1 INTRODUCTION If you allow Rolls Royce restaurants and Rolls Royce cafeterias and Rolls Royce pants and Rolls Royce candies, in 10 years you will not have the Rolls Royce mark anymore. 1 There is no uniform test to determine which trade marks are entitled to extended legal protection. In some countries, the words used to define such a mark refer to recognition and fame, as evidenced in German bekannt ist , in Dutch bekend is , or gode di notorietà in Italian. With its famous trade mark , the US law also falls under this category. However, in other
the mark by itself. Consequently, ‘the trade mark itself is sought to be protected when it has value of its own’. 8 Of course, in the US system, this refers to the dilution theory with the idea that trade marks must be protected against tarnishment. In the case of the Federal Antidilution Statute that involves a specific framework, especially in that the statute applies only to the ‘famous marks’. Nevertheless, according to such an approach, which stands aloof from the common law view, reputation becomes an object of protection. 3 Thus, between the European and
rules for product features protected by design rights. However, most trade mark law systems exclude functional features from protection. Art. 6quinquies B PC does not explicitly allow this exception, although it is commonly accepted. The same is true for provisions which aim at preventing overlaps with design law: as will be shown below, they exist at least in US and EU law, and they probably exist in many other countries as well. Given this common practice, which can be taken into account under the principles governing the interpretation of international treaties,44
_9781788113007_t.indd 41 28/01/2019 14:56 42 EUROPEAN FASHION LAW 3.7.1 The Louboutin example One of the more high-profile trade mark disputes of recent years concerns the red sole on the base of Louboutin shoes which was registered (or attempted to be registered) as a trade mark in various territories around the world including the US and EU. As you will see from the image of the trade mark (Figure 3.6), this is a sort of hybrid shape and colour mark where the claimed mark is the colour red on the sole of a heeled shoe (this is sometimes known as a position mark). The
the latter to the Havana Club trade mark and trade name. The contents of Section 211 correspond to facts and claims in the Havana Club litigation. Paragraph (a)(1) blocks transactions such as trade mark renewals in the USPTO. Paragraph (a)(2) precludes judicial enforcement of common law rights and registered trade marks. Paragraph (b) precludes judicial enforcement of treaty rights regarding trade marks, trade names or commercial names under provisions of the US Trademark Act. As regards judicial enforcement, Section 211(b) was applied by the District Court to
7. Alternative products as a factor in determining the functionality of trade marks – how the criteria from the US functionality doctrine could be applied in EU law Lavinia Brancusi*♦ An important aspect showing the tension between the sphere of exclusive IP rights and the need to enhance market competition by ensuring a broader scope of public domain concerns the conferring of trade mark protection on a product’s functional features. Since the enactment of the first Directive and Regulation,1 EU trade mark law has contained three provisions serving as absolute
-application based on the topic) of these norms. In fact, IP norms can also operate against the respect of diversity-related interests. For example, the U.S. Supreme Court’s decision that the term ‘slants’ can be registered as a mark in the U.S. has led to the conclusion that IP norms can be interpreted in a manner that supports the registration of terms that could be considered derogatory for a part of the population.30 Still, even though IP norms cannot address and resolve all controversies related to 25 Civil society’s opposition derailed the Anti-Counterfeiting Trade
A famous trade mark obtains protection under US laws from dilution. In the European Union, it is marks with reputations that enjoy this extra protection, though this implies the existence of trade marks with no reputation whatsoever, which seems illogical. Not to be confused with well-known trade marks – though it would be very easy to do so.
Identical trade mark and sign, identical goods or services. Nothing to do with the triple identity test in US patent law.
A trade mark (not necessarily in the narrow statutory sense of the expression) which is protected without registration under the law of passing off . As the name suggests, such trade marks are only available in the common law countries although many civil law jurisdictions have unfair competition laws which tend to do a similar job. UK trade mark law states that there is no action for infringement of a common law mark, only an action for passing off: in the US, on the other hand, an infringement action is precisely what is used to protect a common law mark