Non-traditional trade marks: a Singapore perspective

Legal context: Many commentators have opined that non-traditional trade markswill play a significant role as dominant branding strategiesof the future. Key points: There has been considerable debate over the suitability andfeasibility of non-traditional trade marks as there have beendifficulties encountered when seeking to register them. Anotherimportant issue that arises relates to the extent to which consumerscan link their five senses to a brand, and whether unconventionalmarks may result in consumer confusion. Practical significance: This article attempts to analyze the pros and cons of non-traditionaltrade marks and evaluate if they are worth pursuing.     

Swiss trade marks practice on misleading geographical indications

Legal context: Geographical references in trade marks are often used not onlyto refer to a certain territory of origin for certain goodsor services, but also to evoke desirable associations, imaginations,emotions, or ideas. The strict practice of the Swiss Trade MarksOffice often requires applicants to limit their list of goodsand services to certain countries. Key points: This abstract discusses the issues of geographically suggestivetrade marks in Switzerland, the strict test used by the SwissTrade Marks Office often requiring the applicant to limit thelist of goods to a specific country, the new stance the formerAppeals Board took in this regard, and how it was struck downby the Swiss Supreme Court, confirming the strict test of theTrade Marks Office. Finally, the article gives a solution onhow the issue of geographical references in trade marks shouldbe treated in order to match reality. Practical significance: It is important to know that the Swiss Trade Marks Office appliesa strict test when it comes to geographical references in trademarks. Usually, the applicant is required to limit the listof goods, although it is questionable whether the trade markreally suggests that the goods stem from a certain country.Foreign decisions are not binding for the Swiss Trade MarksOffice and in this regard usually disregarded.     

The recognition and protection of well-known trade marks in Indonesia

Legal context: The recognition and protection of well-known marks in Indonesiahas improved over the last few years for a variety of reasons. Key points: First, the Asian Crisis resulted in the creation of a CommercialCourt, which is a clear improvement over the previously responsibleDistrict Courts. Secondly, the increasingly frequent publicationof court decisions has improved transparency and consistencyof those decisions. Well-known marks are now clearly protectedagainst use for similar goods/services. Protection is extendedto dissimilar goods/services by applying Article 16(3) TRIPSdirectly or by arguing that registration occurred in bad faith.Nevertheless, decisions thus far concern almost exclusivelyrevocation and invalidity of registrations. Civil remedies suchas damages and interim injunctions are hardly used, becausethe outdated civil procedural law has not familiarised judgeswith such legal instruments. Clearing the register of infringingregistrations is another matter of concern. Cancellation fornon-use for three consecutive years can be difficult, becausethe plaintiff is required to provide evidence of the last usein the production of the goods/services rather than in the courseof trade more generally. Practical significance: While it has become much easier to protect well-known marksin Indonesia, much work remains to be done regarding the proceduralframework of civil infringement proceedings and regarding theclearing of the register.     

Court in Argentina holds that HARRODS trade marks cannot co-exist

In October 2007, the Chamber I of the Federal Civil and CommercialChamber of Appeals, Buenos Aires, dismissed the appeal of theplaintiff (Harrods Limited) and declare not undue the oppositionfiled by the defendant (Harrod's BA), thus concluding the latestepisode in the dispute-laden relationship between these companies.     

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.     

Personality disorders and criminal responsibility in the Spanish supreme court

The aim of this study is to determine how personality disorders (PDs) are viewed in relation to criminal responsibility (CR) within the jurisprudence of the Spanish Supreme Court. All sentences with PD from 2000 to 2006 were included. The most frequently occurring PDs are cluster B and nonspecific disorders, alongside another Axis I disorder. The Spanish Supreme Court admitted appeals on 50%, and sentencing criteria were changed in 25% of the cases. The most frequent outcome was in the first instance a minor reduction in CR and second full CR being upheld. The borderline PD and the comorbidity between a PD and an Axis I disorder are the variables associated with the decrease in CR. The assessment of CR in PD should be undertaken using the diagnosis as a base taking into account other elements, such as the type of PD, its seriousness, comorbidity, and relationship with the criminal behavior on trial.     

Strong trade marks and the likelihood of confusion in European law

Legal context. One of the fundamental assumptions of trade marklaw is that provision should be made to prevent the registrationor commercial exploitation of trade marks that are likely tobe confused with earlier marks. The justification for this assumptionis however unclear. Is it to protect the expectation of itsowner that a trade mark will provide a comfort zone, an areawithin which other traders simply may not enter? Is it to encourageinvestment in the development of a relationship between thetrade mark owner and his prospective customers by offering interference-freemarketing opportunities? Is it to protect the efficiency ofthe market by facilitating the making of decisions by consumersas to which product or process they wish to purchase? Or isit to protect the vulnerable consumer against the personal consequencesof his inattention or inability to discern the differences betweenproducts or services? Key points. This article examines the development of Europeanlaw relating to the protection of strong trade marks, thosewhich are highly distinctive or well known, against similarmarks that may or may not be likely to cause consumer confusion.It demonstrates the manner in which the European Court of Justiceseeks to address the likelihood of confusion in terms whichappear to draw more from legal abstractions than from marketrealities. After giving a favourable review of the controversialdecision of that court in the PICARO/PICASSO case, the articlelists further issues which European trade mark litigation hasso far failed to address. Practical significance. Armed with an understanding of the principlesemployed by the European Court of Justice, trade mark proprietorsin Europe will obtain a better appreciation of the strategiesto be used in either challenging competitors' marks in courtor adopting commercial measures to combat them.     

Trade marks plus? the role of trade marks in the global economy and the danger of over-protection

This article examines the economic role of the trade mark, both as a structuring device and as a means of adding value to products. It shows how its role as a flexible structuring device that provides a distinct focus for goodwill derives from the special meaning of the term “origin” or “trade origin” in trade mark law, this being what a trade mark is supposed to indicate. Firms can control the identity that a trade mark signifies and confers on the products with which it is used without being tied to any particular set of production arrangements. This article also considers how goodwill can be a source of economic benefit both through reducing transaction costs and, in some cases, through adding value to products. This article then examines the economic rationale for the legal protection of trade marks and shows how this is analogous to the rationale for awarding property rights over tangible resources and different from that for other forms of intellectual property right. The pressure to expand the legal protection of stronger trade marks is explored and it is accepted that there is an economic case for doing so. However, it is argued that the additional protection must be carefully calibrated through definitions that take account of its economic rationale and avoid the danger of over-extending it. In particular, this danger of over-protection arises from making a false analogy between stronger trade marks and the kind of intangible output that is the subject of the other forms of intellectual property right.     

Trial court decision in Houle case

The plaintiffs in this case, a hospital and an attending physician, petitioned the court to exercise its parens patriae authority when the parents of a newborn with multiple birth defects refused to consent to surgery that would permit normal feeding and respiration. Basing his decision on the medical necessity and feasibility of the proposed treatments and setting aside the issue of the infant's quality of life, Justice David G. Roberts of the Superior Court ruled that the parents had no right to withhold care from their child. He authorized the infant's guardian ad litem to consent to surgery and other standard life-preserving measures that were immediately necessary, retaining jurisdiction for the court over future developments in the case.     

Where trade marks reach the limits of their enforceability?

Trade Marks at the Limit is a volume edited by Jeremy Phillips,intellectual property consultant (Slaughter and May) and ProfessorialFellow (Queen Mary Intellectual Property Research Institute). The core theme of the book is the balancing exercise betweenthe interests of trade mark proprietors and the interests ofcompetitors, business partners, like retailers, consumers, andthe     

The overlap between registered Community designs and Community trade marks

Legal context: Community trade marks and registered Communitydesigns have co-existed since April 2003. The relevant Europeanlegislation permits some subject matter to be registered undereither or both of these regimes. Key points In the absence of an express prohibition, it wasperhaps inevitable that the owners of distinctive designs wouldconsider registering them as trade marks and, conversely, thatthe owners of certain non-conventional trade marks might takeadvantage of opportunities for cheap and speedy registrationunder the designs system. The ability to obtain registered Communitydesigns and trade marks for the same subject matter is consideredhere. Practical significance A party seeking to protect the designof a distinctive product shape or its packaging may be ableto register it as a Community trade mark where it has missedthe boat for claiming novelty as a registered design, or wherea pre-existing design right is about to expire. On the otherhand, a distinctive and new logo or get-up which needs quickand cheap protection may benefit from being registered as aCommunity design. Neither the rights owners, nor those againstwhom they seek to assert their rights, should accept the validityof a registered Community design without question since thereis no substantive examination procedure. However, where valid,it can provide a powerful alternative to a trade mark and auseful additional weapon against unfair competition.     

文化产品、版权保护与贸易规则

Cultural products are commodities with cultural contents, which are neither equivalent to cultural relics nor ordinary articles. Such dual natures bring forth divergences in trade policy, mandating the generality and particularity of trade rules. The WTO rules lay more emphases on free trade while the United Nations Educational, Scientific and Cultural Organization put more stress on the free exchange and diversity of cultures. Nations enjoy cultural sovereignty over their cultural policies and administrative measures. The rules of intellectual property rights also influence trade in cultural products. To develop trade in cultural products, science and technologies shall be employed to create diversified and competitive products of distinct cultural values. Han Liyu, Ph.D, is an associate professor of law, and director of International Law Teaching and Research at Renmin University of China, Vice Secretary-General of WTO Section in China Law Society, and member of China’s International Economic Law Society. Mr. Han teaches and does research on international economic law and WTO law, publishing several monographs and articles on the US trade law and the WTO law. For many times, Mr. Han did research as visiting scholar in American universities and UNIDROIT. Mr. Han got a post-graduate diploma in Common Law from Hong Kong University.     

UK court rules government erred in denying housing assistance to woman with HIV

In March 2002, the English High Court of Justice ruled that municipalities have a duty to use their powers to provide assistance where refusal to do so would infringe an applicant's rights under the European Convention on Human Rights and Fundamental Freedoms.     

Trade mark damages for infringement in multiple jurisdictions: a German court rules

A recent decision of the Higher Regional Court of Hamburg inGermany provides useful guidance as to which law applies whentrade mark infringements are committed in several EU memberstates; the Court found an effective and workable solution thatenhances Community Trade Mark Regulation enforcement and strengthensits unitary character throughout the Community.