Module 5

Question 1

What are the three rights acquired by an owner of a trademark?

Answer 1

1. The exclusive right to use the trademark.
2. The right to oppose the registration of an identical or similar trademark.
3. The right to dispose of the trademark as an object of property.

Question 2

What does the right of use mean?

Answer 2

1. It means the right of the owner of the mark to affix it on goods, containers, packaging, labels and etc. or to use it in any other way in relation to the goods for which it is registered.
2. The right to introduce the goods to the market under the trademark and
3. The right to use his mark in advertising, on business paper, documents and etc.

Question 3

State the kind of restricted acts.

Answer 3

1. Use of an identical or confusingly similar trademark for identical or similar products and
2. Protection beyond the scope of confusing similarity.

Question 4

How is an identical or confusingly similar trademark for identical or similar products used?

Answer 4

As regards the right to exclude others from using it, it follows from the marks’ basic function of distinguishing the goods of its owner from those of others that he must be able to object to the use of identical or similar confusingly similar marks. In order to prevent consumers and the public in general from being misled.

Question 5

How will you assess this situation?
Whether the average consumer of the relevant goods or services would think that the goods or services bearing the junior trademark originate from the owner of the senior trademark?

Answer 5

According to the settled case law, trademarks are similar when from the point of view of the relevant public they are at least partially identical as regards one or more relevant aspects. As per the Courts’ view, the visual, aural and conceptual aspects are relevant.

Question 6

How do you test similarity of goods?

Answer 6

It is based on the assumption that identical marks are used; even identical marks are unlikely to create confusion as to the origin of the goods if the goods are very different. As a general rule, goods and services are similar, if when offered for sale under an identical mark the consuming public would be likely to believe that they come from the same source.

Question 7

What kind of confusion is commonly faced by the consumer regarding the similarity of trademarks or goods?

Answer 7

Confusion can arise from similarity in the writing, pronunciation and in the meaning of the sign and that similarity is one of those areas is sufficient for infringement, if it mislead the public.

Question 8

How can the owner succeed in his infringement action ?

Answer 8

If he can prove that his mark has been used. If the infringed trademark is being used the extent of the use that can influence the test of confusing similarity. Intensive use increases the distinctiveness of the mark and confusion with well-known marks is more likely, even if the goods on which the infringing marks are used are less similar or if the similarity of the marks is less apparent.

Question 9

What are relevant legal regulations concerning protection of well-known marks?

Answer 9

In September 1999 the WIPO General Assembly and Assembly of the Paris Union adopted a Joint Recommendation Concerning Provisional on the protection of Well-Known Marks, which provides guidance for determining whether a particular mark is well-known and determines the scope of protection of well-known trademarks.
In addition to those criteria Article 16 Paragraph 2 TRIPS obliges member states of WTO in determining whether a trademark is a well-known mark to quote takes account of the knowledge of the trademark in the relevant sector of the public including knowledge in the member concerned which has been obtained as a result of the promoting of the trademark

Question 10

How can similar trademark affect the owner?

Answer 10

1. Firstly, the use of a sign identical or similar to a well-known trademark may tarnish its reputation.
2. Secondly, the junior user may dilute the distinctive character of well-known trademarks in effect applying a sign which is identical or similar to a well-known trademark to other goods or services may blur its distinctiveness in the eyes of the relevant public.
3. Thirdly, the junior user may use an identical or similar sign to parasitize the reputation and distinctiveness of the well-known trademark.

Question 11

What are the limitations of a similar trademark?

Answer 11

The trademark owner’s right to prevent third parties from using his mark and be restricted by the legitimate interests of others,
The trademark owner also cannot prevent third parties who are not his competitors from referring to his trademark by acts.

Question 12

Name legal principles relevant to similar trademarks?

Answer 12

Principle of exhaustion of the trademark right or first sale doctrine.

Question 13

What is grey market imports/parallel imports?

Answer 13

The application of the principle of exhaustion to goods imported from other countries
It concerns importation of a genuine product by third party and without the permission of the owner of the trademark of the IP, like trademarks, in the country into which the product is imported.

Question 14

Does an owner has right to oppose the registration of an identical or similar trademark?

Answer 14

The owner of a registered trademark has the right to assign the trademark with or without the transfer of the business to which the trademark belongs according to applicable law. moreover, he can grant to third parties the right to use his trademark retaining nonetheless himself the property of the trademark.

Question 15

What are the conditions when the ownership of a trademark can be changed?

Answer 15

The ownership of a trademark can be changed for different reasons and in different ways. Trademark rights may, for example on a natural person’s death, are passed to his/her Heir. Such a change of ownership is only possible when trademark laws allow the private ownership of trademarks.

Question 16

How can Trademarks be licensed to other companies?

Answer 16

Trademarks can be licensed to other companies in such cases the trademark owner retains ownership and merely agrees to the use of the trademark by one or more other companies. This is usually done on payment of royalties and involves the consent of the trademark owner which is usually specified in a former licensing agreement.

Question 17

Hoe can third party use the trademark of the owner?

Answer 17

It is common practice for trademarks owners to license third parties to use the trademarks locally in the country where they exercise their own business.

Question 18

What is done to safeguard origin indicating function of the trademark?

Answer 18

it is necessary and sufficient for the owner to exercise control over the use of the trademark by the licensee, particularly with respect to the quality of the goods, compliance with the quality standards set by the licensor and the conditions under which they are marketed. If that control is effective, the registered owner does not risk revocation of the trademarks for acquired deceptiveness, if applicable law provides for such consequence.

Question 19

What is meant by coexistence agreements?

Answer 19

The owners of identical or similar trademarks may stipulate coexistence agreement which establish to what extend and under what conditions each trademark can be used by its proprietor and by doing so conclude existing conflicts between the parties and prevent future ones.

Question 20

What should your business do, if its trademark is being used by others without authorization? Is the burden of enforcing a trademark is mainly on the trademark owner?

Answer 20

It is up to your company as a trademark owner to identify any infringement and to decide what measures should be taken to enforce trademark rights.

Question 21

How can trademark owner claim his rights?

Answer 21

The trademark owner may face two different kinds of solutions which are sometimes referred to as infringement and counterfeiting or piracy.

Question 22

What is Article 51 of the TRIPS?

Answer 22

Members shall, in conformity with the provisions set out below, adopted procedures to enable a right holder, who has valid the grounds for suspecting that the importation of counterfeit trademark goods or pirated copyright goods may take place, to lodge an application in writing with competent authorities, administrative or juridical, for the suspension by the customs authorities of the release into free circulation of such goods.

Question 23

Define counterfiet trademark goods, as per Article 14 (a) of TRIPS.

Answer 23

They mean any goods including packaging bearing without authorization a trademark which is identical to the trademark validly registered in respect of such goods all which cannot be distinguished in its essential aspects from such a trademark and which thereby infringes the rights of the owner of the trademark in question under the law of the country of importation.

Question 24

What are remedies available with an owner in case of this infringement all counterfeiting?

Answer 24

Generally, in cases of infringement, an owner may seek three kinds of remedies:

1. Civil remedies. For example search orders in injunction and delivery are damages
2. Criminal remedies
3. Administrative remedies

Question 25

What is cease-and-desist letter?

Answer 25

If you are faced with the infringement of your trademark rights then you may choose to begin by sending a letter, commonly known as a cease-and-desist letter.

Question 26

When are search and seizing orders obtained?

Answer 26

If your business considers the infringement to be wilful and knows the location of the infringing activity then it may wish to take surprise action by obtaining with the help of trademark lawyer a search and seize order which is available in some countries usually from a competent court or police.

Question 27

How is the raid without prior notice conducted for infringing the trademark?

Answer 27

To conduct a raid without prior notice to allegedly offending company a person, the infringer may be compelled by the juridical authorities to inform you the identity of persons involved in the production and distribution of the infringing goods and services and their channels of distribution.

Question 28

What are effective provisional measures included in case of trademark infringement?

Answer 28

Such measures may include the detailed description with or without the taking of samples or the physical seizure of the infringing goods and inappropriate cases the materials and implements used in the production and/or distribution of those goods and the documents relating their too.

Question 29

What are kinds of injunction in cases of trademark infringement?

Answer 29

1. Provisional

2. Definite

Question 30

What is provisional injunction?

Answer 30

Provisional measures can be obtained in case of infringement or threat of infringement without delay and at the end of an urgent summary proceeding.

Question 31

What is definite injunction?

Answer 31

Definite injunctions are awarded at the end of an infringement proceeding generally held in front of a civil court.

Question 32

What are powers of WTO member states’ judicial authority in respect of provisional injunction under Article 50 of the TRIPS agreement?

Answer 32

(a) To prevent an infringement of any intellectual property right from occurring, and in particular to prevent the entry into the channels of commerce in their jurisdiction of goods, including imported goods immediately after customs clearance;
(b) To preserve relevant evidence in regard to the alleged infringement.

Question 33

Can search orders be granted without hearing to the defendant in the case of trademark infringement?

Answer 33

Search orders they may be adopted without previously hearing the defendant in such a case the defendant must be heard after words and the injunction should be removed if it appears that the alleged infringement of threat of infringement has not taken place.

Question 34

When can judicial authorities order the precautionary seizure of the movable and immovable property of the alleged infringer?

Answer 34

In the case of an infringement committed on a commercial scale, the Member States shall ensure that, if the injured party demonstrates circumstances likely to endanger the recovery of damages, the judicial authorities may order the precautionary seizure of the movable and immovable property of the alleged infringer, including the blocking of his/her bank accounts and other assets.

Question 35

Can an infringer be sentenced to pay damages?

Answer 35

The infringer may be sentenced to pay damages to the trademark owner. Generally the right holder can obtain a sum which is adequate to compensate him for the actual damage that he has suffered because of the infringement if the infringer did know or had reasonable grounds to know that he was violating someone else’s trademark rights. Nonetheless, in case of unconscious infringement, he may obtain in some jurisdictions the restitution of profits made by the infringer or a pre-established sum.

Question 36

What are punitive damages provided under National Laws for trademark infringement?

Answer 36

National laws provide for a punitive damages i.e. orders to pay a sum which goes far beyond the actual damage suffered by the trademark holder which are meant to act as a deterrent to future infringements.

Question 37

Are there any civil remedies available against trademark infringer?

Answer 37

The juridical authorities may order upon the request of the trademark owner that infringing goods and materials be destroyed or disposed of outside the channels of commerce without compensation of any sort.

Question 38

Is there a scope of criminal remedy for trademark infringement?

Answer 38

This may be particularly negative as long as counterfeiting is concerned. Imprisonment is rarely ordered.