Is a National Court Competent to Introduce a Disclaimer into a Trade Mark Registration? The Latvian Supreme Court Finally Says ‘No’

It was a longstanding practice of Latvian courts to acknowledge their competence to introduce a disclaimer into a challenged trade mark registration. This had come to be considered as settled court practice. However, the Latvian Supreme Court recently decided to withdraw this practice and explicitly admitted a change of approach concerning the competence of Latvian national courts to introduce a disclaimer into a trade mark registration. In this way, the Latvian Supreme Court finally abolished a disputable practice in the Latvian courts, having formerly allowed themselves to introduce a disclaimer which could – by way of a misunderstanding of trade mark law – be introduced by a court in addition to a trade mark applicant and the Patent Office. The consequences of this Latvian case have led to the situation that only a trade mark applicant may – either on their own initiative or following a request from the Patent Office – introduce a disclaimer into a trade mark registration. This opinion discusses the situation which existed before the Latvian Supreme Court judgment in question and its consequences.

Everything is NOT Awesome. A Lego Brick as a 3D Trade Mark

This paper discusses the reasoning of the protection of the flagship Lego products – the rectangular brick and the Lego minifigure as the trade marks from the perspective of European Union trade mark system and the Polish legal system. The main part is dedicated to the most important absolute grounds for refusal of trade mark registration, i. e. the distinctive character and the shape of goods necessary to obtain a technical result. However, it is crucial to understand the history, especially the history of legal protection, of both the brick and the minifigure. In the end, the Lego case allows to draw general conclusions about the overlapping of different intellectual property protection regimes and the relation of public domain to the trade mark registration. All these considerations are presented with the use of both comparative and doctrinal method.

Morality and Negative Social Influence Exceptions to Trade Mark Registration

National Intellectual Property Administration, PRC v Nanjing Daqun Medical Technology

Paying the Price for Admission

This chapter makes the case for joined-up thinking when approaching non-traditional signs in trade mark law. Trade mark registration has moved from up-front exclusions for certain categories of signs (no shapes, no colours) toward incremental acceptance. However the policy concerns generated by the grant of legal monopolies in such signs remain equally relevant today. The grant of an abstract color mark to one trader closes off a part of the color spectrum to others. Can we therefore allow such signs in to the system while successfully managing the tensions this generates? The approach advocated here is that we should correlate the mark as characterized at the time of registration—agreeably modest in its scope and ambitions—with the mark as deployed in an enforcement context, where it otherwise tends to be read more generously. The doctrine of prosecution history estoppel in patent law may have valuable lessons for trademark law.

37. Absolute grounds for refusal

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.

35. Trade mark registration

This chapter focuses on the process of registration for trade marks in the UK, the European Union, and other countries. It begins by explaining the differences in procedures and documentation needed in filing trade mark applications at the national, regional, and international levels. The role of the European Union Intellectual Property Office (EUIPO) in processing applications in the EU is considered, along with the international filing systems established under the 1891 Madrid Agreement and the 1989 Madrid Protocol. The chapter concludes by presenting possible avenues through which to acquire trade mark protection. It briefly considers the possible impacts of Brexit.

42. Exploitation and use of trade marks

This chapter is concerned with the exploitation and use of trade marks under the Trade Marks Act 1994 and the European Trade Marks Regulation (EUTMR). It first considers the ownership of trade marks and ‘unregistered marks’ and the problems that arise in relation to co-ownership. It then describes the ways in which trade marks and ‘unregistered marks’ can be exploited (self-exploitation, assignment, voluntary licences, compulsory licences, mortgages, testamentary dispositions) as well as the limitations placed on the uses that can be made of a trade mark. Registration of interests and transactions is also discussed, and UK competition law is compared with that in Europe. In addition, the chapter presents a list of terms that are commonly used in trade mark licence agreements and the approach that competition law takes towards them. Finally, it outlines trade mark delimitation agreements.

6. Trade Marks I

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 examines the main justifications for the protection of registered trade marks. It considers the substantive law relating to the subject matter of registration as set out in the Trade Marks Directive (2016) and its predecessor. It looks at which signs will be registered as well as the absolute grounds for refusal of registration and at the Court of Justice of the European Union and domestic case law interpreting these grounds. The practicalities of the trade mark registration process both domestically and internationally are also considered. The chapter then looks at the relationship between registered marks and the public domain.

8. Trade Marks III

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 considers the limitations of the protection afforded by trade mark registration. It discusses the defences to infringement set out in Article 6 of the Trade Marks Directive and section 11 of the Trade Marks Act 1994; trade marks and comparative advertising; the ways in which it is possible to lose registered trade mark protection (through revocation and a finding of invalidity); and how trade mark rights might be exhausted.