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.     

Structural conditions for novelty: the introduction of new environmental clauses to the trade regime complex

When do parties introduce novel clauses to a system of contracts or treaties? While important research has investigated how clauses diffuse once introduced, few empirical studies address their initial introduction. Drawing on network theory, this paper argues that novel clauses are introduced when agreements are concluded in certain structures of earlier agreements and the clauses they include. This paper demonstrates this argument using the example of 282 different environmental clauses introduced into the trade regime complex through 630 trade agreements concluded between 1945 and 2016. We find that trade agreements are more likely to introduce novelties when they involve parties with a diversity of experience with prior environmental clauses and introduce more novelties when more parties are less constrained by prior trade agreements between them. Contrary to prevailing wisdom, power asymmetry between the negotiating parties is not statistically significant.

     

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.     

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.     

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     

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……     

Coexistence in Community trade mark disputes: conditions and implications

Legal context. A defence based on coexistence has no legal basisin the Trade Mark Directive or in the Community Trade Mark Regulation.Still, a practical approach to Community trade mark conflictsrequires attention to the situation in the marketplace whereconflicting marks may be shown to coexist without any currentconfusion or dilution being reported. Key points. Trade mark coexistence may sometimes be persuasive,the strict requirements being laid down by the Community courts.Through a detailed review of the case-law of the Community courtsand OHIM's Boards of Appeal, this article explains the conditionsfor and the consequences of proving the coexistence of the conflictingmarks in cases based on likelihood of confusion or dilution. Practical significance. Consideration must also be given tothe effects of third parties' neighbouring marks which may diminishan earlier mark's distinctive character. Accordingly, this articlefurther addresses the issue of whether the scope of protectionof a mark may be damaged by the use of later marks in the lightof the ECJ Judgment in the preliminary ruling Case C-145/05Levi Strauss v Casucci Spa.     

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.     

Invisible but infringing: when metatags are trade mark use

The German Federal Court of Justice has laid down the principlethat metatag use must be considered ‘use as a trade mark’.     

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.     

Bubbles! The indispensability of the Comparative Advertising Directive to trade mark law

The use by H3G of bubbles in a television advertisement comparingmobile telephone prices complied with the Comparative AdvertisingDirective and thus did not infringe O2's trade mark registrationsfor bubbles. Supplementary data in the form of a clip of theadvertisement discussed in this article is available at www.jiplp.oxfordjournals.org.     

Deceit and immorality in trade mark matters: does it pay to be bad?

LEGAL CONTEXT: This paper reviews some of the recent leading decisions of theOHIM's Boards of Appeal, interpreting Article 7(1) (f)–(k)of Council Regulation (EC) No. 40/94 of 20 December 1993 onthe Community trade mark (CTMR). KEY POINTS: Issues of public morality are considered in Grand Board's decisionin ‘Screw You’ and trade marks that deceive thepublic as to the nature, quality, or geographic origin of thegoods and services they cover are looked at in the ‘WineOh!’ case. The application of the public interest conceptunderlying heraldic signs, emblems, and geographical indicationsappearing on alcoholic beverages is also reviewed. PRACTICAL SIGNIFICANCE: The attempt to draw together some common threads of the decisionsin this area is designed to help practitioners understand whythe Boards of Appeal have reacted in a certain way to a particularsituation and where the limits currently lie.     

Article 81 is a defence to a plea of trade mark infringement

The Court of Appeal in Sportswear considered the interactionbetween the EU principle of free movement of goods and respectfor trade marks rights. In overturning the decision of Mr JusticeWarren to strike out an Article 81 defence to trade mark infringement,the court found that there was a sufficient nexus between theArticle 81 defence and the trade mark infringement claim.     

European integration and the french parliament: From ineffectual watchdog to constitutional rehabilitation and an enhanced political role

The development of the European Union is as much an opportunity as a threat to national parliaments. Our case study of the French Parliament suggests that as the process of integration has quickened in pace and broadened in scope, parliament has on successive occasions used the opportunity to strengthen its constitutional position with the introduction of Article 88‐4 and improve its capacity to scrutinise government through the adoption of a series of laws. Parliament now has the power to delay if not block the adoption of measures at European Union level by refusing to lift its scrutiny reserve. It is difficult to determine if parliament has significantly increased its influence over the government on European affairs, but it is now able to adopt potentially politically significant resolutions on all European Union issues which the government takes into account when negotiating in Union institutions. European integration has been a significant factor in the rehabilitation of the French Parliament.