Trademark Legislation Research Articles

The Unproductive “Overconstitutionalization” of EU Copyright and Trademark Law – Fundamental Rights Rhetoric and Reality in CJEU Jurisprudence

In EU copyright and trademark law, the protection of the right to intellectual property is the rule, and breathing space for competing fundamental rights, such as freedom of expression and the right to a healthy environment, is the exception. While formally recognizing the need to balance protection interests against other fundamental rights and values, the Court of Justice of the European Union (CJEU) fails to use competing fundamental rights productively. Instead, the Court has developed a meaningless fundamental rights rhetoric that produces the false impression that there is sufficient room for all competing rights and interests within the existing copyright and trademark systems. However, the current configuration of EU copyright and trademark law fails to offer users the chance of meeting right holders as equals, even if their fundamental rights are of equal ranking in the Charter. By adding fundamental rights cosmetics to imbalanced protection systems, the CJEU only cements and further stabilizes the existing rule/exception edifice that is strongly in favour of right holders. Introducing the mantra of internal balancing – requiring the reconciliation of competing rights and interests within the confines of secondary copyright and trademark legislation – the Court has even created a considerable risk of sacrificing competing fundamental rights on the altar of the EU harmonization agenda. By letting the harmonization objective reign supreme, the CJEU has also given the three-step test in copyright law and the honest practices proviso in trademark law a quasi-constitutional status. As a result, these open-ended provisions undermine limitations of exclusive rights that could support competing fundamental rights. To remove the imbalances in current EU copyright and trademark law, it would be necessary to introduce upfront gatekeeper requirements that prevent illegitimate infringement claims from the outset when competing fundamental rights are at stake.

Innovation and Entrepreneurship in Southeast Asia: The Role of Geographical Indications

The Southeast Asian economies have been highly proactive in developing Geographical Indicators (GIs) within their jurisdictions. For instance, Thailand developed its “One Tambon One Product” (OTOP) project to support community co-operatives in tambons (sub-districts) and villages throughout Thailand. The aim was to increase village incomes and preserve local wisdom. This followed Japan's One Village One Product (OVOP) program. This was followed by its “One Province, One GI” to encourage each of its 76 provinces and Bangkok to develop at least one GI product. The aim was to increase village incomes and preserve local wisdom. Subsequently, the Lao People’s Democratic Republic (PDR) established its One District One Product (ODOP) program. In addition, local communities throughout most of the eleven Southeast Asian Nations, often with the support of external development agencies, have protected their products using GIs or Trademark legislation. The number of domestic GIs registered within the eleven Southeast Asian nations as of April 2024 was Cambodia with seven, Indonesia with 127, Lao PDR with six, Malaysia with 79, Thailand with 194, and Vietnam with 94. These cover both agricultural and non-agricultural products, with the majority in each jurisdiction being the agricultural sector. This paper outlines the legislative framework of GI protection of products from the above jurisdictions and how the legislation has provided a framework for local entrepreneurs and communities to develop and protect local products, thus improving the quality of life of those local communities, whether as producers or providers of labour. Cambodia and Lao PDR have also followed a different path to registering GIs as they are parties to the World Intellectual Property Organisation’s Geneva Act, which provides a one-stop shop for registering GIs. Products protected by the relevant legislation include agricultural products, products derived from agricultural products, cooked food, handicrafts, and woven cloth, including associated designs and pottery methods and designs. Three examples are provided in detail: Kampot Pepper – Producers return to ancestral lands after 40 years of civil war and unrest; Bolaven Coffee – International development agencies support small landholders to form a co-operative to support the development of their community; and Mak Mao Berry Juice – One man’s 30-year passion to commercialise a local product.

Analysis of Legal Protection of Non-traditional Trademarks from a Global PerspectiveTaking Scent Trademarks as an Example

With the constant advancement of the economy and technology, especially the development of high-tech technology, the traditional trademark can no longer meet the needs of social and enterprise development. From traditional visual trademarks to three-dimensional trademarks, sound marks, and even scent marks, non-traditional trademarks are playing an increasingly important role in transactions. Therefore, the legal protection of non-traditional trademarks is particularly important. By collecting and reading the relevant references and materials, this paper adopts the methods of literature analysis, comparison method, and case analysis to analyze of Legal protection of non-traditional trademarks from a global perspectivetaking scent trademarks as an example. The paper points out the current situation in the protection of non-traditional trademarks, taking scent marks as an example, and puts forward some feasible suggestions, such as: Reference the "staff " representation method, Promoting scientific and technological progress, and Scent branding prompts in the product. It can be concluded that the registration and protection systems of scent trademarks in various countries are not perfect, they can be shown in the strict requirements for registrable trademarks regarding the representation of odor, the distinctiveness of trademark registration, and the functional of marks. Countries should pay more attention to them. The study suggests that it is necessary to improve the scent trademark legislation, which is conducive to better protection of intellectual property rights, encourage innovation of enterprises, and safeguard the interests of enterprises.

Principle of National Treatment in Applying Trademark Registration in Indonesia

One of the basic principles adopted in the TRIPs Agreement is the principle of national treatment, In general, this principle of national treatment states that foreigners will get the same treatment as the treatment given by a country for its own citizens. This research uses normative juridical research methods with a descriptive type of research. Meanwhile, data analysis is used normative legal research (legal research). Principle National Treatment in International Law Rules Related to Trademarks National Treatment set on Trademark Law Treaty and Paris Convention Application of Principles National Treatment Trademark Registration in Indonesia has not been regulated in the current trademark legislation other than dispute resolution by considering and using the principle of National Treatment Also still sidelined in law enforcement related to trademark disputes.

The Role of Arbitration in Protection the Owner of Famous Trademark from the Degital Environment Infringment

Purpose: The aim of this study is to help consumers to move towards choosing specific goods and services that are better suited to their sense and needs by relying on the trademark of the commodity or service that has been taken as a website address for the promotion of goods or services. Theoretical Framework: The infringements on the rights of owners of famous trademarks taking addresses to e-commerce sites for the purposes of advertising and promoting goods and services offered by such websites or even bargaining the owners of famous trademarks for large amounts of money for ceding the registered website address. Arbitration has emerged as an effective means for resolving intellectual property disputes, including the ownership disputes of famous trademarks, and providing civil protection for the rights of their owners. The effectiveness of arbitration is derived from many advantages achieved by this means for the litigation parties, in particular the owner of the well-known trademark compared to litigation as an original and traditional means of resolving trademarks’ disputes. Particularly, Arbitral awards in the mentioned cases have been rendered just and fair to the extent that they support the stability of global trade. Design/Methodology/Approach: The nature of this study assumed the adoption of the descriptive analytical approach to the provisions of the arbitration and trademark legislation recently promulgated in the United Arab Emirates in comparison with provisions adopted by some of the legislation enacted in other states and provisions decided upon by international intellectual property rights organizations and conventions. Findings: The result of this study is the reputation of the trademark is a presumption of the bad faith of the owner of the website who used that trademark as a name of the website which was registered in the digital environment, while the arbitral tribunal’s direction should be towards the good faith presumption of the respondent, in the case preceding the registration of the website, and the date of registration of the trademark. Research Practical and Social Implications: The study is being prepared to address numerous challenges faced by the owners of renowned brands, including the ease of registering websites with names of such brands without conditions or regulations that prevent such abuses. Originality/Value: The value of this study is being the first study to be conducted in the UAE. Besides, the examination of the role of arbitration in protection the owner of famous trademark from the digital environment infringement adds new knowledge to the academicians.

The making and consolidation of the first national trademark system: the diffusion of trademarks across Spanish regions, 1850–1920

ABSTRACT This article studies the creation and consolidation of a trademark system tantamount to market integration and commercial specialization of Spanish regions from 1850 to 1920. We analyse the first 47,000 registrations, their geographical distribution and the drivers behind this trademark expansion. By using a lineal probability model, we find that knowledge spillovers across regions are associated with their relative trademark specialization and diversification. We incorporate the role played by transport infrastructure by calculating generalized transport costs. The results clarify the origins and evolution of geographical differences in commercial innovation and regional specialization in the first country to institute modern trademark legislation.

“Own Name,” “No Name,” and “The Plague of Fancy Names”

Within popular narratives of the nineteenth century, branded commercial remedies—with their hyperbolic advertisements—are often cast in an unsavory light. This article reconsiders branded medicines and draws on scholarship from business historians to show that brands in the British marketplace were redefined during the late nineteenth century as a result of trademark legislation, particularly the Trade Marks Registration Act 1875. Concentrating on advertisements and commentary from the trade and professional press between c. 1875 and c. 1920, this article explores how trademarks were used as a regulatory and communicative device within a chain of distribution. Pharmacists, however, were wary of the “plague of fancy names,” as <i>The Pharmaceutical Journal</i> wrote on May 12, 1906, and many retail chemists did not want their own name usurped by a manufacturer’s brand within their own retail space. Mindful of this concern, manufacturers and wholesalers began to offer a range of “No Name” or “Own Name” preparations. This article will highlight that some brands could hold great value in certain local areas, but it also draws on the archives of Burroughs Wellcome &amp; Co. to outline trademark legislation’s impact on the sale and understanding of commercial remedies on a global scale.

Legal protection of green trademarks in the Eurasian Economic Union

Rapid development of integration processes in the post-Soviet space leads to the formation of supranational legal regulation within the framework of regional international organizations. The Eurasian Economic Union is no exception. The authors study the process of harmonization of normative regulation of legal protection of trademarks in the national legislation of the Eurasian Economic Union member states taking into account the provisions of the Treaty on the Eurasian Economic Union and other international agreements. As a result of the analysis, the authors conclude that the national trademark legislation of the Eurasian Economic Union Member States is not sufficiently unified, which may have a negative impact on the legal protection of trademarks in individual countries.

Riding on the Coat-Tails of Traditional Cultural Expressions

Matters related to the protection of traditional cultural expressions (‘TCEs’) or expressions of folklore (‘EoFs’) are sensitive and intricate as a blend of legal, economic, philosophical and anthropological considerations jostle to capture their core features. This results in disparate views surrounding what should qualify as TCEs or EoFs, who should be considered their ‘owner’ (assuming that ownership per se is conceptually compatible with these items), which is the most appropriate legal protection regime and how broad their scope of protection should be. Drawing from these various accounts on TCEs, this article focuses on the interaction between TCEs and EoFs originating on the European continent and the European Union (‘EU’) trade mark legislation. Specifically, this article examines whether the limitations of the effects of trade mark rights and of the absolute grounds of refusal, as developed by the case law of the Court of Justice of the European Union, are effective in preserving the cohesion of TCEs. This article advances the thesis that registration of TCEs and EoFs as trade marks generates an imbalance between the rights of the trade mark owner and the defences available to others under the EU trade mark law framework. Furthermore, such an imbalance is likely to hinder the unfettered circulation of TCEs and undermine their original meaning. Lastly, in some cases, trade mark registration of TCEs contributes to their appropriation and misappropriation. The article concludes that, de lege ferenda, the direct exclusion of TCEs as eligible subject matter for trade mark registration is preferable to seeking a post factum remedy.

The Making and Consolidation of the First National Trademark System: Diffusion of Trademarks across Spanish Regions (1850–1920)

This article studies the creation and consolidation of a trademark system tantamount to market integration and commercial specialization of Spanish regions from 1850 to 1920. We analyze the first 47,000 registrations, their geographical distribution, and the drivers behind this trademark expansion. By using a lineal probability model, we find knowledge spillovers across regions are associated with their relative trademark specialization and diversification. We incorporate the role played by transport infrastructure by calculating generalized transport costs. Our results clarify the origins and evolution of geographical differences in commercial innovation and regional specialization in the first country to institute modern trademark legislation.

Wolf in Sheep’s Clothing? Trade Mark Rights Against Goods in Transit and the End of Traditional Territorial Limits

The December 2015 reform of EU trade mark law led to the introduction of a new exclusive right against goods in transit in Art. 9(4) of the EU Trade Mark Regulation and Art. 10(4) of the Trade Mark Directive. This new right raises complex questions of compliance with the international guarantee of freedom of transit set forth in Art. V GATT. In the light of the applicable international provisions, the status of the new right against goods in transit must at least be qualified as ambiguous. It is conceivable that it will be challenged on the ground that it leads to an unjustified impediment of international trade. As the new EU trade mark legislation requires the application of Art. 9(4) of the EU Trade Mark Regulation and Art. 10(4) of the Trade Mark Directive in line with international standards, in particular Art. V GATT, courts will have to face the complexity of the international legal framework and develop workable solutions by applying an amalgam of EU and international law. The result of this exercise will show whether the potential corrosive effect of the new right can be kept within reasonable limits. An overambitious interpretation would unmask the new right as a wolf in sheep’s clothing that imposes a heavy burden on world trade.

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.

Recommendation on Measures to Safeguard Freedom of Expression and Undistorted Competition in EU Trade Mark Law

Whatever the protection afforded to trade marks, it must always be balanced against general interests, in particular the fundamental freedom of expression and the guarantee of undistorted competition, as reflected in the Lisbon Treaty, the Charter of Fundamental Rights and the European Convention on Human Rights. The need for an appropriate balance is inherent in trade mark law. It is an issue of particular importance in the light of ongoing technological, economic and social developments, and of considerable complexity because of the diversity of legitimate interests of trade mark proprietors, consumers, competitors and the public at large. Against this background, the Recommendation provides guidance on how to offer sufficient room for freedom of expression and freedom of competition in the envisaged new EU trade mark legislation. It addresses measures to be taken by legislators, trade mark registration offices and the courts at various stages: from the grant of trade mark rights and the analysis of trade mark infringement to limitations of trade mark protection and the appropriate distribution of the burden of proof.

The relevance of introducing opposition proceedings into the Serbian trademark legislation

The relevance of introducing opposition proceedings into the Serbian trademark legislation

Function Theory and International Exhaustion Why it is Wise to Confine the Double Identity Rule to Cases Affecting the Origin Function

In the current debate on the amendment of EU trademark legislation, the European Commission proposed to confine the so-called double identity rule – regulating protection against the use of identical signs for identical goods or services – to cases affecting the origin function. This proposal has been criticized for various reasons. A closer analysis shows, however, that by putting an end to the unpredictable and inconsistent function theory developed by the CJEU, it would substantially enhance legal certainty for both trademark owners and users. Moreover, it would avoid imbalanced protection of a trademark’s goodwill functions outside the specific system of anti-dilution protection for marks with a reputation. Against this background, the counterarguments do not have much weight. In particular, the proposal is unlikely to lead to a system of international exhaustion in the EU.

The TRIPs Compatibility of Australia's Tobacco Plain Packaging Legislation

The use of tobacco entails negative health consequences. In fact, it is reported that had the ill effects of tobacco been known much earlier in time, tobacco would have been a banned substance. Yet, in today's context tobacco has become part of legitimate trade, and the livelihoods in countries that export tobacco heavily depend on trade in tobacco. In the circumstances, could governments intervene on health and public policy grounds and regulate the manner in which tobacco products are marketed and sold? If so, to what extent? These are precisely the questions that fuel the gruelling dual between tobacco companies and health conscious countries, such as Australia that has recently enacted legislation making mandatory the plain packaging of tobacco products from December 2012. The Australian legislative measure, namely the Tobacco Plain Packaging Act 2011 (Cth), is currently under attack in several fronts, including the World Trade Organisation, though recently the Australian High Court upheld the constitutionality of the plain packaging legislation. The purpose of this paper is to approach the question of the legality of government intervention in totally prohibiting the striking elements of tobacco packaging from a purely international trademark law point of view. First, the paper identifies the scope of trademark protection as set out in the Agreement on the Trade Related aspects of Intellectual Property Rights (“TRIPs”) and then goes on to analyse the Australian plain packaging law in the context of its own trademark legislation. Thence, the paper considers whether the Australian plain packaging legislation complies with the core provisions on trademark protection enshrined in TRIPs, and lastly provides a possible compromise to reconcile the competing interests.

Brand Protection and the Globalization of British Business

In expanding on earlier analyses of the evolution of multinational business that have drawn from concepts of competition and innovation, this study examines the strategies used by British multinationals, between 1870 and 1929, to protect the global reputation of their brands, which were crucial to their survival and success. Even after the passage of new trademark legislation in 1876, enforcement of trademarks remained expensive, and often firms preferred to negotiate, rather than to prosecute violations. Many trademark imitators were based in the newly industrializing countries of the time—the United States, Germany, and Japan—and were part of the British export supply chains as licensees, franchisees, or wholesalers. British firms responded to infringements by lobbying governments, appointing local agents to provide intelligence, and collaborating with other firms.

Trade Marks and the Protection of Cultural Integrity

In this paper, the role of the trade mark in both facilitating and resisting cultural change is considered. In considering the South African case of Laugh It Off Promotions CC v. South African Breweries International, the role of trade mark legislation and its interpretation by the courts is discussed in light of the balance between the rights of trade mark owners and cultural integrity. Furthermore, the legislative approaches in protecting indigenous cultures in the United States, Columbia and New Zealand are considered. While New Zealand arguably provides for greater protection of indigenous cultures through its recently enacted trade mark legislation, it is argued that laws broader in scope could be more effective in protecting cultures from not only exploitation, but from any use of trade marks that may degrade cultural integrity. However, the role of intellectual property law as a mechanism for extensive cultural protection is debatable in itself.

Of Brands and Barriers: Branding in Competition Law Merger Analysis

Brands have long been recognised as a form of property that is worth protecting both at common law and in trademark legislation. The economic effect of brands is said to help consumers identify quality goods when there would otherwise be information problems in markets. It is apparent too that brands can have enormous value to companies that own them. Yet the use of brands has articulate detractors some of whom have spawned veritable political movements. Some degree of suspicion about brands also seems to be reflected in the practice of competition regulators. The questions that this paper seeks an answer to are, firstly, what role might brands play in a competition agency’s or a court’s approach to a merger under competition law? The second, and naturally arising, question asks: is this approach right? The concern is whether competition law enforcers adequately appreciate the nature of the underlying policy and economic tensions between the form and effect of intellectual property inhering in brands and the policy behind competition law. Failure to do so may have harmful consequences for markets. Recourse will be had to the literature in both economics and law in an endeavour to cast light on these and on intermediate questions of brands’ purported market power, how brands compete in markets, and the interaction between competition law and trademark law. It is outside the scope of the paper to consider how brands would affect the analysis of cases involving the misuse of market power. However to the degree that the analysis is similar to that for mergers, this paper may also cast some light on such analyses.

Naming, Classification, And Trademark Selection: Implications For Market Success Of Pharmaceutical Products

Even though trademark legislation does not specifically address the needs of the pharmaceutical industry, there are unique rules governing the nomenclature, nonproprietary naming, and trademark choice of pharmaceuticals. In addition, promotion of pharmaceutical products—including the use of trademarks—is tightly regulated, necessitating well-designed premarketing communication strategies to maximize the appropriate use of new products in order to fully realize their commercial value, once marketing authorization has been granted. The commercial value of any given product may be diminished, increased, or maximized depending upon naming choices made early during the development process. Optimum naming choices lead to a high degree of acceptance by the scientific community, medical opinion leaders, and patients, thereby guaranteeing fast and efficient market penetration. Thus, naming, branding, and classification of pharmaceutical products have become issues of increasing strategic importance for their manuf...