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EU Trademark Law > Trademarks - Sources, Definition And Requirements > Flashcards

Trademarks - Sources, Definition And Requirements Flashcards

1
Q

Sources of Trademark Law

A

Paris Convention for the Protection of Industrial Property
Nice Agreement
TRIPS Agreement
Singapore Treaty
Regulation EU 2017/1001 and Directive 2015/2436

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2
Q

When was graphical representation abolished?

A

The recent EU Trademark Reform – pursuant to Regulation 2017/1001 and Directive 2015/2436/EU - abolished the original requirement of ‘graphical representation’ of the sign. Signs can be represented in any appropriate form as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.

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3
Q

Paris Convention for the Protection of Industrial Property

A

Each country party to the Paris Convention must grant the same protection to nationals of the other member countries that it grants to its own nationals.

The nature of the goods shall not form an obstacle to trademark registration.

The fact that the owner has not registered or has not requested renewal of the mark in his country of origin has no legal consequences regarding the state of protection of such mark abroad.

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4
Q

Article 6ter of the Paris Convention for the Protection of Industrial Property

A

Applicable in respect of armorial bearings, flags and other State emblems of those States party to the Paris Convention and the WTO members, as well as official signs and hallmarks indicating control and warranty adopted by them which have been communicated to the International Bureau of WIPO.

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5
Q

Nice Agreement - Nice International Classification

A

The mere fact that the goods and services concerned are within the same class of the Nice Classification is not sufficient that the these goods must be considered as similar.

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6
Q

Principle of specialty

A

Trademarks scope of protection is referred only to those goods or services that covers the trademark registration as well as the similar ones; exceptions might apply if the trademark is well-known.

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7
Q

TRIPS Agreement difference from Paris Convention

A

Lists explicitly a number of signs which are eligible for registration as a trademark.

Requires service marks to be protected in the same way as marks distinguishing goods.

Contains provisions regarding the scope of protection that the owner enjoys

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8
Q

TRIPS Agreement

A

Sets out limited exceptions to the exclusive rights of the owner, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.

Contains certain provisions on well-known marks which supplement the protection required by Article 6bis of the Paris Convention for the Protection of Industrial Property.

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9
Q

Singapore Treaty

A

Rules on communications in electronic form and by electronic means of transmittal.

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10
Q

Definition of trademark

A

Sign capable of distinguishing the goods or services produced or provided by one enterprise from those of other enterprises

Any distinctive word, letter, numeral, drawing, picture, shape, color, logotype, label or combination used to distinguish goods or services may be considered a trade mark.

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11
Q

Non-traditional marks

A

Covers marks, other than word, figurative or complex marks that are used to identify goods or services

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12
Q

Tracer mark

A

Coloured lines or threads applied to certain products

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13
Q

Shape mark

A

A mark consisting of, or extending to, a three-dimensional shape, including containers, packaging, the product itself or its appearance.

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14
Q

Collective mark

A

A mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings.

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15
Q

The EU Trade Mark System procedure

A

Consists of one single registration procedure that grants the owner an exclusive right in all Member States of the European Union.

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16
Q

Common feature of trade names, trade marks and service marks

A

Exercise a distinguishing function

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17
Q

Trademark applications can be rejected by a Trademark office based on:

A

It depends on local laws

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18
Q

Regional trademark offices where a trademark can be registered

A

ARPO, EUIPO and OAPI

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19
Q

Madrid Agreement and Madrid Protocol

A

Make it possible to protect a mark in a large number of countries by obtaining an international registration, based on a national or regional trademark, which has effect in each member state that has been designated.

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20
Q

The concept of “central attack” in the Madrid System

A

For the first five years following the effective date of the international registration, the validity and scope of trademark will depend upon the fate of the basic home application or registration

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21
Q

Who administers the Madrid System of International Registration of Marks?

A

WIPO

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22
Q

Where can protection using the Madrid System be obtained?

A

Only in the countries which are party to the Madrid System of International Registration of Marks

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23
Q

Trademarks are signs which distinguish the goods and services of one business or company from those of another

A

Following functions:

  • origin
  • quality
  • advertising
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24
Q

Representation of a sign must be

A

Clear, precise, self-contained, easily accessible, intelligible, durable and objective

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25
Q

Certification mark

A

Certifies the nature or origin of the goods or services to which it has been applied

Certification marks are signs of supervised quality, whereas collective marks do not imply as such a quality claim

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26
Q

Collective marks

A

Trade mark that is owned by an organisation and is used by its members to identify themselves with a level of quality or accuracy, geographical origin, or other characteristics set by the organisation.

Registration of collective marks is set out in Art 64-72 EUTMR

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27
Q

Geographical indications and designations of origin

A

Both geographical indications and designations of origin are used to indicate agricultural products, foodstus, wines, aromatized wines and spirits from a defined geographical area.

Do not indicate the origin of the products from a single trader, but from one or more producers in a particular area.

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28
Q

Protected designations of origin (PDO)

A

foodstuffs which are produced, processed and prepared in a given geographical area using recognised know-how.

29
Q

Traditional specialties guaranteed (TSG)

A

products produced using traditional raw materials and characterised by a traditional composition or by a method of production or processing that corresponds to a traditional method. There is no need for a link to a particular area

30
Q

Registration of a trade mark can be rejected based on “absolute grounds for refusal”. This applies to:

A

Signs that cannot be represented
Signs devoid of any distinctive character
Signs which are descriptive
Signs which are generic

However, acquiring distinctive character through use is possible

31
Q

When assessing the distinctive character of a trade mark no distinction can be made between different categories of trade marks

A

some trade marks might lack distinctive character due to a dierent consumer perception - e.g. difference between colour marks and slogans

32
Q

Descriptive signs

A

A trade mark is descriptive if it consists exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or of rendering of the service, or other characteristics of the goods or service

33
Q

Generic signs

A

A sign is generic if it consists exclusively of signs or indications which have become customary
in the current language or in the bona fide
and established practices of the trade. It can also cover figurative elements which are either frequent or have become the standard designation for goods and services.

34
Q

Acquired distinctiveness of a sign

A

A trade mark is considered to have become distinctive if it is capable of being recognised by a suciently large part of the relevant public as the mark of one single company or organisation.

35
Q

How is distinctiveness assessed?

A

The distinctive character of a sign must be assessed from the point of view of the average consumer, who is reasonably well informed, observant and circumspect.

The level of attention of the average consumer can vary depending on the goods or services involved.

The distinctive character of a sign must always be assessed in relation to the goods and services for which registration is sought.

36
Q

Scale or degree of distinctiveness

A

The more distinctive the trade mark, the stronger the mark

Strong trade marks give wider protection

37
Q

When is a mark descriptive?

A

For a mark to be descriptive, the relationship between the mark and the descriptive meaning must be concrete and direct and not require further reflection.

38
Q

Other types of sign may also be refused on absolute grounds. Unlike a distinctive character, the grounds cannot be overcome by extensive use of the sign.

A

Certain 3D shapes cannot be registered

Signs contrary to public policy or morality

Deceptive trade marks

Signs which consist of flags and other protected symbols

Protected geographical indications

39
Q

Protected geographical indications and protected designations of origin enjoy special protection under EU law.

A

Trade marks which consist of or contain or evoke PGIs or PDOs and where the goods do not have the claimed geographical origin will be refused.

40
Q

Deceptive trade marks

A

This ground for refusal requires the existence of actual deceit or of a suciently serious risk that the consumer will be deceived (judgment of 04/03/1999, C-87/97, ‘Gorgonzola’).

41
Q

Flags and other state symbols

A

Flags and symbols or emblems of states and international intergovernmental organisations are protected under Article 6ter of the Paris Convention for the Protection of Industrial Property

42
Q

Relative grounds of refusal

A

The coexistence of two such trade marks can be an issue

(a) if an identical trade mark is already protected for identical or similar goods and services or

(b) if there is a similar trade mark which is already protected for identical or similar goods and services and also there
is a likelihood of confusion between the two trade marks, or between a trade mark and a designation of origin or geographical indication.

43
Q

Assessing the likelihood of confusion

A

Similarity between signs
Similarity between goods and services
Overall assessment

44
Q

Counterfeiting

A

occurs when in case of use of an identical or undistinguishable trade mark, typically for goods which are themselves replicating those of the TM owner

45
Q

In case of infringement or counterfeiting the trademark owner may seek

A

Civil, criminal and administrative remedies

46
Q

‘Cease and desist letter’

A

often the first formal step taken to inform the alleged trademark infringer of the possible existence of a conflict

47
Q

Provisional injunctions

A

obtained in case of infringement or threat of infringement without delay, at the end of a urgent, summary proceeding

48
Q

Definitive injunctions

A

awarded at the end of an infringement proceeding, generally held in front of a civil court

49
Q

Some national laws provide also for punitive damages

A

orders to pay a sum which goes far beyond the actual damage suffered by the trademark holder

50
Q

Limits to the scope of protection of a trade mark

A

(i) The principle of speciality. The exclusive right of the trade mark owner is linked exclusively to the goods and services for which it is registered, or to similar goods and services.
(ii) The principle of territoriality. A trade mark can only enjoy protection in the territory for which it has been registered. European Union trade marks, for example, offer EU-wide protection.

51
Q

What are the two main principles of the European Union trade mark?

A

(i) Unitary character. The EUTM is a centralised system that gives equal protection in all member states of the EU. This means that the sign cannot be registered as a EUTM if, for example, it lacks distinctive character in one member state.
(ii) Coexistence. The EUTM exists in parallel with the national trade mark systems. It has not replaced them.

52
Q

Can I obtain an international registration of a trade mark from the International Bureau of WIPO itself?

A

No, this is not possible. You first have to obtain a basic trade mark registration with a national trade mark office or the EUIPO.

53
Q

Use of a trade mark is obligatory. True or false?

A

False. Use of a trade mark is required only after an initial period of five years from the date of registration. After this date, a lack of genuine use of a trade mark may lead to revocation of the mark.

54
Q

What is meant by “genuine” use of a trade mark?

A

This means actual use on the market, and not mere token use or internal use by the company or organisation concerned.

55
Q

Trade marks with a reputation enjoy a broader scope of protection

A

Trade marks with a reputation enjoy protection against identical/similar signs, even when they are used for goods and services which are dissimilar.

56
Q

How is the likelihood of confusion assessed?

A

The degree of similarity between (1) the signs and (2) the goods and services should be taken into account

57
Q

Sieckmann case

A

the graphical representation of a sign must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective”

58
Q

Would it be possible to register the word mark “EUROPIG” as a European Union trade mark for meat, sausages, smoked meats, ham and bacon?

A

The word “EUROPIG” is descriptive for the goods in question and should therefore be refused under Article 7(1)(c) EUTMEUTMR. There is a sufficiently direct and specific relationship between the sign and the goods in respect of which registration is sought. The sign can be used to describe certain characteristics of the products at issue. The relevant public (in this case the average English-speaking consumer) could take the sign to be an indication that it concerns products made from pigs’ meat and originating in Europe.

59
Q

Registration of TM possible at three levels

A
  • national
  • EU
  • international
60
Q

EUTM offers applicants a simplified procedure:

A
  • One application, in any of the official EU languages,
    – One set of fees, in one currency (EUR),
    − One set of procedures, in one office,
    − Online filing possible,
    − One single file to be managed,
    − Reduced costs due to the simple procedure.
61
Q

The Madrid System for the international registration of marks

A
  • international registration at WIPO
  • basic trade mark registration with office of origin
  • offices of designation examine application
  • registration of national marks or EUTM
  • simplification of subsequent management of TM
62
Q

Unregistered trade marks

A
  • No Europe-wide regulation
  • Protected under local laws
  • Protection is only given when there is competition and a risk of confusion in the marketplace
63
Q

Duration of protection after registration

A
  • initial period of ten years

- unlimited renewal

64
Q

Trade mark protection can be cancelled.

A

A mark can be declared invalid or it can be revoked
if it has acquired a generic character and the proprietor has contributed to this, or if it is misused or used in a misleading way.

65
Q

Difference between revocation and invalidity

A

In the event of revocation the mark will be deemed not to have any effects as from the start of the revocation proceedings (ex nunc). When the mark has been declared invalid it will be deemed never to have had any effects from the very beginning or outset of its registration (ex tunc).

66
Q

Registered trade marks give their owners an exclusive right to prevent all others who do not have their consent from using the mark in the course of trade.

A

Exclusive right to prevent use of:

  • identical signs for identical goods and services
  • identical/similar signs for identical/similar goods and services
  • principle of speciality
67
Q

Infringing use of TM includes:

A
  • offering or supplying
  • attaching the sign to goods
  • importing or exporting
  • use in advertising
68
Q

For there to be trade mark infringement, a number of conditions have to be fulfilled.

A
  1. the signs have to be identical or similar and used for identical or similar goods and services.
  2. sign has to be used as a trade mark
  3. the use has to take place in the course of trade
  4. has to be without consent of trademark owner
69
Q

Allowed uses

A
  • Mere private uses
  • In the course of trade: Trade mark owners cannot prohibit third parties from using their own name or address, or indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, time of production or other characteristics of the goods and services; or from using the trade mark when it is necessary to indicate the intended purpose of a product or service, for example in the case of accessories and spare parts.
  • Licences
  • Acquiescence
  • Exhaustion in the EU internal market

EU Trademark Law (5 decks)

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