EBS Law Term 2013 Intellectual Property Law Trademark Law: Introduction Prof. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

Intellectual property domains technology commerce culture patent law trademark law copyright law

Contents Legislation Definition Function Protection requirements –graphical representation –distinctiveness

Legislation

International treaties WIPO –Paris Convention for the Protection of Industrial Property (PC, 1883/1967) –Madrid Agreement (1891/1967) and Madrid Protocol (1989) = Madrid System WTO –Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS, 1994) =Annex 1C to the General Agreement on Tariffs and Trade (GATT, 1994)

Definition

‘Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.’ (art. 15(1) TRIPS Agreement) Distinctive signs

“American Express”, “Boss”, “Holiday Inn”, “Microsoft”, “Pizza Hut”, “Puma” “Mars”, “McDonald’s”, “Mercedes Benz”, “Ralph Lauren”, “Jil Sander” “Adidas”, “Kit Kat”, “Kodak”, “Reebok” “BMW”, “CNN”, “IBM”, “M&M”, “YSL” “A6”, “501”, “No. 5”, “S 500”, “4711” Words, letters, numerals

Drawings, pictures, colors

Shapes

the roar of a lion? the tune of a mobile phone? an engine noise? the smell of fresh- cut green grass? Audio marks, smell marks

Function

producercompetitor consumer Function (macro): market transparency ensuring honest commercial practices consumer protection contribution to a functioning market

origin function –identification of enterprises as the commercial source of goods or services quality function –expectations of consumers –encouragement to maintain the attained quality standard communication function –additional information: lifestyle, attitudes –trademark image Function (micro): business strategy

Protection requirements

‘Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark.’ =requirement of distinctiveness Art. 15(1) TRIPS Agreement

‘Members may require, as a condition of registration, that signs be visually perceptible.’ =optional requirement of visual perceptibility Art. 15(1) TRIPS Agreement

Example: Art. 2 EU Trademark Directive ‘A trade mark may consist of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.’

Core requirements procedural: graphical representation (register transparancy) substantial: distinctive character (market transparancy)

Graphical representation

at issue: registration of a smell mark (cinnamic acid methyl ester) ‘... that a trade mark may consist of a sign which is not in itself capable of being perceived visually, provided that it can be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.’ CJEU, 27 December 2002, case C-273/00, Sieckmann

in case of an olfactory sign (-) ‘In respect of an olfactory sign, the requirements of graphic representability are not satisfied by a chemical formula, by a description in written words, by the deposit of an odour sample or by a combination of those elements.’ CJEU, 27 December 2002, case C-273/00, Sieckmann

notation: ‘On the other hand, those requirements are satisfied where the sign is represented by a stave divided into measures and showing, in particular, a clef, musical notes and rests whose form indicates the relative value and, where necessary, accidentals.’ CJEU, 27 November 2003, case C-283/01, Shield Mark/Joost Kist

Distinctiveness

trademark = means of distinction distinctiveness = basic requirement to be determined with regard to specific goods or services (principle of speciality) –‘Ajax’ for a soccer team –‘Ajax’ for a cleaning detergent depends on social and cultural context case-by-case analysis

Distinctive signs? indication of product features –‘makes clean’ for a cleaning detergent use of generic terms –‘apple’ for apples –‘camel’ for camels...(-) fanciful signs –‘persil’ for a cleaning detergent signs adopted arbitrarily with regard to the goods or services –‘apple’ for computers –‘camel’ for cigarettes...(+)

may exist from the very beginning (arbitrarily-chosen, strong trademark) can be acquired or become stronger through use (secondary meaning) but may also decrease (dilution) may even be lost (trademark becoming a generic term) No constant level of distinctiveness

secondary meaning genericism dilution Overview of influence factors (-) (+) (-)

EBS Law Term 2013 Intellectual Property Law Trademark Law: Acquisition Prof. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

Contents Acquisition of rights Registration procedure Registration strategies Well-Known Marks

Acquisition of rights

useregistration mixed systems first-to-register (prior use may be recognized) first-to-use (prior registration may be recognized) Acquiring trademark rights

use first user obtains right no formalities no transparency problem of how to determine priority uncertainty before launching a product registration first applicant obtains right registration formalities transparent priority can precisely be determined international standard: priority right Comparison of the systems

Paris Union

filing in one country of the Paris Union 6 months filing in other Union countries Right of priority (Art. 4 PC)

Registration procedure

Example: Community Trade Mark (EU) application publication opposition registrationexamination conditions of filing absolute grounds refusal relative grounds

Descriptive signs consisting exclusively of signs indicating the... kind, quality, quantity value, intended purpose place of origin other characteristics …of the goods or services. Which signs may be denied registration? (Art. 6 quinquies (B) PC)

need to keep free Rationale?

deceptive signs “Orwooola” for goods made 100% of synthetic material signs contrary to morality or public order –“Jesus” for jeans –“Cannabia” for foodstuff Which signs may be denied registration? (Art. 6 quinquies (B) PC)

emblems of States or intergovernmental organizations Which signs may not be registered or used as trademarks? (Art. 6 ter (1) and (2) PC)

Registration acquisition of trademark rights term of protection: 10 years indefinitely renewable Still possible: application to the office/ counterclaim in infringement proceedings: revocation invalidation

‘If use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner.’ (art. 19(1) TRIPS Agreement) Requirement of use

Registration strategies

solution 1: harmonisation of national procedures solution 2: bundle of registrations via central procedure national route file in many Offices in many languages fees in many currencies numerous national agents results in many national registrations requires many renewals changes to be recorded via each national Office solution 3: transnational trademark law system Facilitating transnational registrations

national registrations OHIM: Community Trade Mark (CTM) unitary right for the entire EU territory Madrid System: international registration Facilitating transnational registrations

Madrid Agreement (A) of 1891 Madrid Protocol (P) of 1989 Common Regulations Administrative instructions national interface A closer look at the Madrid System

basic principle: extension of protection in one Member of the Union to other Members one international registration leading to a bundle of rights in designated Members –central recording of changes (name, address, new holder) –central renewal (online) –subsequent designations (new markets) language regime: EN, FR, ES A closer look at the Madrid System

Madrid Union

certifies: particulars in international application = contents national basis formal examination, international registration and publication, notifies designated Contracting Parties substantial examination within 12/18/18+ months refusal acceptance = effect of a national registration OFFICE OF ORIGIN INTERNATIONAL BUREAU OFFICE OF DESIGNATED CONTRACTING PARTY International Application national basis: registration (A/P), application (P) Overview of the procedure

AP Switzerland P APAP P P AP European Community China APAP P Example: Switzerland as a basis United States

P P AP European Community China P Egypt Example: EC as a basis Switzerland P P

first step: designation of Union Members in the initial application further steps: subsequent designations (further markets) Stages of extension

one international registration effect of a bundle of national registrations efficient management –changes (name, address, ownership) –renewal flexibility –subsequent designations –limitation, renunciation, cancellation cost savings Advantages

Exemption from registration

free riders country B right owners country A reproduction imitation translation liable to create confusion Art. 6 bis PC: well-known marks

competent authority in the country concerned determines whether mark is ‘well-known’ conflicting signs must be used for identical or similar goods protection does not depend on the registration of the well-known mark Art. 6 bis PC: well-known marks

EBS Law Term 2013 Intellectual Property Law Trademark Law: Protection Prof. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

Contents Overview Protection against confusion –identical signs and goods/services –similar signs and goods/services Protection against dilution –well-known marks

Rights of the trademark owner

The exclusive right to prevent all third parties not having the owner’s consent from using –offering goods or services under the mark –affixing the mark to the goods or their packaging –putting goods on the market –stocking goods for that purpose –importing or exporting goods under the mark –use on business papers or in advertising in the course of trade… Exclusive right (art. 16(1) TRIPS)

…of conflicting signs? similarity+ similarity identity …of goods or services involved? Areas of protection

Protection against confusion

‘…the exclusive right to prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.’ Art. 16(1) TRIPS Agreement

Similarity similar signssimilar goods or services likelihood of confusion as to the origin of the goods or services must be proven (art. 16(1) TRIPS) “Lowcost” for shirts “Swotch” for watches “Toy-yoh-tah” for cars “Lacoste” for trousers “Swatch” for thermometers “Toyota” for bicycles

aural –Claeryn/Klarein visual –Bally/Baileys conceptual –Mars/Venus differences can compensate similar features: –Obelix/Mobilix decisive: overall impression Similarity between signs

Identity identical signsidentical goods or services likelihood of confusion as to the origin of the goods or services can be presumed (art. 16(1) TRIPS) “Lacoste” for shirts “Swatch” for watches “Toyota” for cars

Protection against dilution

‘…to goods or services which are not similar to those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or services would indicate a connection between those goods or services and the owner of the registered trademark and...’ Art. 16(3) TRIPS Agreement

‘…provided that the interests of the owner of the registered trademark are likely to be damaged by such use.’ Art. 16(3) TRIPS Agreement

Similarity+ reproduction, imitation, translation of a well-known mark dissimilar goods or services! indication of connection with the owner of the well-known mark and likelihood of damage (art. 16(3) TRIPS)...unfair competition: dilution, blurring, tarnishment, free-riding

Subject matter of protection

‘…In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned that has been obtained as a result of the promotion of the trademark.’ International: well-known marks (art. 16(2) TRIPS)

actual and potential consumers persons involved in channels of distribution business circles dealing with the type of goods or services to which the mark applies Relevant sectors of the public shall include, but shall not necessarily be limited to: The standard of well-known marks (art. 2(2) WIPO Joint Recommendation)

‘Where a mark is determined to be well known in at least one relevant sector of the public in a Member State, the mark shall be considered by the Member State to be a well-known mark.’ The standard of well-known marks (art. 2(2) WIPO Joint Recommendation) …niche knowledge (+)

Damage

‘…the gradual whittling away or dispersion of the identity and the hold upon the public mind of the mark or name by its use upon non-competing goods.’ (Schechter, Harvard Law Review 1927) objective: safeguarding the exclusive link in the minds of consumers Dilution theory

secondary meaning dilution Damage to distinctiveness/uniqueness (blurring) (-) (+) …for pianos, perfume, clothing, books

Damage to repute/goodwill (tarnishment) ‘…a sign similar to the trademark used […] under such circumstances that prejudice to the trademark owner may be caused by encroaching upon the trademark’s potential for raising a desire to buy…’ (Benelux Court of Justice, case A74/1, 1 March 1975, Claeryn/Klarein)

Example Claeryn/Klarein

Unfair free riding

damage brought to the well-known mark advantage taken from the well-known mark Change of perspective

…for perfume, pianos, precious watches Unfair free riding …for fast food, toilet cleaning, a (lousy) Amsterdam nightclub

Relation with tarnishment and blurring unfair free riding damage to repute/goodwill damage to distinctiveness

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