TRADEMARKS
Trademark is a sign that distinguishes the goods or services of one undertaking from those other
undertakings. (territoriality must also be taken into account)
EU Legal Framework
o EU Trademark Directive 2015/2436 / Authority: IP offices of MS
o EU Trademark Regulation 2017/1001 / Authority: EUIPO
Function of TM: Preventing others from “free-riding” good will of other marks.
TM protection on EU level: (registration + continued genuine use)
o Needs to be renewed every 5 years after registration
o No genuine use, then registration gets cancelled after 5 years (Ansul v Ajax)
o Rights extend solely to use in the course of trade. Art 16.1 TRIPS, art 9 EUTMR and 10 TMD all
affirm that non-commercial uses are allowed!
Requirements for Protection (Art. 4 of EUTMR and Art. 3 of TMD)
o Any sign which is being represented in the register and distinguishes goods/services
o Scope of sign (broad): numerals, letters and words (including personal names), images/logos,
designs, slogans, shape or packaging of goods, colours, sounds
There is only one example (the smell of freshly cut grass for tennis balls) for smells and
none for tastes
o Capable of being represented
clear, precise, self-contained, easily accessible, intelligible, durable, objective 7 segment
criteria (Sieckmann case)
o Distinctiveness
Principle of speciality: the specific products and services for which it is applied for (e.g.
there is Ajax the soccer team and Ajax the cleaning detergent – perfectly possible
because the two are completely different)
Relevant public: average consumer (reasonably well-informed, observant and
circumspect) must associate the mark with the goods/services that it expected to
represent (Linden case) – surveys can be used as a proof (KitKat case) – general shapes
cannot be registered (Henkel v OHIM case) -
Movements can also be registered but it needs to be distinctive
Not distinctive: generic words, descriptive nature
o Absolute Grounds of Refusal (Art. 7 of EUTMR and Art. 4 of TMD)
Devoid of distinctive character
Descriptive names (e.g. ‘new-born baby’ for diapers)
Generic names (e.g. ‘aspirin’ but some countries considers it as distinctive)
Consist exclusively of a shape/characteristic that (consumers not in habit of making
assumptions on basis of shape – Henkel case)
Results from good themselves
Necessary to obtain a technical result (LEGO case – Philips Rotary Shaver Head
case – KitKat case – SimbaToys case)
Gives substantial value to goods (Benetton/G-Star case)
Offence to public morality (Constantin Film – TM for ‘Fack ju’ accepted)
Deceptive (‘Orwoola’ for materials that are 100% synthetic, because it contains a
reference to wool which the product doesn’t actually contain)
Page 1 / 3
TRADEMARKS
Requirements for Protection
o Relative Grounds of Refusal (Art. 8 of EUTMR and Art. 5 of TMD)
Double identity (Art. 9(1)(a) of EUTMR and Art. 10(2)(a) of TMD)
Identical sign/mark
Identical goods or services
Likelihood of confusion (3-step test) (Art. 9(1)(a) EUTMR and Art. 10(2)(a) TMD)
Identical or similar sign/mark: visual / phonetic / conceptual, one is sufficient –
Lloyd case (don’t forget ‘principle of territoriality’ while comparing
signs/marks)
Identical or similar goods or services: all relevant factors should be taken into
account – Canon case; test question, “would reasonable consumer assume same
commercial source?”
Global appreciation likelihood of confusion
Mark with reputation ( Art. 8(5) and 5(3) )
Protection extends to dissimilar goods (beyond principle of speciality)
A link between the sign and the mark is sufficient (Adidas-Salomon)
Likelihood of confusion is not necessary
Relevant factors (Intel case)
o Degree of similarity between the conflicting marks
o Nature of the goods – no overlapping consumers, less likely to have a
link
o Strength of the earlier mark’s reputation
o Degree of the earlier mark’s distinctive character
Reputation
o Nature of reputation: degree of knowledge or recognition by the relevant
public
o Scope of reputation: general public v. niche reputation (Chevy)
o Relevant factors: market share, geographical extent, duration of use,
financial investment (Adidas-Salomon)
Misappropriation
o Taking unfair advantage of the reputation of the earlier mark (L’Oréal)
Dilution and Tarnishment is also prevented
o Dilution: detriment to the distinctive character (e.g. Chanel chewing
gum / sports drink / hardware supplies / taxi service / sports bar)
o Tarnishment: detriment to reputation (e.g. Chanel insect repellent)
Infringement (Art. 9 of EUTMR, Art. 10 of TMD)
o No positive right to use the trademark – negative right to exclude others from using trademark
o Double identity infringement (Art. 9(1)(a) EUTMR and Art. 10(2)(a) TMD)
o Likelihood of confusion infringement (Art. 9(1)(b) EUTMR and Art. 10(2)(b) TMD)
o Mark with reputation infringement (Art. 9(1)(c) EUTMR and Art. 10(2)(c) TMD)
o Exceptions:
Comparative advertising (Dir 2006/114 on Misleading and Comparative Advertising)
Own name or address (Art. 14(1)(a) EUTMR and TMD)
Descriptive uses (kind, quality, quantity, geographical origin) (Art. 14 (1)(b) EUTMR
and TMD)
Page 2 / 3
TRADEMARKS
Intended purpose (spare parts) (Art. 14(1)(c) EUTMR and TMD)
Exhaustion (Art. 15 EUTMR and TMD)
Acquiescence for period of 5 years (Art. 61 EUTMR and 9 TMD)
Page 3 / 3
