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.

28. Tortious protection of intellectual property rights

2019 ◽  
pp. 515-550
Author(s):  
Paul Torremans
Keyword(s):  
Intellectual Property ◽  
Property Rights ◽  
Intellectual Property Rights ◽  
Common Law ◽  
Trade Mark ◽  
Trade Marks ◽  
Passing Off ◽  
Trade Mark Law ◽  
The Common ◽  
The Law

This chapter discusses the ways in which the common law, in the form of the law of tort, creates rights of action. It focuses on the torts of passing off and malicious falsehood, although attention is also paid to the ways in which defamation can assist. These rights are supplementary, and complementary, to the statutory formal rights. In particular, trade mark law and passing off closely overlap, although s. 2(2) of the Trade Marks Act 1994 preserves passing off as a separate cause of action.

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.

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.

II. TRADE MARK LAW: THE COMMUNITY'S THINKING WIDENS AND DEEPENS

2004 ◽  
Vol 53 (4) ◽  
pp. 1013-1023 ◽  
Author(s):  
Catherine Seville
Keyword(s):  
Case Law ◽  
Trade Mark ◽  
Trade Marks ◽  
Steep Increase ◽  
Trade Mark Law ◽  
Practical Guidance

Trade marks remain hugely important for the economy of the Community. Enlargement has brought a steep increase in filings for the Community Trade Mark, and the new rate of applications seems likely to be maintained. As always, a balance must be struck between the Community's priorities, and those of the trade mark holder. Considerable harmonization of Community trade mark law has already been achieved by legislative means. There is an abundance of new case law, giving detailed and practical guidance for the interpretation of these measures. As a result, those using trade mark systems throughout the Community will benefit from increased consistency and depth of understanding in the application of the regime. The wider international scene will be given welcome recognition by the Community's accession to the Madrid Protocol. The Community's position on international exhaustion remains essentially unchanged, although the matter is still a controversial one.

Introduction to Procedural EU Trade Mark Law

2017 ◽  
Author(s):  
Annette Kur ◽  
Martin Senftleben
Keyword(s):  
European Union ◽  
Trade Mark ◽  
Trade Marks ◽  
Procedural Law ◽  
Trade Mark Law ◽  
Eu Trade Mark Law ◽  
The Eu

The procedural law that applies to trade marks in the EU depends on whether the mark is a European Union trade mark (EUTM), a national (or, in the case of Benelux marks, regional), or an international mark. As regards international marks, reference is made to Chapter 12.

Trade Marks as Objects of Property

2017 ◽  
Author(s):  
Annette Kur ◽  
Martin Senftleben
Keyword(s):  
European Union ◽  
Trade Mark ◽  
The European Union ◽  
Trade Marks ◽  
Trade Mark Law ◽  
Insolvency Proceedings ◽  
Eu Trade Mark Law

Harmonized EU trade mark law contains rules on trade marks as objects of property in Articles 16 to 24a of the European Union Trade Mark Regulation (EUTMR) and Articles 22 to 26 of the Trade Mark Directive (TMD). These rules cover transfer and assignment, the possibility of giving trade marks as security and granting rights in rem, the levy of execution, the involvement of EUTMs in insolvency proceedings, and issues of trade mark licensing. The substantive provisions are accompanied by procedural rules concerning the recordal of corresponding legal transactions in the register. While the TMD only guarantees the possibility of registration, the EUTMR contains more detailed registration requirements.

scholarly journals Conceptual confusing similarity and pictorial trade marks

2022 ◽  
Vol 11 (4) ◽  
pp. 409-443
Author(s):  
Rob Batty
Keyword(s):  
Trade Mark ◽  
Conceptual Similarity ◽  
Registration System ◽  
Trade Marks ◽  
Case Examples ◽  
Legal Principles ◽  
High Profile ◽  
The United Kingdom ◽  
Trade Mark Law ◽  
Scope Of Protection

Several high-profile rebrands, including those by Twitter and Starbucks, have involved removing text from logos. This move towards wordless, pictorial trade marks raises a difficult question about how the scope of protection of a registered trade mark should be determined. This article examines the particular issue of how much weight should be given to the idea or concept underlying a pictorial mark when assessing whether a defendant’s junior mark is ‘confusingly similar’. Drawing on legal principles and case examples from Europe, the United Kingdom, Singapore and New Zealand, it is claimed that courts and adjudicators should be careful not to overweight conceptual similarity. It is argued that a lack of care in assessing conceptual similarity risks awarding one trader overbroad protection, which may be tantamount to conferring on one trader a monopoly in an idea. A lack of care may also undermine the logic of a registration system by untethering protection from what is recorded on the Register, and may make trade mark law less predictable and certain. * The author declares that he was junior counsel in a case discussed in this article, Carabao Tawandang Co Ltd v Red Bull GmbH HC Wellington CIV-2005-485-1975, 31 August 2006. The views represented in this article are the author’s own, and do not reflect the views of his employer at the time, or the views of the client represented in that particular case.

Trade Mark Law in Europe

2016 ◽  
Author(s):  
Alexander Mühlendahl ◽  
Dimitris Botis ◽  
Spyros Maniatis ◽  
Imogen Wiseman
Keyword(s):  
Case Law ◽  
The United States ◽  
Trade Mark ◽  
Critical Discussion ◽  
Comparative Approach ◽  
The European Union ◽  
Trade Marks ◽  
Court Of Justice ◽  
Challenges And Opportunities ◽  
Trade Mark Law

In light of the ever-growing and developing jurisprudence of the Court of Justice and the General Court, and forthcoming substantive and systemic changes to the law, there is a need for a fresh and practical approach to the procedure and case law of trade marks in Europe. Trade Mark Law in Europe is a comprehensive guide to European trade mark law following the jurisprudence of the Court of Justice of the European Union and the case law of the General Court. It provides a wide-ranging overview of the trade mark system, including detailed and critical discussion of forthcoming changes, as well as an in-depth look at the life of a trade mark up to enforcement. It considers the conditions for maintaining a registration, the protection and enforcement of trade marks, and the interface between trade mark law and other areas of practice. Finally, it offers detailed and insightful analysis of current developments, challenges, and opportunities. This is complemented by an international and comparative approach which selectively considers the contemporary jurisprudence of the Supreme Court of the United States and general US practice, as well as national jurisprudence in areas not yet covered by the CJEU. Written by highly-regarded authors with considerable expertise across a range of constituencies, Trade Marks in Europe is a timely and important study of this complex and challenging area of law.

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