Acquisition Of Rights

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.

Rights Conferred

EU trade mark law confers exclusive rights on the proprietor of a registered trade mark. It provides for three general types of protection. Article 9(2) EUTMR and Article 10(2) TMD offer protection against confusion under sub (b) (see paragraph 5.105 et seq.) and protection against dilution under sub (c) (see paragraph 5.182 et seq.). In double identity cases (identical signs used for identical goods or services), sub (a) (see paragraph 5.64 et seq.) provides for ‘absolute’ protection (recital 16 TMD) combining elements of both forms of infringement on the basis of the function theory developed by the Court.

Administrative Measures

In the field of administrative measures, proceedings before the registration authorities, such as registration, opposition, and cancellation proceedings, including the possibility of appeal, are of particular importance. These administrative procedures have already been discussed in detail in Part III. Apart from these office procedures, Regulation No. 608/2013 concerning customs enforcement of intellectual property rights (hereinafter: ‘Customs Regulation’ or ‘CR’) occupies centre stage when administrative enforcement measures are sought.

Limitations, Defences, and Genuine Use

As with other intellectual property rights, the exclusive rights of the trade mark proprietor are limited in several respects. At the international level, Article 17 TRIPS offers room for the adoption of ‘limited exceptions’ in domestic legislation (see paragraphs 2.68–2.72). On this basis, Article 14 of the Trade Mark Directive (TMD) and Article 12 of the European Trade Mark Regulation (EUTMR) provide a tool for reconciling the interests of the trade mark owner with competing interests of other traders and the public at large. As explained by the Court of Justice of the European Union (CJEU), these provisions, by limiting the effects of the exclusive rights of the trade mark owner, seek ‘to reconcile the fundamental interests of trade mark protection with those of free movement of goods and freedom to provide services in the common market in such a way that trade mark rights are able to fulfil their essential role in the system of undistorted competition which the Treaty seeks to establish and maintain’.

Collective Marks and Certification 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.

International Protection

Intellectual property is often said to be an invention of the nineteenth century. It is true that the importance of incentivizing innovation and encouraging investment in creative activities was recognized on a general scale only in the wake of industrialization, leading to the enactment in many countries of patent laws, modern-style copyright laws, or industrial design laws. Before that, protection for those achievements had only been granted in the form of privileges, serving the interests of particular trades or professions, and ultimately those of the sovereign. The period of industrialization also saw the emergence of the first trade mark laws in the modern sense that entitled the proprietors of such marks to enjoin others from using the same marks or a similar sign for their own products.

Cancellation and Loss of Trade Mark Rights

Different from other intellectual property rights, rights vested in a trade mark do not have a finite duration; they can last ‘forever’. Under systemic aspects this is due to the fact that as long as the message conveyed by the sign is correct it would be contrary to the interest of consumers to let it lapse and fall back into the public domain. Also, from a competition point of view there is no need to terminate protection as long as the right holder keeps using the sign and the designated goods and services themselves are not subject to market exclusivity.

The European Trade Mark System

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.

Civil Sanctions and Proceedings

Trade mark conflicts as well as matters pertaining to validity and registration of marks can be dealt with in opposition or cancellation proceedings before the registration authorities and in subsequent appeals. The rules governing those proceedings were presented in Chapters 10 and 11. This chapter deals with civil law litigation conducted before the ordinary courts, while briefly also addressing the relationship of administrative procedures with the system of civil court litigation (section 13.1.2) and the coordination of administrative and civil proceedings in the European Union Trade Mark (EUTM) framework (section 13.2.3.2).

Criminal Sanctions

In addition to civil law, trade mark infringements—like intellectual property infringements in general—are regularly subject to penal sanctions imposed in criminal procedures. The legal instruments available in such procedures are typically stronger than those available under civil law. Thus, the police and/or the public prosecutor usually have greater powers regarding inspection and seizure of infringing materials and documents; second, the financial sanctions imposed are not limited by the amount of actual damage suffered or even by the gains made. In appropriate cases they can go beyond those sums and thus become a real punishment. The deterring effect is even stronger in cases of personal imprisonment of the infringer, or regarding other sanctions like confiscation of business equipment or closing down of the infringer’s business.