tag:blogger.com,1999:blog-5574479.post8519089467283090182..comments2024-03-19T08:36:55.274+00:00Comments on The IPKat: The Romans, the Germans, the Spanish and interim TM reliefVerónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger8125tag:blogger.com,1999:blog-5574479.post-79882438555314940192009-10-08T14:41:12.651+01:002009-10-08T14:41:12.651+01:00Many thanks to all the contributors here. It has b...Many thanks to all the contributors here. It has been of great help. And very interesting as well to see all the different approaches. I will digest the information and suggest some conclusions (?) in the future.<br /><br />All the best,<br /><br />CarlesCarlesnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1776027392783376682009-10-06T21:45:53.744+01:002009-10-06T21:45:53.744+01:00As Germany seems to be the source of some trouble,...As Germany seems to be the source of some trouble, let me give a little background to our perception as of today:<br /> <br />For a long time German courts and German scholars have circumvened the two sides of trademark rights. This is due to a procedural rule that the courts have to focus on the earlier mark and treat it as valid as long as it is registered. A defendant who wants to challenge the validity of an earlier mark has therefore to initiate separate cancellation proceedings (either before the national office or before the courts). As a consequence, the courts only focus on the question of confusion and seniority and nothing else. They consider the question of validity and/or invalidity and subsequently the right of use as an issue which falls in the competence of the office.<br /> <br />From a constitutional viewpoint, a trade mark is a property right and it enjoys the constitutional protection of the respective "Grundrecht" (included in the human rights cataloque of our constitution). Such protection however, is not granted absolutely, but in relation to the needs and demands of the public. It is the task of the parliament and legislation to find a proper balance, which in some cases might lead to a complete overweight of the rights of the public in that they can even justify an expropriation (against compensation).<br /> <br />As with trade marks, they have been considered to be legally designed similar to a ground property which clearly conveys a positive right to use. The German term to indicate such potential is "absolutes Recht". The respective provision in Art. 14 (1) of the German Trade Mark Act however does not use this term. According to Art. 14 (1), a trade mark right is an "exclusive" right ("ausschließliches Recht"). This is an exact implementation of Art. 5 (1) (1) of the Directive. <br /> <br />The legal consequence is severe: trade marks no longer confer a (positive) right to use, but only a negative right to exclude others from use. Even this potential is limited to the cataloque of prohibitons stipulated in the law. Subsequently a trade mark - for example - does not convey the potential to prohibit private use. We must acknowledge that the legislator has restricted the trade mark property very much in that is only exclusive but no longer absolute.Andreas Lubbergerhttp://www.iplawyers.de/en/andreas-lubberger.htmnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-41679740008158341262009-10-06T13:01:58.214+01:002009-10-06T13:01:58.214+01:00To me the factual basis as described does not ques...To me the factual basis as described does not question the nature of the exclusive right in a mark at all. It is rather a question about the effect of an interim injunction. The exercise of rights over property can be restricted by acts of public authorities when this is justified by other purposes. The interim injunction is an act of a public authority - the court. It restricts the defendant from exercising his right in his trade mark until the court decides the case on the merits. It is intended to prevent the defendant from causing more damages to the claimant during the course of the lawsuit by using his trademark. Therefore it always precedes the decision on the merits. In case the plaintiff wins the case his interests have been protected. In case the defendant wins, he is entitled to damages from the plaintiff because of the restrictions he has suffered being imposed an interim injunction.<br /><br />The interim injunction itself is an evidence that the right in a trade mark has a "positive" side. Because it restricts the defendant as a holder of the junior trade mark from certain uses of the mark.Just another catnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-21391190585510550942009-10-06T11:01:45.779+01:002009-10-06T11:01:45.779+01:00Very interesting to see that:
1. Australian and N...Very interesting to see that:<br /><br />1. Australian and NZ trade mark law uses different language from UK Trade Marks Act 1994.<br />2. UK trade mark legislation seems to shy away from suggesting a positive right - perhaps influenced by traditional thinking on patents, ownership of which is understood as giving negative right - to prevent others from infringing - and not giving any positive rights - to exploit the invention.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-40825443422558552202009-10-06T04:19:21.501+01:002009-10-06T04:19:21.501+01:00Like NZ, the Australian Trade Marks Act 1995 also ...Like NZ, the Australian Trade Marks Act 1995 also includes an explicit positive "right to use": section 20. While not qualified in section 20, it is clear that the positive right is subject to law and in any case prevails only while the registration is valid, ie not if subject to a cancellation action under section 88 on the basis that (for example) use of the mark is likely to mislead or cause confusion.<br /><br />That said, use of a registered mark is subject to a defence to infringement under section 120(e) (including when brought by the owner of a senior mark), and prior continuous use or honest concurrent use are also potentially defences to registration under section 122(fa) on the basis that this kind of use gives rise to a competing entitlement to registration in the face of the senior mark. In that regard, the positive right to use or the potential for the positive right to use based on honest concurrent use post-dating the priority date of a senior mark may still prevail over the senior user's negative right. Overall, the Australian regime for registered marks reflects the common law position, ie that multiple traders may in some cases enjoy concurrent rights in the same mark for similar goods/services.<br /><br />The positive side of the right is clearly qualified rather than absolute, but I think it makes more sense to consider the importance of the positive right to use in the context of dealings in the registered mark, where what is conveyed in an assignment of the trade mark right is not merely a right to sue for infringement in the case of third party use (the negative right) but the right to use the mark and convey all of its existing associations to the marketplace (the positive right).Lozhttps://www.blogger.com/profile/03023393577677706794noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-35139605995764759962009-10-05T03:05:37.487+01:002009-10-05T03:05:37.487+01:00As a creature of statute, in NZ a trade mark regis...As a creature of statute, in NZ a trade mark registration provides both a “positive” side and a “negative” side.<br /><br />NZ law is based on UK statute and Common Law and the current Act, the Trade Marks Act 2002, is largely based on the UK trade marks legislation (pre-harmonization).<br /><br />Section 9 of the 2002 Act defines a trade mark as being “personal property” and section 10 specifies that amongst the rights and remedies provided by the Act the owner of a registered trade mark has the exclusive right to use the registered trade mark and to authorize others to use the registered trade mark – the “positive” side.<br /><br />The “negative” side is provided for by the infringement provisions (section 89) which specify that unauthorized use of a sign which is identical or similar to a registered trade mark for the same or similar goods/services is an infringement, assuming the use complained of is likely to be taken as being use as a trade mark (a likelihood of confusion/deception is required in certain circumstances).<br /><br />Notably, the “positive” side appears to trump the “negative” side as a registered trade mark is not infringed by the use of another registered trade mark in relation to any goods or services for which that other trade mark is registered (section 93).<br /><br />While use is not a pre-requisite to registration, nor is registration a pre-requisite to obtaining rights to prevent third parties from using the same or similar trade marks. Under the Common Law an unregistered trade mark can be protected if the requisite goodwill exists (passing off) and consumer protection legislation can be relied on to prevent use of a trade mark or name if that use would be likely to deceive or cause confusion because of the reputation in another trade mark, whether that trade mark is used or not (Fair Trading Act 1986).Elena Szentivanyihttp://www.henryhughes.co.nznoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-57475326716415902252009-10-04T15:27:12.700+01:002009-10-04T15:27:12.700+01:00U.S. law doesn't have any concept of a positiv...U.S. law doesn't have any concept of a positive right to use based on registration, since all of our rights arise through use - registration only offers some procedural advantages in a lawsuit. A junior registrant will inevitably try to claim that the co-existing registrations are evidence of an absence of likelihood of confusion, but that's the best you'll get out of it. Great question, I'm hoping others contribute.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-90699161847677036262009-10-02T13:25:00.997+01:002009-10-02T13:25:00.997+01:00Don't see anywhere in the UK Act a "right...Don't see anywhere in the UK Act a "right to use", though using a registered mark can be a defence against infringement of another registered mark (s.11 of the Act).Anonymousnoreply@blogger.com