EBS Law Term 2013
Intellectual Property Law
Trademark Law:
Introduction
Prof. Martin Senftleben
VU University Amsterdam
Bird & Bird, The Hague
Intellectual property domains
culture
copyright law
technology
patent law
commerce
trademark law
Contents
• Legislation
• Definition
• Function
• Protection requirements
– graphical representation
– distinctiveness
Legislation
International treaties
• WIPO
– Paris Convention for the Protection of
Industrial Property (PC, 1883/1967)
– Madrid Agreement (1891/1967) and Madrid
Protocol (1989) = Madrid System
• WTO
– Agreement on Trade-Related Aspects of
Intellectual Property Rights (TRIPS, 1994)
= Annex 1C to the General Agreement on
Tariffs and Trade (GATT, 1994)
Definition
Distinctive signs
‘Any sign, or any combination of signs,
capable of distinguishing the goods or
services of one undertaking from those
of other undertakings, shall be capable
of constituting a trademark.’
(art. 15(1) TRIPS Agreement)
Words, letters, numerals
• “American Express”, “Boss”, “Holiday Inn”,
“Microsoft”, “Pizza Hut”, “Puma”
• “Mars”, “McDonald’s”, “Mercedes Benz”,
“Ralph Lauren”, “Jil Sander”
• “Adidas”, “Kit Kat”, “Kodak”, “Reebok”
• “BMW”, “CNN”, “IBM”, “M&M”, “YSL”
• “A6”, “501”, “No. 5”, “S 500”, “4711”
Drawings, pictures, colors
Shapes
Audio marks, smell marks
• the roar of a lion?
• an engine noise?
• the tune of a mobile
phone?
• the smell of freshcut green grass?
Function
Function (macro): market transparency
• ensuring honest commercial practices
• consumer protection
• contribution to a functioning market
producer
competitor
consumer
Function (micro): business strategy
• origin function
– identification of enterprises as the
commercial source of goods or services
• quality function
– expectations of consumers
– encouragement to maintain the attained
quality standard
• communication function
– additional information: lifestyle, attitudes
– trademark image
Protection requirements
Art. 15(1) TRIPS Agreement
‘Any sign, or any combination of signs,
capable of distinguishing the goods or
services of one undertaking from those
of other undertakings, shall be capable
of constituting a trademark.’
= requirement of distinctiveness
Art. 15(1) TRIPS Agreement
‘Members may require, as a condition
of registration, that signs be visually
perceptible.’
= optional requirement of visual
perceptibility
Example: Art. 2 EU Trademark Directive
‘A trade mark may consist of any sign capable
of being represented graphically, particularly
words, including personal names, designs,
letters, numerals, the shape of goods or of
their packaging, provided that such signs are
capable of distinguishing the goods or
services of one undertaking from those of
other undertakings.’
Core requirements
procedural:
substantial:
graphical
representation
distinctive
character
(register
transparancy)
(market
transparancy)
Graphical representation
CJEU, 27 December 2002, case C-273/00,
Sieckmann
• at issue: registration of a smell mark
(cinnamic acid methyl ester)
‘...that a trade mark may consist of a sign which is
not in itself capable of being perceived visually,
provided that it can be represented graphically,
particularly by means of images, lines or
characters, and that the representation is clear,
precise, self-contained, easily accessible,
intelligible, durable and objective.’
CJEU, 27 December 2002, case C-273/00,
Sieckmann
• in case of an olfactory sign (-)
‘In respect of an olfactory sign, the requirements
of graphic representability are not satisfied by a
chemical formula, by a description in written
words, by the deposit of an odour sample or by
a combination of those elements.’
CJEU, 27 November 2003, case C-283/01,
Shield Mark/Joost Kist
• notation:
‘On the other hand, those requirements are satisfied
where the sign is represented by a stave divided into
measures and showing, in particular, a clef, musical
notes and rests whose form indicates the relative
value and, where necessary, accidentals.’
Distinctiveness
Distinctiveness
• trademark = means of distinction
• distinctiveness = basic requirement
• to be determined with regard to specific
goods or services (principle of speciality)
– ‘Ajax’ for a soccer team
– ‘Ajax’ for a cleaning detergent
• depends on social and cultural context
• case-by-case analysis
Distinctive signs?
• indication of
product features
– ‘makes clean’ for a
cleaning detergent
• use of generic
terms
– ‘apple’ for apples
– ‘camel’ for camels
... (-)
• fanciful signs
– ‘persil’ for a cleaning
detergent
• signs adopted
arbitrarily with
regard to the
goods or services
– ‘apple’ for computers
– ‘camel’ for cigarettes
... (+)
No constant level of distinctiveness
• may exist from the very beginning
(arbitrarily-chosen, strong trademark)
• can be acquired or become stronger
through use (secondary meaning)
• but may also decrease (dilution)
• may even be lost (trademark becoming
a generic term)
Overview of influence factors
(-)
(+)
(-)
genericism
secondary meaning
dilution
EBS Law Term 2013
Intellectual Property Law
Trademark Law:
Acquisition
Prof. Martin Senftleben
VU University Amsterdam
Bird & Bird, The Hague
Contents
• Acquisition of rights
• Registration procedure
• Registration strategies
• Well-Known Marks
Acquisition of rights
Acquiring trademark rights
use
registration
mixed systems
first-to-register
(prior use may be recognized)
first-to-use
(prior registration may be recognized)
Comparison of the systems
use
registration
• first user obtains
right
• first applicant obtains
right
• no formalities
• registration formalities
• no transparency
• transparent
• problem of how to
determine priority
• priority can precisely
be determined
• uncertainty before
launching a product
• international standard:
priority right
Paris Union
Right of priority (Art. 4 PC)
filing in one
country of the
Paris Union
6 months
filing in
other Union
countries
Registration procedure
Example: Community Trade Mark (EU)
publication
application examination opposition
relative
conditions
grounds
of filing
absolute
grounds
refusal
registration
Which signs may be denied registration?
(Art. 6quinquies(B) PC)
Descriptive signs consisting
exclusively of signs indicating the...
kind, quality,
quantity
value, intended
purpose
other
characteristics
place of origin
…of the goods or services.
Rationale?
need to
keep free
Which signs may be denied registration?
(Art. 6quinquies(B) PC)
• deceptive signs
“Orwooola” for goods made 100% of
synthetic material
• signs contrary to morality or public order
– “Jesus” for jeans
– “Cannabia” for foodstuff
Which signs may not be registered or used
as trademarks? (Art. 6ter(1) and (2) PC)
• emblems of States or intergovernmental
organizations
Registration
• acquisition of trademark rights
• term of protection: 10 years
• indefinitely renewable
Still possible: application to the office/
counterclaim in infringement proceedings:
• revocation
• invalidation
Requirement of use
‘If use is required to maintain a registration,
the registration may be cancelled only after
an uninterrupted period of at least three
years of non-use, unless valid reasons
based on the existence of obstacles to such
use are shown by the trademark owner.’
(art. 19(1) TRIPS Agreement)
Registration strategies
Facilitating transnational registrations
national route
solution 1:
• file in many Offices
harmonisation of
national procedures
• in many languages
• fees in many currencies
solution 2:
• numerous national
agents
bundle of registrations
via central procedure
• results in many national
registrations
solution 3:
• requires many renewals
transnational trademark
law system
• changes to be recorded
via each national Office
Facilitating transnational registrations
national
registrations
OHIM:
Community Trade
Mark (CTM)
unitary right for
the entire EU
territory
Madrid System:
international registration
A closer look at the Madrid System
• Madrid Agreement (A) of 1891
• Madrid Protocol (P) of 1989
• Common Regulations
• Administrative instructions
• national interface
A closer look at the Madrid System
• basic principle: extension of protection in one
Member of the Union to other Members
• one international registration leading to a
bundle of rights in designated Members
– central recording of changes
(name, address, new holder)
– central renewal (online)
– subsequent designations (new markets)
• language regime: EN, FR, ES
Madrid Union
Agreement only
Protocol only
both treaties
(including EC)
Overview of the procedure
national basis: registration (A/P), application (P)
OFFICE OF
ORIGIN
certifies: particulars in international
application = contents national basis
INTERNATIONAL
BUREAU
formal examination, international
registration and publication, notifies
designated Contracting Parties
OFFICE OF
DESIGNATED
CONTRACTING
PARTY
substantial examination
within
12/18/18+
months
acceptance = effect
refusal
of a national registration
Example: Switzerland as a basis
P
P
United States
AP
AP
P
P
European Community
Switzerland
AP
AP
China
Example: EC as a basis
P
AP
Egypt
P
P
P
AP
Switzerland
European Community
P
AP
China
Stages of extension
first step:
further steps:
designation of Union
Members in the initial
application
subsequent
designations
(further markets)
Advantages
• one international registration
• effect of a bundle of national registrations
• efficient management
– changes (name, address, ownership)
– renewal
• flexibility
– subsequent designations
– limitation, renunciation, cancellation
• cost savings
Exemption from
registration
Art. 6bis PC: well-known marks
right owners
country A
liable to
create
confusion
free riders
country B
reproduction
imitation
translation
Art. 6bis PC: well-known marks
• competent authority in the country
concerned determines whether mark
is ‘well-known’
• conflicting signs must be used for
identical or similar goods
• protection does not depend on the
registration of the well-known mark
EBS Law Term 2013
Intellectual Property Law
Trademark Law:
Protection
Prof. Martin Senftleben
VU University Amsterdam
Bird & Bird, The Hague
Contents
• Overview
• Protection against confusion
– identical signs and goods/services
– similar signs and goods/services
• Protection against dilution
– well-known marks
Rights of the
trademark owner
Exclusive right (art. 16(1) TRIPS)
The exclusive right to prevent all third
parties not having the owner’s consent
from using
– offering goods or services under the mark
– affixing the mark to the goods or their packaging
– putting goods on the market
– stocking goods for that purpose
– importing or exporting goods under the mark
– use on business papers or in advertising
in the course of trade…
Areas of protection
identity
similarity
similarity+
…of conflicting signs?
…of goods or services involved?
Protection against
confusion
Art. 16(1) TRIPS Agreement
‘…the exclusive right to prevent all third
parties not having the owner’s consent from
using in the course of trade identical or
similar signs for goods or services which are
identical or similar to those in respect of
which the trademark is registered where such
use would result in a likelihood of confusion.’
Similarity
similar signs
similar goods
or services
likelihood of confusion as to the origin
of the goods or services must be
proven (art. 16(1) TRIPS)
“Lowcost” for shirts
“Lacoste” for trousers
“Swotch” for watches
“Swatch” for thermometers
“Toy-yoh-tah” for cars
“Toyota” for bicycles
Similarity between signs
• aural
– Claeryn/Klarein
• visual
– Bally/Baileys
• conceptual
– Mars/Venus
• differences can
compensate
similar features:
– Obelix/Mobilix
• decisive: overall
impression
Identity
identical signs
identical goods
or services
likelihood of confusion as to the
origin of the goods or services can
be presumed (art. 16(1) TRIPS)
“Lacoste” for shirts
“Swatch” for watches
“Toyota” for cars
Protection against
dilution
Art. 16(3) TRIPS Agreement
‘…to goods or services which are not similar
to those in respect of which a trademark is
registered, provided that use of that
trademark in relation to those goods or
services would indicate a connection
between those goods or services and the
owner of the registered trademark and...’
Art. 16(3) TRIPS Agreement
‘…provided that the interests of the owner
of the registered trademark are likely to be
damaged by such use.’
Similarity+
reproduction,
imitation, translation of
a well-known mark
dissimilar
goods or services!
indication of connection with the owner of the
well-known mark and likelihood of damage
(art. 16(3) TRIPS)
...unfair competition:
dilution, blurring, tarnishment, free-riding
Subject matter
of protection
International: well-known marks
(art. 16(2) TRIPS)
‘…In determining whether a trademark is
well-known, Members shall take account
of the knowledge of the trademark in the
relevant sector of the public, including
knowledge in the Member concerned
that has been obtained as a result of
the promotion of the trademark.’
The standard of well-known marks
(art. 2(2) WIPO Joint Recommendation)
Relevant sectors of the public shall include,
but shall not necessarily be limited to:
actual and
potential consumers
persons involved in
channels of distribution
business circles dealing with the type of
goods or services to which the mark applies
The standard of well-known marks
(art. 2(2) WIPO Joint Recommendation)
‘Where a mark is determined to be well
known in at least one relevant sector of
the public in a Member State, the mark
shall be considered by the Member State
to be a well-known mark.’
…niche knowledge (+)
Damage
Dilution theory
‘…the gradual whittling away or dispersion
of the identity and the hold upon the public
mind of the mark or name by its use upon
non-competing goods.’
(Schechter, Harvard Law Review 1927)
• objective: safeguarding the exclusive link in
the minds of consumers
Damage to distinctiveness/uniqueness
(blurring)
(+)
(-)
secondary meaning
dilution
…for pianos, perfume,
clothing, books
Damage to repute/goodwill (tarnishment)
‘…a sign similar to the trademark used […]
under such circumstances that prejudice to
the trademark owner may be caused by
encroaching upon the trademark’s potential
for raising a desire to buy…’
(Benelux Court of Justice, case A74/1,
1 March 1975, Claeryn/Klarein)
Example Claeryn/Klarein
Unfair free riding
Change of perspective
damage
advantage
brought to the
well-known mark
taken from the
well-known mark
Unfair free riding
…for fast food, toilet
cleaning, a (lousy)
Amsterdam nightclub
…for perfume,
pianos, precious
watches
Relation with tarnishment and blurring
damage to
repute/goodwill
damage to
distinctiveness
unfair free riding
The end.
contact: [email protected]