Mark Protection Research Articles

The Interplay of Trade Mark and Copyright Protection for Three-Dimensional Shapes

The Interplay of Trade Mark and Copyright Protection for Three-Dimensional Shapes

Extending Trade Mark Protection Under EU Law: External Transit, Preparatory Acts and Reproduction of Trade Marks in Reference Works

Extending Trade Mark Protection Under EU Law: External Transit, Preparatory Acts and Reproduction of Trade Marks in Reference Works

Round-up of China trade marks in 2023

Abstract 2023 was a challenging year globally, but China has continued to be attractive to foreign investors, due to its committment to the removal of restrictions on foreign investment and an emphasis on strengthening intellectual property laws so that they are favourable to right holders rather than infringers. The 2023 round-up focuses on the Draft 5th Amendment to the Trademark Law of China, which was published in January 2023. This article analyses the highlights of the Draft Amendment, which includes strengthened provisions relating to bad faith filings and an increased emphasis on the requirement that registered trademarks are actually used. The Draft, if implemented in full, will ensure that repeated filings of trademark applications will no longer be permitted, as well as providing greater protection for well-known marks and changes to procedural rules. The round-up will conclude that the Draft 5th Amendment will enhance the exisiting Trademark Law and further encourage brands to ionvest their business in China.

Reforming the Anti-Dilution Trade Mark Protection in Jordan

Reforming the Anti-Dilution Trade Mark Protection in Jordan

Legal Protection of Marks in the Perspective of Property Rights Law

The brand is the manufacturer's public persona, a barometer of the company's public standing, and a watershed moment in the company's overall business strategy. There's no getting around the fact that a product's brand serves as its identity; after all, it's what sets one firm apart from another. The protection of registered marks, however, is sometimes the source of intricate legal challenges that obscure the mark's true significance. The purpose of this research is to evaluate and analyze the legal protection of registered trademarks and to determine the reason of the termination of its protection using a normative juridical approach. The research uncovered a number of potential triggers for a brand's registration to be revoked, such as the end of the brand's validity period, a request for revocation by the brand's owner, ministerial initiative based on the recommendation of the brand appeal Commission, or a lawsuit filed by a third party. Once the trademark is registered, it is protected for a certain length of time that may be extended. Legal action, criminal prosecution, and administrative measures like trademark cancellation or registration rejection all serve as deterrents. Defending corporate identities through trademarks is crucial in today's period of intense global competition. This study delves deeply into the value of brands to manufacturers and the legal hurdles that must be overcome to ensure a brand's long-term viability in a competitive market. With this knowledge in hand, company stakeholders may take the necessary initiatives to establish a brand that will endure. Protecting your name and your ideas are essential.

Trademark as an object of intellectual property rights

The article analyzes the historical retrospective of the origin and development of trademarks. The second half of the nineteenth century saw the emergence of intellectual property as an independent legal category, and the need for legal protection of marks of individualization of goods and producers was recognized. It is established that Ukrainian legislation uses various terms, such as “mark for goods and services”, “trademark”, “trade mark” etc. This is a negative aspect, as it may cause certain misunderstandings and complications in the interpretation and application of the relevant legal provisions. Based on the provisions of current legislation and scientific works of various authors, the author formulates the definition of the concept of “trademark”, and outlines its features and key functions. It is established that Ukrainian legislation does not provide an exhaustive list of designations which may be registered as trademarks. Instead, the legislation establishes the general principle of “distinctiveness”. In practice, such abstraction is a negative phenomenon, since it does not provide persons wishing to register a trademark with clear criteria of compliance. The author analyzes the trademark registration procedure. According to this procedure, a person wishing to register a certain designation as a trademark applies to the National Intellectual Property Authority and files an application for registration. The author concludes that a trademark certificate is an official document confirming the applicant’s exclusive rights to use a trademark in respect of specific goods or services specified therein.

색채만으로 된 상표 보호에 관한 연구

A trademark which comprises a single color or a combination of colors has become the subject of registration in Korea since 2007. Color marks is recognized as one of the non-traditional mark. The concern that a color can be monopolized due to the effect of trademark protection and no one else use the mark results in the fact that there are still only a few examples of trademark registration of color marks. It can be said that it is important to establish the standard for protection under what conditions prescribes the protection of color marks. In particular, the question of distinctiveness, which is a basic requirement for trademark protection, it is considered that colors cannot be inherently distinctive in principle, and must be acquired secondary meaning through use. It is difficult to assume that colors are used alone, and there is a difficulty in that colors should be regarded as having independent discrimination when used together with letters and/or symbols. A consumer survey can be an effective for measuring acquired distinctiveness, but must be taken to ensure reliable results. Functionality doctrine is also important requirements for color marks protection, and not only traditional utilitarian functionality but also aesthetic functionality needs to be reviewed.

Research on the Legal Problems of Official Marks of Proof Attributes in China

Since the introduction of Measures for the Protection of Official Marks (Draft for Opinion), the attention to official marks has increased in China, but the concept, nature, classification and relationship between official marks and trademarks have not been sorted out clearly. This paper starts from the classification of official signs, selects the official signs with certification attributes as the main research object, clarifies the relationship between such official marks and other related signs, analyses the current situation of their use and management, and puts forward suggestions to improve the laws and regulations on official marks.

The Significance of Bad-Faith Premises for the Strategy of Trade Mark Protection in the Light of the Latest EU Case-Law

EU case-law has long considered trade mark applications made in bad faith to be dishonest practice that involves a sign used by a third party. This approach stems from the crucial factors of bad faith stipulated by the CJEU in the Lindt case C-529/07. However, recent CJEU case-law clearly suggests that a trade mark application can also be alleged to be in bad faith when it has nothing to do with a third-party sign but instead involves a dishonest strategy for protecting the applicant’s own trade marks. The aim of this paper is to provide a comprehensive catalogue of premises for finding bad faith in the context of a trade mark application, and to analyse their importance from the perspective of business strategy for protecting trade marks. It follows from the relevant case-law that proving an applicant’s bad faith where the latter is alleged not in relation to the use of a third-party sign may be rather problematic, as it is difficult to demonstrate objective circumstances to corroborate an applicant’s subjective intentions, particularly when such intentions concern solely their own trade mark protection strategy. An additional difficulty comes from the CJEU’s SkyKick case C-371/18, according to which the absence of any intention to use a trade mark does not per se constitute grounds for finding bad faith. Moreover, an allegation of bad faith may provide a basis for extending legal protection to a third-party trade mark not registered in a given territory, which may be particularly useful for businesses that export goods worldwide. However, at the same time, care must be taken to reasonably balance such protection for non-registered marks with one of the crucial premises of EU trade mark protection, which is based on the principle of “first to file” not “first to use”.

Legal Protection against Unregistered Marks and Unfair Competition Practices (Comparative Study of Indonesia and the United States)

Business competition cannot be avoided any more if you decide to be involved in the business sector. However, business competition is only sometimes carried out automatically, fair and healthy. There are still many business actors who compete unfairly by justifying any means to be able to maintain their business. One is for brands prone to piracy, which are identification marks of a product/service. Therefore, legal protection of brands needs to be done to obtain legal certainty. The research method used in this paper is normative legal research, which is carried out by studying literature using secondary data to solve existing problems. In Indonesia, legal protection for marks can obtain legal certainty if they are successfully registered with the Director General of Intellectual Property Rights (HKI) using the first-to-file principle regulated in the Law on Trademarks and Geographical Indications. It differs slightly from the US trademark protection system, which uses the principle of use in commerce and requires the trademark owner to register the trademark with the United States Patent and Trademark Office (USPTO) under the Lanham Act.

Parody as an Exception to Copyright and Trade Mark Protection

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Bad Faith, Public Policy and Morality: How Open Concepts Shape Trade Mark Protection

The grounds for refusal or invalidity relating to trade marks filed in bad faith or being contrary to public policy or accepted principles of morality are based entirely on undefined concepts and require a value judgement to be made by the adjudicating authorities. This openness has led to the exploration of new lanes for these grounds in case law beyond the traditional scope of their application. This paper examines how the flexibility of the concepts at hand has led to considerable uncertainty in assessing whether a particular mark is registered in bad faith or offends against morality and public policy – and in some cases both. In particular, the objective, consistent viewpoint of the average consumer, which is normally applied in other areas of trade mark law, appears to be exiled from the analysis in these cases. In the case of bad faith, the assessment involves a subjective element, as there is a mandatory requirement that there should be bad faith intent on the part of the applicant. The paper argues that much of the uncertainty as to when bad faith applies could be overcome by adopting an objective viewpoint in its assessment. By contrast, the assessment of the offence against morality remains objective. It is based on the perception of a model member of society with average thresholds of sensitivity and tolerance who does not always overlap with the average consumer of the goods covered by a trade mark application. Infringement of public policy is also objective and is linked with offence against the “top-down” rules laid down by the public authority.

Actualization of the German Language Status in the Absence of the State Language Category in the German Legislation

This article addresses the issue of the representation of the German language status in legislative texts of the Federal Republic of Germany in the absence of the category «state language». The research methodology is based on the E. S. Kubryakova's understanding of the nominative aspect of the speech activity, who distinguishes two ways of designating objects: both through nomination and predication. The aim of this paper is to determine main functions of linguistic expressions, which regulate the role of the German language in legislation (nomination and / or predication), and language means of their representation. Research objectives: 1) to make a selection of fragments of normative legal acts on the federal level related to language legislation; 2) to select the nominations and / or predications used to actualize the leading role of the German language; 3) to study the structure of selected nominations and / or predications. The material of this paper is presented by excerpts from the Fiscal code, Authentication law, Court constitution law, Law on the protection of brands and other marks, Law on alternative dispute resolution in consumer matters, Law on the residence, employment and integration of foreigners in Germany, Law on the supervision of insurance companies, Trading law, Disability equality act, Commercial Code. In the theoretical part of the work, definitions of the categories «state language», «official language», «nomination» and «predication» are presented. The practical part of the paper addresses the analysis of excerpts from federal legislation. In conclusion, the results of the issue are presented: the leading role of the German language in the legislation of the Federal Republic of Germany is updated through nominations and predications; nominations are represented both by separate compound words and by sequences of words syntactically related to each other; predications are represented by semantic verbs in the form Präsens Indikativ (in conditional clauses) as well as several types of modal constructions.

Legal Reasoning: How Well-Known Marks are Positioned Through Legal Positivism

Legal protection for well-known mark needs to be examined. Indonesia has tried to conform its legal system with international law, most notably the Paris Convention and the TRIPS Agreement. However, the court’s decision indicates that the well-known mark remains unfavourable. This paper aimed to analyse judges’ rationale when they rejected a lawsuit against a well-known trademark in Indonesia which was the trademark dispute of “Starbucks” and Pierre “Cardin”. This study was conducted using legal research methods and it examined legal materials from judges’ decisions and literature review. Therefore, knowing the judge’s rationale for dismissing the claim is essential. In the first case, the plaintiff’s documented evidence was insufficient to establish the respondent’s bad faith, but the judge’s justification for rejecting the lawsuit was insufficient either. Meanwhile, in the second case, the judge denied the claim based on ne bis in idem, which aims to reach legal certainty, so the judge can lean more toward positivism. The positivism requires clear rules so as not to cause multiple interpretations. However, trademark and geographical indication law does not give complete regulations on well-known marks. As a result, problems and conflicts frequently arise in practice when it comes to the protection of well-known marks.

ZAŠTITA TVRTKE TRGOVAČKOG DRUŠTVA U HRVATSKOM PRAVU DRUŠTAVA U SVJETLU NOVELA ZAKONA O TRGOVAČKIM DRUŠTVIMA I ZAKONA O SUDSKOM REGISTRU IZ 2022. GODINE

In this paper, the author analyzes the legal framework for the regulation of company protection as an important distinguishing feature of companies in Croatian company law, especially in the light of the first amendment to the Companies Act from 2022. With regard to the key principle of exclusivity in company protection, all modalities of unauthorized use are considered other companies, both according to the afore- mentioned law and according to special regulations. Thus, the modalities of prote- cting the company according to the regulations on companies and the court register were specially processed, with a note that a company can be protected in Croatian law also according to the regulations on unfair competition (unfair trading) and in- dustrial property (protection of trade marks and other distinguishing marks). The paper specifically pointed out the novelties in the Croatian Companies Act regarding the inclusion of the names of international organizations and countries in the name of a company.

Comparative Analysis of Legal Protection and Criteria of Well-Known Marks (Indonesia, United States, India, China, and Germany)

Trademark functions as a distinguishing mark between goods and/or services of its kind, as well as an identification mark for goods and/or services from the producer concerned. In order to be a well-known and widely recognized mark by the world community, and also to gain a good reputation it requires a very high investment to maintain quality and perform massive promotions in many countries. Considering this, lawful protection of well-known marks is a must. This research uses a normative juridical method by examining regulations and analyzing the previous studies, as well as other relevant legal materials to determine the criteria of well-known marks and the law protection provided for well-known marks in Indonesia. The results of this study indicate that the regulation of the criteria for well-known marks in Indonesia still does not set concretely the minimum number that must be met for each criterion. Furthermore, in principle, Indonesia provides legal protection for well-known marks, both registered and unregistered in Indonesia.

Protection of Globally Renowned Brands Which Not Registered in Indonesia

The protection arrangements for unregistered globally well-known brands are not explained in detail regarding their protection from passing off in Indonesia. This study aims to analyze how the protection of well-known marks that have not been registered in Indonesia and to prove that internationally registered marks that have not been registered in Indonesia must still be protected in Indonesia. This research is legal research that uses normative juridical research methods by emphasizing argumentation and uncovering meaning by interpreting existing laws and regulations based on the legal system relating to trademark protection. The results of the research show that Article 83 (2) of Law No. 20 of 2016 concerning Trademarks and Geographical Indications (hereinafter referred to as the MIG Law) does not protect brand indications other than the indications regulated in Article 1 paragraph (1) of the MIG Law. Furthermore, with the argument that a lawsuit can only be filed after the lawsuit for cancellation has started indicates that Article 83 (2) only covers violations of the transfer of well-known marks that are not registered through third-party registration. Meanwhile, the violation of passing off by using an unregistered name without legal rights is not covered in this article. In addition, the enactment of Article 83 (2) does not fully accommodate passing off lawsuits in Indonesia.

Modernization of the eu patent system: innovations and opportunities for Ukraine

An economic and legal analysis of the new rules for modernizing the patent system of the European Union (EU) proposed by the European Commission (EC) on April 27, 2023, their features, problems, prospects and opportunities for use for Ukraine, was carried out. The proposed EC provisions on standard essential patents, compulsory licensing of inventions in crisis situations and the revision of legislation on subsidiary protection certificates, the role of the SME Fund 2023 Ideas Powered for Business SME Fund with a budget of 60.1 million euros are examined. It aims to support small and medium-sized enterprises (SMEs) to effectively manage their intellectual property (IP) portfolios, with the aim of accelerating the green and digital transition, supporting their recovery from recent crises such as COVID-19 and the impact of the Russian invasion of Ukraine. Financial support provided to Ukrainian SMEs by the EC and EUIPO includes: protection of trade marks and industrial designs within the EU (national, regional and EU level) up to 75 % of all fees up to a maximum of €1,000; protection of patents or related activities within the EU for national and European patents, including unitary ones) in the amount of 75 % of the total fees — up to 1500 euros. IP value added has been shown to be increasing in most European industrial ecosystems. IP rights, particularly patents, which are a critical intangible asset, have a critical role to play in scaling up green innovation, while creating the business case for clean technologies and enabling sustainable digital transformation.

The Approach of The Court of Justice of the European Union Towards the Protection of Three-Dimensional Marks

The Approach of The Court of Justice of the European Union Towards the Protection of Three-Dimensional Marks

Psychological impact of olfactory branding: The future of smell marks in India

AbstractScents have been used by business organizations for commercializing their products since historic times. Because of the psychological connect that a consumer immediately makes as he smells something unique, olfactory branding is considered as a very productive and effective marketing tool. Trademark law attempts to protect a brand's identity with the ultimate motive of preventing consumers from deceptively similar goods. Scholars and businesses have been raising their voice in a demand call for smell mark protection under trademark law, arguing that smell is just as important for identifying the origin‐point of a product for a consumer as is the brand's logo or name or product shape. While the US courts have been liberal in granting smell mark registrations, EU courts have interpreted the “graphical representation” requirement under trademark law very strictly. Indian law, though not entirely closed on the prospect of smell mark protection, is inclined toward the EU position. After analyzing the current legal scenario, this article explores the more fundamental question as to the feasibility of smell marks, questioning their justification under the philosophical foundations of trademark law, the subjective associations of consumers with respect to smells, the difficulty in evidence analysis by courts in infringement suits and the apprehension relating to the functionality doctrine.