Enhancing the protection of trade marks against bad-faith applications in China: practice and legislative change

2020 ◽  
Vol 15 (6) ◽  
pp. 450-459
Author(s):  
Michele Ferrante
Keyword(s):  
Bad Faith ◽  
Trade Marks ◽  
Legislative Change

Sky Plc v Skykick Uk Ltd (No. 3)

2021 ◽  
Vol 137 (10) ◽  
pp. 711-729
Keyword(s):  
Computer Software ◽  
Intention To Use ◽  
Bad Faith ◽  
Telecommunication Services ◽  
Trade Marks ◽  
Goods And Services ◽  
Court Of Justice ◽  
European Trade

Abstract H1 Trade Marks—European trade marks—SKY—Validity—Broad specifications of goods and services—Bad faith—Requirement of clarity and precision—Lack of intention to use—Reference to Court of Justice—Application of the judgment of the Court of Justice—“Computer software”—“Telecommunication services”—Limiting the specification of goods—Interpretation of broad terms in specifications—Infringement

37. Absolute grounds for refusal

2018 ◽  
Author(s):  
L. Bently ◽  
B. Sherman ◽  
D. Gangjee ◽  
P. Johnson
Keyword(s):  
Public Policy ◽  
Trade Mark ◽  
The European Union ◽  
Bad Faith ◽  
Trade Marks ◽  
The Public ◽  
The Absolute ◽  
Definition Of ◽  
Absolute Grounds For Refusal ◽  
Trade Mark Registration

This chapter examines the ‘absolute’ grounds for refusing to register a trade mark as set out in section 3 of the Trade Marks Act 1994, Article 3 of the Trade Marks Directive, and Article 7 of the European Union Trade Mark Regulation (EUTMR). It first looks at the reasons for denying an application for trade mark registration before analysing the absolute grounds for refusal, which can be grouped into three general categories: whether the sign falls within the statutory definition of a trade mark found in sections 1(1) and 3(1)(a) and (2) of the Trade Marks Act 1994; whether trade marks are non-distinctive, descriptive, and generic; and whether trade marks are contrary to public policy or morality, likely to deceive the public, prohibited by law, or if the application was made in bad faith. Provisions for specially protected emblems are also considered.

scholarly journals Well-Known Trade Marks, Foreign Investment And Local Industry: A Comparison Of China And Indonesia

2015 ◽  
Vol 20 (2) ◽  
Author(s):  
Christoph Antons ◽  
Kui Hua Wang
Keyword(s):  
Developing Countries ◽  
Foreign Investment ◽  
Trade Mark ◽  
Trips Agreement ◽  
Bad Faith ◽  
Trade Marks ◽  
Applicable Law ◽  
The Past ◽  
Government Incentives ◽  
The Subject

Strengthened protection for well-known trade marks in accordance with the TRIPS Agreement is an important issue for developing countries, which has led to trade pressures from industrialised nations in the past. ‘Trade mark squatting’, referring to the registration in bad faith of foreign well-known marks in order to sell them back to their original owners, is a much discussed phenomenon in this context. This article outlines the history and development of well-known trade marks and the applicable law in China and Indonesia. It looks not just at foreign and international brands subjected to ‘trade mark squatting’, but also at how local enterprises are using the system. Rather remarkably in view of the countries’ turbulent histories, local well-known marks have a long history and are well respected for their range of products. They are not normally affected by the ‘trade mark squatting’ phenomenon and are rarely the subject of disputes. Enhanced protection under the TRIPS Agreement is especially relevant for international brands and the article shows the approaches in the two countries. In China, government incentives assist the proliferation of nationally well-known and locally ‘famous’ marks. In Indonesia, lack of implementing legislation has left the matter of recognition to the discretion of the courts.

Omega Flex Ltd v British Standards Institution

2019 ◽  
Author(s):  
Keyword(s):  
Public Policy ◽  
Trade Mark ◽  
Intention To Use ◽  
Full Width ◽  
Bad Faith ◽  
Distinctive Character ◽  
Trade Marks

Abstract H1 Trade marks – Invalidation proceedings – Certification marks - Indications of quality - British Standards kitemark – Application for registration as a ordinary trade mark - Capacity to distinguish - Whether devoid of distinctive character – Relevance of pre-application use - Perception of the relevant public as at date of filing - Whether serving as a badge of origin – Whether descriptive of characteristics of goods or services - Whether distinctiveness acquired through use - Public policy – Deceptive marks - Bad faith –– Lack of intention to use as indicator of origin across full width of specification – Partial invalidity - Reference to CJEU ongoing in other proceedings

Sky plc v SkyKick UK Ltd

2019 ◽  
Vol 136 (1) ◽  
pp. 36-48
Keyword(s):  
Computer Software ◽  
Intention To Use ◽  
Bad Faith ◽  
Trade Marks ◽  
Goods And Services ◽  
Software Requirement ◽  
Court Of Justice ◽  
European Trade ◽  
Bona Fide ◽  
Court Of Appeal

Abstract Trade Marks – European trade marks – SKY – Validity – Specification of goods and services – Class headings – Broad specifications – “Computer software” – Requirement of clarity and precision – Bad faith – Lack of bona fide intention to use – Total or partial invalidity – Infringement – Reference to Court of Justice – Application for reconsideration after judgment – Whether adequate reasons given for decision to refer – Permission to appeal refused – Application renewed before Court of Appeal – Jurisdiction to grant permission to appeal – Discretion

The Interaction with Other Areas of the Law

2016 ◽  
Author(s):  
Alexander Mühlendahl ◽  
Dimitris Botis ◽  
Spyros Maniatis ◽  
Imogen Wiseman
Keyword(s):  
Competition Law ◽  
Trade Mark ◽  
Bad Faith ◽  
Trade Marks ◽  
Domain Names ◽  
The Third ◽  
Trade Mark Law ◽  
The Common ◽  
The Relationship

Competition law and the free movement of goods principles have guided the development of trade mark law in Europe. This chapter will examine other relationships. The first part considers the use of trade marks in comparative advertisements. We have seen in Chapter 7 how comparative advertising has delineated the limits of trade mark law. Here the other side of the relationship is examined. Chapter 5 considered whether a geographical name can function and be protected as a trade mark and the limits of such protection. The second part of this chapter gives a flavour of the system of protecting product designations as geographical indications of origin. The third part looks at the clash between trade marks and domain names and the catalysing role of the concept of bad faith. The fourth part is a good example of how one dispute between distinguishing signs can become the common theme of distinct plots performed before different European audiences;

SKY PLC v SKYKICK UK LTD

2020 ◽  
Vol 137 (2) ◽  
pp. 112-162
Author(s):  
Keyword(s):  
Public Interest ◽  
Computer Software ◽  
Intention To Use ◽  
Bad Faith ◽  
Trade Marks ◽  
The Public ◽  
Goods And Services ◽  
Software Requirement ◽  
Court Of Justice ◽  
European Trade

Abstract H1 Trade Marks – European trade marks – SKY – Validity – Specification of goods and services – Broad specifications – “Computer software” – Requirement of clarity and precision – Whether a ground of invalidity – Whether amounting to failure to satisfy requirement of graphical representability – Whether contrary to the public interest – Bad faith – Effect of lack of intention to use in whole or in part – Vires of s. 32(3) of the Trade Marks Act 1994 – Reference to Court of Justice

scholarly journals Facing the 'Bad Faith'

2020 ◽  
Vol 3 (1) ◽  
pp. 107-127
Author(s):  
Tamar Khuchua
Keyword(s):  
European Union ◽  
Trade Mark ◽  
The European Union ◽  
Bad Faith ◽  
Trade Marks ◽  
Court Of Justice ◽  
Legislative Framework ◽  
Trade Mark Law ◽  
Legislative Changes ◽  
The Eu

The Court of Justice of the European Union has suggested that when the concept set out in the EU regulation is not defined by that regulation, it should be understood according to its usual, everyday meaning. There is no doubt that the understanding of ‘bad faith’ might differ from one person to another and especially from one firm to another. Indeed, ‘bad faith’ in trade mark law might take many different forms which are not easy to detect as the large number of cases concerning the issue of ‘bad faith’ in relation to national and EU trade marks illustrate. By analysing the current legislative framework as well as the case law of the Court of Justice of the European Union, the paper suggests that in order to maintain and even extend the smooth functioning of the EU trade mark system, legislative changes should be introduced. In particular, it is argued that it is reasonable to examine the intention of trade mark applicants already at the application stage in order to avoid the waste of resources and the burden of dealing with the trade marks registered in ‘bad faith’ in the invalidity proceedings post factum and to provide a non-exhaustive list of what elements the ‘bad faith’ can consist of. These amendments should also do good in terms of serving the broader goals of the EU law, which amongst others include, undistorted competition, legal certainty and sound administration.

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