Community Trade Mark Research Articles

The Place of Forensic Linguistics in the Resolution of Trademark Conflicts: Case of DOUBLEMINT & DOUBIEMLNT

Forensic linguistics focusing on word choice and spelling, it can be useful while resolving language crime, trademark infringement, and so forth. In our days, trademarks are one of the most infringed intellectual properties in the world in terms of values. Trademark could be a single word, a combination of words and symbols, design, or logo that distinguishes a company or products from others in the industry. When someone acquires a registered trademark, he is granted an exclusive right to its usage and it strongly prohibits other organizations from using it. This paper shows the way an expert in Forensic Linguistics should use his skill and knowledge to handle the conflict among similar trademarks. From brand name (how it is written, upper-cases or lower-cases, how many letters make this brand name, how it sounds, how it looks like, and so forth) to logo (design, usage of colors, sharp and so forth). The expert in Forensic Linguistics will try to find out scientific evidence that may help judges in decision-making. The present study scrutinized the place of forensic linguistics in the resolution of trademark conflicts, the scientific techniques, and methodologies utilized to analyze the similarities and differences between the trademarks in conflict. This research showed the importance of associating an expert in Forensic Linguistics in the Community Trademark conflicts in order to come up with a conclusion based on scientific evidence; the place of forensic linguistics and other related disciplines in revolving the issues of trademark infringement.

Did the Court of Justice of the European Union Solve the Puzzle by Declaring the Rubik’s Cube Trademark Invalid?

Abstract In 1995, the patent protection for the internationally famous Rubik’s Cube expired. Ernő Rubik, the Hungarian inventor of the three-dimensional puzzle, had to find an alternative way to maintain his monopoly on the market and thus had the shape of the Cube registered as a 3D Community trademark in 1996. However, the idea of perpetuating the exclusive rights related to the Rubik’s Cube only proved to be successful for ten years, as in 2006 Simba Toys GmbH & Co. KG, a German competitor of Rubik, filed an application for declaration of invalidity against the 3D Rubik’s Cube trademark. The application was based on the lack of distinctive character, descriptiveness and functionality of the 3D trademark. This was rejected by OHIM. The invalidity case ended up before the Court of Justice of the European Union, upon the appeal of the German competitor. The Court found that the Rubik’s Cube trademarks should have been declared invalid, and transferred the case back to OHIM, which then had to bring a new decision that was in line with the interpretation of the CJEU. The study analyses the two rounds of invalidity proceedings, the key issues which emerged throughout the case, the interpretation of functionality by OHIM and the CJEU, and the legal background and the prospect for 3D shape marks in the EU.

Community Trade Marks: Relevance of Intention to Use and No Invalidation Based on Impreciseness or Lack of Clarity

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The Forensic Analysis of Likelihood of Confusion among Brand Names: Case of Adidas and Abidas

This paper demonstrates how an expert in Forensic Linguistics, using his skills and abilities to come up with a legal decision-making based on scientific evidence in cases involving brand names under dispute. The very important aspect in the likelihood of confusion between two brand names is when two products have names which could make consumers a bit confused while the composition of both products has one or two different ingredients which could have some allergic reactions in the body of some consumers referring to sectors like the food industry, pharmaceutical sector and so on. The study states that the conflict on the trademarks Adidas and Abidas could be avoided if the linguists are called upon as experts while the junior brand looks for name about his new brand or in the courts for the legal decision-making between brands. For these reasons, the discussion tries to provide answers to the following research questions: (a) Can a forensic linguist provide relevant evidence in the conflicts between brand names? (b) What are aspects to take into consideration? (c) Is it possible to determine the likelihood of confusion between Adidas and Abidas? To answer these research questions, an authentic case was thoroughly examined. This involved revisiting the Community Trademark conflict between the earlier and international brand Adidas and Abidas. For purposes of analysis, the likelihood of confusion was taken into consideration in the review of the Adidas vs Abidas case.

The Notion of the European Union Trademark

Abstract The EU trademark law has recorded the important changes in the last years. The Community trademark in the past and the EU trademark at the present have become very popular legal measures not only in the EU Member States but also in the third countries. Its preferences are increasing year to year. The EU trademark may consist of a sign that fulfils two main attributes. Firstly, there is a distinctive character. Secondly, there is a capability of being represented on the Register of the EU trademarks. The second attribute is new and replaced the previous attribute - capability of being represented graphically. The interpretation of the above mentioned attributes is not possible without the judgements of the Court of Justice of the European Union. It is necessary to take into account the kind of trademark, list of the goods and services, which should be signed by the trademark, and its perception by the public. The paper includes the main judgements of the Court of Justice of the European Union related to the interpretation of the sign that may be registered as the EU trademark. They are very helpful in the application practice of the European Union Intellectual Property Office and the national offices of the intellectual property as well.

Trademarks’ relatedness to product and service innovation: A branding strategy approach

The use of trademark data in innovation studies is still limited because as yet no guidelines exist to ascertain which trademarks relate to innovation. This paper proposes that a branding strategy approach may help to identify innovation related trademarks. Companies use distinctive branding strategies for innovation and these branding strategies have important consequences for the design of new trademarks and their application scope. Based on a sample of Benelux and Community trademarks, we find that trademarks for brand creation relate more often to product innovation. In addition, we find negative effects of a trademark’s industry scope on its relatedness to product innovation, and of a trademark’s geographic scope on its relatedness to service innovation. Our findings bear several key implications for further research towards identifying innovation-related trademarks from a branding strategy perspective.

The translation of EU trademarks – a special type of Intellectual Property translation

Abstract This paper looks at the industrial practice to translate legal intellectual property text such as patents and trademarks in order to examine if there are or there are not special approaches and methods needed to work on these texts and to identify some translation theories to see if these are or are not applicable to intellectual property text. The theories chosen are examples and far from being exhaustive. Intellectual property field is very wide so focusing on Community Trademark would provide a more focused approach. The paper shows that while many of the general applicable approaches/methods are applicable, yet the translation of trademarks deserves to be treated as a field of specialised translation such as medical or legal. The objective is to show that there are certain translation approaches that are useful for the translation of these types of texts rather than for general translation. This study is mainly limited to the translation of Community Trademarks of the European Union and comparisons which can be made with the translation of patents and or other specialised translation.

La interferencia entre marcas e indicaciones geográficas en el ámbito vitivinícola

The judgment of the General Court of the European Union (Sixth Chamber), Case T 696/15 of 9 February 2017, against EUIPO examines, among the procedural aspects of the European trade mark regime, non-registration of a wine product in the event of non-compliance with the essential, in particular absolute, requirements for the acquisition of a mark in the territory of the European Union. In examining the various provisions at European level which provide for the granting or denial of trademarks and for the purpose of ensuring that geographical indications are fully effective in the European trade mark registration proceedings, this is to prevent holders from incurring any the grounds for annulment, Regulation Nº 207/2009 on the Community trade mark (hereinafter referred to as the CTMR), 7. 1, (j), points out that they are excluded from the register ‘wine marks containing or consisting of a geographical indication identifying wines, or marks of spirit drinks containing or consisting of a geographical indication identifying the spirits, where such wines or drinks do not have such origin’. The inadmissibility of the application for a word mark which contains a geographical indication which does not belong to it and also coincides with other appellations of origin is, inter alia, the central argument of the judicial issue under consideration. The legal question arose in 2014, when a Spanish mercantile company (Bodegas Vega Sicilia) decided to register the word mark “Tempos Vega Sicilia” before the EUIPO which, however, denied the registration of the same because it the term “Sicilia” is part of the protected designations of origin for wines. Hence, the mercantile company decided to appeal in 2015 to the EU General Court, which rejected the appeal by ruling of 9 February 2017, also rejecting, as the EUIPO did at the time, the arguments of the applicant relating to the existence of a family of registered trade marks prior to the registration of the DO or the potential popularity of said family of trademarks and guaranteeing maximum protection of protected geographical denominations and, therefore, denying registration when, when included in a trademark, it was not limited to the product of the said geographical area.

Competitiveness of Polish enterprises in relation to the potential of cloud computing

Enterprises seek for possibilities to limit the costs and for areas that stimulate the level of innovation. Both of these aspects can be effectively supported by application of cloud computing, without a simultaneous need to make a choice of a trade-off type. The aim of the article is to prove that cloud computing provides entrepreneurs with the possibility to limit the costs and at the same time to support their activities related to the selected direction of innovation development. It has both a direct influence on the level and structure of costs in the enterprise, as well as an indirect influence, e.g. related to shortening the time for introduction of new solutions to the market, making decisions or limiting the costs of projects.

On the fee elasticity of the demand for trademarks in Europe

Over the last 20 years there has been a surge in national trademark applications in Europe. This increase in filings has been interpreted as a sign of increased innovative performance. In this paper, we argue that the explanation is much simpler. First, using a novel dataset, we document that trademark filing fees have been steadily decreasing and converging across countries in Europe. Second, using dynamic panel data econometrics, we find that national trademark filings are price-sensitive: a fee decrease by 10% increases filings at an office by about 10.5%. These estimates suggest that a substantial proportion of the rise in filing numbers can be explained by lower fees. We also document that trademark filings at national offices in Europe became more elastic after the mid-1990s. Arguably, this is because the European Community Trademark became available as an attractive alternative to national filings in 1996 and increased the price-sensitivity of applicants.

A greater role for geographical indications in the registration of Community trade marks

A greater role for geographical indications in the registration of Community trade marks

Community trade mark round-up 2015

Community trade mark round-up 2015

Is a legally distinct subsidiary an “establishment” under Article 97(1) of the Community Trade Mark Regulation?

Is a legally distinct subsidiary an “establishment” under Article 97(1) of the Community Trade Mark Regulation?

‘Halloumi’ is too descriptive to obtain Community trade mark protection

‘Halloumi’ is too descriptive to obtain Community trade mark protection

The Changing Face of the Community Trade Mark

The Community Trade Mark (‘CTM’) has been with us since 1996.At the time of its introduction, it was revolutionary, and for trade mark practitioners at the time meant a significant shift in their practice. Long gone was the need to discuss with clients in which of the EU countries they required protection, taking them through potentially expensive and different procedures in each country, and often missing out on some relevant countries for reasons of cost. In came the ability to file a single trade mark application that would cover, at the time, all fifteen member countries of the European Community, eventually extending to the current twenty-eight member countries. The Community Trade Mark was born, with the phrase ‘CTM’ becoming normal parlance in trade mark circles, along with the name of the governing office, Office for Harmonization in the Internal Market, Trade Marks and Designs, lovingly phrased as ‘OHIM’. But all good things need to be refreshed to ensure that they keep up with the times, and so the process of reviewing the current CTM system began in 2009 with a survey and report by the Max Planck Institute. And so now, some twenty years on from the original system, some changes to the system are about to be introduced, the first ones in early 2016. During the course of the Max Planck study a number of key interest groups from around the EU were asked their views on the current system, with ‘overcrowding’ of the Register being a popular concern from the UK. Through the legislative procedure, issues such as these, along with the outcomes of decisions from the CJEU, have led to some changes. Admittedly some of these are highly technical in nature, and will only affect a small number of cases in very specific circumstances. Others have the potential to be of greater relevance as the concept of ‘brand’, and what elements of ‘brand’ and ‘get-up’ can be protected, becomes more abstract and distant from the more traditional names and logos of trade marks past. And there are one or two changes which are potentially headline grabbing, but in practice will have little impact other than a change in terminology. Perhaps the first issue to cover is when these changes will come into force. The new Directive and Regulation were published on 24 December 2015 and will come into force ninety days after publication on 23 March 2016. So what are they key changes?

Lack of national reputation not necessarily a bar to use of Community trade mark to object to later national applications

The Court of Justice of the European Union (CJEU) found that reputation in a single EU Member State can be enough to sustain an objection by the holder of an earlier Community trade mark (CTM) to the registration of a national trade mark under Article 4(3) of Trade Marks Directive 2008/95 (TMD), even where there was no established reputation in that Member State where the national application was made, where it is shown that a ‘commercially significant’ part of that national public is familiar with that earlier mark, the public makes a connection between it and the later national mark and (taking account of all the relevant factors in the case) there is either actual and present injury to its mark or a serious risk that such injury may occur in the future.

Yes, you can! Peaceful coexistence of conflicting marks can be proved by absence of likelihood of confusion

The General Court of the European Union has ruled that the owner of a Community trade mark (CTM) can prove that his mark peacefully coexists with earlier marks, because such marks are not confusingly similar, by supplying evidence showing that the relevant public knew the conflicting marks before the date of filing of the CTM and that that mark has been used for a long enough period of time to influence consumer perceptions of it.

Community Trade Mark Regulation: A Commentary by Gordian N. Hasselblatt (ed)

<i>Community Trade Mark Regulation: A Commentary</i> by Gordian N. Hasselblatt (ed)

Brexit – more downside than up

By the end of 2017, the UK will have voted in a referendum on the UK’s membership of the EU and some form of UK exit, or ‘Brexit’, is a real possibility. Despite irritations with the existing systems of rights and enforcement, there is little to suggest that EU businesses or their IP advisors would ultimately be happy with that result. It is hard to say what Brexit would look like in any detail. The EU’s arrangements with Switzerland or the European Economic Area (EEA) might provide a model for future collaboration, but much would depend on what the newly single UK wanted and the EU were prepared to agree. The referendum process is likely to see much mud and the occasional rock thrown. The terms of a Brexit will depend how bruised everyone feels afterward. However, there are some general principles that ought to apply whatever the final deal. Unitary EU rights such as Community trade marks and Community design rights would ultimately cease to apply in the UK. Dealing with that would be fiddly but not impossible. It seems safe to predict that businesses everywhere would dislike the costs of obtaining new UK registrations. The current system under the European Patent Convention should not be affected—it already has non-EU members. But the new unitary patent system and Unified Patents Court (UPC) are expected to be up and running by 2017 and will only apply to participating EU Member States. Brexit would leave the UK outside, so that the unitary patent would not be enforceable in the UK and the UPC would not have jurisdiction over UK patents (including conventional EP(UK)s). Brexit may not hold up the implementation of the UPC. The UPC Agreement will enter into force once it has been ratified by thirteen Member States, including the three in which the highest number of European patents were in force in 2012, ie France, Germany and the UK. If the UK were no longer a Member State, this compulsory ratification would be likely to fall to Italy as the Member State with the next highest number. The UPC Agreement names London as a seat of the UPC’s central division. Changing that would require an amendment to the UPC Agreement and repeated ratifications. No one is going to enjoy that, but it is hard to see the UPC keeping a London centre at that point. That would be a significant loss to those hoping to see the London market develop further. EU legislation harmonising national laws, eg in respect of national trade marks, copyright and database rights, would cease to bind the UK. The UK legislature and judiciary would be free to depart from EU law and CJEU jurisprudence. As IP laws in the EU become more harmonised, eg with the proposed introduction of the Trade Secrets Directive and unitary patent system, the UK’s laws would probably diverge, not least as UK courts are unlikely to see legislation in quite the same way as the Court of Justice of the European Union (CJEU). Pan-EU remedies, like injunctions, currently available in respect of unitary rights and, in limited circumstances, national IP rights, would no longer apply to the UK or be available in UK courts. It is unclear whether orders issued by UK courts would remain enforceable in the EU. UK data protection law may also diverge from EU law. The General Data Protection Regulation, expected to come into force in 2018, may be significantly more onerous than the current regime and the UK may decide not to match it. Not matching would avoid new onerous obligations but might adversely affect any adequacy assessment for international data transfers. Enforcement presents the greatest risk of loss of business to the UK. The UK’s IP courts have benefitted greatly from being seen as a good, if expensive, EU destination, through a combination of language, clearly argued decisions and (some) predictability. While the UK outside the EU would be free of the CJEU and its more unexpected or opaque judgments, all businesses would have far less reason to be interested in the views of UK courts. The UK is a big market, but decisions of courts in a harmonising EU will be of greater interest to businesses. Legal harmonisation has allowed practitioners across Europe to speak a closer, if not the same, language. The obvious advantage of the London patent court would disappear. Brexit would thus result in the UK being a less attractive place for IP enforcement. While IP seems unlikely to be a major determinant in the debate on ‘Brexit’, it is not too early to have a view. So far, it looks as if the IP answer is to remain ‘in’.

A step in the right direction for Louboutin

In a case that will leave fashionistas everywhere feeling pumped, this article considers the recent decision of the EU General Court, which upheld the ruling by the Office for Harmonisation in the Internal Market (OHIM)'s First Board of Appeal to reject an opposition filed by Roland SE against Christian Louboutin's Community trade mark (CTM) application for its iconic red sole trade mark for high-heeled shoes, due to an alleged likelihood of confusion with its earlier CTM registration for the red and blue logo MY SHOES. As a result, Roland SE got the boot and Louboutin walked away.