The EU General Court provides guidance on own name, unfair advantage and late evidence in trade mark proceedings

2015 ◽  
Vol 10 (8) ◽  
pp. 575-576
Author(s):  
Kirsten Toft
Keyword(s):  
Trade Mark ◽  
Unfair Advantage ◽  
Own Name ◽  
The Eu

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.

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.

14. Defences to trade mark infringement

2019 ◽  
pp. 320-360
Author(s):  
Stavroula Karapapa ◽  
Luke McDonagh
Keyword(s):  
Intellectual Property ◽  
Trade Mark ◽  
European Economic Area ◽  
European Economic ◽  
Trade Mark Infringement ◽  
Economic Area ◽  
Parallel Importation ◽  
Own Name ◽  
Scope Of Protection

This chapter looks at the various defences against trade mark infringement and the way in which the courts have interpreted them. A defendant's principal argument will be to deny that there has been any infringing conduct, and/or that what has been done is not within the scope of protection given to the registered mark. There are, however, a number of statutory defences. These defences span from the use of one's own name to a framework outlining the conditions of comparative advertisement and the role of exhaustion of rights as a defence to an action for trade mark infringement, including the ways in which the intellectual property owner can object to the parallel importation of non-European Economic Area (EEA) goods.

41. Trade mark defences

2018 ◽  
Author(s):  
L. Bently ◽  
B. Sherman ◽  
D. Gangjee ◽  
P. Johnson
Keyword(s):  
Trade Mark ◽  
Comparative Advertising ◽  
Trade Marks ◽  
Intended Purpose ◽  
Parallel Importation ◽  
First Sale ◽  
Own Name ◽  
Scope Of Protection

This chapter is about the various defences that are available to a person who has been accused of infringing a trade mark under the Trade Marks Act 1994. A prominent limitation on the scope of protection, which operates defensively, is whether the defendant has made a legally relevant use of the mark. Besides this, the defendant is excused if the mark has been used (i) as the defendant’s own name or address, (ii) for descriptive purposes, or (iii) to indicate the intended purpose of a product or service. These threeuses are subject to a proviso testing for whether the use has been in accordance with honest practices in industrial and commercial matters. Additional defences facilitate comparative advertising and permit parallel importation via the exhaustion of the trade mark owner’s rights upon first sale.

scholarly journals CJEU excludes retroactive application of reformed language of Article 7(1)(e)(iii) of the EU Trade Mark Regulation and does (not) clarify what ‘another characteristic’ means

2019 ◽  
Vol 14 (8) ◽  
pp. 590-592
Author(s):  
Eleonora Rosati
Keyword(s):  
Trade Mark ◽  
The Eu

Abstract CJEU, Textilis Ltd and Ozgur Keskin v Svenskt Tenn Aktiebolag, C-21/18, EU:C:2019:199, 14 March 2019

Copyright Resources

2003 ◽  
Vol 3 (1) ◽  
pp. 32-33 ◽  
Author(s):  
Mandy Webster
Keyword(s):  
Intellectual Property ◽  
Trade Mark ◽  
European Patent ◽  
Patent Office ◽  
International Treaties ◽  
Press Releases ◽  
Legal Decisions ◽  
Search Facility ◽  
Copyright Directive ◽  
The Eu

This site contains information on copyright, designs, patents and trademarks. The legal decisions page includes selected decisions issued by the Patent Office since the beginning of 1998 and links through to the Patents Court website, European Patent Office website and Copyright Tribunal. News and press releases on aspects of intellectual property and the Trade Mark, Patent and Design Journal notices can also be viewed here with all pages including a note of when they were last updated. A page with information on patent and trademark searches and a search facility for the whole site is available. A list of forms can be accessed and viewed along with guidance notes and fees information. Progress on implementation of the EU Copyright Directive is brief but helpful. The glossary of terms covers very few terms and some pages would benefit from hyperlinks being added such as the information about international treaties. URL: http://www.patent.gov.uk/copy/index.htm

scholarly journals Goods in Transit and Intellectual Property Under the EU Law and Caselaw of the Court of Justice

2014 ◽  
Vol 14 (2) ◽  
pp. 93-104
Author(s):  
Radim Charvát
Keyword(s):  
Intellectual Property ◽  
Member State ◽  
Case Law ◽  
Trade Mark ◽  
State Courts ◽  
Eu Law ◽  
Member States ◽  
Court Of Justice ◽  
In Transit ◽  
The Eu

Abstract The paper addresses the issue whether customs authorities of Member States are entitled to suspend or detain goods in transit (i.e., products directing from one non- Member State to another non-Member State through the EU) and the evolving case-law of the Court of Justice related to this matter. Prior to the judgment in Philips and Nokia cases, a so-called manufacturing fiction theory was applied by some Member State courts (especially Dutch courts). According to this theory, goods suspended or detained by customs authorities within the EU were considered to be manufactured in the Member State where the custom action took place. In the Philips and Nokia judgments, the Court of Justice rejected this manufacturing fiction theory. But the proposal for amendment to the Regulation on Community trade mark and the proposal of the new Trademark directive, as a part of the trademark reform within the EU, go directly against the ruling in the Philips and Nokia cases and against the Understanding between the EU and India.

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