Trademarks

Sign capable of being represented and distinguishes your goods or services from the ones of other undertakings.


Distinctiveness: In trade or commercial context. Must be interpreted in a broad senses.


In relation to the relevant good or service, the relevant consumer must see it as distinguishable from others


Eurypho: Relevant consumer: reasonable well informed and reasonably observant and circumspect. Their level of attention varies in relation to importance + value of transaction

Representativeness:


Dyson: It must have an specific format, not a concept.


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

Absolute grounds of refusal:


Not capable of being represented


Signs devoid of distinctive character


Descriptive signs


Generic signs


Contrary to public policy or moral


bad faith


misleads


flags or other protected symbols


Certain shapes or functional signs

  1. Results from the nature of goods(banana)

  2. Goods necessary to obtain a technical result (lego)

  3. Gives substantial value to goods (Phillips)

Relative grounds of refusal:


Identical trademarks for identical goods or services


Similar trademarks for identical or similar goods and services and likelihood of confusion between both signs


Identical or similar signs but no identity or similarity of goods and services and an unfair advantage or detrimental use to distinctiveness of reputed marks


Descriptive: the relevant public sees it as giving info about quantity, quality, purpose, value, time of production, size, etc: Mega, super, 24 hours, etc


Doublemint: public interest in protecting terms that other ones may want to use


Not common combination of words are ok baby dry

Generic: customary in current language or in bona fide and stablished practices at the moment of register. A term may become customary and may lead to revocation (kellogs, klenex, tuperware, etc)

Distinctiveness through use: You can acquire distinctiveness through use. This must be assessed by the perception of the average consumer. There must be a proof given by the applicant that a relevant class of persons or portions give a link between products/services and sign

Puma/Sabel : Similarity of signs is assessed from visual, arual and conceptual perspective.


Distinctive and dominant components. Average consumer of the type of goods. The more distinctive the earlier mark, the higher the likelihood of confusion.

Confusion as to origin: seeing the sign and linking the goods labeled with it to the trademark and its owner.


Indirect confusion: the public is not directly confused but makes a connection between proprietors of sign and those of the mark, and confuses them.


Both types of confusion must be demonstrated


Non exhaustive factors that must be taken into account by national courts:


-Degree of recognition of the trade mark on the market
-Degree of similarity between the sign and the trade mark and between the goods and services labelled
-Possibilities of making associations with the registered trade mark

Infringement:


You have the right to prevent third parties without consent to use in the course of trade:


uses that fall into the relative grounds of refusal.

Use in the course of trade:


Winter v Redbull: executing technical parts of production process is not by itself use in course of trade


Colgate: circulation just for external transit procedure is not course of trade


Arsenal: sign sold as a badge of support of afiliation is still in commercial context.


Google/Louis Vuitton(Adwords): using adwords to say that you sell Louis Vouitton but you don´t affects the origin function of trademarks. Google as intermediary is not liable.


Trait and barrel: advertisement in ireland not in the uk

Dilution: It doesn't matter if you are confused or not. The mark being identical or similar to one that has a good reputation attracts you to buy what is being offered.


There must be a due cause. For example, when you repair mercedes and use the sign of mercedes.

For use of identical signs there are 6 conditions:
Use by a third party
Use in course of trade
Use without consent
Sign identical to trademark
Use in relation to goods or services identical to those for which trademark was registered
The use affected or could affect the functions of the trademark, especially origin


For similar signs a three point test:
Sign used in the course of trade
Goods or services similar to those in relation to which the trademark was registered
Likelihood of confusion because of similarity

Ownership: Any natural or legal person. You can transfer it , but transfer must be registered. It can be sole, exclusive or non exclusive license


Licensee can sue but only with consent of rightholder. Licensee can sue when notifies to RH and it fails to bring proceedings.
Youssef hasan: Registry of license is not prerequisite for suing.

Revocation:
Lack of genuine use
Becoming a common name
for the product
Used in a misleading manner, specially as to nature, quality or origin of goods


You must have a genuine use of your mark (Nerit Merit)

Invalidity: Rules of unregistable marks. 5 years of acquiescence .
Anhauser Busch: The period starts counting from the registration of the later mark.

Term: Renewable every 10 years

EUTM Application:
Filing,
examination(including absolute grounds),
searches (notified to third parties affected, possibility to submit observations), Publication (opposition),
registration


Invailidity/revocation(EUIPO), Appeal (General Court or CJEU) or mediation

Exeptions to infringement:
Use of your name or your address
indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service
to indicate the intended purpose of a product or service, in particular as accessories or spare parts


All of these must be used in the context of honest practicesin industrial or commercial matters.


There is exhaustion of goods put in the market

A minimum distinctiveness is enough

Loreal case: you don´t have to prove detrimental effect, just that you took advantage


Intel: you have to prove that it will change the economic behaviour