21-25.pdf Trade Mark Law PDF

no. 2 TMA = the subject matter of the application must be sufficiently, concrete, clear, unambiguous and self-contained => not merely abstract, arbitrary or otherwise indefinite Section 32 Requirements concerning the application (2) The application shall contain: 1. a request for registration, 2. in...

no. 2 TMA = the subject matter of the application must be sufficiently, concrete, clear, unambiguous and self-contained => not merely abstract, arbitrary or otherwise indefinite Section 32 Requirements concerning the application (2) The application shall contain: 1. a request for registration, 2. information permitting to identify the applicant, 3. a representation of the trade mark, which is not subject to the ground for refusal specified in section 8 (1), and 4. a list of the goods or services for which registration is being requested.  CJEU: “The requirement of graphic representation serves, in particular, the purpose of defining the mark itself in order to determine the precise subject matter of the protection which the registered mark confers on its proprietor” CJEU:  To be assessed in the individual case 5.5 Absolute grounds for refusal, Sec 8 (2) TMA Section 8 (2) The following trade marks shall not be registered 1. which are devoid of any distinctive character for the goods or services; 2. which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the services, or other characteristics of the goods or services; 3. which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade to designate the goods or services; 4. which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services; 5. which are contrary to public policy or to accepted principles of morality; a) lack of distinctive character, Sec 8(2) no.1 TMA  Comprises all circumstances under which the addressed public does not perceive a sign as an indication of origin 21  Normative understanding = the inherent (concrete) capacity of a sign to be perceived by the public as a means of distinguishing the goods/services in question as originating from a particular company and thus distinguishing those goods/services from those of other companies 【subtitle】 In order to assess the distinctive character, we have to look at every possible branch economy and not just at the branch of the company provides products or services. we have to not assess that from our own view, but from the point of view of the public. b) Descriptive indications, Sec 8 (2) no. 2 TMA  Indications, which are used in a descriptive manner at the time of filing the application  Serve in trade to designate the kind, quality, intended purpose or other characteristics of the goods or services claimed (Used in trade to designate the type, quality, intended purpose or other characteristics of the goods or services for which a claim is made [Identification criteria])  Aim: all signs or indications describing characteristics of the claimed goods/services should be freely usable by all economic operators  Signs or indications which are customary in the current language or in established practices of the trade to designate the goods at the time of filing the application for registration, are not subject to protection At the time of filing the application for registration, signs or marks customarily used for the designated goods in the language in force or under established trade practices are not protected  Generic designations or generally linguistic or customary designations for the goods/services (Common name or common language or customary name of goods/services)  Only excluded from registration if they are used by several companies to designate certain goods/services 【subtitle】It is just information, actually, and we can't protect information on the intellectual property law. 实际上，这只是信息，我们不能用知识产权法来保护信 息。 Example: It's about chocolate brand that is called Kinder, and “kinder” in German is for children. Now the problem is that everybody else like the junior public even me we also use the “kinder” for our children, of course now if we would protect kinder then we would have a big problem in our side, because what the company means with kinder is actually that they don't want to sell the product especially to kinder, cause seems to be 22 quite tasty for the for everyone. And now if, you would protect the common designation like kinder. And we would have a problem now every day. The teacher did not go into detail on the rest of the classifications, so you can interpret Sec 8 (2) TMA on your own. c) Exemption: establishment of the TM within the affected trade circles, Sec 8 (3) TMA (3) Subsection (2) no. 1, 2 and 3 shall not apply if, prior to the point in time of the decision on registration, the trade mark has become established in the affected trade circles in consequence of the use made of it with respect to the goods or services for which the application was filed. (Subparagraphs 1, 2 and 3 of paragraph (2) shall not apply if, before the decision to register is made, the mark is already established in the affected commercial circles by virtue of its use for the goods or services for which the application is made.)  Applicable only to Art. 8 (2) no. 1, 2, 3 TMA! Only applicable to -- Sec. 8 (2) no. 1, 2, 3 TMA！ (1. which are devoid of any distinctive character for the goods or services; 2. which consists exclusively of science indications; 3. which consists exclusively of sign notifications which have become customary in the current language.) Example: Kinder-chocolate  Kinder=Children=>simple description of possible consumers  Basic principle: no protection due to Sec 8 (2) no.2 TMA  Exemption: Sec 8 (3) TMA => “everybody knows Kinder-chocolate” Relevant point in time: filing with the Trademark Office 相关时间点：向商标局 提交申请 d) Deceptive signs, Sec 8 (2) no.4 TMA 欺骗性标志  Signs that are likely to mislead the public, e.g. about the nature, type, composition and effect, geographical origin of the goods/service  The perception of the average consumer is decisive (covered earlier, not in detail here) 5.6 Absolute grounds for refusal, Sec 10 TMA Section 10 Well-known marks 23 A trade mark shall be excluded from registration if it is identical with or similar to an earlier trade mark that is well known in Germany within the meaning of Art. 6 of the Paris Convention and if the further prerequisites of Sec 9 (1) no.1, 2 or 3 TMA are met. If the other prerequisites of Article 9(1), paragraph 1, 2 or 3 of Article 6 of the Paris Convention are met, the mark will be excluded from registration. 【subtitle】the registration shall be excluded with the trademark similar to a market that is well known before. (Similarity to prior trademarks with high market recognition should be excluded from registration.) 5.7 Relative grounds for refusal, Sec.9 et seqq TMA Section 9 Trade marks that have been filed or registered as relative grounds for refusal (1) The registration of a trade mark may be cancelled 1. if it is identical to an earlier trade mark applied for or registered and the goods or services for which it was registered are identical with the goods or services for which the earlier trade mark was applied for or registered; 2. if a likelihood of confusion exists, including the likelihood of association between the trade marks, for the public because of its identity with or similarity to an earlier trade mark applied for or registered and owing to the identity or similarity of the goods or services covered by both trade marks; or 3. if it is identical with or similar to an earlier trade mark applied for or registered if the earlier trade mark is a trade mark which has a reputation in Germany and the use of the registered trade mark would without due cause take unfair advantage of, or be detrimental to, the distinctive character or the repute of the trade mark which has a reputation. 【subtitle】 These conditions are so abstract that the authorities generally follow article 8 in their judgment, rather than article 9. 5.8 Registration and publication, Sec 41 TMA Section 41 Registration, publication and trade mark information (1) If the application satisfies the requirements for application, and if it is not refused in accordance with section 37, the trade mark applied for shall be entered in the Register. 24 (2) The registration shall be published. Publication may be in electronic format. (3) For further processing or use for the purposes of trade mark information, the German Patent and Trade Mark Office may transmit the information recorded in the Register to third parties in electronic format. The transmission shall not take place in so far as inspection is excluded pursuant to section 62 (4). 【 Summary 】 The procedure of registration, less important. At this point, the trademark registration is complete. 6. Existence and cancellation of the trademark 6.1 Registered trademark Section 47 Duration of protection and renewal (1) The duration of protection of a registered trade mark shall be 10 years, calculated from the date of filing the application (section 33 (1)). (2) The registration of the trade mark shall be renewed for a further ten years, at the request of the proprietor of the trade mark or any person authorised to do so by law or by contract, provided that the renewal fee has been paid. (3) The renewal of the duration of protection may also be effected by payment of a renewal fee and a class fee for each class to be renewed as from the fourth class of the classification of goods and services. Receipt of payment is deemed to be a request by the proprietor of the trade mark or an authorised person in accordance with subsection 1. Begin of TM Protection: date of filing (Sec 47 TMA), payment of application fee, filing of an application meeting the minimum requirements of Sec 32(2) TMA. 2. Term of TM protection: 10 years, Sec 159(1) TMA (Duration of protection 10 years) 3. BUT: The validity of a registered trademark can be extended at will by paying renewal fees (Sec 47 TMA) 【subtitle】So basically we can protect our trademark forever if we are applying on time and pay the respect fees. And this is the reason why there's actually no end to trade my Protection, at least in theory. 4. At the request of the proprietor of the trade mark, the registration shall be cancelled in the Register at any time for all or for a part of the goods or sevices in respect of which it is registered, Sec 48 (1) TMA (At the request of the 25