Use of a trade mark on free merchandizing is not 'genuine use'

2009 ◽  
Vol 4 (6) ◽  
pp. 392-394
Author(s):  
D. Stone ◽  
W. Leppink
Keyword(s):  
Trade Mark ◽  
Genuine Use

Limitations, Defences, and Genuine Use

2017 ◽  
Author(s):  
Annette Kur ◽  
Martin Senftleben
Keyword(s):  
Intellectual Property Rights ◽  
Essential Role ◽  
Trade Mark ◽  
The European Union ◽  
The Public ◽  
Competing Interests ◽  
Domestic Legislation ◽  
Genuine Use ◽  
European Trade ◽  
The Common

As with other intellectual property rights, the exclusive rights of the trade mark proprietor are limited in several respects. At the international level, Article 17 TRIPS offers room for the adoption of ‘limited exceptions’ in domestic legislation (see paragraphs 2.68–2.72). On this basis, Article 14 of the Trade Mark Directive (TMD) and Article 12 of the European Trade Mark Regulation (EUTMR) provide a tool for reconciling the interests of the trade mark owner with competing interests of other traders and the public at large. As explained by the Court of Justice of the European Union (CJEU), these provisions, by limiting the effects of the exclusive rights of the trade mark owner, seek ‘to reconcile the fundamental interests of trade mark protection with those of free movement of goods and freedom to provide services in the common market in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the Treaty seeks to establish and maintain’.

26. Trade marks—infringement and revocation

2019 ◽  
pp. 446-488
Author(s):  
Paul Torremans
Keyword(s):  
Trade Mark ◽  
Trade Marks ◽  
Trade Mark Infringement ◽  
Indefinite Number ◽  
Genuine Use ◽  
The Common ◽  
The Law ◽  
The Uk ◽  
Nature Quality

This chapter discusses the law on trade mark infringement and revocation. Section 10 of the Trade Marks Act 1994 establishes the basic criteria for an infringement action. If a mark is already on the Trade Marks Register, it is an infringement to use the same mark for the same goods or services. The grant of a trade mark lasts initially for 10 years from the date of its registration, and this may be renewed for a seemingly indefinite number of further periods of 10 years thereafter on payment of the appropriate fee. There are four grounds listed in s. 46(1) of the 1994 Act for revocation: (i) five years’ lack of genuine use of the mark in the UK without cause; (ii) a suspension for the same period (after initial use); (iii) the mark has become the common name for the product in question in the trade; and (iv) if the mark has been used in a misleading manner, especially as to the nature, quality, or origin of the goods or services in question.

Loss of RightsRequirement of Use, Conversion to Generic Indication

2016 ◽  
Author(s):  
Alexander Mühlendahl ◽  
Dimitris Botis ◽  
Spyros Maniatis ◽  
Imogen Wiseman
Keyword(s):  
Trade Mark ◽  
Mirror Image ◽  
Genuine Use ◽  
The Absolute ◽  
The Difference ◽  
Absolute Grounds For Refusal ◽  
Trade Mark Registration

The rights arising from trade mark registration may be lost. First, when registration is not renewed, the registration will be deleted from the register. Second, a registered trade mark is liable to be revoked if it has not been put to genuine use for more than five years. Third, a trade mark is subject to revocation when it has become the generic indication, the ‘name’ of the product. Fourth, a mark is also subject to revocation when it has become misleading. The last two revocation grounds are the mirror image of the absolute grounds for refusal, the difference being that revocation is available when the mark, although properly registered initially, has become generic or misleading at a later time. The first ground for revocation, absence of genuine use, has no counterpart at the time of filing or registration. Rather, the legislation provides trade mark proprietors with a period of five years following registration after which revocation is possible.

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