Collective Marks and Certification Marks

2017 ◽  
Author(s):  
Annette Kur ◽  
Martin Senftleben
Keyword(s):  
Trade Mark ◽  
Quality Level ◽  
Quality Changes ◽  
Product Characteristics ◽  
Trade Marks ◽  
The Public ◽  
Consumer Expectations ◽  
Trade Mark Law ◽  
Commercial Source ◽  
Collective Marks

It is a defining feature of ‘ordinary’, individual trade marks that they indicate a single commercial source. Collective marks and certification marks, by contrast, are meant to signify membership in an association, or a particular quality, or compliance with other, specific conditions. Furthermore, while an individual mark’s quality function, that is, consumer expectations with regard to the quality level and the consistency of product characteristics, is in most cases only indirectly protected, meaning that competitors or members of the public cannot request sanctions under trade mark law in case that quality changes occur (see Chapter 7, sections 7.2.3 and 7.6.4.4.2), collective marks and certification marks risk losing their validity when the standards they are meant to indicate are neglected.

scholarly journals The Challenges of Prior Use to New Zealand Registered Trade Mark Law

2014 ◽  
Vol 45 (2) ◽  
pp. 257
Author(s):  
Rob Batty
Keyword(s):  
New Zealand ◽  
Trade Mark ◽  
Trade Marks ◽  
The Public ◽  
Consumer Confusion ◽  
Prior Use ◽  
Trade Mark Law ◽  
Trade Mark Registration

Under the Trade Marks Act 2002, the registrant of a trade mark is provided with the exclusive rights to use its trade mark. Priority to such exclusive rights is awarded to the person who files a trade mark application first. A searchable Register of trade marks enables traders and the public to see which trade marks have already been registered and by whom. This seemingly certain system is complicated by the continuing relevance of unregistered trade marks under New Zealand law. The first user of a trade mark in the marketplace is considered the true "owner" or "proprietor" of a trade mark. A prior user of an unregistered mark is able to prevent registration of a trade mark, or cancel an existing trade mark registration, even when the application was filed in ignorance of any prior use and where there is no prospect of consumer confusion. This article explores the unsatisfactory nature and consequences of this law of "proprietorship" and questions its continuing relevance. 

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.

Assessing Likelihood of Confusion

2019 ◽  
Author(s):  
Ilanah Fhima ◽  
Dev S. Gangjee
Keyword(s):  
Trade Mark ◽  
Trade Marks ◽  
The Public ◽  
Likelihood Of Confusion ◽  
Essential Function ◽  
The Right ◽  
Article 5

The likelihood of confusion test is inextricably linked to the principal justification for trade mark protection. If the essential function of a trade mark is to reliably indicate the commercial origin of a product in the marketplace, an action to prevent confusion amongst consumers, thereby impeding this origin indicating ability, is a necessary corollary. The language of Article 5(1)(b) (relative grounds) and Article 10(2)(b) (infringement) of the Trade Marks Directive 2015 (TMD 2015) indicates that the proprietor has the right to prevent a junior user from registering or using a mark where ‘because of its identity with, or similarity to, the earlier trade mark and the identity or similarity of the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association with the earlier trade mark’.

37. Absolute grounds for refusal

2018 ◽  
Author(s):  
L. Bently ◽  
B. Sherman ◽  
D. Gangjee ◽  
P. Johnson
Keyword(s):  
Public Policy ◽  
Trade Mark ◽  
The European Union ◽  
Bad Faith ◽  
Trade Marks ◽  
The Public ◽  
The Absolute ◽  
Definition Of ◽  
Absolute Grounds For Refusal ◽  
Trade Mark Registration

This chapter examines the ‘absolute’ grounds for refusing to register a trade mark as set out in section 3 of the Trade Marks Act 1994, Article 3 of the Trade Marks Directive, and Article 7 of the European Union Trade Mark Regulation (EUTMR). It first looks at the reasons for denying an application for trade mark registration before analysing the absolute grounds for refusal, which can be grouped into three general categories: whether the sign falls within the statutory definition of a trade mark found in sections 1(1) and 3(1)(a) and (2) of the Trade Marks Act 1994; whether trade marks are non-distinctive, descriptive, and generic; and whether trade marks are contrary to public policy or morality, likely to deceive the public, prohibited by law, or if the application was made in bad faith. Provisions for specially protected emblems are also considered.

HOW THE TRADE MARKS ACT SHAPES UP TO PERPETUAL MONOPOLIES

1998 ◽  
Vol 57 (2) ◽  
pp. 235-273
Author(s):  
JENNIFER DAVIS
Keyword(s):  
Engineering Design ◽  
English Language ◽  
Trade Mark ◽  
Consumer Products ◽  
Big Business ◽  
Trade Marks ◽  
Trade Mark Law

In British Sugar plc v. James Robertson & Sons Ltd. [1996] RPC 281, Jacob J. asked whether the 1994 Trade Marks Act enables “big business to buy ordinary words of the English language at comparatively little cost”. His answer was a resounding “no”. In Philips Electronics NV v. Remington Consumer Products, 22 December 1997, he asks whether trade mark law, by conferring a perpetual monopoly, can interfere with the freedom to manufacture artefacts of a “desirable and good engineering design”. The educated reader might hazard that he would again answer in the negative. And so it transpires. The thrill of the chase is to see how Jacob J. interprets the Act to reach this conclusion.

Distinctiveness Acquired Through Use

2016 ◽  
Author(s):  
Alexander Mühlendahl ◽  
Dimitris Botis ◽  
Spyros Maniatis ◽  
Imogen Wiseman
Keyword(s):  
Trade Mark ◽  
Legal Basis ◽  
Trade Marks ◽  
Secondary Meaning ◽  
Trade Mark Law ◽  
American Trade

Trade marks that are not inherently distinctive or that are descriptive or generic may nevertheless be registered if they have, as a result of the use that has been made of them, acquired distinctiveness, or what is called in US American trade mark law, ‘secondary meaning’. The legal basis for this basis for registration is found in Article 3(3) of the Directive and in Article 7(3) CTMR.

The rise, fall and convolution of the intent to use requirement under New Zealand trade mark law

2020 ◽  
Vol 10 (1) ◽  
pp. 87-114
Author(s):  
Rob Batty
Keyword(s):  
New Zealand ◽  
Trade Mark ◽  
Intention To Use ◽  
Trade Marks ◽  
The United Kingdom ◽  
Intent To Use ◽  
Trade Mark Law ◽  
History Of ◽  
Bona Fide ◽  
Historical Developments

The ‘cluttering’ of trade mark registers with unused trade marks is an issue of contemporary concern. One mechanism that can be used to prevent ‘deadwood’ trade marks from getting on the Register in the first place is to ensure that a trader has a genuine intention to use the trade mark. Indeed, the enactment of the first registration legislation in the United Kingdom (UK) was followed by a judicial insistence that a trader could not ‘properly register a trade mark’ if the trader did not have bona fide and present intention to use the trade mark. An intent to use requirement remains a feature of New Zealand (NZ) law, though it has a much reduced sphere of operation under the Trade Marks Act 2002. Tracing historical developments, this article examines how the regulation of the intent to use requirement has evolved under NZ law. This exercise provides a useful lens for understanding how and why the intention to use requirement operates as it currently does. Further, by examining the history of the intent to use requirement, the article also illuminates that there is nothing intractable about how NZ trade mark law has opted to regulate intention to use, and NZ law may be adjusted to better address concerns like cluttering.

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.

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