Trade Mark Use

by Phillips, Jeremy; Simon, Ilanah

• ISBN13: 9780199280339
• ISBN10: 0199280339
• Format: Hardcover
• Copyright: 2005-06-16
• Publisher: Oxford University Press

Summary

"Use" is a concept which is fundamental to modern trade mark law, within the European Union, the US and elsewhere. The use concept is ubiquitous, since it must be understood even before basic issues of registrability, infringement and validity can be resolved. Does use bear the same meaning in each of these, and other, areas? Written by a team of leading practitioners and academics, this book seeks to address this issue from both a practical and a theoretical perspective.

Author Biography

Professor Jeremy Phillips is Intellectual Property Consultant to London-based solicitors Olswang, and previously held a variety of academic posts. He is currently Visiting Professorial Fellow, Queen Mary Intellectual Property Research Institute, as well as a visiting professor at UCL, Bournemouth University and the University of Alicante. Jeremy edits the Journal of Intellectual Property Law and Practice and has been consultant editor of the Butterworths Intellectual Property Law Handbook since its inception. His most recent book, Trade Mark Law: A Practical Anatomy , was published in 2003 by Oxford University Press.
Ilanah Simon is a Doctoral Associate of the Queen Mary Intellectual Property Research Institute, and holds two degrees from University College London. Her doctoral thesis is a comparative study of trade mark dilution in the United States and the European Union. She has published numerous articles in recent years, particularly within the field of trade mark law. A regular contributor of cases for the MARQUES case law database, Ilanah is Deputy Editor of the European Trade Mark Reports and the contributory editor for trade mark law in the European Union Law Reporter. She is also joint director of the IPKat, the first intellectual property based weblog to be based in Europe.

Table of Contents

Biographies	xxvii
Tables of Cases	xxxv
Tables of Legislation	lvii
A. INTRODUCTION
1. Introduction	3	(8)
Jeremy Phillips and Ilanah Simon
A. Eine Kleine Rechtlichs Problem
B. The Importance of Use in Trade Mark Law
C. Use: A Global Concern
D. The Essential Function
E. Methodology
(1) Identifying the contexts within which the word 'use' required analysis
(2) Arranging those contexts into a format in which they could be cogently explained to a specialist readership of trade mark practitioners and theoreticians
(3) Identifying authors capable of providing the degree of analysis required
(4) Identifying a working definition of the word 'use'
(5) Finding a publisher
F. A Word of Warning
G. Feedback
B. THE CONCEPT OF USE
2. Use and Non-Use in Trade Mark Law	11	(18)
Bojan Pretnar
A. Introduction: The Scope and Purpose of this Chapter
B. Why must Trade Marks be Used?
C. The Meaning of the Notion of Use
D. The Impact of the Requirement of Use on Rights in Trade Marks
E. Exceptions from the Use Requirement
F. Concluding Remarks
3. The Need to Leave Free for Others to Use and the Trade Mark Common	29	(20)
Jennifer Davis
A. The Development and Nature of the Trade Mark Common in English Law
B. The ECJ Doctrine that Signs should be Kept Free for Others to Use
C. The ECJ and 'Need to Keep Free': Why has the Court not Developed a Commons Theory?
D. Conclusion: The Balance Between Leaving Marks Free for Others to Use and Recognizing Distinctiveness Acquired through Use
C. REGISTRATION
4. Distinctive Character Acquired through Use: The Law and the Case Law	49	(22)
Arnaud Folliard-Monguiral
A. Introduction
B. The Sign for which Acquired Distinctiveness is Claimed
(1) The sign for which acquired distinctiveness is claimed is juxtaposed with other signs
(2) The sign for which acquired distinctiveness is claimed is merged into a broader ensemble
(3) The acquisition of distinctiveness for signs having a function
C. The Time of the Acquisition of Distinctiveness and When to Claim it
(1) When must distinctiveness have been acquired?
(2) When can distinctiveness be claimed?
D. The Geographical Extent of the Use Conferring Distinctiveness
E. The Persuasive Elements as to Acquired Distinctiveness
F. Conclusion
5. Distinctive Character Acquired through Use: Establishing the Facts	71	(22)
Anna Carboni
A. Introduction
B. Understanding the objection
C. Remembering the Objective
D. Legal and Regulatory Guidance
E. Contents of the Evidence
(1) Direct Evidence of Use
(2) Evidence of Recognition
F. Relevant Date for Proving Acquired Distinctiveness
G. Proving Acquired Distinctiveness of CTMs
H. Language Issues for CTMs
I. Deciding When to Argue for Acquired Distinctiveness
J. Making the Most of the Evidence
K. Publication
L. Concluding Remarks
6. Distinguishing Use versus Functional Use: Three-Dimensional Marks	93	(18)
Thomas Hays
A. The Nature of the Problem
B. Distinguishing Trade Marks from Functional Features
C. Philips Electronics v Remington Consumer Products
D. Marks with Less than Complete Technical Functions
E. Peculiarities of Use of Three-Dimensional Marks
D. EXPLOITATION
7. Third Party Use of Trade Marks	111	(14)
Neill Wilkof
A. Introduction
B. Is Authorized Use by a Third Party Legally Possible?
(1) The classic position of trade mark use by a licensee
(2) The present situation
C. Use by Licensees and Revocation
(1) Attribution of use
(2) Use by a distributor or contract manufacturer
D. Conclusion
8. Trade Mark Use and Denominative Trade Marks	125	(22)
Massimo Sterpi
A. Introduction
B. Unauthorized Use of Trade Marks Referring to Fictional Characters in the Music Industry
(1) The Barbie Girl case
(2) The NELLIE THE ELEPHANT cases
C. Unauthorized Use of Trade Marks Referring to Fictional Characters in a Website
(1) Paramount Pictures and Time Warnen the policy adopted by media companies
(2) Elvis Presley Enterprises the protection of a real character's name and places referring to him
D. Unauthorized Reference to Fictional Characters in Retailing
(1) The TARZAN case
(2) The BIANCANEVE case
E. Unauthorized Reference to Real and Fictional Names in Business Names
(1) The Daily Planet case
(2) The CACAO MERAVIGLIAO case
(3) The Lane Capital Management case
(4) The Nichols case
F. Unauthorized Use of a Trade Mark in Press Products and Merchandising
(1) The Swatchissimo case
(2) The Super Inter case
(3) The Juventissima case
(4) The Arsenal case
G. Conclusion
9. Use, Certification and Collective Marks	147
Jeffrey Belson
A. Introduction
B. What are Certification and Collective Marks Used for?
C. Registration of Certification Marks
(1) Is there a use requirement for a certification mark to be registered?
D. Ownership and Use of Certification Marks
(1) Who can use a certification mark?
(2) Authorized use of a certification mark versus trade mark use by a licensee
(3) Licensee estoppel
E. Registration of Collective Marks
F. Ownership and Use of Collective Marks
G. Summary
E. INFRINGEMENT
10. Infringing 'Use in the Course of Trade': Trade Mark Use and the Essential Function of a Trade Mark	163	(60)
Robert Sumroy and Carina Badger
A. Introduction
B. Merchandising and the Importance of Brands
C. The Arsenal Litigation
(1) The First High Court decision
(2) The ECJ ruling
(3) The Second High Court decision
(4) The Court of Appeal decision
D. Infringing Use in the English Courts after Arsenal
(1) R v Johnstone
(2) Reed Executive v Reed Business Information
E. Reasons for the Inertia
(1) The 1938 Act
(2) Broadening of the monopoly
F. Infringing Use Under the 1994 Act
(1) Implementation of the Trade Mark Directive
(2) The Defences to Trade Mark Infringement
(3) Anti-competitive practices
G. Concluding Thoughts
11. Permitted Infringing Use: The Scope of Defences to an Infringement Action	181	(22)
Ashley Roughton
A. Infringement and Defences in Context
(1) Infringing use
(2) The 'owner' and the 'user', the 'mark' and the 'sign'
(3) Three kinds of infringement
(4) Types of defence
B. The Scope of This Chapter
C. Defences: The Legislation
D. Honesty
(1) The Gerolsteinercase: of fairness and plodding horses
(2) A use-related definition of honesty?
(3) Non-use related definitions of honesty
(4) Does honesty equate to a duty not to cause prejudice to another's trade mark?
(5) The concept of honesty in UK criminal law
(6) Does Gerolsteiner import an objective or subjective definition of honesty?
(7) Pure objective sense
E. Objective and Subjective
F. Article 6(1)(a): Own Name and Address
G. Article 6(1)(b): Other Indications
H. Comparative Advertising
I. Article 6(1)(c): Other Indications
K. Article 6(2): Prior Marks
L. Conclusion
12. Infringing Use of a Trade Mark as a Criminal Offence	203	(20)
Andreas Rahmatian
A. Introduction
B. Criminal Offences in Relation to Trade Mark Infringement
C. An Outline of the House of Lords' Decision in R v Johnstone
D. Infringing Trade Mark Use in Criminal Proceedings as Interpreted by R v Johnstone
E. Criminal Infringement of Trade Marks in Other European Jurisdictions
F. Conclusion
F. DEATH OF A TRADE MARK
13. Use for the Purpose of Resisting an Application for Revocation for Non-Use	223	(40)
Belinda Isaac
A. What is Meant by 'Genuine Use'?
B. What Level of 'Use' is Required?
C. The Intentions of the Proprietor
D. Conclusion
14. The Requirement for Evidence of Use of Earlier Trade Marks in Opposition and Invalidation Proceedings	239	(24)
Allan James
A. The Purpose of the Provisions
B. The Community Trade Mark Regulation
C. The Timing and Nature of the Request for the Earlier Conflicting Mark to be Shown to have been put to Genuine Use
D. What Form must the Evidence Take at OHIM?
E. When must the Evidence of Use be Filed at OHIM?
F. The Period within which Genuine Use must be Shown
G. The Territorial Extent of the Use
H. What must be Shown
I. The UK Trade Marks Act 1994
J. The Applicant or Proprietor of the National Trade Mark does not have to Make a Request
K. The Preliminary Indication in Opposition Proceedings
L. The Time for an Opponent to File Supporting Evidence
M. The Time for an Applicant for Invalidation to File Supporting Evidence
N. What Form must the Evidence Take?
O. What must be Shown
P. The Period within which Genuine Use must be Shown
Q. The Notional Specification
R. Conclusion
G. BROADER PERSPECTIVES
15. Trade Mark Use on the Internet	263	(80)
Spyros Maniatis
A. Introduction
B. Trade Marks and Domain Names
C. 'New' Types of Infringement
(1) Adapting trade mark law principles
D. Warehousing
E. Enforcement and Territoriality Questions
F. Conclusion
16. TRIPs and Trade Mark Use	279	(34)
G E Evans
A. Trade Mark Use and the Bounds of Property
B. Expansionary Pressure on Descriptive Marks: Leaving Marks Free for Others to Use Contrasted with Registrability Acquired through Use
C. Trade Mark Use and the Impact of WTO Jurisprudence
(1) Article 20: unjustifiable encumbrances involving trade mark use
(2) National treatment and MFN
(3) Article 8: exceptions for economic development and the public interest
D. Expansionary Pressure and Trade Mark Infringement
(1) Well-known marks and anti-dilution protection: protection for unused marks and use requirements for infringement by dilution
E. Towards a Holistic Approach to the Interpretation of TRIPs
(1) Ordinary meaning: beyond the dictionary
F. Conclusion
17. Use, Intent to Use and Registration in the USA	313	(16)
Graeme B Dinwoodie and Mark D Janis
A. Introduction
B. Use as a Condition for Acquiring Rights
(1) Actual use
(2) Constructive use
C. Use as a Condition for Maintaining Rights
D. Use and the Geographical Scope of Rights
E. Conclusion
18. The Role of Trade Mark Use in US Infringement, Unfair Competition and Dilution Proceedings	329	(14)
Sheldon H Klein and N Christopher Norton
A. 'Use' in the Establishment of Rights
B. 'Use' in Infringement and Unfair Competition Actions
C. 'Use' in Defences to Infringement and Unfair Competition Claims
(1) Defences attacking the claimant's rights in the mark
(2) Defences based on the defendant's priority
(3) Defences based on lack of likelihood of confusion
(4) Fair use defence
D. 'Use' in Trade Mark Dilution Actions
E. Conclusion
H. POST MORTEM
19. Conclusion: What Use is Use?	343	(12)
Jeremy Phillips and Ilanah Simon
A. The Danger of Drawing Conclusions
B. Is There Just One Type of Trade Mark Use?
(1) Backwards and forwards
C. Further Issues for Investigation
(1) Use and the Community trade mark
(2) The role of old law
(3) The interface between trade mark rights and other intellectual property rights
D. Use: The Battle Lines are Drawn
E. Is Use the Centre of the Trade Mark System?
F. The Essential Function: The Linchpin of the System?
G. The Future of Use
H. Eine Kleine Answer...or five
(1) Answer 1
(2) Answer 2
(3) Answer 3
(4) Answer 4
(5) Answer 5
Index	355