Trade Marks and Allied Rights

2017 ◽  
Author(s):  
Dev Gangjee
Keyword(s):  
Brand Image ◽  
Trade Mark ◽  
Unfair Competition ◽  
Legal Issues ◽  
Geographical Indications ◽  
Trade Marks ◽  
Passing Off ◽  
Domain Names ◽  
Detrimental Impact ◽  
Scope Of Protection

This chapter outlines the principal features of trade mark protection regimes, drawing primarily on EU and US materials to illustrate the underlying legal issues. It includes an outline of the principal allied rights; namely (i) unfair competition, (ii) passing off, (iii) publicity rights, (iv) geographical indications, and (v) domain names. The overview traces the incremental re-orientation of trade mark regimes in recent decades as they have moved beyond their traditional remit of origin-indication protection in response to claims that brand image needs to be better accommodated. In some cases, the ensuing broader scope of protection can have a detrimental impact on speech and inhibit marketplace competition.

Relationship Between Geographical Indications and Trade Marks under Turkish Law

2021 ◽  
Author(s):  
Ufuk Tekin
Keyword(s):  
Trade Mark ◽  
Geographical Indications ◽  
Geographical Indication ◽  
Industrial Property ◽  
Distinctive Character ◽  
Trade Marks ◽  
Judicial Practice ◽  
International Regulations ◽  
First Time

Abstract While geographical indications show geographical origin, trade marks show commercial origin. Therefore, it is possible to say that both geographical indications and trade marks have distinctive character. Indeed, when an application is filed to register a geographical indication as a trade mark, an important question is whether the sign is distinctive enough. In such cases, the distinctive character of these commercial and geographical ‘signs’ can overlap and intersect with each other. In this article, the intersection and relationship between geographical indications and trade marks will be evaluated by considering two different scenarios. In the first one, the trade mark application precedes the registration of the geographical indication, while in the second the application for the geographical indication is filed before the conflicting trade mark. The analysis is carried out by taking into account various provisions of theTurkish Industrial Property Code (IPC), the judicial practice of the Turkish Court of Cassation and international regulations. In this context, the relationship between several absolute grounds for refusal in such a situation and which of these provisions is the most applicable will be examined. In particular, an attempt will be made to explain the role of the absolute ground for refusal regulated in the new Turkish Industrial Property Code for the first time, namely that signs containing or consisting of a geographical indication cannot be registered as a trade mark (Art. 5.1(i)).

13. Infringement and loss of registration of trade marks

2019 ◽  
pp. 290-319
Author(s):  
Stavroula Karapapa ◽  
Luke McDonagh
Keyword(s):  
Trade Mark ◽  
Trade Marks ◽  
Trade Mark Infringement ◽  
Scope Of Protection

This chapter focuses on trade mark infringement, setting out the rights of a trade mark owner to prevent others from making use of any sign which is the same as or similar to the registered mark in the course of trade. A claimant who brings a trade mark infringement action will have to show two things: that an act of infringement has been committed, and that such conduct falls within the scope of protection afforded to the registered mark. Once these two points have been established, the court will normally find in favour of the claimant unless one or more of the counter-arguments raised by the defendant succeeds. A defendant who is sued for trade mark infringement, besides denying that infringement has been made out or raising one of the statutory defences, will usually try to counterclaim that the mark should be revoked or declared invalid.

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.

Character merchandising: aspects of legal protection

Legal Studies ◽  
2001 ◽  
Vol 21 (2) ◽  
pp. 226-250
Author(s):  
Andrew McGee ◽  
Sarah Gale ◽  
Gary Scanlan
Keyword(s):  
Present State ◽  
Legal Protection ◽  
Trade Mark ◽  
Third Parties ◽  
Trade Marks ◽  
Passing Off ◽  
Legal Control ◽  
The Creation ◽  
The Law ◽  
Special Circumstances

The article considers the present state of the law of character merchandising. It questions whether the law relating to character merchandising should be further developed and extended so as to give an individual a comprehensive right to prevent the unauthorised use of aspects of his personality by third parties in connection with the promotion or sale of goods or services. In this context the article rejects the creation of new comprehensive remedies such as a tort of appropriation of personality as being undesirable and impractical. The article maintains that unauthorised acts of personality appropriation or use are already subject to adequate legal control through the law of trade marks and passing off. In this regard the article further suggests that tortious remedies such as defamation, malicious falsehood, and, in restricted circumstances copyright, provide effective sanctions against the unauthorised use of an individual's persona in commercial enterprises in particular and special circumstances. These remedies supplement and complement the principal remedies provided by trade mark protection and passing off.

Protection of Unregistered Distinctive Signs within Unfair Competition Law: the Polish Perspective

2020 ◽  
Vol 69 (1) ◽  
pp. 14-27
Author(s):  
Łukasz Żelechowski
Keyword(s):  
Competition Law ◽  
Legal Framework ◽  
Trade Mark ◽  
Unfair Competition ◽  
Geographical Indications ◽  
Eu Legislation ◽  
Unfair Competition Law ◽  
Trade Mark Law ◽  
Market Practices ◽  
Polish Law

Abstract The protection of unregistered distinctive signs is essentially non-standardised at the international and EU level. The purpose of this paper is to provide an overview of the legal framework relating to the protection of trade names, unregistered trade marks and geographical indications from the perspective of Polish law in which protection of unregistered distinctive signs is predominantly available based on unfair competition law. The analysis takes account of the respective EU legislation, notably the Unfair Market Practices Directive and its impact on combatting unfair competition caused by use of distinctive signs under Polish law, as well as interactions with the national and EU legislation in other areas such as trade mark law and the protection of registered designations of origin and geographical indications. Comparative remarks are occasionally included. The paper also examines the issue of the nature of civil law protection of unregistered distinctive signs under Polish unfair competition law, which is the subject of divergent views among Polish scholars. With regard to the perplexing question of whether provisions of unfair competition law could constitute a basis for distinguishing exclusive rights to unregistered distinctive signs or whether they provide ‘merely’ tortious protection that does not presuppose the existence and infringement of such rights, this paper puts forward arguments in support of the latter qualification.

TINY REBEL BREWING CO LTD’S TRADE MARK APPLICATIONAppointed Person (Trade Marks)Prof. Ruth Annand: 16 August 2019BL O/482/19; [2019] R.P.C. 25

2019 ◽  
Vol 136 (10) ◽  
pp. 665-678
Author(s):  
Keyword(s):  
Trade Mark ◽  
Fruit Juices ◽  
Distinctive Character ◽  
Trade Marks ◽  
Passing Off ◽  
Likelihood Of Confusion

Abstract H1 Trade marks – Opposition proceedings – Device marks – TROPICANA – Comparison of goods – Whether beers similar to fruit juices – Comparison of marks – Dominant element – Descriptiveness – Acquired distinctive character – Conceptual differences – Assessment of likelihood of confusion – Passing off – Appeal to Appointed Person

Trade Marks and Passing Off

2016 ◽  
Author(s):  
Jaani Riordan
Keyword(s):  
Trade Mark ◽  
The Other ◽  
The Internet ◽  
Domain Name ◽  
Passing Off ◽  
Domain Names ◽  
Contested Space ◽  
Keyword Advertising ◽  
Territorial Conflicts ◽  
Secondary Liability

This chapter examines the secondary liability of internet intermediaries for trade mark infringement and passing off occurring online. The internet intrinsically relies upon a functioning system of domain names, keyword-based search tools, and advertising. These arenas present ample opportunities for conflict over protected signs. At one extreme are territorial conflicts between legitimate traders who happen to possess parallel rights in different jurisdictions; at the other extreme lie cases of opportunistic squatting on a rivalrous keyword resource, such as a domain name, for commercial gain, or outright counterfeiting. Within the contested space that lies between, the line between honest and unfair competition is becoming increasingly blurred, as traders seek to exploit rivals’ names in keyword advertising, practise aggressive search engine optimisation, and compete for traffic, reputation, and attention. The zone of accepted commercial practices is fluid and extremely nebulous.

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