Trademark

Question 1

Rights of use TM?

Answer 1

exclude use within a certain territory
excluse wihtin a certain speciality

Question 2

valdity analysis

Answer 2

signs of which a trademark may consits
conditions a sign must satisfy
was a trademark registered

Question 3

scope

Answer 3

rights
authorization
exceptions

Question 4

requirements of validity

Answer 4

dinstinctive character (absolute)
admissable (absolute)
available (relative)

Question 5

temporal scope of protection

Answer 5

registration –> 10 years & renewable without limitation but normal use of 5 years

Question 6

is a sign sucseptible to TM protection

Answer 6

1) must be able to distinguish goods and services
2) must be subject to clear and precise determination

Question 7

Describe distinctive character

Answer 7

= validity condition for trademarks
- having the ability to fulfill the essentional function of a trademark: identification, differentiation by a way of a sign of goods and services of one company from those of other companies
- in defence you have to PROOF distinctiveness (oreo shape)

Question 8

admissabiltiy?

Answer 8

trademark cannot be contrary to public morality
flags, state emblems
signs that suggest origin but are actually not from there (Irlandasa)
incorrect designation of origin (champagne)

Question 9

exceptions to admissability

Answer 9

purely functional shapes (we have patents for that)
shapes that increase market value due to their attractiveiness
signs determined by the nature of the product: you cant TM the shape of a dice for example

Question 10

availability

Answer 10

trademark has to still be available
speciality: TM can only apply for a certain goods/service
territioriality: can only get TM in a certain territory (Benelux/ EU / International)

Question 11

essential grounds for infringement

Answer 11

double identity
likelihood of confusion
trademark reputation
other use (benelux only)

Question 12

what is infringing

Answer 12

the use of TM in the course of trade (no private use)

Question 13

what is considered use of a TM

Answer 13

affixing signs on goods/services, import/export. offering goods/services under the sign

Question 14

double identity

Answer 14

signs & goods and services are the same
only liable if it affects the original function of the TM (indication of origin)
not infringing if purely descriptive (Spirit Diamond)

Question 15

likelihood of confusion assessment

Answer 15

1. who is relevant customer
2. similar goods / services?
3. similarities signs?
4. global assessment
   2,3, and distinctiviness of the sign (apple (fruit) v.s. apple phone)

Question 16

trademark with reputation assessment

Answer 16

1. reputation in the relevant territory
2. identifical or similar sign
3. risk of damage
   - affecting distinctiveness (dilution)
   - affecting reputation (degeneration)
   - parasitism (undue advantage from distinctiveness)

Question 17

you can defend laos trademark with reputations based on 2 subjective grounds, which ones ?

Answer 17

1.m sign was already used before filign TM (buldog cafe TM already in use before bulldog cafe energy drink)
2. use in good faith –> intention, reputation, logical extension, ecnonomic & commercial interests

Question 18

exceptions to TM infringemnt

Answer 18

private use
for use of informative indication (natural persons, descriptive use
earlier right of local significance (euse of trademark before
comparative advertising
license
legal estoppal
exhaustion

Question 19

comparison sign & trademark

Answer 19

auditive
visually
conceptually
focus on the similarities
focus on the big things

Question 20

exhaustion conditions

Answer 20

goods on EU market
product sold throughTM holder or license
proof of exhaustion

Question 21

exception to exhaustion

Answer 21

product is modified / impaired
HOWEVER
medicine = exception because here sometimes the proudct HAS to be changed (e.g. leaflet / text on box)

Question 22

conditiond to be met to allow changing the product with regards to exhaustion

Answer 22

1. objective necessity
2. nmodification cannot affect origina lcondition
   identification of repackager AND manufacturer
   no damge to reputation
3. priot notification and on demand speciemn

Question 23

3 types of modification

Answer 23

relabeling (e.g. leaflet sticker) , reboxing, retrademarking (rebranding = very intrustive, throwign old trademark away)

Question 24

rebranding is allowed if

Answer 24

1. generic & reference are exactly identical
2. same company or economically linked companies
3. BMS conditions are fulfulled

Question 25

is rebranding necessary
- only generic is on the market
- only reference is on the market
- if generic and reference is on the market
- if both generic and reference product are both NOT under the market

Answer 25

yes
no
no
no