Trademark System Research Articles

중국의 근대 상표제도에 관한 소고

중국의 근대 상표제도에 관한 소고

Pattern protection in the fashion industry: an overview of Italian and European case law

... Patterns are, basically, ‘a set of elements which are repeated regularly’.1 Over the past few years, graphical representations made from repeated lines, shapes, or colours have been increasingly placed on garment’s surfaces as a powerful tool for communicating brands’ personality: clients remember products by their aesthetic elements and an interesting pattern will make it stand out from competitors. A brand pattern can be versatile: it can be added anywhere and everywhere, from products to advertising public spaces and business cards, and can be also formed using the company logo. If patterns became a competing weapon, capable of giving the brand an extra bit of distinction, it is a logic consequence for companies to attempt invoking IP rights to protect them from pirating and misappropriation by competitors. For the purpose above, patterns can be subject to registration as a two-dimensional (2D) figurative mark or as a three-dimensional (3D) shape trade mark. The notion of ‘pattern trade mark’ has been integrated into the European Union (EU) trade mark system following the entry into force of Implementing Regulation 2017/1431. The regulation only establishes how the mark should be represented as part of the registration procedure,2 while it does not contain any indication to the effect of the assessment of its distinctive character. In this regard, difficulties arise from the fact that patterns typically fulfil a decorative function which is in principle incompatible with the traditional view that trade marks’ ‘essential function’ is that of source indicator.3

Two-Tiered Trademark

Today, we have a two-tiered trademark system. In the top tier, both parties can afford to litigate. In the lower tier, only one party can. This two-tiered system has arisen over the last century because courts refused to follow the law. Faced with trademark law that led to seemingly unjust outcomes in the case before them, courts rewrote trademark law. When those initial rewrites led to different sorts of seeming injustice as cases continued to arise, courts rewrote trademark law again and again. Moreover, judges rewrote trademark law not as part of any systemic and coherent plan for trademark law, but through ad hoc decision-making attempting to achieve what particular judges in particular cases perceived as justice for the particular parties before them. The net result has been a sharp increase in the complexity and uncertainty associated with trademark law, and the expense of resolving trademark disputes. As a result, many entities can no longer afford to participate in the trademark system at all. They can afford neither to defend themselves against overreaching assertions of trademark infringement nor to assert their own trademark rights against even straightforward acts of infringement. For a party who cannot afford the high cost of trademark litigation, when a dispute arises, the party loses. The party loses not because justice or some version of it requires that result. Rather, the party loses because it cannot afford the increasingly high cost of trademark litigation. To remedy this situation, I, like others recently, call for a return to simpler rules in trademark law and to an increased reliance on the registration system as a less expensive means to resolve trademark disputes.

Socialistic brands—implications for the trade mark system

Socialistic brands is a term used by this author for a group of signs with peculiar and unique characteristics resulting from their shared historical pedigree. The notion of a brand should be understood broadly here, namely as encompassing all signs used to distinguish commodities offered during the period of socialism within a given territory belonging to the Socialist Bloc. Due to cultural, historical, political and geographical differences, each such territory has its own, unique socialistic brands.1 For decades, these signs were subject to particularities of socialist culture, socialist market rules and various inconsistent legal rules. It was not uncommon for a given socialistic brand to be used by multiple partially- or fully separate actors2 within each country. Further, markets of socialist countries were embedded in state ideology. Focused on rituals of production and with obsessive emphasis on physical and industrial labour,3 these markets allowed few intra-product alternatives for commodities which were typically offered under socialistic brands. The extremely limited end-user choice and general scarcity of goods were often the main reasons why consumers sought out products branded with these signs.4 Thanks to long-term use under such circumstances, socialistic brands today occupy a singular place in the collective memories of post-socialist societies.5 This observation pertains both to socialistic brands that were abandoned, either with the fall of communism in 1989 or thereafter, as well as brands that have remained in continuous use since the transformations these markets underwent with the fall of the Eastern Bloc.

Las indicaciones geográficas en el Tratado de Libre Comercio Colombia-Estados Unidos: la armonización de políticas internacionales de la OMC a los TLC

Este artículo pertenece a un estudio acerca de las medidas normativas sobre propiedad intelectual que Colombia ha implementado para cumplir con el TLC con Estados Unidos. Entre esas medidas encontramos el Decreto 729 de 2012 con el que Colombia terminó aceptando variaciones a sus reglas sobre la protección de indicaciones geográficas (IG) para acomodar las reglas establecidas por Estados Unidos en esta materia. Así, en primer lugar, estudiaremos la regulación de las IG en la OMC para mostrar cómo la falta de consenso sobre el sistema de protección que debe prevalecer ha origina do un conflicto entre Estados Unidos y la Unión Europea, que se refleja en los acuerdos comerciales que impulsan con otras naciones. En seguida, analizaremos los principales cambios que genera para el sistema legal colombiano la protección de las IG a través de marcas colectivas o de certificación y la aplicación de la regla de prioridad en el tiempo que opera en el sistema marcario de Estados Unidos, para finalmente presentar conclusiones de las posibles soluciones que podrían adoptarse para eliminar las consecuencias que esta situación puede traer para los actores del comercio internacional en Colombia.

Protection of Religious Signs under Trademark Law: A Perspective of China’s Practice

This article looks at how religious signs are increasingly used in trade and how misappropriation can be harmful to the identity and preservation of religious cultures. Research has shown that trademark rules can be used to help prevent such issues occurring in trade. Some religious entities have also taken trademark strategies to safeguard their religious signs. Considering that religious signs are generally regarded as common patrimony, a balanced system is more beneficial to both the public and trademark proprietors. This research delves into the theory that the trademark system should ensure that the non-commercial use of religious signs used for historical, cultural and social purposes, remains in the public domain. By analyzing China’s practice of protecting religious signs, this article finds that despite the success of certain religious entities in safeguarding religious trademarks, their approach is not necessarily feasible for wide application. The article suggests that the government should do more to protect religious signs by using trademark rules under which any signs detrimental to religious identity, value or culture should be refused for registration and prohibited from use. Also, in certain cases, social organizations and individuals should be entitled and encouraged to participate in the protection of religious signs.

Trademarks as Sources of Market Power: Drugs, Beers and Product Differentiation

This Article defines the notion of market power and how in conjunction with trademark rights give rise to elements that are deemed anticompetitive in a free market society. This Article uses legal arguments to consider how important developments in antitrust economics, particularly product differentiation and monopolistic competition, have contributed to the notion that trademarks are a source of market power. The Article uses a number of cases in the field of trademarks to underscore the key points that trademarks are a source of market power. These case developments contribute to the monopolistic tendencies of trademarks and describe how such tendencies are associated with the theory on market power and product differentiation. Empirically, the Article examines beer products from a single large corporation and the various trademarks/brands to determine whether such brands are a source of market power, effectively giving that manufacturer a monopoly on the beer market. A discussion of product hopping in pharmaceuticals is used to supplement the theories and evidence from the beer market. The Article also develops a theory of branded monopoly and suggests that, as a result of single ownership of trademarks and brands that are abundant from a single owner trademark’s market power, questions relating to antitrust foreclosure are often raised, despite the fact that market power is not anticompetitive per se. If it is recognized that trademarks are a source of market power, and hence, a core concern for antitrust law and policy, then the legal foundations of the current trademark system would need a radical redesign. If, on the other hand, it is recognized that trademarks are a source of market power, but do not conflict with antitrust law, and antitrust enforcers are to ignore conducts such as market foreclosure and other barriers to entry as a result of excessive trademarks and brands, then both antitrust and trademark law can continue to co-exist in the current system.

Plain packaging of tobacco products and the South African trade mark system

As part of its obligations under the World Health Organization's Framework Convention on Tobacco Control, South Africa has indicated its intention to implement laws that mandate plain packaging of tobacco products. After a brief outline of the WHO FCTC plain packaging requirements, the paper establishes that such measures interfere with trade mark rights. Accordingly, trade mark owners have alleged that the measures amount to a deprivation or extinguishment of their rights. A counter-claim raised is that plain packaging measures do not violate trade mark rights because by their nature, trade mark rights are strictly ‘negative’ rights and do not include a ‘positive’ right to use. If contextualized as ‘negative’ rights only, the introduction of plain packaging measures would not interfere with trade mark rights; rendering the claims made by the tobacco trade mark owners null and void. This paper analyses the right of use argument in South Africa. The central argument is that although South African trade mark law does not explicitly provide for a ‘positive’ right to use, this right forms an inherent constituent of its trade mark system. As such, the adoption of plain packaging measures will interfere with the right to use trade marks.

Supreme Court Amicus Brief of Law Professors in Support of Petitioner, Lee v. Tam, No. 15-1293 (Filed Nov. 16, 2016)

The Federal Circuit’s ruling that the § 2(a) disparagement provision is unconstitutional, if upheld, could allow for numerous provisions of the Trademark Act to be overturned, dismantling the modern trademark system. The trademark system is premised on evaluating speech and making content-based determinations. Granting a trademark registration requires content-based determinations, though not viewpoint-based, as words are evaluated independent of applicants’ individual viewpoints. In no way does the refusal to register a trademark prevent its use or diminish public debate. Rather than facilitating public debate, a trademark registration is a government-issued document that makes it easier for its owner to suppress the speech of others. A trademark registration is not an entry pass to the forum; it is a right to exclude. Thus in trademark law whether the government refuses registration to a mark owner or it arms that owner with a registration to enforce against other speakers, the government inevitably interferes in someone’s speech. The Federal Circuit’s mistake was to treat a regulatory, benefit-granting program as if it were a ban on speech. Although prohibiting the use of disparaging marks would suppress speech, the government does not suppress speech by refusing to include these marks on the federal register. If a firm wants to use the N-word as its mark, it is free to do so under trademark law. Instead of doctrines focused on banned speech, the unconstitutional conditions doctrine is a more appropriate test for the trademark registration system, and because registration does not attempt to affect a registrant’s speech outside the four corners of the registration it poses no First Amendment problem. The different justifications, functioning, and risks of registration compared to laws punishing speech make application of doctrines about banning speech to the Lanham Act both incoherent and unwise. To rule otherwise would jeopardize much of the structure of trademark law.

An Enhanced Semantic Retrieval System of Trademarks using Machine Learning

The objectives of paper are to enhance the conceptual based trademark system. Trademarks are essential and important property of a business. A unique trademark allows a company to make status in the market which products or goods it put up for sale. Infringement causes when two trademarks are similar, because of infringement trademarks need security. The conceptual similarity among trademarks arises when more than one trademark evokes the same or similar content. To retrieve this semantic content, there is need of semantic retrieval system of trademarks. Thus, this paper represents an enhancement in semantic retrieval system to find similarity between trademarks using thesaurus of Microsoft word application and feature extraction technique i.e., Principle Component Analysis (PCA) and classification is performed using machine learning algorithms i.e., Artificial Neural Network (ANN), Support Vector Machine (SVM). This system is validated using real 75 infringement cases of trademarks those are conceptual based. The performance is measured using accuracy, precision and recall.

Strengths and Weaknesses of the Union Trademark System in the Eurasian Economic Union

Since 1 January 2015, the Eurasian Economic Union (‘EAEU’) has begun functioning as a regional economic integration project of Belarus, Russia, Kazakhstan, Kyrgyzstan and Armenia, which aimed to create a common market between the Member States with free movement of goods, services, capital and persons. As one of methods to avoid negative consequences of territoriality of intellectual property rights, the Treaty on the Eurasian Economic Union (‘Treaty on the EAEU’) has enabled the introduction of a single system of protection of the trademark and the appellation of origin of goods registered and effective at the Union level. The paper analyses the Draft Treaty on Trademarks, Service Marks and Appellations of Origin of Goods of the EAEU and Regulation relating thereto and the concept of the new trademark system. The paper analyses strengths and potential weaknesses of the proposed concept of the Union trademark and addresses possible improvements to the new trademark system compared with the European trademark system. The paper argues that the goals set in the Treaty on the EAEU may be achieved through the creation of a strong, well-functioned trademark system with an independent single trademark office, taking into account suggestions in overcoming inconsistencies in substantive and procedural Union trademark law.

Challenges of Transnational Trademark Law Practice: The Case of Nigerian Companies’ Brands in OAPI States

Nigeria industrial growth has turned the country into an indispensable economic support for its neighbours. Only for the case of Cameroon, Nigeria has been the leading supplier with respectively 22% and 17.8% of imports in 2011 and 2012 with trade amounting to 328 billion FCFA per annum. This results in part from Nigerian companies’ exportations in local markets. Nigerian trademarks related to cosmetics, furniture, electronics, and pharmaceutical goods abound in neighbouring countries. However, a strengthening of Nigerian companies in regional markets encompasses strategies to avoid infringing on the trademark rights. Such strategies should include the consideration of special trademarks features by different institutions of the intellectual property (IP) system in the relevant neighbour export markets. This is by the mere fact that the legal status of those goods, although physical property, relies mainly on the material law applicable, which is trademark in the present case. Because the principle of territoriality requires that trademark protection be sought in the place where the goods are sold—and trademark applications filed in each country in which protection is sought—, Nigerian companies planning to outsource some business activity in neighbour markets will seek compliance with trademarks norms applicable in the Organisation africaine de la propriété intellectuelle (OAPI) of which those countries—Benin, Cameroon, Chad, and Guinea—are part. The trade partnership between companies from a common law trademark background on one hand, and civil law intellectual property community on the other, inevitably raises some frictions and trademarks issues. This article analyses the trademark challenges arising from Nigerian companies’ business decision to enter OAPI markets and export goods and services. The article firstly underlines the issues to be taken into consideration, including registration and enforcement of the companies’ marks in OAPI. Then the paper simultaneously reviews the dissimilarities issues between the Nigerian Trademark Act and the OAPI Trademark System to which the Nigerian companies are confronted. If trademark protection makes it easier for an enterprise to access transnational markets, the establishment of a Trademark Community with neighbouring countries helps for sure national industries to establish partnerships with other firms for sustainable development in the areas such as production, marketing, distribution or delivery of goods and services. In light of the trademark harmonisation in the European Union internal market, the present paper concludes by recommending the creation of a Trademark Community in the West and Central African region between Nigeria and its neighbouring countries.

UK does not need a regionalized trade mark system

UK does not need a regionalized trade mark system

DEVELOPMENT OF COLLECTIVE TRADEMARK FOR BATIK INDUSTRY IN KAMPUNG BATIK LAWEYAN (LAWEYAN BATIK’S VILLAGE), SOLO

In the previous research, it was found that the individual trademark system has not been effectively utilized to support the business of batik SMEs, particularly in several Batik industry centers in Java, namely Bantul in Yogyakarta province, Kauman in Pekalongan, and Laweyan in Solo. However, the fact that those SMEs gather in a community, organization, or kinships bring potentials for development of collective trademarks, which can address the problems that individual trademark cannot anticipate. This can also be a strategy to anticipate the free-trade ‘attack,’ i.e. imported textiles with batik patterns/motifs; yet not the original Indonesian Batik. Therefore, Indonesian batik SMEs need to be nurtured and encouraged to register their own collective trademarks, and to build their branding infrastructure, through local batik community’s standardization, and collective batik labeling. This present research focuses on the development of collective trademark utilization by one long-known Batik community in Solo province, Kampung Batik Laweyan.

A COMPARATIVE STUDY OF TRADEMARKS UNDER GERMAN AND TURKISH LAW

With Decision 1/95 of the EC Turkey Association Council, Turkey and the EC established a Customs Union. ln implementing that decision Turkey also undertook the obligation to ensure effective protection and enforcement of intellectual property rights. Annex Vlll of thr same decision provides specific measures in the field of lntellectual property rights that Turkey should bring into effect. According to a new Decree-Law No. 556 Pertaining to the Protection of Trademarks was adopted in Turkey and entered into force on June 27, 1995, to harmonize the Turkish trademark system with European standards, especially with the TRIPS Agreement and the EC Council Directive EEC 89/104. The legal basis for the protection of trademarks in Turkey before was Law No: 551 of March 3, 1965. As with the Turkish law the German law also had to be amended according to the EC Council Directive in 1994 and came into force on January 1, 1995. The new German Trademark Law replaced the former "Warenzeichengesetz" trademark law, which dated back to 1874. Considering the latest amendments to the German and Turkish Trademark Laws similarities in both laws show that Turkey has adapted great parts of its trademark laws to the European standard.

The Legal Framework for the Protection of Geographical Indications in Ethiopia: A Critical Review

AbstractThe legal protection of geographical indications (GIs) has become an important concern in both developed and developing countries. In Ethiopia, despite the existence of the need and enormous potential for the protection of GIs, the issue of GIs has not been given due attention. The legal protection of GIs in Ethiopia has not been expressly regulated by any specific legislation. It may arguably be protected under a collective trademark system. However, this system only operates for distinctive GIs. Consequently, most descriptive GIs are not embraced by the system unless the distinctiveness requirement is dispensed with for the registration of GIs as collective trademarks. Moreover, the existing system needs to be redefined in light of the notion of GIs under the TRIPs Agreement. It is therefore high time that an appropriate legal framework be designed to ensure the effective protection and enforcement of GIs in Ethiopia.

Hacking Trademark Law for Collaborative Communities

Collaborative communities create popular work with widely recognized brands, such as Wikipedia, Linux, Android, and Firefox. Trademark law can provide protections to members of these communities and the users of their products so that they can rely on the brands to identify the original projects. This Article explores the conflict between collaborative communities and trademark law. While collaborative communities thrive on openness and decentralization, trademark law requires centralized quality control and various formalities. This Article introduces a descriptive taxonomy of “hacks” that collaborative communities have used to try to mitigate the tensions between their values and trademark law. These hacks are supported by a range of examples that illustrate their effectiveness and limitations in practice. Using the recent Wikimedia Trademark Policy as a case study, this Article proposes a public trademark policy for collaborative communities, similar to how Creative Commons serves as a hack for copyright law. Some of the hacks discussed in this Article are largely unprecedented, or may be combined in new ways to improve their effectiveness. As many other types of hacks, the trademark hacks outlined in this Article may ultimately need to be replaced by code that provides a more holistic patch to the identified “bug” in the trademark system.

Dilution at the Patent and Trademark Office

This Article undertakes the first systematic investigation of trademark dilution in registration practice before the US Patent and Trademark Office (PTO). The Article consists of three distinct descriptive empirical analyses. In the first, I present a new hand-coded dataset of all 453 Trademark Trial and Appeal Board (TTAB) dispositions of dilution claims through June 30, 2014, and report that dilution has been necessary to the PTO’s refusal of exactly three registrations in over a decade. In the second part, I apply algorithmic coding of the recently released PTO Casefiles Dataset to demonstrate that concurrent registration of identical marks to different registrants in different product classes is a long-standing feature of the registration system that does not appear to have changed with the advent of anti-dilution rights. In the third part, I examine third-party applications to register famous marks, and find some suggestion that anti-dilution rights coincide with a modest decrease in the success of such applications — more likely due to an increased rate of abandonment by applicants than to increased opposition by prior registrants. But this change, even if it is not illusory, would correspond to at most an additional 5 to 30 rejected applications per year, against an annual volume of as many as 200,000 applications for word marks in general. While additional research may help buttress the case that anti-dilution rights have had a modest effect on registration for a very narrow class of marks, I conclude that their primary effect appears to be imposing increased costs on those who have business with the trademark system, with little if any apparent benefit to justify those costs.

Reconciling use-based and Registration-Based Rights within the Trade Mark System: What the Problems with Section 58A of the Trade Marks Act Tell Us

Reconciling registration and use as mechanisms by which rights can be acquired in a trade mark is inherently difficult. The federal Australian registered trade mark system is built around a hybrid of a registration-based and a use-based model of protection. While it is perfectly possible to defend such a dual model, the two means of acquiring trade mark rights rest on very different logics. In the event of a conflict between a registered mark and a mark that has been used for some time the question of which should take precedence is not necessarily capable of being determined a priori. The relationship between registration and use is mediated by a number of provisions of the Trade Marks Act 1995 (Cth). In this article we focus on one such provision, s 58A, a relatively recent addition to the legal landscape. Through a close analysis of s 58A, focusing on court decisions and decisions of the Trade Marks Office that have applied this provision, we demonstrate that s 58A has the potential to operate in an entirely unsatisfactory manner. We then use problems with s 58A as a vehicle to explore the relationship between use-based and registration-based rights generally, suggesting a new conceptual framework that might serve to guide future discussion of how the relationship between registration and use ought to be mediated.

Reconciling use-based and Registration-Based Rights within the Trade Mark System: What the Problems with Section 58A of the Trade Marks Act Tell Us

Reconciling registration and use as mechanisms by which rights can be acquired in a trade mark is inherently difficult. The federal Australian registered trade mark system is built around a hybrid of a registration-based and a use-based model of protection. While it is perfectly possible to defend such a dual model, the two means of acquiring trade mark rights rest on very different logics. In the event of a conflict between a registered mark and a mark that has been used for some time the question of which should take precedence is not necessarily capable of being determined a priori. The relationship between registration and use is mediated by a number of provisions of the Trade Marks Act 1995. In this article we focus on one such provision, s 58A, a relatively recent addition to the legal landscape.Through a close analysis of s 58A, focusing on court decisions and decisions of the Trade Marks Office that have applied this provision, we demonstrate that s 58A has the potential to operate in an entirely unsatisfactory manner. We then use problems with s 58A as a vehicle to explore the relationship between use-based and registration-based rights generally, suggesting a new conceptual framework that might serve to guide future discussion of how the relationship between registration and use ought to be mediated.