Navigating the rocky waters of trade mark law

Kerly's Law of Trade Marks and Trade Names, 14th Edition ByDavid Kitchin QC, David Llewelyn, James Mellor, Richard Meade,Tom Moody-Stuart, David Keeling; with Consultant Editor: TheRt. Hon Sir Robin Jacob; Sweet & Maxwell, 2005 Price: £255,Hardback, ISBN: 0421860804, pp. 1,350   Until recently, trade mark practitioners in the United Kingdomhad to make do with the 13th edition of Kerly, the 1st editionof The Modern Law of Trade Marks, or the CIPA/ITMA Handbookwhen navigating the rocky waters of trade mark law and practice.The first two of these texts     

Community trade mark case law round-up 2006

Legal Context: This article looks at the important decisions of 2006 on theCommunity Trade Mark made by the Court of First Instance, theEuropean Court of Justice and the OHIM. These cases concernthe application of Council Regulation 40/94 on the CommunityTrade Mark, and also preliminary rulings from the European Courtof Justice on the interpretation of Council Directive 89/104(the Trade Mark Directive). Key Points: The volume of case law relating to Community trade marks, notto mention the variety of official languages in which the lawis interpreted, makes it almost impossible for even the conscientiouspractitioner to keep abreast with developments as they occur. This article provides an overview of the shifts in Communitytrade mark practice, in terms of not only the relatively accessiblesubstantive law but also the far more diffuse areas of procedurallaw and Office practice. In seeking to review and explain these shifts, the authors haveadopted a view of the case law that is functional rather thanphilosophical. In doing so, they lay bare the manner in whichthe institutions that administer and adjudicate Community trademark issues interrelate to one another. Practical Significance: Practitioners can quickly find the important decisions from2006 relating to particular articles of the Council Regulation40/94 on the Community Trade Mark. This article provides an overview of the most significant trademark cases decided in 2006 by the European Courts of Justiceand the OHIM Boards of Appeal. The article enables practitionersto access rapidly the key decisions of 2006. The cases discussed concern the application of Council Regulation40/94 on the Community trade mark (‘CTMR’), CommissionRegulation 2868/95 implementing the CTMR (‘CTMIR’),and Council Directive 89/104 (the ‘Trade Mark Directive’).     

Comparative advertising is not trade mark infringement

The Court of Appeal has indicated that the use of a competitor'sregistered trade mark for comparative advertising is not trademark infringement.     

Comparative advertising and trade mark infringement: some guidance from the Netherlands

A recent decision of one of the five Dutch Appeal Courts hasclarified the relationship between trade mark law and advertisinglaw, holding that a trade mark owner cannot successfully accumulatetrade mark and advertising claims: where publicity complieswith the standards of advertising law, such use cannot thusamount to trade mark infringement.     

Significant 2007 case law on the Community trade mark from the ECJ and the CFI

Legal context: This article looks at the important decisions of 2007 on theCommunity trade mark made by the Luxembourg courts. Key points: The cases discussed concern the application of Council Regulation(EC) No. 40/94 of 20 December 1993 on the Community trade mark(the ‘CTMR’), Commission Regulation (EC) No. 2868/95of 13 December 1995 implementing the CTMR (the ‘CTMIR’),and the Council Directive 89/104/EEC of 21 December 1988 (‘Directive89/104’). Practical significance: The purpose of this article is to give a quick overview of themost significant trade mark cases decided in 2007 by the Luxembourgcourts. The article has a practical bias and is aimed at readerswho wish to find quickly the key decisions of 2007.     

Advocate General says comparative advertising is not a matter of trade mark law

According to Advocate General Mengozzi, trade mark infringementis not relevant in assessing the legality of a third party'suse of an identical trade mark or similar sign in comparativeadvertising, but such advertising is governed exhaustively byArticle 3a of the Misleading Advertising Directive (84/450),as amended by the Comparative Advertising Directive (97/55)(‘CAD’).     

Whose trade mark rights? What the Microsoft case means for trade mark owners

Legal context. The article considers the influence of the commissionruling in the Microsoft case, forcing Microsoft to use its WINDOWS-trademark for an ‘unbundled’ version of the program inthe light of the trade mark owner's properties rights. The scopeof these rights is determined by the function of the trade markand the rights that the trade mark laws confer to the ownerin case of infringement. Key points. Trade marks are protected as property rights undercommunity law. They are the embodiment of past investments andtransform the reputation of the owner into a bankable asset.Consumers rely on trade mark owners' control over quality. Thisis mirrored by the rights of the trade mark owner to stop interferencewith quality and image, in particular in the context of resaleof altered products. Any interference that would be considereda trade mark infringement if committed by a private party shouldbe considered an interference with the protected property rightif caused by a government agency. This interference is not justifiedby the public interest because trade mark rights also embodyimportant public interests. Practical significance. If the analysis proposed in the articleis followed, intellectual property rights have to be given greaterweight in shaping antitrust remedies.     

The irresistible force of freedom of speech meets the immovable object: trade mark law in South Africa

Legal context. The right of freedom of expression is a fundamentalright entrenched in the Bill of Rights incorporated in the SouthAfrican Constitution. While intellectual property rights donot enjoy this status, they are internationally recognised rightsgranted by a law of general application and may thus in termsof the Constitution limit the fundamental rights protected inthe Bill of Rights, and more particularly the right of freedomof expression. Where the enforcement of trade mark rights comes into conflictwith the right of freedom of expression, the two rights mustbe weighed up against one another and the competing interestsof the owner of the trade mark against the claim of expressionof a user without permission must be considered. The departurepoint of the weighing up process is that neither right is superiorto the other. Key points. This article discusses an action brought by SabmarkInternational, which claimed that Laugh It Off Promotions CCinfringed its registered trade mark BLACK LABEL in respect ofbeer by using a corruption of this mark with strong politicalundertones as ornamentation on T-shirts sold by it. It was claimedthat the offending use diluted Sabmark's registered trade mark.In an appeal, the Constitutional Court rejected the claim onthe basis that Sabmark had not shown that the offending usewas likely to cause economic damage to it. Practical significance. The case in effect equated trade markrights with rights enshrined in the Bill of Rights and thusgave important recognition to intellectual property rights.It created a precedent in intellectual property law, if notin South African law in general, in that the constitutionalcourt overruled a decision of the Supreme Court of Appeal (SCA)and in effect ruled that the SCA had not interpreted the relevantprovision of the Trade Marks Act correctly.     

Conversion in the trade mark context

Legal context. The paper examines the formal requirements formaking a conversion application and provides an overview ofall the significant time limits which have to be observed. Key points. All relevant decisions taken by the Court of FirstInstance and the OHIM's Boards of Appeal are analysed by theauthors, particularly regarding the geographical scope and registrabilityof English language words. Consideration is also given to transformationand conversion under the Madrid Protocol and explanations areprovided regarding the five different types of conversion andtransformation in that context. As a special feature, the articledeals with conversion in the new Member States as well as inthe context of multiple oppositions. Practical significance. The article looks at conversion of Communitytrade mark applications and registrations into national trademarks from a practical and regulatory perspective. It explainsthe different considerations for requesting conversion froma commercial, legal and factual point of view and, in particular,the different grounds for requesting conversion.     

The right venue for trade mark infringement cases

Actions regarding trade mark infringements must be brought beforethe Maritime and Commercial Court and not before any other localcourt in Denmark.     

Polish Supreme Administrative Court says no to trade marks for trade mark attorneys

The Supreme Administrative Court of Poland rejected the cassationcomplaint brought by the Kulikowska & Kulikowski (K&K)law firm and thereby confirmed that trade mark attorneys cannotapply for trade mark registrations in their own interest.     

Who's the bigger McBrat? When trade mark protection strategies overstep the mark

US burger giant McDonald's Corporation suffered a comprehensiveand very public loss at the hands of Malcolm McBratney (a partnerin the IP Group of Australian law practice McCullough Robertson),raising questions as to why that corporation should have initiatedand continued the proceedings in the first place.     

From watchdog to sneak: the UK's new trade mark notification regime

Legal context: This article discusses the move from ex officio refusal of trademark applications based on relative grounds, to a notificationregime. The order making power for this derives from Section8 of the Trade Marks Act 1994. Owners of qualifying earlier registered rights, in respect ofwhich registration of the subject application would be consideredto lead to a likelihood of confusion, will be notified of thelater subject application, and must decide for themselves whetherto oppose. Key points: The article examines the justification for such a shift, interms of the need for a proper evidence and submission basedevaluation of the respective marks, as well as the need to takeall market factors into account in any evaluation. It also addressesthe legal and cultural shift entailed in such a change. Finally,the article attempts to set out three objective measures bywhich an evaluation of success could be measured. Practical significance: The change will affect all those who already have, or will have,registered trade mark rights in the UK. The author's concernin particular is for those who will be receiving notificationletters and what their response might be - given that many willbe unrepresented. The author also believes that more notificationswill be sent out than marks that are currently ‘cited’.     

商标权与商号权的权利冲突及解决途径

作为商业识别标记，商标与商号不仅用以区别商事主体和商品来源，而且还承载商事主体享有的商业信誉、商品的质量承诺。商标与商号本身具有的宣传和促销功能在激烈的市场竞争中所发挥的效用更是不可低估。随着市场经济发展和竞争加剧，企业为了争夺市场、扩大影响导致了商标权与商号权的权利冲突不断发生且有加剧之势。因此，如何完善商标、商号立法及相互间的协调，寻求商标权与商号权权利冲突……     

Foreign fame is not enough to confer US trade mark rights

On appeal from the Southern District of New York, the SecondCircuit affirmed the award of summary judgment against ITC'strade mark infringement, unfair competition, and false advertisingclaims under state and federal law, holding that the famousmarks doctrine was not incorporated by Congress into the LanhamAct and thus not a federally protected right.     

CFI upholds 'compulsory licences' of Green Dot trade mark

The European Commission was justified under competition lawin restricting the terms of trade mark licences for the GreenDot trade mark and, contrary to the view of the owner, thisdid not constitute a ‘compulsory licence’ of themark.