Trademark Rights PDF

owner of a trademark, a registered trademark may be cancelled in the register at any time for all or part of the goods or services for which it was registered.) 6.2 Used mark as a non-registered right automatically ceases to exist for the future with the definitive discontinuation of use or with th...

owner of a trademark, a registered trademark may be cancelled in the register at any time for all or part of the goods or services for which it was registered.) 6.2 Used mark as a non-registered right automatically ceases to exist for the future with the definitive discontinuation of use or with the loss of validity for use (As an unregistered right, it automatically terminates in the future with the eventual discontinuance of use or loss of validity of use.) 7. Scope of protection 7.1 General requirement, Sec 14(1) TMA Section 14 Exclusive right of the proprietor of a trade mark, claim for injunctive relief, compensation claim (1) The acquisition of trade mark protection in accordance with section 4 shall grant to the proprietor of the trade mark an exclusive right. (The acquisition of trademark protection under article 4 shall confer exclusive rights on the trademark owner.) a) Existing trademark protection, Sec 4 no.1-3 TMA ◼ Registered Trademark ◼ Use Mark ◼ Mark with public recognition b) Infringing action = act of use ◼ Comprehensive understating ◼ List of possible actions in Sce 14(3) TMA. ◼ List of possible preparatory acts in Sec 14(4) TMA ◼ These acts of use are reserved to the trademark right holder! (3) (3) If the prerequisites of subsection (2) are met, it shall in particular be prohibited (If the prerequisites of paragraph (2) are fulfilled, it shall be prohibited, in particular, to) 1. to affix the sign to goods or their wrappings or packaging; (attach the logo to the goods or their packaging) 2. to offer goods under the sign, to put them on the market, or to stock them for the 26 above purposes; 3. to offer or provide services under the sign; (provision of services) 4. to import or export goods under the sign; (import or export of marked goods) 5. to use the sign as a trade name or commercial designation or part of a trade name or commercial designation; (Use of the logo as a trade or business name or part of a trade or business name) 6. to use the sign in business papers or in advertising; (use of the logo in commercial documents or advertisements) 7. to use the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising (OJ L 376 of 27 December 2006, p. 21). (use of the logo in comperative advertising in a manner contrary to Directive 2006/114/EC of the European Parliament and of the Council of December 12, 2006 on misleading and comparative advertising) c) Use in commercial transaction ◼ Activity must also be intended to promote the company’s own business purpose or that of a third party ◼ Activities in the private sphere are not included d) Identical/trademark-related use of the trademark ◼ ECJ: Use as a trademark is regularly present if the function of origin or a further function of the trademark is impaired ◼ Example 1: Use of a trademark on a scaled-down toy model => use (+), trademark-related use (-) 【subtitle】The CJEU said, well, we have a use here of course, however, it is not a trademark related use. We do not have this identical trademark related use of the trademark. (The CJEU said that there was use here, however, it was not a trademark-related use. We do not have this same trademark-related use.) But the Lecturer Has a Different Point of View：I actually can't really understand what they said that because it doesn't make any difference. I mean, it's a big trademark or small trademark to make any difference. Still it's a trademark. -- In fact, I don't really understand what they're saying, because it doesn't make any difference. I mean, it doesn't make any difference whether it's a big trademark or a small trademark. But it's still a trademark. (The facts of the case are roughly that a toymaker used another toymaker's trademark in a reduced size as its own, and that it was in the business of manufacturing similar toys and related parts) -◼ Example 2: Use of the prominent word "Maya the Bee" together with a 27 picture from the TV series on a product packaging => Use (+), trademarkrelated use (+) ◼ 【subtitle】The courts decision was along the opposite lines of Example 1 Example 3: Use of a first name for the model designation of a pair of ladies' trousers "Damen Hose Marilyn" => Use (+), trademark-related use (-) e) No consent of the trademark owner Consent is conceivable through an exclusive or non-exclusive license as well as by simple consent (Consent can be achieved through exclusive or nonexclusive as well as simple consent) 7.2 Specific requirement, Sec 14(2) TMA Section 14 (2) (2) A third party shall be prohibited in trade, with regard to goods or services, without the consent of the proprietor of the trade mark, from (prohibiting 3rd parties from trading in goods or services without the consent of the trademark owner) 1. using a sign which is identical to the trade mark for goods or services which are identical to those for which it enjoys protection; 2. using a sign if the sign is identical or similar to a trade mark and is used for goods or services that are identical or similar to those covered by the trade mark and there is a likelihood of confusion on the part of the public, including the likelihood of association between the sign and the trade mark; or 3. using a sign identical with or similar to the trade mark for goods or services if the trade mark is a trade mark which has a reputation in Germany and the use of the sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark which has a reputation. (The use of a sign identical or similar to the mark on goods or services, if the mark is one that is well known in Germany and there is no justification for the use of the sign that unfairly exploits or damages the distinctive character or reputation of the well known mark.) Goods and services shall not be regarded as being similar to each other merely on the ground that they appear in the same class under the classification system prescribed in the Nice Classification. Goods and services shall not be regarded as being dissimilar from each other merely on the ground that they appear in different classes under the Nice Classification. (Goods and services should not be regarded as similar to each other merely because they belong to the same category under the classification system set out in the Nice 28 Classification. Goods and services should not be regarded as different from each other merely because they belong to different classes in the Nice Classification.) Identity protection, Sec 14(2) no.1 TMA ◼ Third parties are prohibited from a sign identical with the trademark for identical goods or services without the consent of the owner ◼ List of goods/services in the trademark register can serve as a guide ◼ CJEU: one of the protected trademark functions must also be impaired 受 保护的商标功能之一也必须受到损害 【subtitle】 To use a sign which is identical with a trademark for identic products or services, you do not only have to look at the trademark itself, but you also have to compare the goods and services that the trademark is used for. So it's basically 2 step, as the first is the trademark identical, and second, on the goods and services identical. f) g) Protection against confusion, Sec 14(2) no.2 TMA ◼ Third parties are prohibited from using a sign which is identical with, or similar to, the trade mark in relation to identical or similar goods without the consent of the proprietor if this creates a likelihood of confusion on the part of the public, including a mental association between the sign and the trademark. ◼ ◼ Aim: preserve distinctive function of signs Criteria to consider in the individual case - Distinctiveness=results from the original distinctiveness and the reputation of the trademark - Similarity of signs = similarity of sound, typeface or meaningSimilarity of goods and service the TM is used for 【subtitle】1. But you have to not access that from your individual view, but on the part of the public. (but you cant look at this from your personal point of view, but from the public’s point of view) 2. The concept of likelihood is not empirical, but it's just an overall consideration of the circumstances. (The notion of possibility is not empirical, but only a general consideration of the specific situation) h) Reputation protection, Sec 14(2) no.3 TMA ◼ As a brand becomes better known, it has a valuable property that is detached from its function of origin (as brand awareness increases, brands take on valuable attributes that are divorced from their original function) ◼ The good reputation is therefore protected 29 ◼ Exploitation and detriment of the distinctive character (Exploitation and destruction of uniqueness) ◼ Exploitation of reputation 【subtitle】as brand becomes better known, it has valuable property that is detached from its function of origin. And if you just say, okay, I have an apple product here which I want to sell to you, you can't do that because already the name apple is attached to some kind of value. So people would probably say, hey, it's a very valuable product when there is the brand apple on it. 7.3 Limitations on Trademark rights through uses permitted by law i) Use of names and descriptive indications, Sec 23 TMA Section 23 Use of names and descriptive indications, spare parts business (1) The proprietor of a trade mark or of a commercial designation may not prohibit a third party in trade to use the following: 1. the third party’s name or address if the third party is a natural person, 2. a sign identical or similar to the trade mark or commercial designation which is not distinctive or an identical or a similar sign as an indication of characteristics or properties of goods or services, in particular their nature, quality, intended purpose, value, geographical origin or time of production or of rendering, or 3. the trade mark or the commercial designation for the purposes of identifying or referring to goods or services as those of the proprietor of that trade mark, in particular, where the use of that trade mark is necessary to indicate the intended purpose of a product or service, in particular as an accessory or spare part. ◼ ◼ ◼ ...third party’s name or address if the third party is a natural person… (if the third party is a natural person, the name or address of the third party) ...nature, quality, intended purpose, value, geographical origin or time of production or of rendering... ...use of that trademark is necessary to indicate the intended purpose of a product or service, in particular as an accessory or spare part... (it is necessary to use the mark to indicate the intended use of the product or service, in particular as Attached parts or spare parts) 30