1. ® What is a Trademark? Trademark:
A distinctive sign which identifies the goods and services of one company from those of another
A trademark helps consumers to identify and choose between products/services based on their reputation and quality
Coca-Cola registered since 1887
A TM is a link between company and consumers. It may well be the company’s main business asset
Leading branding consultants claim: The product is nothing – the brand is everything
Consumers choose lifestyle and name before quality
Ex1: Coca Cola – both the name and the shape of the bottle are trademarks
Ex2: Nike’s Swoosh – earlier NIKE together with the ”Swoosh”, now identification by the ”Swoosh” alone (trademarks develop over time)
A TM gives you an exclusive right to use the mark for your goods or services
& the right to deny others the use of your mark or a mark similar to yours
lasts 10 years, but can be renewed as many times as you want
Besides: being distinctive and not similar to other marks, it must be graphically reproductive
Nike registered since 1971

2. Trademark Different types of trademarks: Word e.g. SUBWAY Logo e.g.
Word/Logo e.g.
Traditional types of trademarks: Word and figurative signs
Polish examples:
National rights cover Poland
Same legal principles, but practice may be different (different evaluation of trademarks in different countries). Ex. The crown may well be a problem in DK, because we have a monarchy

3. Trademark Different types of trademarks Numerals/Letters Slogans
Numerals: / letters: Ex: B & O
3D – protection of the shape and packaging of goods (ex. perfume bottles)
Harder to obtain than design registration (because it must have distinctive character
On the other hand: TM is not limited in time (design 5 x 5 years), as TM can be renewed over and over again (ex. The Coca Cola bottle still protected after more than 100 years)

4. Trademark Different types of trademark Well-known mark
Collective mark?
(Section 82)
Certification mark?
(Section 83)
Main rule: TM only protects the same kind of goods or services. EX Fox for cars or soap – no conflict
Well-known brands enjoy a broader protection than ordinary TM’s. Coca-Cola has very broad protection. Kodak-marks
Collective marks (kollektivmærker): A group of owners e.g. a society (Ex is forwashing powder)
Certification marks (garantimærker): can be used by anyone who shows documentation that his product meets given conditions/standards
This Ex is the forerunner of the CE mark
Ex2: Lurpak

5. Requirements for a Good Trademark
Distinctive (unique)
Not descriptive
Not similar or identical
Marks must have distinctive character – they must not be descriptive
Ex1: APPLE – cannot be registered for apples, since it means “apples” but is OK for computers
Ex2: KIDZ– cannot be registered for clothing (could be clothing for children), but OK for fx coffee or tea
Ex3: LUXURY – may describe the quality of the goods
Ex4: DENMARK – (geographical origin) may indicate that the goods are from Denmark
Not similar or identical: likelihood of confusion between two marks, if: Marks are identical or similar & goods or services are identical or similar
Other rules:
Must not be contrary to law, public order or morality. In DK we would never take “Nigger,” or any other racist term.
But DK practice not very strict concerning religion
TM must not be misleading

6. Distinctive
Distinctive (unique) and not descriptive for the type of product or service being registered
but
if descriptive, it can be registered only if sufficient evidence of use is presented - acquired distinctiveness
Principal rule: must be distinctive / must not be descriptive
This is in particular something you have to think about with word marks
Figurative marks: the figurative element fullfills the requirement of distinctiveness, but there is no exclusive right to the words
A word can change character when used for a long time

7. (Nestlé v Cadbury [2016] EWHC 50 (Ch)),
acquired distinctiveness through use
The sign for which registration was sought corresponded to to the shape of Nestlé's four-finger KitKat product except that it lacked the KitKat logo embossed onto each of the fingers of the actual product.

8. "in order to demonstrate that a sign has acquired distinctive character, the applicant or trade mark proprietor must prove that, at the relevant date, a significant proportion of the relevant class of persons perceives the relevant goods or services as originating from a particular undertaking because of the sign in question (as opposed to any other trade mark which may also be present)." (para 57)

9. DISTINCTIVENESS CHEESE FROM DENMARK TENNISSHOES ADIDAS TENNISSHOES
Left TM cannot be registered
Right is OK
The word mark is descriptive – figurative elements give the mark distinctive character (but no exclusive right to the words – others are free to use them)
Tennisshoes not OK for shoes – the word ADIDAS gives the mark distinctive character (but no exclusive right to the word tennisshoes)
TENNISSHOES
ADIDAS TENNISSHOES

10. Distinctive Yes No Super Word SUPPER Logo Word/Logo Polish examples:
Left is OK
Right is not
SUPPER OK (but not for food) - SUPER may indicate the quality, and is an appraisal of the product
Combination of coulours are OK – One black line is not
Words are descriptive, but TM has distinctive character because of the grid – PREMIUM is descriptive, and the use of two different colours is not enough to make it sufficiently figurative

11. Distinctiveness Slogan COCA-COLA IS THE MUSIC ÷ THE BEST PIZZAS
UNDER ONE ROOF
+ PEPSI THE CHOICE OF A NEW GENERATION
More examples
Clown of soap is registered – could also have been registred as a design
Slogans:
Ex1: the slogan is not descriptive and Coca Cola is a TM that gives the whole slogan distinctive character => OK
Ex2: descriptive (describe the qualitiy and the goods)
Ex3: Pepsi gives the mark the distinctive character => OK

12.   Exercise X X Half price for clothes Jaguar for cars
Tetley for tea bags
Handy for chainsaws  
Distinctive character (explain why)
Ex1: NO (describes the value of the goods)
Ex2: YES (the jaguar is a fast animal, but has nothing to do with a car, only suggests a similarity)
Ex3: YES
Ex4: NO (describes the quality) X

13. Similar/Identical
If it concerns the same or similar/identical products and services:
The name of product/service cannot be similar or identical to a previous mark
however
The same similar/identical brand name can be used for different products/services in different classes
but
Well-known marks have a broader scope
Main rule: risk of confusion if 1) and 2)
Similar / identical brand name can be used for different products / services:
- Ex FOX: both for cars and for soap. Identical marks, 2 different goods, can co-exist as no likelihood of confusion. Fox could also be used for computers, but not for motorbikes or spare parts for cars (unless same producer)
Well-known:
Ex PUMA (sports clothing) => wider protection (other shoes & clothing, maybe even bags, sport equipment?)
A few marks are so known/ famous that they can stop new marks – no matter what goods & services (Ex1 Coca-cola. Ex2 Rolls Royce)

14. Similar/Identical Meaning the way the mark is: Written Looks
Phonetic (sounding)
Conceptual similarity (Rocket vs Pocket)
Written
Looks (figurative marks)
Phonetic (the way it sounds)
Conceptual similarity
Ex. DK Board of Appeal: ROCKET =/= POCKET (written similar, sounds similar, BUT 2 different meanings)
Judgement will always be of TM’s as a whole – general impression

15. Similar/Identical - Examples
Cool/Kool
Written
Looks
Sounding
Conceptual Star/Stern
Basket / Buskit
For You/ 4 U
EX 2: The two TM’s give the same overall impression, even though different when analysed

16. Exercise Riverland Timberland Zymlin Xymelin Eurica Erika EXERCISE
Similarity?
Word marks:
Ex1: NO
Ex2: YES (sounds very alike, written in similar ways, no meaning)
Ex3: NO (one is a girl’s name)
Figurative marks:
Ex1: YES (visual similarity)
Ex2: NO (would probably be similar if it was not for the text JORAN)

17. Varied Protection of a trademark
How close can you get to another trademark?
Strong trademark gives wider protection
Weak trademark gives less protection
Strong trademarks and well-known marks => wider protection (can prohibit marks that have “some” similarity). Ex1: Coca-cola. Ex2: HARIBO. Ex3: LEGO
Weak trademarks (ex. the word STAR or BRAVO or commonly used symbols e.g. stars or simple geometrical figures are not strong distinctive marks => other marks can be similar “to a certain point” before there is a risk of confusion
Important:
Make a strong and original trademark

18. Examples – Strong/Weak
DERMATECH
PRINCE
Degrees of protection from STRONG to WEAK:
Samsung (fantasy word)
Juventus (figurative and word is not descriptive, but only suggestive)
Prince (distinctive – the word does have a meaning)
Dermatech (suggestive and distinctive –but weak since DERMA = skin / TECH = technology)
BP (only two letters)
Circle (very weak – may have no real distinctive character)
SAMSUNG BP

19. What type of protection is given to trademarks?
Generic – It describes a category of product. (Aspirin, Heroin)
Descriptive – descriptive terms, because they are not inherently distinctive, (Electronic Land)
Suggestive – A suggestive trademark is so named because it suggests a quality or characteristic of goods and services; (Microsoft – Citi Bank)

20. Example : Kodak. Fanciful Mark: marks are completely made up words.
Arbitrary marks: Arbitrary marks have real words that
are meaningless with respect to the product or service.
Example Apple… meaning does not related to product.
Fanciful Mark: marks are completely made up words. 
Example : Kodak.

21. Distinction – Trademark & Trade name
Trademark denotes the manufacture or quality of the goods to which it is attached.
(attached to Goods themselves)
Tradename denotes the ownership of them.
(attached to proprietor of said Goods)
(PLD 1961 Kar. 158 – Abdul Ghani vs Registrar of Trade Marks)

22. Classification system
Like a library system
42 classes
Important to make a good list of goods and services
Think 5 years ahead
1-34: goods, services. In principle all existing goods and services. More examples class 16: books, paper, etc./ class 25: clothing, footwear, headwear/ class 24: bed linen etc./ class 9: computer software /class 42: computer programming
Important to make correct list of goods and services: Protection covers ONLY what the mark has been registered for (Ex: producer of telephones has mark registered for telecommunication => not very good protection).
Think strategicly:
The first 5 years there is no requirement of use
Therefore - Example: TM you want to use for T-shirts, may as well register for ex shoes or maybe accessories in 18 =>
Strategic advantage for 5 years

23. History of Trademakr
Blacksmith who made SWORDS in the Roman Empire are thought of as being the first users of trademarks.
The first trademark legislation was passed by the Parliament of England under the reign of King Henry III in 1266, which required all bakers to use a distinctive mark for the bread they sold.

24. TRADEMARK ORDINANCE 2001 Trade Mark Act 1940
Important Definitions (Section 2)
(xxiv) "mark" includes, in particular, a device, brand, heading, label, ticket, name including person name, signature, word, letter, numeral, figurative elements, colour, sound or and combination thereof ;
(xlvii) "trade mark" means any mark capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings;
(xlix) "trade names" means names used by a person to denote his trade or calling and includes firms' and companies' names;

25. Definitions
(xiii) "dilution" means the lessening of the capacity of a well known trade mark to identify and distinguish the goods or services, regardless of the presence or absence of competition between owner of the well know trade mark or other parties. or likelihood of confusion or deception:
Blurring and tarnishment
"blurs" a mark from association with only one product to signify other products in other markets (such as "Kodak shoes");
“tarnishment”, which is the weakening of a mark through unsavory or unflattering associations.

26. Starbucks Corp. v. Wolfe’s Borough Coffee, Inc. , 559 F. Supp
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 559 F. Supp. 2d 472, 477 (S.D.N.Y. 2008).
Starbucks alleged that Wolfe’s use of the marks CHARBUCKS BLEND and MISTER CHARBUCKS diluted its STARBUCKS marks.
The district court, concluded that “Starbucks” and “Charbucks” were not substantially similar, and that as a result “[t]his dissimilarity alone is sufficient to defeat [Starbucks’] blurring claim.
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 2011 WL , at *3
The Second Circuit reversed and remanded, holding that the district court erred by requiring “substantial similarity” for Starbucks to prevail on its dilution claim. On remand, however, the district court ultimately rejected Starbucks’ blurring claim, noting “[t]he minimal degree of similarity between the marks as they are used in commerce.”

27. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co 633 F
Levi Strauss & Co. v. Abercrombie & Fitch Trading Co 633 F.3d 1158, 1172 (9th Cir. 2011).
a showing of dilution does not require the junior mark is identical, nearly identical or substantially similar to the senior mark.
In light of these recent decision, owners of famous marks should take comfort that their marks are protected against dilution by not only virtually identical or substantially similar marks but also marks of lesser degrees of similarity. Thus, when considering bringing dilution claims, trademark holders should cast a wider net, looking to factors beyond similarity of marks, and prepare their cases accordingly.

28. PASSING OFF
Making some false representation likely to induce a person to believe that the goods or services are those of another.
used to enforce unregistered trade mark rights.
The tort of passing off protects the goodwill of a trader from a misrepresentation.
Passing off has significance where an action for trade mark infringement based on a registered trade mark is unlikely to be successful (due to the differences between the registered trade mark and the unregistered mark).
Reckitt & Colman Products Ltd v Borden Inc [1990] 1 All E.R.
Goodwill owned by a trader
Misrepresentation
Damage to goodwill

29. Difference b/w Infringement & Passing Off
Statutory Remedy
Registration is required
Plaintiff is only required to establish that infringing mark is deceptively similar to the registered mark in respect of similar goods/services and no further proof is required afterwards as there is presumption of confusion
Common Law Remedy
Registration is not pre-requisite
Plaintiff is not only required to establish deceptive similarity of two contesting mark but also require to prove deception or confusion among public and likelihood of injury to the Plaintiff’s goodwill.

30. Section 14 – Absolute Grounds For Refusal of Registration
Substantive requirement of distinguishing goods from one undertaking to another.
Devoid of any distinctive character
Designate the kind, quality, quantity and intended purpose.
Marks become customary in language
Shape – nature of goods themselves
Technical result
Add substantial value to goods
Contrary to Public Policy

31. Section 17 = Relative Grounds of Refusal
Identical and similar marks in same class
Identical and similar marks in different class
Concept of Likelihood of Confusion

32. (Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).
“Polaroid factors,”
Strength of the senior user’s mark. The stronger or more distinctive the senior user’s mark, the more likely the confusion.
Similarity of the marks. The more similarity between the two marks, the more likely the confusion.
Similarity of the products or services. The more that the senior and junior user’s goods or services are related, the more likely the confusion.
Likelihood that the senior user will bridge the gap. If it is probable that the senior user will expand into the junior user’s product area, the more likely there will be confusion.

33. “Polaroid factors,”
The junior user’s intent in adopting the mark. If the junior user adopted the mark in bad faith, confusion is more likely.
Evidence of actual confusion. Proof of consumer confusion is not required, but when the trademark owner can show that the average reasonably prudent consumer is confused, it is powerful evidence of infringement.
Sophistication of the buyers. The less sophisticated the purchaser, the more likely the confusion.
Quality of the junior user’s products or services. In some cases, the lesser the quality of the junior user’s goods, the more harm is likely from consumer confusion.
related products and services.

34. Pakistan Case Laws 2015 SCMR 1230 (Farooq Hayat vs Hayat) 2012 CLD 905
(Dera vs Fazal-e-Haq Dera)

35. Honest Concurrent Use Section 19
Ground to Overcome the Refusal of Trademark Registration.
when the owner of a mark has obtained registration but has never used or has very limited use of it. However, during the term of the registration, another person or company has honestly and concurrently used an identical mark in similar goods or products
Factor to determine
The quantum of the concurrent use of the trademark in connection with the goods concerned and the duration, area and volume of the trade.
The degree of confusion likely to ensue from the resemblance of the marks, which is to an indication of the measure of public inconvenience.
The honesty of the concurrent use
Whether any instances of confusion have in fact been proved.
The relative inconvenience, which would be caused if the marks were registered, subject if necessary to any conditions and limitations.

36. Section 21 & 32 Disclaimer Divisional Application
The proprietor shall either disclaim any right to the exclusive use of such part or of all or any portion of such matter, as the case may be, to the exclusive use of which the tribunal holds him not to be entitled, or make such other disclaimer as the tribunal may consider necessary for the purposes of defining the rights of the proprietor under the registration:
A divisional application means an other application by a person who has already made an application under section 22 for registration of a trade mark in respect of certain goods, services or both and made, in accordance with this section for-
(a) the registration of a part only of the trade mark in respect of any or all those goods. services or both; or (b) the registration of the trade mark in respect of some of the goods, services or both in respect of which registration is sought under the application made under section 22.

37. 68. Misleading and comparative advertisement.-
2(iv) "comparative advertisement" means and advertisement which explicitly or by implication identifies a competitor or goods or services offered by a competitor;
2(xxv) "misleading advertising" means any advertising which in any way. including its presentation, deceives or its likely to deceive the persons to whom it is addressed or whom it reaches and which. by reason of its deceptive nature, is likely to affect their behavior or which, for those reasons. injures or is likely to injure a competitor:

38. Conditions of Comparative Advertisement
(a) it is not misleading according to clause (xxiv) of section 2, and sub-section (2);
(b) it compares goods or services meeting the same needs or intended for the same purpose;
(c) it objectively compares one or more material, relevant, verifiable and representative features of those goods and services, which may include price;
(d) it does not crate confusion in the market place between the advertise and a competitor or between the advertiser's trade mark. trade names, other distinguishing marks, goods or services and those of the competitor;
(e) it does not discredit or disparage the trade marks, trade names, other distinguishing marks, goods, services, activities or circumstance of a competitor;
(f) for products with designation of origin, it relates in each case to products with same designation;
(g) it does not take unfair advantage of the reputation of a trade mark, trade name or other distinguishing marks of a competitor or of the designation of origin of competing products; and
(h) it does not present goods or services as imitations or replicas of goods or services bearing a protected trade mark or trade name.

39. 2008 CLD 190 (Hub Pak Salt Refinery vs National Foods
Disparaging Advertisement
Lady picked up the Defendant’s product and put off treating the same as dangerous to health and human consumption
Offensive advertisement have been made in such a manner as to amount defaming the Defendant and its product.
Advertisement campaign on electronic media have immediate impact on viewers.

40. International filing Madrid
National Applications e.g. in Australia, USA
Priority claimed for a Polish application within 6 months
Madrid: old system, still under development, very popular.
Centralized system, through which you can apply in different national countries
Can only be used by member states, but most industrialized countries members – USA, Japan etc.
Must have a Polish (or another national) basis application or registration
Like a menu card: you pick what you want (one or more countries). International application is sent via Polish Office to WIPO (UN body), from where applications are sent out to designated countries
Also possible to subsequently designate other countries
In contrast to the EU mark: If it is refused in one country, this does not influence the other countries. You get the countries, where your TM passes through
The link between EU-trademark and Madrid Protocol systems: Use EU registration as basis for MP / designate all of EU in MP application

41. INTERNATIONAL APPLICATION
Example:
5. Basis application or registration number
7. The mark
11. Designated countries: China, Japan, Russian Federation, USA
Advantages
Meet your opponents on your home ground (use national registration as a ”test”).
If EU-application => the battle (opposition case) will take place in Alicante in a different language
Possible to have subsequent designations

42. Consequences of infriging
If you infringe someone else’s trademark or design, you may risk:
Injunction, which means that all the infringer’s products with the infringing trademark on or the same design can be removed from the marked
Destruction of products
Being given a fine
Being sentenced to imprisonment (in gross cases)
The damages can be calculated to the amount of loss of for example royalty for the period the infringement has been going on.
I nogle tilfælde, hvor der er tale om kendte mærker, og hvor sagsøgte har udvist en særlig høj grad af uagtsomhed, kan erstatningen godt snige sig pænt over euro - eksempelvis afgørelse om Burberry-mærket, hvor erstatningen blev udmålt skønsmæssigt (efter en vurdering af hvad sagsøger måtte forvente at have kunnet få i licensafgift) kr i erstatning. Se hele afgørelsen

43. Consequences of infriging
Paying damages to the trademark or design owner
e.g. Burberry vs. Zebra
I nogle tilfælde, hvor der er tale om kendte mærker, og hvor sagsøgte har udvist en særlig høj grad af uagtsomhed, kan erstatningen godt snige sig pænt over euro - eksempelvis afgørelse om Burberry-mærket, hvor erstatningen blev udmålt skønsmæssigt (efter en vurdering af hvad sagsøger måtte forvente at have kunnet få i licensafgift) kr i erstatning. Se hele domsafgørelsen hos Marianne.

44. ® ™ Why register? To have an exclusive right Stop others from copying
Certificate of ownership ™
Exclusive right – stop others from copying
Explanation of ® and TM
Consider your market
Consider advantages and disadvantages of the different systems