TRADEMARK Flashcards
what principles are relevant for trademark
- national treatment
- independence
- terrirotislity
- most favoured nation
what does trademark protect
article 15(1) logo, slogans
what international treaties apply
- Paris convention
- Madrid protocol
- TRIPS
- Marrakesh
what is the function of a trademark
macro scale - market transparency
1. honest commercial practices (logo=promise)
2. consumer protection
3. functioning market
micro scale - business strategy
1. origin function
2. quality function
3. communication function
what are individual and collective marks
individual - individual enterprise (business)
collective - association like a union
certification marks - control institution
what does article 15 of trips state the requirements for protection are
distinctiveness
what is meant by protection automatism
every trademark is accepted in countries of the union except ;
- infringement of prior rights
- non-distinctive, descriptive generic
- public order
what did the EU trade mark directive clarify on defining trademarks
- must be distinctive
- cannot be descriptive
how can you acquire trademark rights
- by use
- by registration
first come first served fro both
what are the features of the acquisition of rights by use system
- first user gets rights
- no formalities
- no transparency
what are the features of acquiring rights by registering
- first applicant gets rights
- registration formalities
- transparent
what are the downsides of the use system
no transparency, priority cannot be determined, uncertainty before launching a product
what is the right of priority in article 4 PC
if you file for registration in one country, you have 6 months to file in other union countries.
what signs can be denied registration
Article 6 Paris convention
- descriptive signs consisting exclusively of signs indicating the
- kind, quality, quantity
- value and intended purpose
- place of origin
- other characteristics
eg. deceptive signs and ones that are against morality or public order.
of the goods or services
which signs may not be registered or used as trademarks
- emblems of states or intergovernmental organisations
what is trademark term of protection
10 year butttt indefientyl renewable.
what are the problems with national route for registration
- file in lotsss of offices
- many languages
- lots of fees
- lots of renewals
what is the Madrid system
essentially extension of protection in one member of the union to other members
one international registration leading to a bundle of rights in designated members
what is the overview of the Madrid procedure
- office of origin
- international bureau - formal examination
- office of designated contracting party - substantial examination - within 12-18+ months
if accepted then it has the effect of a national registration
what are the advantages of the Madrid system
- one international registration
- has the effect of a bundle of national registrations
- efficient management
- flexibility
- cost savings
what is a well known mark
trademark that because of widespread reputation or recognition may enjoy broader protection then an ordinary mark.
how do you obtain a well known trademark
Obtaining the status of a well-known trademark requires proving widespread recognition of your trademark among the general public, preferably on a global level. The process involves presenting substantial evidence of the mark’s reputation, considering factors such as the extent and duration of use, promotion, registrations, successful enforcement of intellectual property rights, and commercial value associated with the mark.
what does protection against confusion mean
Article 16(1) - the registration of a trademark gives the owner exclusive rights to use the trademark in the market for the goods or services it is registered under.
safeguarding consumers and the general public from being misled or confused about the origin, sponsorship, or affiliation of goods or services.
what does protection against dilution mean
refers to safeguarding a trademark from uses that may weaken its distinctiveness, reputation, or value, even when there is no direct competition or likelihood of confusion
FOR WELL KNOWN MARKS
what’s the outcome of pacogi vs Lacoste
aural - cant hear it
visual - no
conceptual - croco is an abbreviation of crocodile
what is an identical sign and what is the protection offered
Definition: Identical signs are those that are the same in every aspect when compared to the registered trademark. This encompasses all characteristics of the mark, including but not limited to its visual appearance, phonetic sound, and meaning.
Protection Scope: The protection against the use of identical signs is straightforward—the use of an exact replica of a trademark for the same goods or services for which the trademark is registered is generally prohibited without the trademark owner’s permission. This is to prevent direct copying and ensure that consumers are not misled into thinking that they are buying a product or service from the trademark owner when they are not.
what is a similar sign and what is the protection offered
efinition: Similar signs are those that are not exactly the same as the registered trademark but bear a resemblance to it in a way that may cause confusion or association in the mind of the public. The assessment of similarity involves a comparison of the visual, aural, and conceptual elements of the marks to determine if there is a likelihood of confusion regarding the source of goods or services.
Protection Scope: The protection against similar signs is more nuanced and requires a detailed assessment of the likelihood of confusion among the relevant public. This includes considering factors such as the similarity of the goods or services, the degree of similarity between the marks, and the distinctiveness of the original trademark. If the use of a similar sign is likely to cause confusion about the source, sponsorship, or affiliation of goods or services, it may be deemed infringing.
what are the different types of dilution
blurring - loss of distinctiveness
tarnishing. - the association of a trademark with products or services of inferior quality or with unwholesome or unsavory contexts.
in determining whether a trademark is well know members shall take unto account what?
ARTICLE 16(2) TRIPS
- the knowledge of the trademark in the relevant sector of the public.
what does the relevant sectors of the public include when determine a well known mark
actual and potential customers
persons involved in channels of distribution
business circles dealing with the type of goods or services to which the mark applies
what are the different phrases that are used to describe well known marks
well known marks = international
famous marks - US
EU - as having reputation
In the EU how does a well known mark become established
if significant part of the public concerned by the products of services covered by the trademark
what are the criticisms of well known marks
- broad protection can limit the ability for artists to use it. limiting creative expression.
- the idea of parody or satire could be hugely limited by fear of being too similar.
- limits new entrants pf markets - limiting creative expression and innoavation
what are the positives of well know marks and th amount of protection they give
- necessary to preserve the value of these marks and to protect consumers from confusion or deception.
- encourages investment in brand image making a broader range of distinctive products
what was the outcome of the loreal v bellure case
they decided that trademark owners do have the right ti be protected against those that ride on the coat tails of their brand image.
case; dog toy imitating a LV bag.
does this dog toy infringe LV trademark rights within the meaning of article 10 of the EU trademark directive by marketing its Dog toy
commercial parody free riding on the coattails of LV
does the dog toy case demonstrate a likelihood of confusion
obvious parody so no
does the dog toy case cause trademark dilution
question of would the distinctiveness of the trademark be likely to be impaired by the dog toy
no
how do you protection against dilution
if it is a well known mark then any imitations, translations and reproductions or dissimilar goods that would be likely to harm the reputation of the brand.
what does the relevant sector mean
- actual and potential customers
- people involved in channels of distribution
- business circles relating to good or service
