From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Thursday, 11 February 2016

Life of a national/EU trade mark ... in a map

Is trade mark law difficult? 

Usually, the response that one gets (with a serious/defeated tone) when asking this question is: "Yes because of the Court of Justice of the European Union that has added all those trade mark functions".

But apparently trade mark law is difficult in general, and many students (undergraduate law students I have at Southampton) confess that they find it challenging to get an idea of what, in general and at the very outset, the "life" of a trade mark law may be about.

I thus thought of preparing a conceptual map that could help my students get a clearer picture of what events may occur in the life of a national EU trade mark, starting from the notion of "sign" to registration and anything after that, ie infringement, invalidity, revocation, etc.

The map is of course a general one, and any feedback from IPKat readers on how to improve it is very welcome!

***


* Vd Article 3 of Directive 2015/2436 (deadline for national transpositions of this provision is 14 January 2019) and Article 4 of the EU Trade Mark Regulation as amended by Regulation 2015/2424 (this provision will enter into force on 1 October 2017).

** These can consist of attempts to register:
  • Identical signs for identical goods/services;
  • Identical signs for similar goods/services where there is a likelihood of confusion, including association;
  • Similar signs for identical/similar goods/services where there is a likelihood of confusion, including association;
  • Identical/similar signs for dissimilar goods/services where earlier mark has a reputation and registration of the later mark would take unfair advantage of its repute/tarnish its repute/dilute (blur) its distinctive character.

*** See here.

**** Due to:
  • Non-use within 5 years’ limit;
  • Use suspended for non-interrupted period of 5 years;
  • TM has become generic;
  • TM used to mislead consumers.

2 comments:

Ash von Schwan said...

Thank you for your wonderful trade mark post, Eleanor - your map is a great tool.!

One suggestion that I thought might be useful is perhaps to add a small, extra part at the end of the map dealing briefly with renewal/right to renew. But more specifically dealing with (or signposting) the potential revival of a lapsed registration or potential for (severely) late renewal. (Alternatively the renewal piece could also connect to the lower box at the end - “10 years (renewable as long as registration requirements subsist)”.

Admittedly this might seem a somewhat dull procedural step that does not merit inclusion on your table - but equally - I thought it could be applicable and of interest both to those who have failed to renew, and also to those who are wishing to file but have noticed a lapsed mark (which could still be potentially be revived if within the applicable time limits) and which is possibly blocking a potentially successful application.

This would therefore seem to be relevant to both ends of your map.

Anyway - just a thought/suggestion.

Eleonora Rosati said...

Thanks so much for your kind words and helpful feedback, Ash! This is indeed something to add. Thanks again and enjoy your weekend!

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