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WELCOME TO. TRADEMARKS. Giulio C. Zanetti Torino, Italy Director of Training and Networks Department 5-7 November, 2012 IDLO. What is a trade mark?.

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WELCOME TO ...

TRADEMARKS

Giulio C. Zanetti Torino, Italy

Director of Training and Networks Department 5-7 November, 2012

IDLO


What is a trade mark?

Any visual sign capable of distinguishing the goods/services of one natural person/legal entity ... from others, including ….

TRIPS:art 15


MARKS

Trademarks

Service Marks

PRINCIPLE OF SPECIFICITY

MARKS


INTERESTS TO BE CONSIDERED

1) The applicant (TM owner)

2) The competitors

3) The public / consumers


examples

WORDS (word marks)

Adidas Starbucks Whirlpool Nestlé Volkswagen

Sony Harley Davidson Philips Just Do It Orange

Siemens Lays Red Bull Java Vodafone JVC

Gatorade Coca Cola Shell Ford Apple Levis

Rolex Microsoft PepsiCo RayBan Zippo Bic

MGM Petronor Herbalife EMI Sellotape Pfeizer


examples

LOGOS (figurative marks)


examples

OBJECTS (3-D marks)


examples

COLOURS OR COMBINATIONS (colour marks)


examples

SOUNDS and SMELL marks

(Tarzan yell)

(Popping)

(Sound of tennis balls being hit)


CHARACTERISTICS

+Distinctiveness

+“Novelty” (availability)

-NOT Misleading, Descriptive, Generic Contrary to public order/morality ...


DISTINCTIVENESS

Assessed in Relation with:

  • Goods/Services (Principle of Specificity)

  • Laws/Jurisprudence

  • Average Consumer

of country concerned

(Principle of Territoriality)


Want to increase the distinctiveness?

  • Special script

  • Special colour (colour claim/limitation)

  • Logo (non descriptive)

  • G/S limitation


DISTINCTIVENESS (cont.)

> Vulgarization

> Secondary Meaning ... how can you prove it?


Hells Angels Motorcycle Corporation

v.

Amazon.com


“NOVELTY”(availability)

  • 1) Prior identical or similar signs

  • For identical or similar goods/services

  • If similarity: risk of confusion/likelihood of association

  • If identical TMs for identical g/s = presumption

TRIPS: art 16(1)


SIMILARITY b/w signs

  • 3 criteria:

  • Conceptual similarity

  • 2) Visual similarity

  • 3) Phonetic similarity


VISUAL SIMILARITY


CONCEPTUAL similarity

DOUGHBOY v.


CONCEPTUAL similarity

THE SOUTH BUTT


Similarity?


Similarity?


Similarity?


CONCEPTUAL / PHONETIC / VISUAL similarity


SIMILARITY b/w goods/services

  • Criteria:

  • Same class? … not necessarily

  • 2) Same purpose

  • 3) Same public (consumers)

  • 4) Same channels of distribution

  • 5) “Cross-substitutability”


LEGAL ARGUMENTS

  • the “CORE PART” of the mark

  • 2) the “OVERALL IMPRESSION” of the mark


The “Ciao Napoli” case


- food

- drinks

- Restaurants, bars

“Ciao Napoli”(cont.)

Community application

(CIAO Srl, Napoli)


- food

- drinks

- Restaurants, bars

il caso “Ciao Napoli”(cont)

Prior CTM

CIAO RISTORANTE

(Autogrill SpA)


“Ciao Napoli”(cont.)

Examiner

1. “CIAO” is not distinctive as it is a common way of greeting (in Italy)

2. The presence of “ciao”in both marks does not imply confusion

3. The design of the marks is different.

4. The consumer CAN distinguish them

5. Therefore: no risk of confusion


“Ciao Napoli”(cont.)

Board of Appeal

1. The fact that “ciao” is a typical way to greet in Italy is not relevent to its distinctivenenss

2. Distinctivenenss must be analyzed only vis-à-vis the products and services.

3. “Ciao” is not a common word to distinguish food or restaurants

4. Therefore: it’s distinctive ….. Therefore ….


“Ciao Napoli”(cont)

5. “Ciao” is the core part of both marks

6. The marks are therefore SIMILAR

7. The products and services are IDENTICAL

8. Therefore: risk of confusion in Italy (and elsewhere)

9. The application is thus: rejected

Decision R 36/2004-1 of July 20 2004


The “Roberto Cavalli” case


“Roberto Cavalli”(cont)


Clothing

Leather products

Glasses

“Roberto Cavalli”(cont)

CTM application

(CP3 Srl, Sesto Fiorentino)


Clothing

Leather products

Glasses

“Roberto Cavalli”(cont)

Prior CTM

(Sig. Roberto Cavalli)


“Roberto Cavalli”(cont)

Examiner

1. The core part of the TMs is respectively:

ROBERTO and CAVALLI

2. The 2 names are different

3. The surname is more important than the name

4. Both are written in common characters

5. Therefore no risk of confusion

6. …even if the products are identical


“Roberto Cavalli”(cont)

Board of Appeal

1. “Very suspicious” the similarity in the grafic style of the letters: ‘b’‘e’‘r’

2. Both are in lower cases

3. The letter ‘c’ (again in lower cases!) may allude to ‘cavalli’

4. the visul impression is very similar, and

… too many coincidences!!!!


“Roberto Cavalli”(cont)

5. The graphic style of a mark in the fashion industry is … key

6. Even the absence of the full surname does not eliminate the similarity

7. Risk of association

8. The applcation is thus: rejected

Decision R 533/2005-1 of April 26 2006


“Roberto Cavalli”(cont)

Let’s think together …

1. The graphic aspect of a mark can in some cases determine similarity even though the marks are conceptually and phonetially different.

2. … especially in the fashion sector where the average consumer is particularly attentive to the look (of the products and of the marks)

3. Example of di “risk of association”


The “Pepe Jeans” case


“Pepe Jeans”(cont)


Clothing

Leather products

Parfumes

“Pepe Jeans”(cont)

CTM application

(José Jiménez Arellano SA, Madrid)


“Pepe Jeans”(cont)

prior marks

Denim de Luxe

by Pepe Jeans

Pepe Jeans Portobello

Pepe 2 XL

Khaki

by Pepe Jeans

Pepe F4

Pepe Jeans M2

Pepe Jeans

Pepe Jeans 73

PEPE

NB: in Spain

(Pepe Jeans Company)


“Pepe Jeans”(cont)

Opponent

1. “Pepe” is the core part of both marks (“Jeans” = generic)

2. All marks“Pepe” represent a‘family’. Consumers may think that “Pepe Arellano” belongs to the same family

3. Marks “Pepe” are well known

4. Risk of confusion


“Pepe Jeans”(cont)

Examiner

1. The marks “Pepe Jeans” are very well known in Spain

2. They all belong to the same “family”

3. The element “Pepe” makes “Pepe Arellano” similarly confusing with “Pepe Jeans”

4. Opposition accepted, mark “Pepe Arellano” rejected


“Pepe Jeans”(cont)

Boar d of Appeal

1. The marks are NOT confusingly similar as:

  • The role of “Pepe” in different i the 2 marks

  • It is dominant in “Pepe Jeans”, secondary in “Pepe Arellano”

  • The core part of “Pepe Arellano” is “Arellano”(the surname)


“Pepe Jeans”(cont)

2. There is no “family” of marks

- the public must already know the

family

-“family” must be on the market and not only on the register

-In reality the public only knows … 


“Pepe Jeans”(cont)

3. No confusion because:

  • Different structure of the marks:

    “Pepe” + generic name / “Pepe” + surname

  • Different graphic style:

  • A careful consumer would not believe that the 2 marks belong to the same “family”


“Pepe Jeans”(cont)

4. There is no taking advantage of the well known character of the prior mark as the 2 marks are NOT similar

Decision R 117/2006-1 of february 15 2007


A MARK MUST NOT BE

  • DESCRIPTIVE (in the broad sense)

  • GENERIC

  • MISLEADING / deceptive

  • CONTARY TO PUBLIC ORDER andMORALITY


The “Garum” case


“Garum”(cont)

CTM applcation

Fish preserves

(Compagnie Générale de Diététique, France)


“Garum”

Plinio : “sauce beased on rotten fish”

Garum =

Delicious seasoning based on fermented fish, commomly used by the ancient romans


“Garum”(cont)

Board of Appeal

1. generic name for seasonings during the time of the ancient romans

2. cited by “Larousse Gastronomique” dictionary

3. term unknown to the wide public but ….. known to the experts of the sector

4. generic mark = refused

Decision R 1401/2005-1 of september 7 2006


The “Screw You” case


“Screw You”(cont)


“Screw You”(cont)

  • Sun glasses

  • condoms

  • Artificial breasts, erotic toys

  • clothing, shoes

  • Sport articles

  • Alcoholic beverages

What do youthink?

(Mr Kenneth Jebaraj, known as “Screw You”, London)


“Screw You”(cont)

Board of Appeal

1. refusedfor:

sunglasses, clothing, sport items and beverages

2. grantedfor :

allitemsrelatingto sex


“Screw You”(cont)

A. the expression is highly vulgar in english

B. but you have to determine the level of tolerance of the public concerned

C. it varies depending on the type of product (and type of consumer)


“Screw You”(cont)

A. For products meant for mass market (large public) the level is lower  the mark is vulgar

B. For products relating to sexuality  the mark is valid

Decision R 495/2005-G of 6 July2006


Contrary to public order / morality

For restaurants

What do you think?


Art 6 ter

  • MS will refuse/invalidate TMs = to:

  • Armorial bearings, flags, emblems, other signs of STATES

  • Armorial bearings, flags, emblems, abbreviations, names of INT. INTERGOVT. ORG.

  • COMMUNICATION to other MS through WIPO

  • Facultative for States

  • Obligatory for IGOs 12 m. for objections


“Special” marks

  • Well-known marks

  • 2) Geographical marks

  • 3) 3-D marks

  • 4) Collective/Certification marks

  • 5) Names and surnames

  • 6) Letters and numbers


Well known marks

  • - What is a W-K mark? (criteria)

  • Consequences:

  • Exception to 2 principles !!!

  • a) if not registered = for identical/similar g/s

  • b) if registered = for identical + similar + dissimilar g/s

Paris Conv: art 6bis

TRIPS: art 16(2)


WELL KNOWN TMs cont.


Similarity?


Geographical marks

Bad news!!


Marks & GIs: differences

Both distinctive signs, but ....

A. Ownership (not to identify g/s produced by one or more enterprises, but to identify goods originating from a particular geo. area)

B. Compliance with quality standards

Ergo: all enterprises operating in that geo. area in accordance with standards can use G.I.


The “Lego” case


“Lego”(cont)


“Lego”(cont)

Board of Appeal

The little brick was protected as a patent (expired)

= proof that it’s a functional shape


3-D marks

  • Only if shape is:

  • distinctive (often after use)

  • not necessary

  • 3) not a technical result


Collective / Certification marks

COLLECTIVE TMs: signes used to distinguish the g/s of the members of an association (+Regulation of Use) from those of other undertakings

CERTIFICATION TMs: sign used to indicate that the g/s in connection with which it is used are certified by the proprietor of the sign in respect of origin, materials, mode of manufacture, quality, accuracy or other characteristics


First names and surnames

  • Can you use your surname as TM?

  • What can you do if someone has a TM = to your surname?

  • Criteria for registering: 1) commonnes of name 2) No of undertaking engaged in same trade

  • Surnames with meaning?

  • Variations?

  • Single first names: for services? for goods?

  • Full names?


... AND MY NAME?


LETTERS and NUMBERS


The life of a MARK

  • Duration: 7 years (TRIPS), but:

  • 10 years … for ever!

    …………….. Why?

  • Renewal

  • Priority: 6 months


NORMATIVE FRAMEWORK

  • National Legislation

  • Paris Convention

  • TRIPs

  • Madrid Agr./Protocol, CTM, Bagui Agr. / Bajul Protocol

  • Nice Classification

  • TLT / Singapore treaty


Effective

Fair

Expeditious

Procedures

Constitute a deterrent

Not complicated

Not costly

ENFORCEMENT

Condicio sine qua non for existence of an IP system


Tips

  • Avoid Litigation!!!

  • “Create around” or License

  • Be your own policeman!

  • Other “friendly” agreements

  • Cease and Desist letter

  • Negotiate an out-of-court attempt


Action Before National IP Office

  • Decision of examiner can be appealed with:

    • Appeals Board (administrative)

    • Court of First Instance

    • Court of Appeal

  • Opposition: 2-3 months


Action Before Court

Civil Action

  • WRIT by IP Holder:

  • Statement of own right Copy of Certificate

  • Alleged infringement

  • Evidence

  • Remedy Sought


CANCELLATION FOR

LACK OF USE

NO USE:

  • Uninterrupted period

  • Of at least 3 years

  • Without valid reasons

  • Total or partial

  • Use by another person?

  • TRIPS: art. 19


ACQUIESCENCE

Tolerance for 5 years

(except if bad faith)

coexistence of marks


Action Before Court

  • CANCELLATION

  • Contrary to absolute requirements

  • Contrary to relative requirements

  • Registration in bad faith

  • Violates other prior IPR (eg: geo indic., ind. design)

  • (Time limit: 5 years from registration date)


  • Only for SERIOUS offenses

  • TM Counterfeiting

  • (Identical TMs)

Knowingly

Right holder (coop. with police)

Action by

Enforcement officers

Custom authorities

CRIMINAL ACTIONS


REQUESTS OF THE PARTIES

  • Plaintiff ⇒ Infringement of own TM

    • Injunction (preliminary/final/ex parte)

    • Damages

    • Destruction

    • Declaration of Validity + Infringement

Lost sales

Profit of Infringer

  • Defendant ⇒ Cancellation of TM because not

  • valid


EVIDENCE OF OWNERSHIP OF TM

  • Certified Copy of Certificate

    Attention to:

    • Representation of TM

    • List of goods/services

    • Date

    • Name of Proprietor


  • Direct Evidence vs. Secondary Evidence

  • Documentary Evidence:

    • File History (application/registration, objections by IP office, arguments, contracts)

    • Market Surveys/statistics

    • Photos

    • Sales Figures

Description + Source

EVIDENCE

  • Real Evidence

  • Expert Evidence

  • Witnesses


BURDEN OF PROOF

RULE: up to the plaintiff

(ownership, similarity, violation, confusion for the public)

Exception: identical sign for identical g/s


Legal arguments … most common

  • - … 3 legal characteristics + well-known

  • secondary meaning /vulgarization

  • risk of confusion / likeliwood of association

  • the “core part” of the mark

  • the “overall impression” of the mark

  • coexistence between marks

  • complex marks (protection of various elements)


Thank [email protected]


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