TM Enforcement Intro Flashcards
TM Office Proceedings at UKIPO / EUIPO
- Opposition
- Cancellation by invalidation or revocation
Litigation: Enforcement Directive
Directive on the Enforcement of Intellectual Property rights.
Sets out remedies
Remedies for the Infringement of Trademarks
- Injunctions (Interlocutory or permanent)
- Damages or account of profits
TM Office Proceedings: Opposition
Proceedings whereby a third party, normally an earlier TM holder opposes an application for registration of a mark that is allegedly identical or similar to that earlier TM.
- On relative grounds of refusal s.5
Cancellation broken into:
Revocation & Invalidation
Revocation
s. 46 - non-use; liable to mislead the public
Invalidation
s 47. any of the absolute grounds for refusal s.3
Any of the relative grounds for refusal s.5
TM not put to genuine use
When can you apply for cancellation?
After registration. During registration called opposition.
Enforcement Directive 2004
Article 3(1) measures, procedures and remedies shall be fair and equitable. Should not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.
Article 3(2) measures, procedures and remedies shall also be effective, proportionate and dissuasive, avoiding creation of barriers to legitimate trade and to provide for safeguards againts abuse.
Injunctions per the Enforcement directive
Authorities may issue injunctions - aimed at prohibiting continuation of infringement.
This may include intermediaries whose services are used by a third party to infringe an IP right.
Sunset clause
An injunction will last X years and if infringement is still ongoing, you can go to court to try to extend it.
Types of injunctions
Search orders - Anton Pillar orders
Delivery up
Mareva Injunction - freezing of assets
Permanent injunctions are given on finding on infringement. Irrespective of size of infringement.
- This can include erasure of infringing sign, destruction of goods etc.
EU injunction case
DHL v Chronopost
DHL v Chronopost
CJEU concluded that the scope of the prohibition againts further infringement or threatened infringment of an EU trademark, extends as a rule to the entire area of the EU.
However, to get an EU wide injunction, the scope of prohibition must be on all the EU and you must give grounds.
- For example, you must operate through the EU.
What options does Article 97 of EUTMR provide for jurisdiction in EUTM cases?
Jurisdiction can be based on:
Domicile of the defendant.
Place of infringement.
Domicile of the plaintiff.
Spanish Courts (EUIPO in Alicante)
What is the difference in jurisdiction under Article 98 EUTMR between domicile-based and infringement-based courts?
Domicile-based courts: Can address infringements across the entire EU.
Infringement-based courts: Limited to handling infringements within their Member State.
What is the concept of “forum delicti” in EUTM infringement cases?
A claimant can start proceedings in any Member State where infringement occurs, but the court can only grant relief for infringements within that specific Member State.
Interim Injunction case
American Cyanamid v Ethicon
American Cyanamid v Ethicon test for interim injunction
Is there a serious question to be tried?
Would damages be an adequate remedy?
What are the likely impact of granting the injunction?
What are the relative merits of the parties case?
Blocking Injunction
Blocks intermediaries such as ISP (internet service providers), as they cannot reach to the infringement further upstream.
In Cartier International AG v British Sky Broadcasting 2014, it was said that to make these orders, the court jurisdiction, the threshold conditions and principles should be applied.
Cartier International v British Sky Broadcasting
The threshold conditions for a blocking injunction include:
- Intermediary
- Infringement
- Target websites used ISPs to infringe
- ISP had actual knowledge of the infringement (includes a TM notice usually)
Damages takes into account:
Negative economic consequences, including lost profits, unfair profits, sometimes moral prejudice
Legal action for unjustified/groundless threats of infringement
Recipient of groundless can commence proceedings against threats, through section 21 of the TMA. Can obtain:
- Declaration that threats lacked justification
- Damages (On proof of damage more than minimal)
- An injunction to prevent further threats.
