(s):  
Decision Making ◽  
Competition Law ◽  
Free Movement ◽  
Contextual Approach ◽  
Eu Law ◽  
History Of ◽  
Free Movement Of Goods ◽  
The Uk ◽  
Domestic Law ◽  
The Eu

EU Law in the UK tackles this subject with a post-Brexit perspective. It has a contextual approach, aiming to present the topic in a fresh and relatable way. Topics covered include the history of the EU from 1972 to the present day, the EU institutions, decision making and democracy, EU legislative powers, and the limits to those powers. The text also looks at the relations between EU and national law, domestic law, and enforcing EU law. It also considers the internal (or common, or single) market, the free movement of goods and workers, EU citizenship, and the free movement of services. Competition law is also touched upon. Finally, the text looks towards the future and considers how the UK can negotiate a future relationship with the EU.

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.

scholarly journals Can a Parallel Importer Rebrand Pharmaceutical Products in the EU?

2019 ◽  
Vol 9 (1) ◽  
pp. 57-76
Author(s):  
Jurgita Grigienė ◽  
Paulius Čerka ◽  
Dalia Perkumienė
Keyword(s):  
National Court ◽  
Trade Mark ◽  
Pharmaceutical Products ◽  
Free Movement ◽  
The European Union ◽  
Member States ◽  
Eu Member States ◽  
Free Movement Of Goods ◽  
The Eu ◽  
Objective Necessity

AbstractThe European Union has established the free movement of goods, which covers the parallel import of goods in the EU. However, the free movement of goods should not infringe on the rights of trade mark owners. In some cases, parallel importer needs not only to repackage but also to rebrand pharmaceutical products. ECJ has stated that rebranding is permissible if objective necessity to rebrand exists. But it is the national court that has to determine what objective necessity is. This paper analyses the decisions of EU Member States. In some cases, objective necessity has been determined on similar grounds. However, in other cases, a necessity to enter some part of the market has been evaluated differently in different Member States. The different evaluation of the necessity criterion could be treated as the infringement of uniform application of the free movement of goods in the EU.

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 Conceptual confusing similarity and pictorial trade marks

2022 ◽  
Vol 11 (4) ◽  
pp. 409-443
Author(s):  
Rob Batty
Keyword(s):  
Trade Mark ◽  
Conceptual Similarity ◽  
Registration System ◽  
Trade Marks ◽  
Case Examples ◽  
Legal Principles ◽  
High Profile ◽  
The United Kingdom ◽  
Trade Mark Law ◽  
Scope Of Protection

Several high-profile rebrands, including those by Twitter and Starbucks, have involved removing text from logos. This move towards wordless, pictorial trade marks raises a difficult question about how the scope of protection of a registered trade mark should be determined. This article examines the particular issue of how much weight should be given to the idea or concept underlying a pictorial mark when assessing whether a defendant’s junior mark is ‘confusingly similar’. Drawing on legal principles and case examples from Europe, the United Kingdom, Singapore and New Zealand, it is claimed that courts and adjudicators should be careful not to overweight conceptual similarity. It is argued that a lack of care in assessing conceptual similarity risks awarding one trader overbroad protection, which may be tantamount to conferring on one trader a monopoly in an idea. A lack of care may also undermine the logic of a registration system by untethering protection from what is recorded on the Register, and may make trade mark law less predictable and certain. * The author declares that he was junior counsel in a case discussed in this article, Carabao Tawandang Co Ltd v Red Bull GmbH HC Wellington CIV-2005-485-1975, 31 August 2006. The views represented in this article are the author’s own, and do not reflect the views of his employer at the time, or the views of the client represented in that particular case.

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