TRADEMARKS Flashcards
11 types of trademarks
- word
- figurative (logos)
- word/ figurative
- numbers
- letters
- shapes
- patterns
- colours
- position
- layout
- sound
3 possible issues
- representation
- limited availability
- systemic reasons
2 special rules regarding WHO can register a TM (Italy)
- portraits need consent of person portrayed
- well-known names need consent (instead, usually name & surnames can be registered by anyone)
2 conditions to have an unregistered TM recognised in Italy
- knowledge is not merely local
- qualified knowledge (=consumers perceive the sign as a TM)
3 cases in which the distinctive character is ABSENT
- generic TMs
- descriptive TMs (includes figurative & geographical signs)
- customary TMs
+ common surnames, colours, basic shapes, non-distinctive shapes, slogans
you can measure acquirement of distinctive character by through (3)
- market share
- amount invested in promotion
- amount of people that identify the good from the sign
3 cases in which TM is not new
- already registered or application filed before
- non-registered (BUT existent)
- non registered but well known in relevant territory
2 conditions to be fulfilled for a TM to become too general (generalisation)
- loss of distinctive character (objective condition)
- owner’s activity (=owner uses TM as a generic name) or inactity (=owner does not react to the use of the TM as a generic name by third parties) (subjective condition)
2 types of action to exercise the power of invalidation
- before application : opposition action
- after application: nullity action
3 cases of TM infringement
- double identity
- likelihood of confusion
- TM with reputation
3 conditions to be met to have likelihood of confusion
- similarity of signs
- similarity of goods
- likelihood of confusion
how to assess similarity of signs (3)
- visual comparison
- aural comparison
- conceptual comparison
how to assess similarity of goods (7)
- nature
- intended purpose
- method of use
- complementarity
- competition
- distribution channels
- relevant public
how to assess likelihood of confusion (3)
- degree of similarity of goods and services
- degree of distinctiveness of the earlier TM
- degree of attention of the relevant public
4 conditions to assess detriment of reputation
- similarity of signs
- reputation of earlier TM
- owner of earlier TM is able to demonstrate
- unfair advantage given to new TM
- detriment to distinctive character of earlier TM & reputation of earlier TM - no due cause (more recent TM must prove that its use can be justified)
2 ways to asses reputation of earlier TM
1.territorial perspective
2. goods/services perspective
