1. IP Law and Management CEIPI, 24 February 2018 Trademark Law: Acquisition
Prof. Dr. Martin Senftleben
VU University Amsterdam
Bird & Bird, The Hague

2. Step 2: Management Decisions

3. Checklist
For which goods and services should the trademark be protected?
In which markets should the trademark enjoy protection?
How to obtain and uphold the required protection for relevant goods and services in these markets?

4. Registration

5. Principle of speciality
registration is always made with regard to specific goods or services
same mark can thus be registered for different owners in different market segments
‘Ajax’ for a football club
‘Ajax’ for a cleaning detergent

6. Broad indications in the EU
‘The use of general terms, including the general indications of the class headings of the Nice Classification, shall be interpreted as including all the goods or services clearly covered by the literal meaning of the indication or term. The use of such terms or indications shall not be interpreted as comprising a claim to goods or services which cannot be so understood.’ (Art. 39(5) TMD)
see CJEU, 19 June 2012, case C-307/10, ‘IP Translator’
markedly different approach in the US

7. Filing date first application takes precedence
first application can be a previous application in another country of the Paris Union
Union priority, Arts EUTMR
priority may also follow from exhibition at an official or officially recognised international exhibition
exhibition priority, Art. 33 EUTMR

8. Paris Union

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

10. Registration procedure

11. EUTM registration publication refusal application examination
opposition
registration
conditions of filing
absolute grounds
relative grounds
‘EU search report’ on request once a filing date is accorded (Art. 43(1) EUTMR)

12. Absolute grounds for refusal

13. = exclusions from protection
non-distinctive signs
descriptive signs
generic signs
functional signs
signs contrary to public order/morality
deceptive signs
official emblems
(Art. 7(1) EUTMR)

14. Relative grounds for refusal

15. Relevant earlier rights (Art. 8 EUTMR)
trademark registration with effect in the EU
trademark application with effect in the EU
well-known marks in the sense of Art. 6bis Paris Convention
non-registered trade marks and other signs used in trade

16. Relevant earlier rights (Art. 8 EUTMR)
earlier designation of origin conferring right to prohibit TM
earlier geographical indication conferring right to prohibit TM

17. Protected Designations of Origin (PDO)

18. Protected Geographical indications (PGI)

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

20. Revocation

21. Revocation = effect ex nunc
‘The European Union trade mark shall be deemed not to have had, as from the date of the application for revocation or of the counterclaim, the effects specified in this Regulation, to the extent that the rights of the proprietor have been revoked.’ (Art. 62(1) EUTMR)
earlier date may be fixed at the request of one of the parties

22. Grounds for revocation (Art. 58 EUTMR)
non-use for a continuous period of 5 years
became generic because of (in)activity of the proprietor
trademark liable to mislead (nature, quality, geographical origin) because of the use made by the proprietor

23. Use requirement
‘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)
implementation in the EU: Art. 18(1) EUTMR, Art. 16(1) TMD
longer period: five years of non-use permissible

24. Art. 58(1)(a) EUTMR revocation possible…
‘if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use;…’
also partly revocation with regard to some of the goods or services possible

25. Art. 58(1)(a) EUTMR
but only if use is not started or resumed before revocation is asserted
‘…however, no person may claim that the proprietor's rights in a European Union trade mark should be revoked where, during the interval between expiry of the five-year period and filing of the application or counterclaim, genuine use of the trade mark has been started or resumed;…’

26. Different ways of assertion
counterclaim in infringement proceedings
application to EUIPO

27. ECJ, 11 March 2003, case C-40/01, Ajax/Ansul
holder of ‘Minimax’ for fire extinguishers
sales authorisation expired in 1988
still uses the trademark for component parts, extinguishing substances and repair services
Ajax:
registered ‘Minimax’ for fire protection materials and related items in 1992
starts using the mark in 1994
invokes genuine use defense against Ansul

28. ECJ, 11 March 2003, case C-40/01, Ajax/Ansul
‘…in order to create or preserve an outlet for those goods or services; genuine use does not include token use for the sole purpose of preserving the rights conferred by the mark.’
‘…whether the commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark…’

29. ECJ, 11 March 2003, case C-40/01, Ajax/Ansul
‘…for goods that were sold in the past does not mean that its use is not genuine, if the proprietor makes actual use of the same mark for component parts that are integral to the make-up or structure of such goods, or for goods or services directly connected with the goods previously sold and intended to meet the needs of customers of those goods.’

30. CJEU, 8 June 2017, case C-689/15, Gözze Frottierweberei
Verein Bremer Baumwollbörse (VBB)
association with activities linked to cotton
owner of individual cotton flower mark
used to certify composition and quality of goods
basis: license agreements with members of the association
Gözze Frottierweberei
uses cotton flower mark without authorization
doubts genuine use because only used as a badge of quality, but not as a badge of origin

31. CJEU, 8 June 2017, case C-689/15, Gözze Frottierweberei
Verein Bremer Baumwollbörse
cotton flower mark
Gözze Frottierweberei
allegedly infringing label

32. CJEU, 8 June 2017, case C-689/15, Gözze Frottierweberei
cotton flower mark registered as regular, individual trademark
question then: use as a quality certificate sufficient to establish ‘genuine use’?
‘…while a mark may, admittedly, also be used to fulfil other functions, such as that of guaranteeing the quality of that product or service or that of communication, investment or advertising [see CJEU, 18 June 2009, L’Oréal/Bellure, para. 58],…’

33. CJEU, 8 June 2017, case C-689/15, Gözze Frottierweberei
‘…it is nevertheless subject to the sanctions provided for in that regulation where it has not been used in accordance with its essential function [to guarantee the identity of origin of the marked goods or services] for an uninterrupted period of five years. In that case, the rights of the proprietor of the mark are declared to be revoked…’ (para. 42)
use to indicate origin is thus additional precondition for genuine use

34. Genuine use requirements
use to create or preserve an outlet for goods or services
(CJEU, Ajax/Ansul)
use to indicate the origin of goods or services
(CJEU, Gözze Frottierweberei)

35. CJEU, 8 June 2017, case C-689/15, Gözze Frottierweberei
exception: collective and certification marks
use as a quality guarantee may be sufficient
‘…such a certification may, depending on the circumstances, suffice for the view to be taken that a mark other than an individual mark fulfils its function as an indication of origin…’ (para. 50)
collective marks: distinguishing goods of association members (Art. 74(1) EUTMR)
certification marks: distinguishing goods with certification (Art. 83(1) EUTMR)

36. Territoriality

37. CJEU, 19 December 2012, case C-149/11, Onel/Omel
Hagelkruis
seeks registration of the word mark OMEL for classes 35, 41, 45 in the Benelux
doubts that Leno has put its trademark to genuine use
Leno
files opposition based on its earlier CTM ONEL with regard to classes 35, 41, 42
can only provide evidence of genuine use in the Netherlands but not in the rest of the EU

38. CJEU, 19 December 2012, case C-149/11, Onel/Omel
assessment must be based on Community as a whole
territorial borders irrelevant
‘…that the territorial borders of the Member States should be disregarded in the assessment of ‘genuine use in the Community’ within the meaning of Article 15(1) of Regulation No 207/2009.’ (para. 43)

39. CJEU, 19 December 2012, case C-149/11, Onel/Omel
but use in a single Member State can be sufficient
‘…it cannot be ruled out that, in certain circum-stances, the market for the goods or services for which a Community trade mark has been registered is in fact restricted to the territory of a single Member State. In such a case, use […] on that territory might satisfy the conditions both for genuine use of a Community trade mark and for genuine use of a national trade mark.’ (para. 50)

40. CJEU, 19 December 2012, case C-149/11, Onel/Omel
no particularly high threshold
‘…whilst it is reasonable to expect that a Community trade mark should be used in a larger area than a national mark, it is not necessary that the mark should be used in an extensive geographic area for the use to be deemed genuine, since such a qualification will depend on the characteristics of the product or service concerned on the corresponding market.’ (para. 54)

41. Invalidity

42. Invalidity = effect ex tunc
‘The European Union trade mark shall be deemed not to have had, as from the outset, the effects specified in this Regulation, to the extent that the trade mark has been declared invalid.’ (Art. 62(2) EUTMR)

43. Grounds for invalidity
absolute grounds (Art. 59 EUTMR = absolute grounds for refusal)
relative grounds (Art. 60 EUTMR = more grounds than in case of refusal)
where the applicant was acting in bad faith when he filed the application for the trade mark

44. Additional relative grounds
name rights
personal portrayal
copyright
industrial property

45. Registration strategies

46. The problem national route solution 1:
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 1:
harmonization of national procedures
solution 2:
bundle of registrations via central procedure
solution 3:
transnational trademark law system

47. Different routes of registration
EUIPO: European Union Trade Mark (EUTM)
unitary right for the entire EU territory
national registrations
Madrid System: international registration

48. EUTM system filing in an official EU language
indication of a second language for opposition, revocation and invalidity (Art. 146(3) EUTMR: EN, FR, DE, IT, ES)
seniority claims in case of earlier rights in EU Member State(s)
conversion in case of refusal, withdrawal or ceasing of effect (Art. 139(1) EUTMR)

49. B registers the conflicting mark YY.
Claiming seniority (Art. 39 EUTMR)
A registers the mark Y.
B registers the conflicting mark YY.
If A registers Y as an EUTM, could he then stop renewing the national registration in Germany?
With a seniority claim, A can preserve his German prior right under the EUTM system!

50. Conversion (Art. 139-141 EUTMR)
available if EUTM is refused, withdrawn, effect ceases (surrender, no renewal)
filing date and seniority preserved
request via EUIPO
translation and national fee but no new formal requirements
European Union
As before, the treaty that governs the international application is determined by the treaty that governs the designations. In this example, [READ SLIDE].

51. Streamlining via international route?
Switzerland
‘uncontrolled’ accumulation of registrations

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

53. Growing Madrid Union: 100 Members (covering 116 countries)
Following the accessions by these seven countries and by the EC, the Madrid Union will have, on October 1, 77 members: 66 Contracting Parties to the Protocol and 56 to the Agreement. In this map are indicated, in light blue the 11 countries still bound only by the Agreement; in dark blue, the 45 countries which are bound by both treaties, and in green-blue the 20 countries which are bound only by the Protocol, to which should be added the European Community.
As we can see, the Madrid system continues to expand in different regions in the world. Europe is still the region the most largely represented (with 42 Members). But the System has now also 19 members in Asia, 12 in Africa and 3 in the Americas.
Altogether, the Madrid Union countries account today for more than half of the world population (3.1 billion people) (out of 6.1 billion). Their combined Gross Domestic Product represents about 2/3 of the world gross product.
This means that the Madrid System is certainly offering a very attractive market for making business to all those who are entitled to use it.

54. Overview of the legislation
Madrid Agreement (A) of 1891
Madrid Protocol (P) of 1989
Common Regulations
Administrative instructions
national interface

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

56. P AP P AP Switzerland as a basis P P AP AP
United States P AP AP P
European Union
Switzerland AP AP
As before, the treaty that governs the international application is determined by the treaty that governs the designations. In this example, [READ SLIDE]. SAFEGUARD CLAUSE
China

57. AP P AP AP EU as a basis P P P P
Egypt P P P AP
Switzerland
European Union P AP
As before, the treaty that governs the international application is determined by the treaty that governs the designations. In this example, [READ SLIDE]. SAFEGUARD CLAUSE
China

58. Fee structure (Art. 8) Agreement: Protocol: basic fee basic fee
…for each class beyond 3:
supplementary fee
…for each designated State:
complementary fee
Protocol:
basic fee
…for each class beyond 3:
supplementary fee
…for each designated Party:
complementary fee
…optional individual fee
(art. 8(7))

59. Further stages of extension
further steps: subsequent designations (further markets)
first step: designation of Union Members in the initial application

60. Advantages 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

61. Exemption from registration

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

63. Art. 6bis 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
service marks not mentioned in Art. 6bis PC (but included by Art. 16(2) TRIPS)
protection does not depend on the registration of the well-known mark

64. A well-known mark in the sense of Art. 6bis PC?

65. Identifying well-known marks (art. 16(2) TRIPS)
‘…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.’

66. The standard of well-known marks (Art. 2(2) WIPO Joint Recommendation)
Relevant sectors of the public shall include, but shall not necessarily be limited to:
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

67. 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.’
…niche knowledge (+)

68. contact: m.r.f.senftleben@vu.nl
The end.
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