Week 2 Flashcards
Trademarks. Functions of trademark. The notion and the meaning of the case-law of CJ EU. Requirements for protection. Classification of Goods and Services. Nice Agreement.
What is certification marks?
A certification mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.
What is collective marks?
A collective mark is a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings. A collective mark might just indicate that its user is a member of the association.
What is domain names?
An internet domain name is a name associated to a an internet IP address and it is meant to make more easy for net-surfers to reach a specific virtual place on the net (e.g. a website).
Registered trademark ?
modern laws tend to grant registered trademarks upon a mere statement by the applicant that he intends to use the sign in the course of trade, trademark protection can be obtained through registration before actually using the distinctive sign on the market.
Unregistered trademark?
Unregistered trademarks are signs used in the course of trade by one undertaking to distinguish his goods or services.
Sources of trademark?
- National laws
- Regional laws
- Internationals laws
National registration ?
Principle of territoriality. To obtain protection for a trademark in one country, the interested person should file an application within the local trademark office.
Regional registration?
there might be agreements between neighboring States derogating in one way or another to the aforementioned principle of territoriality. n particular the Benjul Protocol on the registration of trademarks through ARIPO. This agreement establishes a centralized registration procedure, which make it possible to file only one application and obtain several national trademarks, one for each State that signed the Banjul Protocol.
In EU by the Regulation no. 40/1994 (now substituted by Regulation no. 207/2009) on the Community trade mark
Madrid System
International registration?
- Paris Convention
- Nice Agreement
- TRIPS
- Trademark Law Treaty
- Singapore Agreement
- Madrid System
- Madrid Protocol
Chili certificate mark case
in September 2011 the first application for a certification mark was filed in Chile. The National Association of Wineries, (Asociación de Vinos de Chile AG), filed an application for CERTIFIED SUSTAINABLE WINE OF CHILE, a trademark that can be used by any winery which products comply with a series of standards in regards to sustainability and labor conditions.
UAW collective mark case
provided by the collective mark registered by the International Union, United Automobile, Aerospace and Agricultural Implement Workers of America (UAW)
Creadores collective mark case
the trademark Creadores España (Creators, Spain) is the trademark belonging to the Asociación de Creadores de Moda de España, which can be used by their associates, which gather the most important Spanish designers and fashion maisons, which together earn over 400 million euro annually.
What is trade name?
Enterprises may own and use one, several or many different trademarks to distinguish their goods and services from those of their competitors. Trade names have in common with trademarks and service marks that they exercise a distinguishing function.
Article 8 of PC
Member states of the Paris Convention are obliged to protect trade names «without the obligation of filing or registration, whether or not it forms part of a trademark»
article 10bis of PC
which obliges member States to prohibit «all acts of such a nature as to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities of a competitor».
Well Known Tredamarks
well-known trademarks receive broader protection than normal trademarks; however, such broader protection is make conditional upon registration by some national legislators.
Paris Convention
First principle 2(1) PC - national treatment: Nationals of any country of the Union shall, as regards the protection of industrial property, enjoy in all other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals
Second principle 1 (1) PX - minimum standard or protection: a country of the Union would not violate the principle of national treatment if it provides a very weak protection for trademarks of its own nationals and of nationals of other States of the Union. However, this result is avoided if the Convention itself obliges all countries of the Union to recognize minimum rights to nationals of other member States.
The first right provided for by the Paris Convention is the right of priority.
According to art. 4 PC, «any person who has duly filed an application for […] the registration […] of a trademark, in one of the countries of the Union, or his successor in title, shall enjoy, for the purpose of filing in the other countries, a right of priority» during the period of six month (art. 4.C(1)).
Who is the owner of the trademark ?
is the person or association in charge of the certification process.
Who is the user of the trademark?
is the producer of the goods that have been examined and certified.
What is certain characteristics of a collective mark?
- have been produced in a specific place
- according to certain qualitative standards.
What a certain requirements to be met for trade name to be permissible and accepted for registration?
The character of the enterprise must be mentioned for instance with the abbreviation LTD for a limited company
and often the purpose of the business has also to be given.
The trade name is in many countries not required to be distinctive as a condition of registration and subsequent use.
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It should be noted that neither the Paris Convention nor the TRIPS agreement states how a trade name should be protected by member states.
For example, they may protect trade names by way of legislation on personality rights all through unfair competition law.
What it is distinctiveness ?
Distinctiveness In this context means that the consuming public recognizes the name as being a reference to a particular trait source.
How to preserve your trade name
Thus for example the owner of a local barber shop cannot prevent someone else from using the same trade name to operate a barber shop in another town.
To safeguard such a registration it is of course necessary to actually use the trade name as a trademark.
the use of trade of a trade name or business name which is identical or similar to an existing trademark whether a register or not is generally prohibited.
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a sign which is confusingly similar to an existing unregistered trademark should fall under Article 10 bis Paragraph 3 sub paragraph one of the Paris convention which obliges member states to prohibit quote “all acts of such a nature as to create confusion by any means whatever with this establishment, the goods or the industrial or commercial activities of a competitor”.
What it is well-know trademark?
1
How much months for instance has a german national who files a trademark in other countries of the Union to request the same trademark in other countries of the Union without fearing that someone else come first and take away the exclusive right to use the sign?
6 months
Does PC regulate the conditions for filing and registration of marks?
no it does not. it determines by each Member state itself through national legislation.
What are the limits to the freedom of member States set up in the PC?
- Firstly, the Convention states that no application for the registration of a mark filed by a national of a contracting State may be refused, nor may a registration be invalidated, on the ground that filing, registration or renewal has not been effected in the country of origin, which is normally «the country where the applicant has a real and effective industrial or commercial establishment»
- Secondly, if the trademark has already been registered in the country of origin of the applicant, it «shall be accepted for filing and protected as is in the other countries of the Union».
In this case, registration may be refused in well-defined cases, such as when the mark would infringe acquired rights of third parties, when it is devoid of distinctive character, when it is contrary to morality or public order, or when it is of such a nature as to be liable to deceive the public
- the nature of the goods to which a trademark is to be applied shall in no case form an obstacle to the registration of the mark»
- the Convention obliges signing States to protect also service mark
What it is well know trademark?
As art. 6bis PC states, «the Countries of the Union undertake, ex officio if their legislation so permits, or at the request of an interested party, to refuse or to cancel the registration, and to prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to create confusion, of a mark considered by the competent authority of the country of registration or use to be well known in that country as being already the mark of a person entitled to the benefits of this Convention and used for identical or similar goods».
What is Nice Agreement?
The Nice Agreement establishes a classifica- tion of goods and services for the purposes of registering trademarks and service marks
The Classification consist of how many classes and etc?
The Classification consists of a list of classes – 34 for goods and 11 for services – and an alphabetical list of the goods and services. The latter comprises some 11,000 items.
What is TRIPS about?
The TRIPS Agreement builds a «Paris-plus» protection for intellectual property rights in general, and for trademarks in particular.
True or False ?
A certification mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality and accuracy.
False
True or False ?
A collective mark is a mark distinguishing the goods or services of members of the association which is the proprietor of the mark from those of other undertakings.
True
True or False ?
Trade names have in common with trademarks and service marks that they exercise a distinguishing function
True
True or False ?
Member states of the Paris Convention for the Protection of Industrial Property are not obliged to protect trade names.
False
True or False ?
The Agreement on Trade Related Aspects of Intellectual Property Rights deals expressly with unregisterd trade marks.
False
True or False ?
The Paris Convention for the Protection of Industrial Property does not deal expressly with unregisterd trade marks.
True
