scholarly journals Intermediary Liability and Trade Mark Infringement: Proliferation of Filter Obligations in Civil Law Jurisdictions?

2020 ◽  
pp. 380-403
Author(s):  
Martin Senftleben
Keyword(s):  
Freedom Of Expression ◽  
Civil Law ◽  
Trade Mark ◽  
The European Union ◽  
Trade Mark Infringement ◽  
Consumer Confusion ◽  
Trade Mark Law ◽  
Intermediary Liability ◽  
Principle Of Proportionality ◽  
Context Specific

This chapter discusses intermediary liability and trade mark infringement from a civil law perspective, while highlighting differences and commonalities of trade mark and copyright enforcement online. The chapter considers first how the infringement test in EU trade mark law is more context-specific than the infringement analysis in copyright law and how limitations of trade mark rights provide room for unauthorized use that serves (commercial) freedom of expression and freedom of competition. In this context, this chapter looks into the use of filtering mechanisms and how they might wash away these important nuances of the scope of trade mark protection. Again, the chapter makes a distinction between legitimate comparative advertising and infringing consumer confusion, legitimate brand criticism and infringing defamation, legitimate offers of second-hand goods and infringing sales of replicas in order to consider the threshold when trade mark owners obtain overbroad protection. Further, this chapter reviews leading case law of the Court of Justice of the European Union on the question of intermediary liability and filter obligations that points towards a cautious approach in trade mark cases—an approach that does not undermine the inherent limits and statutory limitations of trade mark rights. However, examples of court decisions in civil law jurisdictions, such as Germany, show a tendency of developing national doctrines that allow the imposition of more extensive filtering duties. Against this background, the chapter concludes by considering whether a balanced approach based on the principle of proportionality should prevail in trade mark cases.

Intermediary Liability and Online Trade Mark Infringement: Emerging International Common Approaches

2020 ◽  
pp. 368-380
Author(s):  
Frederick Mostert
Keyword(s):  
Freedom Of Expression ◽  
Trade Mark ◽  
International Perspective ◽  
Fundamental Rights ◽  
Trade Mark Infringement ◽  
Intermediary Liability ◽  
Ius Gentium ◽  
Fair Balance ◽  
Blocking Injunctions ◽  
Voluntary Cooperation

This chapter discusses intermediary liability for trade mark infringement from an international perspective. Given that the lack of uniform international guidelines has made tackling counterfeits in a borderless digital environment even more challenging, this chapter shows that there are emerging intermediary liability common approaches at the international level for online trade mark infringement. The chapter outlines three common tenets that can be distilled into a transnational principle of intermediary liability, including knowledge-and-takedown obligations and availability of blocking injunctions. Further, this chapter discusses how this emerging common international principle is then coupled by a ius gentium of voluntary measures that results from voluntary cooperation between online intermediaries and rightholders to curb infringement. However, it is important to strike a fair balance with other fundamental rights, such as freedom of expression, information and lawful competition.

Intermediary Liability and Trade Mark Infringement: A Common Law Perspective

2020 ◽  
pp. 403-420
Author(s):  
Richard Arnold
Keyword(s):  
Common Law ◽  
Case Law ◽  
Trade Mark ◽  
Trade Marks ◽  
Legal Principles ◽  
Trade Mark Infringement ◽  
Trade Mark Law ◽  
Intermediary Liability ◽  
Eu Trade Mark Law ◽  
Blocking Injunctions

This chapter discusses UK case law in the domain of intermediary liability and trade mark infringement, while situating this common law perspective within EU trade mark law, the e-Commerce Directive, and the Enforcement Directive. The chapter first describes liability stemming from legal principles which are not particular to intermediaries, including primary and accessory liability of online intermediaries for trade mark infringement. Later, the chapter reviews liability depending on the application of principles which are specific to intermediaries, the intermediary liability proper. In this context, the chapter looks into injunctions against intermediaries whose services are used to infringe trade marks that are made available in national jurisdictions under the implementation of Article 11 of the Enforcement Directive. Although other kinds of injunctions against intermediaries are available, the chapter focuses on website-blocking injunctions, which have been recently ported from the copyright domain, where they have been more traditionally deployed, to the trade mark domain.

Acquisition Of Rights

2017 ◽  
Author(s):  
Annette Kur ◽  
Martin Senftleben
Keyword(s):  
European Union ◽  
United Kingdom ◽  
Trade Mark ◽  
Nordic Countries ◽  
The European Union ◽  
Legal Regime ◽  
Passing Off ◽  
The United Kingdom ◽  
Trade Mark Law ◽  
European Trade

Under European trade mark law, protection is only acquired through registration (Article 6 EUTMR; Article 1 TMD). Whether the mark is actually used or not is of no relevance at this stage: neither is it a requirement for protection, nor does it grant a substantive right under the European Union Trade Mark Regulation (EUTMR) or the Trade Mark Directive (TMD). However, such protection may follow from national law. Member States are free to grant use-based trade mark protection within their jurisdiction, and in a number of them—Austria, Germany, Italy, the Nordic countries, and, in the form of passing off, the United Kingdom—such protection is available under terms that may differ from country to country. The specificities of the legal regime applying to such signs are independent from the provisions in the TMD.

European Union Trade Mark Law

2016 ◽  
Author(s):  
Alexander Mühlendahl ◽  
Dimitris Botis ◽  
Spyros Maniatis ◽  
Imogen Wiseman
Keyword(s):  
European Union ◽  
Trade Mark ◽  
The Other ◽  
The European Union ◽  
Trade Mark Law ◽  
The Creation ◽  
National Systems

Trade mark law at the European Union (EU) level has developed following two parallel paths. One led to the harmonization of disparate national systems of trade mark protection; the other to the creation of a ‘federal’ trade mark right, unitary in nature and effective throughout the territory of the European Union. The aim of this chapter is to describe briefly the destinations reached by the ‘harmonization’ and the ‘federal’ paths.

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. 

scholarly journals Recommendation on Measures to Safeguard Freedom of Expression and Undistorted Competition in EU Trade Mark Law

2014 ◽  
Author(s):  
Martin Senftleben ◽  
Lionel A. F. Bently ◽  
Graeme B. Dinwoodie ◽  
Christophe Geiger ◽  
Jonathan Griffiths ◽  
...  
Keyword(s):  
Freedom Of Expression ◽  
Trade Mark ◽  
Trade Mark Law ◽  
Eu Trade Mark Law

Intermediary liability for trade mark infringement in India: the Louboutin case

2020 ◽  
Vol 15 (3) ◽  
pp. 150-152
Author(s):  
Aklovya Panwar ◽  
Ashwini Gehlot
Keyword(s):  
Trade Mark ◽  
High Court ◽  
Trade Mark Infringement ◽  
Intermediary Liability ◽  
First Time

Abstract Christian Louboutin SAS v Nakul Bajaj and Ors, CS (COMM) 344/2018, Delhi High Court (Prathiba M Singh J), 2 November 2018 In Christian Louboutin SAS v Nakul Bajaj and Ors, the Delhi High Court has given for the first time an indispensable ruling to clarify the responsibility and liability of online intermediaries for trade mark infringement. In a subsequent judgment in L’Oreal v Brandworld & Anr (CS(COMM) 980/2016, Prathiba M Singh J, 12 November 2018), the same court has confirmed the approach taken in Louboutin.

The European Trade Mark System

2017 ◽  
Author(s):  
Annette Kur ◽  
Martin Senftleben
Keyword(s):  
Common Law ◽  
Civil Law ◽  
Trade Mark ◽  
The Public ◽  
Legal Traditions ◽  
System P ◽  
Trade Mark Law ◽  
Policy Objectives ◽  
European Trade ◽  
Original Objective

Before the harmonization of trade mark law in the EU, the legal traditions in the Member States of the European Economic Community were divided into common law systems and civil law systems, with certain differences also prevailing between the latter. In all countries alike, the original objective underlying the protection of commercial signs had been to indicate property of goods offered in the marketplace or to enable national authorities to control the quality, kind, or amount of production. In the age of industrialization, the concept developed into the notion of signs indicating origin of goods stemming from private enterprises, with the accent being placed on different aspects of that concept. In civil law countries, the emphasis lay on indicating that a particular business had ‘ownership’ of a sign. Thus, the legislature saw its foremost task in establishing a secure and transparent system for the acquisition and maintenance of ownership, and offering trade mark owners the legal means necessary for defending the mark against illicit use by unauthorized others. In common law, the accent lay on the prevention of passing off, which was considered a task in the public interest rather than serving private commercial aims. In contrast to continental civil law, creating a public register and admitting private claims against infringement were not tantamount to acknowledging a proprietary right in trade marks. Instead, these measures were taken to efficiently support the public policy objectives underlying trade mark law.

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