Community Trade Mark Research Articles

Use of a Community trade mark in only one Member State does not maintain the right

Community Trade Mark Regulation, Art. 15 (1) The use of a Community trade mark (CTM) in a single Member State is as a rule not sufficient to maintain the right. Such use maintains a CTM only under exceptional circumstances, eg if the market for the goods or services in question is restricted to the territory of a single Member State. Intellectual Property Enterprise Court (IPEC), England and Wales, decision of 29.6.2015 – [2015] EWHC 1773 (IPEC) – Sofa Workshop The Sofa Workshop Ltd sought to prevent Sofaworks Ltd from using the name “Sofaworks”, claiming inter alia infringement of two CTMs consisting of the word “Sofa Workshop”. It was not disputed that the trade marks had been extensively used in the United Kingdom. Sofaworks held both marks to be descriptive and, more significantly, argued that use in the UK alone did not constitute genuine use of the CTMs. The IPEC upheld the action on the grounds of passing-off. One of the decision's many obiter dicta deserves consideration. The court indeed found that the trade marks had not been put to genuine use. It addressed in detail the Court of Justice of the European Union (CJEU) ONEL decision (Leno Merken, C-149/11, ECLI:EU:C:2012:816). In that decision, the trade mark in question had only been used in the Netherlands. The CJEU held that territorial scope is only one of the factors when determining genuine use, a factor which must be included in an overall analysis of the relevant circumstances. It stated that, with a CTM, the overall assessment must take into account that the territory of protection of a CTM is larger than that of a national trade mark. The CJEU referred to Art. 15 (1) of Community Trade Mark Regulation 207/2009 which requires “use in the Community”. From this wording (“Community”), however, the CJEU concluded that national borders per se play no role in determining the size of the territory of use necessary for genuine use (para 44) and that accordingly, if eg the market is confined to the territory of one Member State, the use in only that Member State could be sufficient (para 50).

Louis Vuitton's chequerboard: iconic, not distinctive

Upholding the decisions of the Office for Harmonisation in the Internal Market (OHIM), the General Court held that two famous chequerboard patterns designed by Louis Vuitton were unsuitable for registration as Community trade marks (CTMs) for lack of distinctiveness; Louis Vuitton provided insufficient evidence that the claimed marks had acquired distinctiveness through use in a substantial part of the EU.

The Protection of Non-Traditional Trade Marks within the European Union

The aim of this paper is to talk about Non-traditional marks among European Countries, with a particular attention on Community Trademark legislation. By analyzing the “state of art” of Non-traditional marks, this paper focuses on three kinds of Non-Traditional marks (TM): Sound marks, Motion marks and Fluid trademarks.After discussing the hurdles on the path to registering sound and motion marks, the paper will focus on “fluid trademarks”, which are currently not considered a new trademark category, but offer a good example of the evolution of trademark strategies. Indeed, these three kinds of innovative marks represent a challenge to national jurisdictions due to their dynamism, which makes it difficult to satisfy the graphical representation requirement. In order to allow the development of these new kinds of trademarks, the removal of the graphic representation requirement from the TM Directives and the Community TM Regulation might be a radical but indeed effective solution. As will be argued in this paper, the conflict between the graphical representation requirement and the dynamism of such trademarks might be solved better by technological advancements.

A Critical Evaluation of Whether the Present Currently Pending Reforms to the 'Trade Marks Directive' and 'Community Trade Mark Regulation' Will Do Little in Improving the Position of the 'Difficulties' Embedded in the Law of Registered Trademark Infringement in the EU

It is no doubt that the law on ‘Trademark infringement’ in the European Union is not only clumsy – thereby making issues surrounding it incoherent; it is also not in-tune with time. The European Commission perceived this and it sure explains the instigation of the ‘move’ to recast the Directive on Trademark (hereinafter referred to as TMD) and revise the Regulation (hereinafter referred to as CTMR). The problem is: the pending collective reforms will do little or almost nothing in clarifying the difficulties ‘trademark infringement’ is clustered with. This paper traces some of the ‘difficulties’ the pending reform should have addressed and clarify once and for all; so as to ‘save’ the ECJ of the various criticisms it receives on its ruling on modern issues. Also, to relieve the CJEU of the role of de facto legislator at the cutting edge of trade mark infringement cases, by incorporating decisions of the courts and views of writers on the alarming issues. However, it seems the pending reforms will not do this. While agreeing that the pending reform will do ‘little’ to alleviate the difficulties; there are still other aspects that need improvements.

Geographical Indications and Their Relationship with Trade Marks in EU Law

Geographical indications (GIs) are, just like trade marks, signs used for the purpose of distinguishing goods. Unlike trade marks, GIs do not identify the commercial origin of a product from a particular undertaking, but its geographical origin from a specific place or region and, connected therewith, in most cases a given quality or other characteristic of the product. In contrast to trade marks, GIs are not individual rights but indications that belong to all local producers of the relevant region. The right to use a GI is a right of all local producers which, in principle, cannot be withdrawn. Exercising this right is, however, subject to the condition of fair competition. The use of a GI by local producers must be fair. With regard to conflicts between GIs and trade marks, Union law guarantees the right to use a GI in the Trade Mark Directive (TMD) and the Community Trade Mark Regulation (CTMR). Article 6 TMD and Art. 12 CTMR provide for a limitation of trade mark protection in favour of use of a GI. According to these provisions the rights conferred by trade marks do not entitle their proprietors to prohibit third parties from using GIs provided the use is “in accordance with honest practices in industrial or commercial matters”. These general principles governing the function and use of GIs in competition apply to the EU system for a sui generis protection of GIs in a modified manner. This article outlines the basic features of this sui generis system for GI protection and its relationship to trade mark protection.

TERRITORIAL LIMITS OF INTELLECTUAL PROPERTY RIGHTS

The article describes the territorial aspects of intellectual property rights. Comparing property right and intellectual property right, the last one has a territorial character. Such kind of activity of intellectual property rights became a reason for creation of international law system protection of intellectual property. The first form of international cooperation in intellectual property sphere were bi-side international treaties about mutual protection of rights for conforming objects on the territory of countries-participants. At the end of 19th century were signed two multiply international treaties, which became a base for creation of modern international law system of intellectual property protection – Paris Convention for the Protection of Industrial Property (1883) and Berne Convention for the Protection of Literary and Artistic Works (1886). Intellectual property rights, which appeared on the territory of the definite country in accordance with it legislature, are limited by territory of this country, if something different isn’t subscribe in international treaty or national laws. Today this principle is a base of legislature about intellectual property of majority countries of the world and it is determined by several factors (historical factor, non-material nature of intellectual property objects, partly – state interests). Multiply international treaties in intellectual property sphere, which are administered by WIPO, don’t provide extraterritoriality of intellectual property rights, because they based on principle of national regime and fix using to objects by foreign origin the legislation, exactly that country, where protection is needed. Now on the regional level exists tendency to refuse of principle of intellectual property rights territoriality and providing unitary legal protection regime of the object based on one registration on the territory of all countries-participants. Uniform legal protection of some objects is provides on the territory of EU countries (Community trade mark, design, plant variety, geographical indications and designations of origin). Therefore Ukrainians membership in EU opens new perspectives to use procedures of legal protection of intellectual property for the extending of intellectual property rights territorial limits.

A strong body of proof is essential in bad faith cases

A bad faith allegation in a trade mark dispute related to the ownership of the unregistered COLOURBLIND trade mark. The COLOURBLIND brand was created and used by Mr Cox, who assigned it to his company, RSVP Design Ltd, after resigning from Pangyrus Ltd. Mr Cox's new company received a Community trade mark (CTM) for COLOURBLIND, and Pangyrus was subsequently unable to invalidate it by proving entitlement to that sign through the use it allegedly made when Mr Cox was one of its shareholders and by establishing RSVP Design Ltd's bad faith at the time of filing the CTM.

Enforcement of unitary intellectual property rights: international jurisdiction and applicable law

CJEUProprietors of Community trade mark and design rights have several advantages over national right holders. In case of cross-border infringements, the claims are based on uniform law and decisions rendered by Community Trade Mark and Design Courts with central competence have immediate legal effect throughout the Community. Nevertheless several issues remain unclear, and where such issues arise, they were not always resolved satisfactorily by the CJEU. The pertinent case-law demonstrates that the CJEU fails to appreciate the particularities of intellectual property law that accrue from the principle of territoriality. Another problem is that the CJEU uses the terms “place of infringement” and “place where the event causing damage occurred” synonymously, yet the meaningful use of these terms in industrial and intellectual property law requires a clear-cut conceptual distinction.***

Community trade mark round-up 2014

This article seeks to give a quick overview of the most significant trade mark cases decided in 2014 by the Court of Justice of the European Union (CJEU) and the General Court (GC). The article has a practical bias and is aimed at readers who wish rapidly to find the key decisions of 2014. The cases discussed concern the application of Council Regulation 207/2009 on the Community trade mark (CTMR), which replaced Regulation 40/94, Commission Regulation 2868/95 implementing the CTMR (CTMIR), and Directive 2008/95 to approximate the laws of the Member States relating to trade marks (‘the Trade Mark Directive’), which replaced Directive 89/104.

Trade Mark Use Explained: Insights of the General Court in 'BUD'

The General Court has dismissed the actions brought Budějovický Budvar against the registration of the Community trademark "BUD" for beer that was sought for by Anheuser-Busch. The main reason is the insignificant use in France and Austria of the appellation of origin "Bud".

Determinants of the High-tech Sector Innovation Performance in the European Union: A Review

Abstract The purpose of the paper is to analyze the determinants of the high-tech sector innovation performance in the European Union (EU) countries. The innovation performance is assessed through patents applications, granted patents and trade mark applications. We resort to a panel data approach, comparing the results of a fixed effects model and a random effects model, for the period 1994-2011. Our findings show that the number of employees in the high-tech industry positively influences the number of patents while the R&D expenditure per capita has a negative impact. Other factors like the expenditure on education, the government R&D expenditure, the economic development, the number of employees in the science and technology field and the exports’ level, have no influence on the innovation performance in the high-tech industry. However, when we assess the innovation performance through community trade mark applications, we discover that most of the above mentioned factors can be considered as determinants of the innovation performance. The obtained results are robust regarding different empirical models used in our analysis.

Goods in Transit and Intellectual Property Under the EU Law and Caselaw of the Court of Justice

Abstract The paper addresses the issue whether customs authorities of Member States are entitled to suspend or detain goods in transit (i.e., products directing from one non- Member State to another non-Member State through the EU) and the evolving case-law of the Court of Justice related to this matter. Prior to the judgment in Philips and Nokia cases, a so-called manufacturing fiction theory was applied by some Member State courts (especially Dutch courts). According to this theory, goods suspended or detained by customs authorities within the EU were considered to be manufactured in the Member State where the custom action took place. In the Philips and Nokia judgments, the Court of Justice rejected this manufacturing fiction theory. But the proposal for amendment to the Regulation on Community trade mark and the proposal of the new Trademark directive, as a part of the trademark reform within the EU, go directly against the ruling in the Philips and Nokia cases and against the Understanding between the EU and India.

Registrability of Motion Marks: Problems and Possibilities

This thesis will look into the registrability of non-traditional trademarks and specifically, motion marks. Trying to point out problems and possibilities that a proprietor might face when applying for a Community Trademark. Firstly, the author will give a brief overview of the requirements that needs to be fulfilled in order to gain a Community Trademark. In chapter 2 there will be a general overview of smell, sound and colour marks for comparison for later discussion about motion mark in Chapter 3. These different types of non-traditional trademarks have to deal with different problems concerning registrability. Chapter 3 will be devoted to motion marks and how the case law has developed so far and how it can give useful guidance for future applicants.The thesis will focus on the registrability from the European Union perspective, using EU legislation and case law as well as materials and procedural documents from the relevant organizations to shed light on the registrability.

Territorial Aspects of Community Trademarks – The Single Market’s Splendid Sovereignty

Intellectual property rights are traditionally subject to the principle of territoriality, meaning that their protection is extended only to the territorial jurisdiction of the national granting authority (usually patent and trademark offices). In the light of cross-border commercial expansion that has gradually been experienced during the past few decades, and especially considering circulation of goods and services in the territory of the European Union, the principle of territoriality proved to be increasingly less beneficial in the contemporary reality than originally imagined. The system introduced by the Community trademark, which bestows upon the holder a unitary right valid throughout the entire European Union, was adopted to introduce a substantial element of uniformity to the internal market scenario. However, despite the ideals standing behind the notion and functioning of the internal market, the reality often confronts it with the differences naturally occurring between particular Member States, their market situations as well as the use and functioning of the same trademark therein. This article explores the issues of territorial coverage of trademarks within the EU and the correlation between this territorial exposure and the scope of protection offered to the right holders.

The bottle is the message: only the distinctive survive as 3D Community trade marks

This article explores the distinctiveness criterion, the absolute refusal ground for the registration of three-dimensional community marks, for bottles. The office for Harmonisation in the Internal Market (OHIM), the OHIM Boards of Appeal (BoA) and the General Court (GC) insist that three-dimensional community marks are treated as any other mark in the assessment process. However, statistics demonstrate the opposite, which has arguably led to an underutilization by business of the three-dimensional community mark. Are the criteria applied by OHIM transparent and predictable? Which pattern, if any, can be abstracted from the assessments on distinctiveness of bottles?

The Global Trade Mark

This Article offers a proposal for WTO countries to adopt global IP rights for a special class of trademarks: famous or well-known marks. Well-known marks are well-suited for greater departure from the territoriality principle, given the transnational protections for well-known marks that already exist under the Paris Convention and TRIPS Agreement. This Article proposes creating a Global Trademark (GTM) for well-known marks, to be governed by one, uniform international law. The GTM will span all countries in the WTO. The GTM is inspired, in part, by the Community Trade Mark (CTM) in the European Union, the first truly transnational IP form. While the CTM is regional in scope, the GTM will be international. This Article proceeds in five Parts. Part I discusses the theory behind the Global Trade Mark (GTM) and why it is worth adopting today. Part II discusses the outlines of the proposed Global Trade Mark Treaty, whose signal feature will be to establish a uniform body of international law to govern the GTM and an International Court of the GTM to resolve conflicts over its interpretation. Part III discusses the two Pathways by which a trademark can be registered as a GTM: (1) international registration of an existing famous mark that is famous in a certain threshold number of countries (here under a proposed Rule of 7 countries, the formula of which is discussed below), or (2) an “intent-to-develop” registration of a mark an owner intends to make famous under the Rule of 7 countries within a prescribed time of 10 years. Part IV discusses enforcement of GTMs in national courts and post-registration issues, including abandonment and genericide. Part V addresses objections.

Defining the strategic objectives of Hungarian mutton product chain and elements of marketing strategy in the beginning of the second decade of the century

The sheep sector is regarded to be a “black sheep” in Hungary, both in terms of economy and marketing. On one hand, the sector is not easily traceable as available relevant data are partial and infected by the effects of black market or underground economy; on the other hand, there are no clear, concrete statistical data or surveys on consumption either. The present study attempts to dissolve the above anomalies and present findings by fact-based model calculations and actual marketing surveys. The fact-based model developed and used for more than 200 variables verifies the correctness of economic calculations. Original examinations were performed by Béla Cehla, doctoral candidate, in 2000–2011. The marketing survey, although not in full accordance with statistical requirements, was carried out in 2012 and it processed relevant data authentically. The main conclusions are the following: It is clear so far that genetic basis should primarily be evolved in the industry, as it is the factor that mainly contributes to profitability and price-type factors come only following it. Genetic modification is achievable by changing breeds or crossbreeding. The findings of product chain level sensitivity analysis have provided clues that the added value generated in the sector is already determined during slaughter lamb production and progeny influences this value in approximately 80%. Critical points are feed conversion ratio and the relating price of lamb feed, which influence added values by 2.7–2.9%. The remaining factors affect added value through feeding costs, although not considerably. The following activities can boost interest in the market of sheep products: • Comprehensive market research • Stimulation of cultural development by product-tasting, exchanging information and recipes • Development of supply in accordance with demand • Identification of target markets, positioning products • Diversification of product range • Community trade mark to guarantee excellent quality and Hungarian origin • Selection of credible poster faces, organization of advertising campaigns

Interpreting concept of 'bad faith'

In Simca Europe Ltd v OHIM, the General Court upheld an Office for Harmonisation in the Internal Market (OHIM) Board of Appeal decision declaring a Community trade mark (CTM) for the word SIMCA invalid, finding that the former proprietor of the word mark SIMCA, registered for vehicles, acted in bad faith when applying to register it. The court found that the Board had been entitled to take into account factors not previously listed in case law as criteria for the interpretation of the concept of ‘bad faith’, such as historical use of the mark and commercial logic for filing the CTM application.

Interpretation and application of national law in Community trade mark invalidity proceedings

Interpretation and application of national law in Community trade mark invalidity proceedings

Competition (or confusion?) of models and coexistence of rules from different sources in the European patent with unitary effect:Is there a reasonable alternative?

The article analyses the points of weakness of a European patent with unitary effect. The new texts create not just one, but two new ‘models’ of patent (the unitary patent and the European patent UPCt-style). They will coexist with the two pre-existing ‘models’ (the old European patent and the national patent), causing difficulties of orientation and choice to the inventors. The unitary patent is not really a unitary title: its regime is a bundle of rules coming from different sources (EU Law, Convention Law, national law), and this creates uncertainties. The new rules have been written without considering the results of the patent practice of recent years, and so the new texts seem a missed opportunity for the modernization of patent law in Europe. A better alternative would be the drafting of an EU Regulation on a new EU Patent which absorbs the European Patent Convention (Munich Convention), and entirely regulating the title without references to international or national law. This new EU Patent should be granted by a new European Patent Office, which should supersede the EPO. The jurisdiction should be given to the national courts, and the EU Court of Justice should be able to take preliminary references. The author argues that this solution is not a strange and difficult one; it is just the solution already chosen for the Community trade mark, Community designs, and Community plant varieties.