Trademark Holders Research Articles

Trade mark dilemmas in the Metaverse: interplay between stakeholders

Abstract The opposite interests of the stakeholders in the Metaverse produce more and more legal uncertainty. The relationship between stakeholders is defined by the author as the triangle of opposite interests, where each interest shapes the development of the Metaverse. If we have too much freedom of expression for developers but little attention is dedicated to IP clearance in which interested trade mark holders find themselves, the Metaverse collapses because of the uncontrolled circulation of fake digital goods. In this situation, developers put pressure on the whole IP system. The value of digital goods decreases which evokes negative reputational consequences for the Metaverse. In contrast, constraints from trade mark holders are also dangerous because the Metaverse will stagnate, and designers will lock in limited creative choices. In this uncertainty, we need to balance conflicting interests and revise lessons from trade mark and technology history. This problem requires an examination of the European Union and the United State case law and scholarly comments because court practice tends to limit the fair use of trade marks in favour of trade mark holders. In contrast, scholars signal potential issues with this approach as overly limiting freedom of artistic expression.

The Legality of Surrogate Advertisement, and Its Infringements with Respect to Trademarks

Surrogate advertising is a contentious marketing strategy whereby companies promote restricted products, such as alcohol and tobacco, by advertising permissible goods like mineral water or soda that bear similar brand identities. This practice raises legal and ethical concerns as it often circumvents public health regulations designed to limit the promotion of potentially harmful products. In India, surrogate advertising is regulated by stringent laws, including the Cable Television Networks Act, 1995, the Cigarettes and Other Tobacco Products Act, 2003, and the Advertising Standards Council of India (ASCI) Code. These regulations aim to restrict surrogate promotions that mislead consumers and blur distinctions between prohibited products and their associated brand extensions. This Article explores the legal framework surrounding surrogate advertising in India, highlighting how major brands like Kingfisher have effectively used surrogate products to maintain visibility and brand identity despite advertising restrictions and how the trademark has been infringed . It delves into the conflict between brand rights and public welfare, examining whether trademark holders have a positive right to freely use their trademarks in advertising or whether such rights are inherently limited by public policy considerations. By analyzing statutory guidelines, case law, and global standards such as the TRIPS Agreement, this study evaluates the balance between protecting public interests and preserving trademark rights in advertising practices, ultimately offering insights into potential policy reforms for mitigating the impact of surrogate advertising on consumer perception and public health.

Mellowing down the rigour of the concept of ‘trans‐border reputation’ to accommodate bona fide domestic use: The Indian and Sri Lankan perspectives

AbstractIn this era of global trade and digital communication, where geographical borders between states have become virtually redundant, the ‘aura’ of well‐known trademarks easily transgresses national borders. As an upshot of this, the reputation and goodwill attached to well‐known trademarks have become less and less commensurate with the territorial boundaries of individual states. This raises the question of whether strict adherence to the bedrock principle of ‘territoriality’ is both apt and justifiable in the backdrop of modern commerce—not only from a trademark holder's perspective but also from a consumer‐centric viewpoint. Although the judicially crafted concept of ‘trans‐border reputation’ is often hailed as a promising solution to this problem; sometimes it postulates a too‐liberal approach to protecting the interests of the foreign trademark owners. Most significantly, the concern has been raised that the application of an unbridled doctrine of ‘trans‐border reputation’ may unduly thwart the interests of local entrepreneurs. Thus, the argument that the ‘priority of innocent use’ by a local trader should not be superseded by the trans‐border reputation of a foreign well‐known trademark cannot be easily ignored. This paper aims to critically evaluate the application of the trans‐border reputation concept within the Indian and Sri Lankan legal landscapes, discussing in detail the implications of the landmark cases determined by the Indian and Sri Lankan judiciaries. Most importantly, it seeks to introduce a mechanism for minimizing prejudice to the bona fide domestic users of marks, by employing ‘bad faith’ as a balancing tool.

Legal Protection for Well-Known Trademark Rights Holders Against Trade of Counterfeit Goods Under the Osakafom Brand (Study of Supreme Court Decision Number: 1390 K/Pdt.Sus-Hki/2023)

This study examines the legal protection of well-known trademarks in Indonesia, focusing on the Osakafom trademark dispute. Using a normative legal research methodology, this research analyzes relevant legal norms, judicial decisions, and the enforcement of Law No. 20 of 2016 concerning Trademarks and Geographical Indications. Despite the existence of this legal framework, enforcement remains weak, allowing counterfeit goods to flood the market. Through an analysis of the Supreme Court Decision No. 1390 K/Pdt.Sus-Hki/2023, this study highlights the shortcomings in enforcement and the slow judicial process. The results indicate that while the law provides a basis for trademark protection, the delays in legal proceedings and the burden placed on trademark holders to monitor infringements reduce the law's effectiveness. The findings emphasize the need for stronger enforcement mechanisms, quicker judicial proceedings, and increased government involvement in monitoring counterfeit goods. This paper also suggests that international cooperation is crucial in addressing the cross-border nature of counterfeit operations and protecting the integrity of well-known trademarks in the global market.

Trademark Right Protection in Electronic Commerce: Challenges and Countermeasures

As a vital element of core intellectual property for businesses, trademarks play a crucial role in upholding brand image, safeguarding consumer rights, and fostering fair market competition. This paper aims to delve into the challenges encountered in trademark rights protection within e-commerce based on relevant content from trademark law. It further proposes corresponding legal strategies to address these challenges with the goal of promoting sustained and healthy growth within the e-commerce industry. This study uncovers complexities and covert nature associated with trademark infringement activities in e-commerce, as well as widespread cross-border trade infringements and high costs related to evidence collection and rights protection. Corresponding measures to address these issues are then proposed. The research findings underscore the significance of refining laws and regulations, bolstering international cooperation and judicial assistance efforts, intensifying enforcement measures and penalties, as well as establishing robust mechanisms for protecting rights. This paper holds substantial importance in advancing a healthy environment for e-commerce industry development, maintaining equitable competitive market conditions, safeguarding legitimate rights of trademark holders and consumers, and propelling forward intellectual property protection system construction within the realm of e-commerce.

Juridical Analysis of MSME Trademark Holders Based on Law No. 20 of 2016 Concerning Brand Rights and Geographical Indications

The legal protection given to trademark certificate holders is that the trademark is valid for 10 years and the only registered trademark owner has the rights to the trademark and cannot be changed without the trademark owner's permission. Law enforcement provided by the Trademark and Geographical Indications Law is criminal and civil. There are other alternatives, namely through arbitration and alternative dispute resolution with the concept of a win-win solution.

Legal Protection for Registered Trademark Holders Against Trademark Infringement

In the era of development aligned with international conventions, the role of brands has become crucial in maintaining business competition and must comply with existing trademark regulations. Legislation regarding trademarks in Indonesia has undergone numerous changes to adapt to the needs and developments of the times, starting with Law No. 14 of 1997 concerning Trademarks, amended by Law No. 15 of 2001 concerning Trademarks, and most recently, Law No. 20 of 2016 concerning Trademarks and Geographical Indications. For consumers, a brand not only facilitates identification but also serves as a symbol of self-esteem. Individuals accustomed to choosing products from a particular brand tend to continue using that brand for various reasons, such as familiarity, trustworthiness, product quality, and more. Thus, the function of a brand as a guarantee of quality becomes increasingly evident, especially concerning reputable products. This research adopts a normative juridical research approach. The findings of this study indicate that legal protection for trademarks is granted, whether foreign or local, famous or not, only to registered trademarks. Therefore, every brand owner is encouraged to register their trademark with the Directorate General of Intellectual Property Rights to obtain legal protection for their brand. Legal protection based on the first-to-file principle is provided to registered trademark holders with ‘good faith’ both in a preventive and repressive manner. Considerations by the judge in deciding trademark infringement cases, as in Decision Number: 1349 K/Pdt.Sus-HKI/2022, are as follows: The plaintiff alleges ownership of the ERG trademark (ERG logo) with Registration Number IDM000540156, dated March 8, 2014, in class 25 to protect footwear and apparel products. The naming of ERG is based on the plaintiff’s idea to design and develop ergonomic products. Therefore, the translation information in the intellectual property database for the ERG trademark is ergonomic fashion products. The plaintiff claims that the defendants have infringed the trademark by using the ERG mark, which is substantially or entirely identical to the plaintiff’s ERG mark, Registration Number IDM000540156 owned by Mr. Muhamad Adi Mulya Pranata without rights and unlawfully

LEGAL PROTECTION OF RIGHTS HOLDERS OF REGISTERED MARKS FROM ISLAMIC LEGAL PERSPECTIVE

Trademarks are valuable assets for companies and individuals, therefore, legal protection of brand rights is very important. In the Trademark Law, it is stated that a brand is a sign that can be displayed graphically in the form of an image, logo, name, letter, word, number, color arrangement in 2 (two) dimensions, or 3 (three) dimensions, hologram sound. or a combination of 2 (two) or more to differentiate between goods and services trading activities. There are provisions that regulate the rights and obligations of registered trademark holders. Famous or unknown brands must be registered. Protection of this brand is not only regulated in positive law but also Islamic law. This research is empirical juridical research by conducting field research. Deep data collection methods.This research uses documentation, and the data obtained is then analyzed descriptively qualitatively through data reduction, presentation and drawing conclusions or verification.From the results of the research that has been carried out, it can be concluded that trademark rights for goods/services in Islam are seen as assets whose ownership rights must be protected from things that are detrimental to the brand owner. Brands that have been protected in Islam must also comply with the provisions of the Koran and Hadith as well as the ijtihad of ulama. This is similar to the provisions stated in MUI Fatwa Number 1/MUNAS VII/MUI/5/2005 concerning the protection of Intellectual Property Proceedings of 3rd Malikussaleh International Conference on Law, Legal Studies and Social Science (MICoLLS) 2023, ISSN: 2985-3613 hal. 213-221257Rights (IPR) including the protection of brand rights. Under Islamic law, counterfeiting, plagiarism or duplication without the permission of the brand owner is haram.

PERLINDUNGAN HUKUM BAGI PEMEGANG MEREK DAGANG TERDAFTAR DENGAN PENERAPAN PRINSIP FIRST TO FILE TERHADAP PIHAK LAIN (STUDI KASUS PUTUSAN MA NOMOR 161K/PDT.SUS-HKI/2023)

<p><em>This research aims to determine and analyze the form of legal protection for registered trademark holders based on the first-to-file principle against other parties who have bad intentions in the form of resembling the reputation of the registered trademark. The research uses a statutory approach and a case approach related to applying the first-to-file principle for registered brand owners toward parties passing off the registered mark. Like the case of the registered trademark MS Glow in the Supreme Court cassation decision Number: 161K/Pdt.Sus-HKI/2023). The qualitative analysis method is built based on data and substance originating or sourced from various literature, books, journals scientific works, laws, and regulations.</em></p><p><em>The result of this research is the legal protection for the registered trademark holder (MS Glow) to have the right to their trademark and the right to produce their cosmetic brand, and for other parties (PS Glow) to no longer use their brand because the principle of first to use and first to file exists in the owner of the MS Glow trademark. As a legal consequence of the Supreme Court's cassation decision, PS Glow must stop cosmetic products (PS Glow) and withdraw all PS Glow brand products from the cosmetics business. Considering that the result of this decision is a decision at the cassation level, the decision has permanent legal force.</em></p>

THE TRADEMARK RENEWAL PROCESS RELATES TO THE EXCLUSIVE RIGHTS OF THE BRAND HOLDER BASED ON LEGAL CERTAINTY

In this age of digitalization, the significance of Intellectual Property cannot be ignored. In experiencing the changing era, the Intellectual Property protection system also needs to adjust well, along with the changes, growth, challenges, and opportunities that exist. The growth of the era cannot be ignored, and in the context of the current growth of Intellectual Property, the protection system must also explore so as not to lag behind and protect the rights of individuals efficiently. With this growth, the process of acquisition and ownership of Intellectual Property as a form of protection of intellectual property, absolutely must be supported, facilitated and facilitated by all parties. With such support, facilitation, and ease, this will not only increase the number and quality of Intellectual Property ownership, but more importantly, it will reflect progress in the field of science and technology at the national level. Not only that, it is also a sign of economic progress and the welfare of citizens. The most important is the trademark which is one of and cannot be separated by aspects of Intellectual Property, along with the Exclusive Rights of the Trademark Holder. Because all of these contexts concern the principle of legal certainty. In the context of the disappearance of national borders due to globalization, with the presence of freedom of entry of objects and services. The management of intellectual property rights is very meaningful for the nation's materials because it can share legal protection for intellectual property owned by creators, inventors, designers, and creators related to their creations or intellectual works.

Legal Annotation of Court Decision Number 75 / Pdt.Sus – Ipr / Merek / 2022 / Pn Niaga Jkt.Pst in Administrative Certainty for Famous Brands in Indonesia

Review of the trademark determination in court decision Number 75/Pdt.Sus-Hki/Merek/ 2022/Pn Niaga Jkt.Pst rejection of the application for the trademark GENHALILINTAR + Painting by Anofial Asmid because it was registered by PT SOKA CIPTA NIAGA on October 23 2017 with a Notification of Rejection Registration of the Mark "GENHALILINTAR + Painting" Agenda Number D002018027834 dated 31 December 2019 by the Directorate General of Intellectual Property and Decision of the Mark Appeal Commission / Defendant Number 375 / KBM / IPR / 2020 dated 8 September 2020. This turns out to be interesting because in Halilintar Anofial Asmid has registered the GENHALILINTAR + Painting brand in several classes, which of course contradicts the arguments in the Notice of Rejection and Decision of the Mark Appeal Commission. This paper uses normative legal research methods. With the conclusion Based on the legal annotation of the Decision that there are problems that occur in granting well-known trademark rights to certain people or civil legal entities, especially if the trademark holder is not the initial initiator of its popularity. In terms of administrative certainty of the GENHALILINTAR + Painting mark, state administrative legal action in trademark disputes can be filed against the decision to delete a registered mark at the initiative of the Minister. If there has not been an administrative Judge's Decision, the first principle is that the registered mark has a stronger position compared to the popular indication of a mark

Anomali Pergeseran Filsafat Hukum Terhadap Keadilan Korban Pemegang Hak Merek Pada Bisnis Online Shop

The purpose of this study is to analyze the justice that should be received by victims of trademark rights holders, especially in the online shop business based on the legal philosophy aspects of Indonesian trademark law which adheres to a "first to file" system, so that those who register first are those who are entitled to ownership. a brand. The method used in this research is a normative research method using a statutory and case approach using primary legal materials and secondary legal materials using legal material collection techniques in the form of library research by collecting various books and journals related to the topic in this study as a reference. The results of this study are to explain the importance of the principle of proportionality which is an alternative solution for holders of rights to electronic brands (e-commerce), and to provide legal protection based on the first-to-file principle system given to registered trademark rights holders who have good faith, are preventive in nature nor repressive. In order for any anomaly in the shift in legal philosophy towards the rights of trademark holders to have legal protection, particularly trademark law in Indonesia, the trademark registration itself must be registered with the Ministry of Law and Human Rights-Directorate General of Intellectual Property Rights, so that it is registered in the General Register of Marks and their owners. the actual brand will receive a trademark certificate as proof of rights and ownership of the product trademark. Therefore, the conclusion of this study is to explain the importance of justice and protection for victims of brand rights holders, especially in the online shop business

Batman forever? The role of trademarks for reuse in the US comics industry

We study how trademarks affect reuse of creative works in the comics industry. As a creative industry, the comics industry systematically relies on copyrights. But trademark protection can also be exploited to generate income from the reuse of comic characters or to strategically exclude others from reuse. Our unique data set combines US trademark records of comic characters with information on reuse in print media and franchise products from 1990 to 2017. We find that, on average, additional trademark protection is associated with a reduction in reuse in printed comic books of about 19%. We highlight three mechanisms: first, the negative relationship between trademarking and reuse has been especially pronounced since the early 2000s, when the arrival of digital technologies lowered the costs of entry, promotion, and distribution. Second, our results are driven by less reuse by third parties, not trademark holders. Third, reuse is higher when trademark owners license comic characters to third parties. The negative association between trademarking and reuse carries over to franchise products, but it is weaker and tied to the era of digitization, with a 2% decline in reuse in franchise movies and 9% lower reuse in video games.

Towards an understanding of global ‘private ordering’ in ICANN: text mining 23 years of Uniform Domain-Name Dispute-Resolution Policy (UDRP) Decisions

ABSTRACT To assess the prospect of the ICANN Uniform Domain-Name Dispute Resolution Policy (UDRP) enabling global ‘private ordering’ for domain-name disputes, this study analyses textual data from 75,590 UDRP complaints involving 142,423 domain names. Using data provided by DNS Research Federation’s Data Analytics Platform (DAP.Live), we ask three major research questions: To what extent does the UDRP process differ between resolution bodies? What are the most prevalent themes as represented by keywords and topics? To what extent have these topics changed over time? Using descriptive statistics and a series of inductive text-mining techniques (term-frequency, term frequency-inverse document frequency, and topic modelling), we find substantial evidence for the ongoing stability of the UDRP. Case growth has continued since 2000. There is strong global support for two of the six DRSPs, WIPO and NAF. Average decision time varies substantially by DRSP with WIPO at 63 days and CAC at 36. Panelists heavily employ precedent when adjudicating complaints. Trademark holders continue to dominate the process, winning about 90% of complaints; however, successfully contested cases show strong UDRP jurisprudence supporting non-trademark holders. Topic models created capture both abstract (jurisprudential) and concrete (cybercrime) concepts and show spikes in cybercrime during COVID-19.

Obstacle Factors For Legal Protection Of Nike Brand Holders

The existence of the Ministry of Law and Human Rights as an institution in the registration of trademarks and the Department of Industry and Trade as a supervisory agency in the circulation of goods in Indonesia and needs to be optimized related to the functions of supervision, guidance and enforcement. This is done because the functions of supervision, guidance and prosecution are not optimal for traders who sell counterfeit goods. This study aims to determine the factors that hinder the implementation of legal protection for Nike trademark holders on counterfeit shoes in the Klithikan Pakuncen market in Yogyakarta. This research was normative-empirical research using primary data and secondary data. The results of the study show that there are three inhibiting factors for the implementation of legal protection, namely the Law Factor, the Government Factor, and the Community Factor. First, Law no. 20 of 2016 concerning Marks and Geographical Indications does not explicitly regulate the Mark Holder but regulates the goods of the brand. Second, the Department of Industry and Commerce and the Ministry of Law and Human Rights are still lacking in personnel or expert staff in the field of trademarks within the Department of Industry and Commerce recognized as an obstacle in the process of fostering or socializing business actors who cheat in the trading process which is considered not only detrimental to the Trademark Rights Holder but also including the consumers in it. Third, consumers or buyers who prefer imitation brand goods at low prices for the sake of a lifestyle.

Pelanggaran Asas Itikad Baik dalam Penggunaan Merek Tanpa Seizin Pemilik Hak Merek PB Oleh PT Garuda Tasco

The implementation of registration in Indonesia must comply with the provisions of Law Number 20 of 2016 concerning Marks and Geographical Indications (hereinafter referred to as the MIG Law). In the MIG Law, it is stated that registration must be based on the principle of good faith. In an effort to provide protection to registered trademark holders for trademark plagiarism by other parties. Violation of the registered trademark rights holder will of course cause harm to the trademark rights holder. This research method is a type of normative juridical research, namely examining phenomena that occur in accordance with applicable laws and regulations. The nature of this research is descriptive, namely research that describes, examines, and explains and analyzes a legal regulation.

Non-Fungible Tokens, Sports, and Intellectual Property Law Issues: A Case Study Applying Copyright, Trademark, and Right of Publicity Law to a Non-Traditional Ownership Vehicle

Non-fungible tokens (“NFTs”) are a recent addition to the cryptocurrency universe and have attracted the attention of different stakeholders in the sports world over the last two years. Because they can identify and authenticate particular content, NFTs have become a hot commodity among collectors and investors, in some cases selling for millions of dollars. The sports industry has been a major contributor to NFTs, with athletes, teams, colleges, and leagues issuing or planning to issue NFTs. Because of their recent vintage, NFTs are creating novel and significant intellectual property law issues. This article will explore some of the key issues by utilizing a case study of a hypothetical NFT production of an image found in a painting, which is based on a copyrighted news photo. The article will analyze the copyright issues—whether the NFT can be copyrighted, whether it constitutes a “transformative work,” and whether there are grounds to consider it a derivative or secondary work. This article will also discuss traditional concepts and dilution issues by trademark holders and publicity rights claims against the issuer of the NFTs by the estates of the athletes portrayed based on various state laws. It will then examine the balancing between the rights of estates to protect and profit from their images, and the free expression rights of the creator of the NFT. It will compare two principal standards for making this determination—the “transformative use” test adopted by the majority of federal circuits and the “predominant use” test utilized in Missouri. Recent case law will be cited, in addition to key statutes.

Uticaj odluke američkog Vrhovnog suda na karakterizaciju naziva domena kao digitalnog žiga

Though the trademark holder registered his trademark as a domain name, legal scholars and courts did not clarify the legal character of the domain name. To this point, the debate about the nature of domain names was limited to whether the domain name is nonintellectual property or a kind of intellectual property. Even for those who believe that domain names would have intellectual property rights, the essence of this right is still wrapped up in mysteries. More often than not, the court's decisions were limited to considering the domain name as intellectual property or not until the supreme high court in America decided to register the domain name booking.com as a trademark. This revolutionary decision would change the previous conceptions about the nature of domain names. This paper sheds light on how the supreme court decision would give the momentum to consider a domain name as a trademark, which paves the way as the author believes a domain name can be considered a digital trademark, bearing in mind that the medium, in which the domain names can be active, is the digital space.

Theoretical Underpinnings of Trademark Law: Decisions of the Supreme Court of India

This Paper identifies and analyses the theoretical underpinnings of trademark law in the light of decisions of the Supreme Court of India (Court). Outcome of analysis is four-fold. One, only the Utilitarian Theory has been invoked by the Court and that too not explicitly but only by implication to justify trademark law. Two, judicial ratiocination mainly hinges on two grounds that trademark law maximizes happiness by directing unwary customer to the source of goods or services, and minimizes the pain of unwary customer by protecting her from actual or likely deception or confusion as to the source of goods or services. Three, protection of exclusive right of trademark holder in the trademark is merely a means necessary to promote social good in general and interest of unwary customer in particular. Four, judicial invocation of publici juris is designed to pre-empt tragedy of commons. At the end, Paper develops an argument that the Court should have applied judicially manageable standards to rigorously scrutinize theoretical underpinnings of trademark law.

중국의 악의적 상표권자 청구권 제한에 관한 연구 - 플랫폼 환경에서의 실효적 방안 모색 -

Recently, there has been an increasing number of acts to obtain financial benefits by claiming damages by using registered trademark rights preoccupy in bad faith in China. Regarding the principle of trademark protection, China is adopting the principle of registration. In other words, anyone can apply for a trademark with the Trademark Office of China National Intellectual Property Administration(CNIPA). It can be protected by the China Trademark Law when passed an examination. In the non-substantive examination process, the trademark office does not examine whether the trademark applied for is a trademark used by others first. Only the application for trademark registration is reviewed. Therefore, a trademark applicant can preferentially register a trademark that is being used by others without registration. Also, a holder of trademark right who registered a trademark in bad faith in advance may claim that the right has been infringed. In the process of resolving intellectual property disputes and conflicts between the United States and China, the Chinese authorities strengthened the rights of trademark holders. Administrative measures to stop infringing trademark rights continued. Through this series of measures, a social atmosphere was created that it is natural for trademark holders to take remedies for infringement. These things caused the incident which is preoccupying trademark in bad faith. In addition, in the third revision of the China Trademark Law implemented in 2013, legislation to strengthen civil remedies for trademark holders was in progress, such as adopting a punitive damage award. Accordingly, applications for preoccupying trademark in bad faith aimed at financial gain are accelerating. Because of this situation, the Chinese legislative body carried out the fourth revision to ban such actions at the source through legal regulations and to strengthen punishment for them. Through this revision, a legal basis has been prepared to prevent the abuse of civil remedies in advance. In addition, there are cases that restrict the claims of trademark holders by applying the principle of good faith. And above all, the platform business is revitalized due to digital transformation, as a result, various forms of trademark infringement appear. For this reason, in addition to the China Trademark Law, measures to restrict using the China Anti-Unfair Competition Law and the China E-commerce Law are being actively used. Korea is also faced the task of effective trademark protection in the era of the 4th industrial revolution. Therefore, in this article, provisions and major precedents related to the limitation of trademark holders' claims were analyzed for implications to legislate related provisions in Korea.