Conceptual confusing similarity and pictorial trade marks

Several high-profile rebrands, including those by Twitter and Starbucks, have involved removing text from logos. This move towards wordless, pictorial trade marks raises a difficult question about how the scope of protection of a registered trade mark should be determined. This article examines the particular issue of how much weight should be given to the idea or concept underlying a pictorial mark when assessing whether a defendant’s junior mark is ‘confusingly similar’. Drawing on legal principles and case examples from Europe, the United Kingdom, Singapore and New Zealand, it is claimed that courts and adjudicators should be careful not to overweight conceptual similarity. It is argued that a lack of care in assessing conceptual similarity risks awarding one trader overbroad protection, which may be tantamount to conferring on one trader a monopoly in an idea. A lack of care may also undermine the logic of a registration system by untethering protection from what is recorded on the Register, and may make trade mark law less predictable and certain. * The author declares that he was junior counsel in a case discussed in this article, Carabao Tawandang Co Ltd v Red Bull GmbH HC Wellington CIV-2005-485-1975, 31 August 2006. The views represented in this article are the author’s own, and do not reflect the views of his employer at the time, or the views of the client represented in that particular case.

Protecting Trade Mark Proprietors Against Unfair Competition in EU Trade Mark Law

With aims of protecting trade mark proprietors against commercial practices of third parties that could hinder the use of the trade mark in informing and attracting customers, negatively influence its selling power, or exploit its attractive force, the EU legislator and the Court of Justice of the EU (CJEU) have broadened the protection afforded under trade mark law to cover such acts. At the same time, the CJEU has sought appropriate balance between the exclusive rights of trade mark proprietors and the interests of third parties, in allowing those practices that can be deemed acceptable as part of fair competition. The author argues that, in consequence, EU trade mark law is becoming ever more an EU law of unfair competition with regard to practices that involve the use of trade marks. The article represents an attempt to explain these developments by looking at specific policy choices and decisions of the CJEU on the protection of trade marks, alongside the wider context of EU law dealing with unfair competition. A key conclusion is that, in light of the lack of harmonisation of unfair competition law in the EU (at least pertaining to practices that affect businesses), the widening of the scope of protection under trade mark law helps to ensure the necessary degree of harmonisation while avoiding a parallel system of protection. When compared to pre-existing EU instruments of unfair competition law that prohibit certain uses of trade marks, this approach provides trade mark proprietors with a more efficient mechanism for enforcing their rights. In the course of elucidating this finding, the article gives the reader an understanding of how EU law addresses the protection of the commercial value of trade marks.

Sky Plc v Skykick Uk Ltd (No. 3)

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

Antibacterial Residues in Some Imported Chickens to Iraq

In this study three of trademarks of frozen chickens imported to Iraq were chosen to study the antibacterials residues in the chicken meat. The three trade marks were TM1, TM2 and TM3. Three chickens of each trade mark were bought from local market of Baghdad, from each chick a piece of muscle was cut from the thigh and the chest and from each piece four samples were tested for antimicrobial residues by using four plate test (FTP). The results showed presence of antibacterials residues in 49% of tested samples. For TM2 and TM3 the positive samples were 62.5% and 83% respectively while no antibacterials residues detected for TM1. Concluded from this study the presence of antibacterials residues in imported chickens to Iraq.

The David-And-Goliath-esque Problematic of “Unfair Advantage” in Trade Mark Law: Is the EU Moving Towards a Categorical Protection of Famous Brands?

The extended protection of trade marks with a reputation is losing its “exceptional” character, making way for an almost categorical bar to the registration of any competing sign; indeed, the “unfair advantage” requirement appears to have been confounded with that of similarity. Certainly, trade marks are recognized as a legitimate restriction of the freedom of commerce and, arguably, in principle, competitors can and should invest their own efforts into conceiving and promoting an original sign under which they can market their goods and services. Nevertheless, trade mark law, insofar as it protects the investment function of a reputed mark, does not for as much shield the proprietor from all competition, even if this means that he must work harder in order to preserve this reputation. Indeed, the use of a similar sign is sometimes deemed to be ineluctable, where the applicant demonstrates that he cannot reasonably be required to abstain from using such a sign as, for example, it would be made necessary for the marketing of his products. This is especially true where the sign makes use of descriptive terms or elements in order to indicate the type of goods or services offered by the applicant under the mark applied for. This paper aims to critically discuss the most recent EU and UK jurisprudence on “unfair advantage” in the context of trade mark registration and infringement, focussing primarily on the components of this EU creation and how they are interpreted by courts on both a national and EU level.

Zdolność rejestrowa zapachowych znaków towarowych przed i po wprowadzeniu dyrektywy 2015/2436. Zmiana w praktyce czy jedynie w teorii?

<p>Smells are an unusual way of communication, allowing not only for the creation of associations in the minds of the recipients, but also for evoking certain emotions. Therefore, they are used in marketing strategies and they may become trade marks. Unfortunately, until the adoption of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks, these signs were, in principle, excluded from registration. This was due to their inability to meet the requirement of graphic representation as understood by the criteria established by the case law of the Court of Justice of the European Union. However, under this Directive, this requirement was abolished and replaced by the criterion of so-called representativeness of the sign. The purpose of this article is to present olfactory marks from both a marketing perspective and the admissibility of their registration, as well as to analyze the practice of registering them before and after the adoption of Directive 2015/2436.</p>