Trademarks

Question 1

TM means of communication

Answer 1

• a medium for information and advertising,

- a symbol to create and represent the entrepreneurial capacity & the image of an undertaking

Question 2

TRIPS Article 15 Protectable Subject Matter

Answer 2

Any sign, or any combination of signs, capable of distinguishing the Gs/Ss of one undertaking from those of other undertakings, shall be capable of constituting a TM.

Question 3

Recital 13 Directive 2015/2436 - examples of signs which are capable of constituting a TM, provided that such signs are capable of distinguishing the Gs/Ss of one
undertaking from those of other undertakings

Answer 3

clear, precise, selfcontained, easily accessible, intelligible, durable and objective.

Question 4

Visible signs

Answer 4

3D
Color marks
Holograms
Slogans
Titles of films and books
Motion or multimedia signs
Position marks
Gesture marks

Question 5

Sound marks
Olfactory marks
Taste marks
Texture or feel marks

Answer 5

Non-visible signs

Question 6

Criteria of registrability (appears in most national laws)

Answer 6

• function to distinguish the Gs/Ss of one enterprise from the Gs/Ss of other enterprises
• the possible harmful effects of a TM if it has a misleading character or if it violates public order or morality
• the existence of earlier rights of third parties, which may prevent the registration of the TM

Question 7

TMs enjoying protection under Article 6quinquies Paris Convention may be neither denied registration nor invalidated except in the following cases:

Answer 7

1) when they are of such nature as to infringe rights acquired by third parties in the country where protection is claimed
2) when they are devoid of any distinctive character
3) when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public

Question 8

Distinctiveness of TM determined by the average consumer

Answer 8

The average consumer is deemed to be

reasonable, well informed and reasonably observant and circumspect.

Question 9

A sign is distinctive for the Gs to which it is to be applied when it is recognized by those to whom it is addressed

Answer 9

• as identifying Gs from a particular trade source, or

- is capable of being so recognized

Question 10

Distinctiveness can be acquired, increased or even lost

Answer 10

The law recognizes two classes of distinctive marks:

• „inherently” distinctive (arbitrary/fanciful, suggestive marks) and
• marks that have acquired distinctiveness.

Question 11

Revocation for becoming generic

Answer 11

• improper use by the owner, provoking transformation of the mark into a generic
  term, and
• improper use by third parties that is tolerated by the owner.

Question 12

Collective mark

Answer 12

a mark distinguishing the Gs/Ss of members of the association which is the proprietor of the mark from those of other undertakings
the most common function of a CM is to certify that the Gs produced by the members of the association have certain characteristics - similarity to certification mark

Question 13

Value of TM

Answer 13

A marketing tool
A source of revenue through licensing
A crucial component of franchising agreements
A valuable business asset

Question 14

Essential function of TM

Answer 14

guarantee the identity of the origin of the trade-marked product

Question 15

Hoffman-La Roche v Centrafarm [1978]

Answer 15

In order to answer the question whether that exclusive right involves the right to prevent the TM being affixed by a third person after the product has been repackaged, regard must be had to the essential function of the TM, which is to guarantee
the identity of the origin of the trade-marked product to the consumer or ultimate user, by enabling him without any possibility of confusion to distinguish that product from products which have another origin

Question 16

Google France SARL and Google Inc. v Louis Vuitton Malletier SAand Others [2010]

Answer 16

. Since the course of trade provides a varied offer of Gs & Ss, the proprietor of a TM may have not only the
objective of indicating, by means of that mark,
- the origin of its Gs/Ss,
- but also that of using its mark for advertising purposes designed to inform and persuade consumers.

Question 17

In the case-law of the CJ, two further functions of the TM were clearly indicated as communication and investment, while the catalog of functions was considered open by the CJ

Answer 17

C-487/07 L’Oreal v Bellure (2009), par. 58

Question 18

Modern functions of TM highlighted by Parfums Christian Dior SA and Parfums Christian Dior BV v Evora BV

Answer 18

As regards the instant case, which concerns prestigious, luxury Gs, the reseller must not
act unfairly in relation to the legitimate interests of the TM owner.

He must therefore endeavour to prevent his advertising from affecting the value of the TM by detracting from the allure and prestigious image of the Gs in question and from their aura of luxury

Question 19

C-206/01 Arsenal Football Club v Mathew Reed Case, [2002], para. 51 – art. 5(1)(a) TMD 2008/95

Answer 19

using a sign as a badge of support affects the right of Arsenal as a proprietor even in the absence of any likelihood of confusion

Mr. Reed, who was selling the products as a sign of affiliation and loyalty to Arsenal, displayed a clear mark stating that his merchandise bears no relationship to the official Arsenal products.

Reed’s use of the mark arguably permitted it to take unfair advantage of the reputation of the protected TM

Question 20

Google France SARL and Google Inc. v Louis Vuitton Malletier SA (C-236/08)

Answer 20

In the case where the ad, while not suggesting the existence of an economic link, is vague to such an extent on the origin of the Gs/Ss at issue that normally informed and reasonably attentive internet users are
unable to determine, on the basis of the advertising link and the commercial message attached thereto,
whether the advertiser is a third party vis-à-vis the proprietor of the TM or, on the contrary, economically linked to that proprietor, the conclusion must also be that there is an adverse effect on that function of the TM.

Question 21

C-323/09 Interflora v Mark and Spencer [2011]

Answer 21

Interflora instigated a claim against M&S for purchasing the Interflora keyword on Google Ads with the purpose of diverting traffic to its website.

This enquiry was focused on whether the use of a TM to acquire or preserve the reputation of a mark was adversely affected.

It was held that protection should be granted for Interflora as the use of its TM by M&S amounted to substantial interference in the proprietor’s ability to preserve his reputatiom capable of attracting consumers and retaining their loyalty.

Question 22

Communication function of TM holds the general ability of a TM to evoke to customers of certain ideas about the good

Answer 22

it covers the clientele’s ideas arising within each of the 3 detailed functions about: the source of the G., the quality of the Gs, the attractive power of a TM

As a consequence, the communication function can be considered superior to the 3 functions indicated

Question 23

Art. 10 TMD 2015/2436 defines the „rights conferred by a TM”

Answer 23

Art. 14 TMD 2015/2436 contains provisions on the „limitation of the effects of a TM”

Question 24

A provision is contained in many TM laws states that the registration of the mark

Answer 24

does not confer on its registered owner the right to preclude third parties from using bona fide, e.g., their names, addresses, or pseudonyms.

Question 25

Name defence in using TM - restricted to cover the use of names of natural persons only

Answer 25

Art. 14.1. TMD 2015/2436 - honest use of a natural person’s name may be a defence while the use of a company name is not

Question 26

Designating indications defence

Answer 26

Art. 14.1. TMD 2015/2436

Question 27

Joined cases C-414/99 to C-416/99, Zino Davidoff SA v A & G Imports Ltd and Levi Strauss & Co. and Others v Tesco Stores Ltd and Others - can implied consent be inferred from the mere silence of a TM proprietor ?

Answer 27

No, mere silence does not give rise to implied consent. However, it is possible to imply consent as also discussed in the case.

Consent must be expressed positively; the factors taken into consideration in finding implied consent must unequivocally demonstrate that the TM proprietor has renounced any intention to enforce his exclusive rights

Question 28

Article 7(1) of the Directive contains an exception to the rule contained in Article 5, in that it provides when exhaustion happens

Answer 28

the TM proprietor’s rights are exhausted where the Gs have been put on the market in the EEA by him or with his consent

Question 29

Art. 7(1) TMD makes Community exhaustion subject either

Answer 29

◦ to a putting on the market in the EEA by the proprietor of the TM himself or
◦ to a putting on the market in the EEA by a 3 party but with the proprietor’s consent.

Question 30

TMD 2015/2436 - Article 10 Rights conferred by a TM - a non-exhaustive list

Answer 30

The following, in particular, may be prohibited under para. 2:
(a) affixing the sign to the Gs or to the packaging thereof;
(b) offering the Gs or putting them on the market, or stocking
them for those purposes, under the sign, or offering or
supplying services thereunder;
(c) importing or exporting the Gs under the sign;
(d) using the sign as a trade or company name or part of a trade or company name; [see Recital 19]
(e) using the sign on business papers and in advertising;
(f) using the sign in comparative advertising in a manner that is
contrary to Directive 2006/114/EC

Question 31

C-173/98, 1999, Sebago Inc. and Ancienne Maison Dubois & Fils SA v G-B Unic SA

Answer 31

the Community legislature has made it clear that
putting such Gs on the market outside that territory does not exhaust the proprietor’s right to oppose the
importation of those Gs without his consent and thereby to control the initial marketing in the Community (in the EEA since the EEA Agreement entered into force) of Gs bearing the mark

Question 32

The concept of consent used in Art. 7(1) of the Directive must be interpreted uniformly throughout the Community legal order

Answer 32

consent constitutes the decisive factor in the extinction of that right

Question 33

“parallel imports” (grey market imports)

Answer 33

importation of a genuine product by a 3 party and

without the permission of the owner of the IP (like TMs) in the country into which the product is imported

Question 34

Article 6 TRIPS - Exhaustion

Answer 34

For the purposes of dispute settlement under this
Agreement, subject to the provisions of Articles 3 and 4 nothing in this Agreement shall be used to address the issue of the exhaustion of intellectual property rights.

Question 35

CJEU C-228/03 of 17.03.2005 The Gillette Company and Gillette Group Finland Oy v. LA-Laboratories Ltd Oy

Answer 35

Use of the TM will not be in accordance with honest practices in industrial and commercial matters if:
– it is done in such a manner as to give the impression that there is a commercial connection between the 3 party & the TM owner;
– it affects the value of the TM by taking unfair advantage of its distinctive character or repute;
– it entails the discrediting or denigration of that mark;
– or where the 3 party presents its product as an imitation or replica of the product bearing the TM of which it is not the owner.

Question 36

TRIPS Article 17 Exceptions

Answer 36

Members of WTO may provide limited exceptions to the rights conferred by a TM, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the TM and of third parties

Question 37

C-245/02, 2004, Anheuser-Busch Inc. v Budĕjovický Budvar, národní podnik; para. 82

Answer 37

The condition of ‘honest practice’ is, in essence, an expression of the duty to act fairly in relation to the legitimate interests of the trademark proprietor

Question 38

Honest practices in industrial or commercial matters

Answer 38

The issue of whether that condition has been satisfied must be assessed by, inter alia, taking account
of the extent to which the use by the 3 party is understood by the relevant public, or at least by a
significant section of that public, as establishing a link between the 3 party’s Gs and those of the TM
proprietor or a person authorised to use the TM

Question 39

Article 3 TMD Grounds for refusal or invalidity

Answer 39

The following shall not be registered or, if
registered, shall be liable to be declared invalid:
TMs which consist exclusively of signs or
indications which may serve, in trade, to designate
the kind, quality, quantity, intended purpose,
value, geographical origin, or the time of
production of the goods or of rendering of the
service, or other characteristics of the goods or
services

Question 40

Art. 6 Limitation of the effects of a TM

Answer 40

The TM shall not entitle the proprietor to
prohibit a 3 party from using, in the course
of trade: indications concerning the kind, quality,
quantity, intended purpose, value,
geographical origin, the time of production
of Gs or of rendering of the S., or other
characteristics of Gs/Ss

Question 41

Article 14 TMD - Limitation of the effects of a trade mark

Answer 41

A trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade:
(a) the name or address of the third party, where that third party is a natural person;
(b) signs or indications which are not distinctive or which concern the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service,
or other characteristics of goods or services;
(c) the trade mark for the purpose of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of the trade mark is necessary to indicate
the intended purpose of a product or service, in particular as accessories or spare parts.