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

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.

Relationship Between Geographical Indications and Trade Marks under Turkish Law

2021 ◽  
Author(s):  
Ufuk Tekin
Keyword(s):  
Trade Mark ◽  
Geographical Indications ◽  
Geographical Indication ◽  
Industrial Property ◽  
Distinctive Character ◽  
Trade Marks ◽  
Judicial Practice ◽  
International Regulations ◽  
First Time

Abstract While geographical indications show geographical origin, trade marks show commercial origin. Therefore, it is possible to say that both geographical indications and trade marks have distinctive character. Indeed, when an application is filed to register a geographical indication as a trade mark, an important question is whether the sign is distinctive enough. In such cases, the distinctive character of these commercial and geographical ‘signs’ can overlap and intersect with each other. In this article, the intersection and relationship between geographical indications and trade marks will be evaluated by considering two different scenarios. In the first one, the trade mark application precedes the registration of the geographical indication, while in the second the application for the geographical indication is filed before the conflicting trade mark. The analysis is carried out by taking into account various provisions of theTurkish Industrial Property Code (IPC), the judicial practice of the Turkish Court of Cassation and international regulations. In this context, the relationship between several absolute grounds for refusal in such a situation and which of these provisions is the most applicable will be examined. In particular, an attempt will be made to explain the role of the absolute ground for refusal regulated in the new Turkish Industrial Property Code for the first time, namely that signs containing or consisting of a geographical indication cannot be registered as a trade mark (Art. 5.1(i)).

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

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.

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 rise, fall and convolution of the intent to use requirement under New Zealand trade mark law

2020 ◽  
Vol 10 (1) ◽  
pp. 87-114
Author(s):  
Rob Batty
Keyword(s):  
New Zealand ◽  
Trade Mark ◽  
Intention To Use ◽  
Trade Marks ◽  
The United Kingdom ◽  
Intent To Use ◽  
Trade Mark Law ◽  
History Of ◽  
Bona Fide ◽  
Historical Developments

The ‘cluttering’ of trade mark registers with unused trade marks is an issue of contemporary concern. One mechanism that can be used to prevent ‘deadwood’ trade marks from getting on the Register in the first place is to ensure that a trader has a genuine intention to use the trade mark. Indeed, the enactment of the first registration legislation in the United Kingdom (UK) was followed by a judicial insistence that a trader could not ‘properly register a trade mark’ if the trader did not have bona fide and present intention to use the trade mark. An intent to use requirement remains a feature of New Zealand (NZ) law, though it has a much reduced sphere of operation under the Trade Marks Act 2002. Tracing historical developments, this article examines how the regulation of the intent to use requirement has evolved under NZ law. This exercise provides a useful lens for understanding how and why the intention to use requirement operates as it currently does. Further, by examining the history of the intent to use requirement, the article also illuminates that there is nothing intractable about how NZ trade mark law has opted to regulate intention to use, and NZ law may be adjusted to better address concerns like cluttering.

TINY REBEL BREWING CO LTD’S TRADE MARK APPLICATIONAppointed Person (Trade Marks)Prof. Ruth Annand: 16 August 2019BL O/482/19; [2019] R.P.C. 25

2019 ◽  
Vol 136 (10) ◽  
pp. 665-678
Author(s):  
Keyword(s):  
Trade Mark ◽  
Fruit Juices ◽  
Distinctive Character ◽  
Trade Marks ◽  
Passing Off ◽  
Likelihood Of Confusion

Abstract H1 Trade marks – Opposition proceedings – Device marks – TROPICANA – Comparison of goods – Whether beers similar to fruit juices – Comparison of marks – Dominant element – Descriptiveness – Acquired distinctive character – Conceptual differences – Assessment of likelihood of confusion – Passing off – Appeal to Appointed Person

scholarly journals On the scope of protection of renowned trade marks

2018 ◽  
Vol 8 (4) ◽  
pp. 273-289
Author(s):  
Gustavo Ghidini ◽  
Giovanni Cavani
Keyword(s):  
Trade Mark ◽  
Third Party ◽  
Strict Sense ◽  
Distinctive Character ◽  
Trade Marks ◽  
The Third ◽  
Similar Sign ◽  
Eu Directives ◽  
The Third Party ◽  
Scope Of Protection

The aim of this paper is to define the scope of protection afforded to ‘marks with reputation’ under EU Directives and Regulations. The authors argue that the protection granted to said marks also in relation to ‘not similar’ goods requires that, having regard to all the circumstances of the specific case, the consumer could be induced to reasonably suppose that the trade mark owner is somehow (industrially or commercially) connected with the circulation of products bearing an identical or confusingly similar sign. If this possibility cannot be assessed, it should be denied that the use of that sign either brings an unfair advantage to the third party user, or is detrimental to the distinctive character or the repute of the renowned trade mark. In sum, the thesis here submitted states that the protection afforded to renowned trade marks, even ‘extra moenia’ (ie beyond the risk of confusion in a strict sense between the products), anyway presupposes that a misleading message is conveyed to the consumer, inducing her/him to ‘transfer’ the reputation of the latter's products to those of the third party user's products, with the effect of altering the consumer's purchasing choices.

DREAMERSCLUB LTD’S TRADE MARK APPLICATION

2019 ◽  
Vol 136 (8) ◽  
pp. 505-510
Author(s):  
Keyword(s):  
Trade Mark ◽  
Distinctive Character ◽  
Trade Marks

Abstract H1 Trade marks – Opposition proceedings – Earlier marks – Proof of use – Word marks – Stylised script – Whether used in a form altering distinctive character – Appeal to Appointed Person

Sign in / Sign up

Export Citation Format

Share Document