Trademarks are principally governed in Australia by the Trademarks Act 1995 and the accompanying regulations, the Trademark Regulations 1995. Guidance can also be sought from the Trademarks Examiners Manual, which was developed to assist trademark staff in implementing the provisions of the act and regulations. In addition, there are a number of pieces of legislation that make reference to and govern specific aspects of the use of trademarks, including:
• the Australian Wine and Brandy Corporation Act 1980;
• the Olympic Insignia Protection Act 1987;
• the Geneva Conventions Act 1957;
• the Therapeutic Goods Act 1989;
• the Plant Breeders’ Rights Act 1994;
• the Trade Practices Act 1974; and
• individual state-based fair trading legislation.
Australia is also a signatory to the following international treaties:
• the Madrid Protocol relating to the Madrid Agreement on the International Registration of Marks (1989);
• the Nice Agreement on the International Classification of Goods and Services;
• the Paris Convention for the Protection of Industrial Property (1883); and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights attached to the Agreement Establishing the World Trade Organization (1995).
The trademark registration process is overseen by IP Australia, with a right of appeal to the Federal Court of Australia in certain circumstances.
Australian legislation does not explicitly recognize protection for unregistered trademarks, with the following exceptions:
• under Division 3 of the act, where one party applies for a trademark and another party claims to have an interest or right in respect of that trademark, the two parties may apply to the registrar of trademarks to allow the unregistered interest to be recorded (although not in the Trademarks Register); and
• protection is also available where there is infringement of an unregistered trademark.
A degree of protection is provided to the owners of unregistered trademarks through state-based fair trading legislation, the Commonwealth Trade Practices Act 1974 (TPA) and the tort of passing off. Where a registered trademark that is similar to an unregistered trademark is used, the owner of the unregistered trademark can bring an action alleging that:
• there is misleading and deceptive conduct under Section 52 of the act;
• there is misleading and deceptive conduct pursuant to provisions in state-based fair trading legislation;
• the use of the registered trademark falsely represents that the associated goods or services have a sponsorship that they do not actually have, under Section 53(c) of the act;
• the owner of the registered trademark falsely represents that it has an affiliation that it does not actually have, under Section 53(d) of the act; and/or
• a business is using a registered trademark so similar to the unregistered trademark that the public may think that there is a connection between the two businesses, therefore engaging in conduct akin to the tort of passing off.
As there is no statutory provision explicitly acknowledging unregistered trademarks, the level of use required to establish rights in relation to an unregistered trademark varies from case to case. As a general rule, where a trademark is generic or descriptive of the associated goods and services, substantial evidence of use will be required to establish a reputation in that trademark.
The trademark system allows ownership to be held or a trademark application to be made by the following parties:
• a natural person;
• an incorporated body of persons;
• an unincorporated body of persons;
• a trust; or
• a body politic.
In addition, that party must:
• have use of the trademark;
• intend to use the trademark; or
• have authorized the use of the trademark.
A ‘trademark’ is defined by the act as a sign used or intended to be used to distinguish goods or services dealt with or provided in the course of trade from the goods or services of any other person or entity. A trademark may be:
• a word;
• a number;
• a shape;
• a colour;
• a sound;
• a scent;
• an aspect of packaging; or
• any combination of these.
It must be possible to represent the sign graphically. The act also makes provision for the registration of series marks, which are a series of trademarks that are essentially the same but with slight variations – these can be filed as a single trademark application. At present, applications seeking to register colours face a number of hurdles in order to gain acceptance at the examination stage. These issues should be resolved over time through the filing of more applications and the decisions in pending court actions. Nonetheless, although the act protects a variety of signs, non-standard trademarks – particularly scent and colour marks – still face obstacles at examination.
Applications for trademarks are examined by IP Australia in order of receipt. The current delay between filing and examination is around 12 weeks. A written request can be made to the examiner to expedite the examination process. There is no fee for a request to expedite examination; however, reasons for the request must be given. All applications claiming priority based on a convention country application are automatically expedited. The examiner assesses the trademark to determine:
• issues of formality (eg, an error in the name of the applicant, the provision of incorrect information or the listing of goods and services in the wrong class);
• whether there are any trademarks on the register with earlier filing dates that are substantially identical or deceptively similar to the trademark that is the subject of the application;
• whether the trademark is distinctive of the goods and services with which it is associated or is merely descriptive of them; and
• whether the trademark has been inherently adapted to distinguish the associated goods and services from those of other traders within the relevant industry. If there are any objections to allowing the trademark to proceed to acceptance, the applicant receives a report outlining the reasons and objections. A response must be provided to the examiner within 15 months of receipt of the first report. This period can be extended on request by a further six months. It is also possible to defer the application in certain circumstances. Regardless of whether a request for registration is expedited, due to international obligations the earliest a trademark can be registered is seven and-a-half months after the application is filed.
Once a trademark application has been accepted it is advertised in the Official Journal of Trademarks for a period of three months. During that period any party that is affected by the presence of the trademark on the register can oppose the registration. There is no requirement for a party seeking to lodge an opposition to prove its standing to do so. An opposition can be lodged on a number of grounds, including that:
• the applicant is not the owner of the trademark;
• the opponent has prior use of a similar trademark;
• the applicant does not intend to use the trademark;
• registration of the trademark is likely to confuse or deceive because of another trademark with a reputation in Australia;
• the trademark contains or consists of a false geographical indication;
• an improper amendment was made to the application or evidence, or submissions made in support of the application were false in material particulars; and/or
• the application was made in bad faith (a new ground of opposition that came into effect in early 2007).
Once an opposition has been lodged the following timeframe applies:
• The opponent has three months to provide evidence in support of the opposition to the applicant and IP Australia;
• The applicant has three months from the date it receives the evidence in support of the opposition to provide evidence in response to IP Australia and the opponent; and
• The opponent has three months from the date it receives the evidence in response to file its evidence in reply.
Each interval of three months can be extended on application. An application for an extension of time can be opposed by the other party. The opposition period itself can be extended by a further three months on application from a prospective opponent on the grounds that:
• negotiations are being conducted between the parties; or
• research is being conducted in order to determine whether an opposition is justified.
The opposition period can also be extended after its expiry if the prospective opponent is able to show that an opposition was not lodged within the time limit due to an error or omission by a trademark officer, the prospective opponent or its agents, or due to circumstances beyond the prospective opponent’s control. Once the opponent and the applicant have completed their evidence they may request that the matter proceed to a hearing. A hearing allows the parties to make further submissions in support of their claims. If there is no request for a hearing, the registrar of trademarks may choose to decide the opposition on the evidence provided by the parties.
Once a trademark has been accepted and advertised it will be registered on payment of the registration fee, provided that it has not been opposed or has overcome an opposition. Registration of a trademark in Australia is valid for 10 years from its filing date. The trademark registration is then renewable every 10 years. An international trademark registered in Australia through the Madrid Protocol, if it is claiming priority of the original trademark, will be registered for 10 years from the date of filing in the country of origin.
There are a number of grounds on which a registered trademark can be removed from the register, including:
• at the written request of the owner;
• if a trademark is not renewed within the required time (a trademark registration may be renewed within six months of the expiry of the registration period for a late payment fee); and
• under a non-use action.
An application may be made to the registrar seeking the removal of a trademark for nonuse where:
• the mark has not been used for a continuous period of three years up until one month before the filing of the non-use application; and
• at least five years have passed since the filing date.
The party making the non-use application does not need to be aggrieved or affected by the continuing registration of the relevant trademark. A less commonly used form of the non-use application is made on the grounds that:
• the applicant for a trademark had no intention at the time of filing to use the trademark in good faith, authorize use of the trademark or assign the trademark for use by another party in Australia; and
• the applicant has not used the trademark for one month before the filing of the nonuse application.
A non-use application can seek to remove either specific goods and services from a trademark or the whole trademark. Once filed, the registrar notifies all relevant parties of the non-use application and it is advertised in the Official Journal of Trademarks for an opposition period of three months. If the non-use application relates to an international trademark, any opposition to it must specify an Australian service address. If the trademark applicant objects to the non-use application, an opposition can be filed within three months of service of the non-use application. The opponent must then provide evidence in support of the opposition within three months of filing the opposition. The party seeking to remove the trademark may provide evidence in support of its application. Further evidence can be submitted only at the registrar’s discretion. Once all evidence has been submitted, the parties can request a hearing or provide written submissions. In the absence of a hearing request the registrar decides the matter on the information provided.
Although the registrar has the power to amend and rectify the Trademarks Register at the request of the trademark owner, it does not have the power to cancel a trademark registration unless it believes this to be in the public interest. The power to cancel a trademark registration on public interest grounds came into effect in early 2007 and is yet to be tested. Actions for cancellation of a trademark may be brought before the courts if:
• consumers are likely to be deceived or confused by the existence of the trademark on the register;
• the trademark has become generic – that is, generally accepted within the relevant trade or industry as a sign that denotes the provision of particular goods or services;
• a limit or condition placed on the trademark registration is contravened; or
• registration of the trademark was based on fraud or misrepresentation.
IP Australia maintains a free online search service of the Trademark Register, the Australian Trademark Online Search System (ATMOSS). ATMOSS provides free access to a wide variety of searches of the register, including:
• an earliest date search;
• an identical trademark search;
• a similar trademark search;
• a search by class;
• a search of all classes;
• a search including trade names and slogans;
• a search of traditional graphic marks; and
• a search of non-traditional graphic marks.
In most cases the infringement of an unregistered or registered trademark gives rise to an action for misleading and deceptive conduct, false representation and passing off. The owner of a registered trademark can also bring an action for infringement of the trademark under the act. Infringement of a registered trademark occurs where a sign is being used as a trademark and is substantially identical or deceptively similar to the registered trademark in relation to the same or closely related goods or services. Infringement of a well-known trademark can occur where a sign is being used as a trademark and is substantially identical or deceptively similar to the registered trademark, regardless of the goods and services in respect of which use is being made.
An action for trademark infringement is usually brought in the Federal Court of Australia before a single judge; on occasion it may be brought in the relevant state or territory Supreme Court. Appeals from these forums are made to the Full Federal Court of Australia (comprising three judges) and a further appeal, provided special leave is granted, can be made to the High Court of Australia.
The remedies available for these offences include:
• an interlocutory or final injunction;
• an Anton Pillar or search and seizure order, which allows the requesting party to inspect premises and seize infringing goods and/or records from the other party. This remedy is granted without the knowledge of the infringing party and only where it is clear to the court that conduct needs to be restrained immediately as evidence is being destroyed;
• an account of profits – that is, payment by the infringer to the trademark owner of all profits made through the infringing conduct;
• damages; and
• delivery up of the relevant goods or advertising materials.
The court is also empowered to provide any other remedy it deems suitable.
Litigation relating to the infringement of registered and unregistered trademarks is very similar and, as such, similar timeframes apply in both cases. Actions are generally commenced in the Federal Court of Australia and the timeframe varies depending on the complexity of the relevant facts. However, assuming the swift execution of all steps, the following is the standard timetable for litigation before the Federal Court of Australia:
• pleadings – completed within six weeks of issuing the proceeding;
• discovery – completed within one month of pleadings;
• mediation – usually occurs within one month after discovery;
• preparation and service of evidence – completed by both sides within three to four months of discovery; and
• trial – takes place approximately 12 months after the proceeding is listed.
In addition, the trademark owner may seek an interlocutory injunction in order to restrain a party’s conduct immediately; such an application will be heard by the court on an urgent basis.
An assignment of trademark rights or a change of ownership can be executed by the assignor or assignee by filing an application with IP Australia. The assignment application must be completed in the correct form and be accompanied by some proof of title. Documents considered to be proof of title, assignment or transmission include:
• a deed of assignment;
• a merger document;
• a simple letter of assignment;
• in the case of a deceased owner, a probate document or death certificate and copy of the last will and testament;
• a legislative instrument of transmission; or
• a declaration.
There is no requirement for the relevant documents to be notarized or legalized in Australia.
Where the shape of a product is a novel design, has not been publicly available and is new and distinctive compared with the prior art base at the time of registration, it may be eligible for registration as a design under the Designs Act 2003 in addition to trademark protection.
Copyright subsists in a trademark that consists of a device or logo that is an original artistic work. Therefore, a device that substantially reproduces the artistic work in a trademark may infringe both trademark and copyright. If a trademark may infringe copyright in an unregistered trademark, registration of that mark may be opposed on the grounds that registration would be contrary to law.
In Australia, use of a trademark on the Internet is largely treated in the same manner as any other use of a trademark. However, the courts have held that a registered Australian trademark used on a website located outside Australia is not infringed if it is uploaded in Australia unless the website specifically targets Australian consumers. Similarly, evidence of use of a trademark on the Internet will be considered as valid evidence to rebut a non-use application only where it can be shown that the website featuring the trademark is accessed or is designed to provide goods or services in Australia. It is conceivable that use of a trademark as part of an internet address, where that website offers goods or services similar to those offered in association with the trademark, would be considered trademark infringement as well as giving rise to an action for deceptive and misleading conduct. Country-code top-level domain (ccTLD) names can be registered in Australia pursuant to rules produced by the Australian Domain Authority. These rules specify who can apply for a domain name, as well as the domain names that are considered to be valid. The owner of a registered trademark or the filer of a trademark application has the right to register the corresponding ccTLD in Australia. Disputes relating to ccTLDs must be resolved using the Alternative Dispute Resolution Procedure. This involves the originator of the dispute sending written notification to the domain name administrator and attending a negotiation and conciliation with the administrator and any third parties. If this fails, the parties must agree to refer the dispute to a commercial dispute centre and to be bound by that ruling.
In Austria, trademarks can be protected and enforced as Austrian trademarks, EU trademarks and Austrian trademarks based on an international registration under the Madrid Protocol. The national legal framework for trademarks is set out in the Trademark Protection Act (260/1970, Federal Law Gazette). Its provisions implement the EU Trademark Directive (89/104/EEC), which aimed to partially harmonise the national trademark laws of EU member states. The EU Customs Code and the Austrian Law against Product Piracy also apply.
EU trademarks are governed by the EU Community Trademark Regulation (207/2009) and its implementing regulation (2868/95), both amended by the Amending Regulation (2424/2015). Further, Austria is a signatory to the following international treaties:
• the Paris Convention for the Protection of Industrial Property;
• the Agreement on Trade-Related Aspects of Intellectual Property Rights;
• the Madrid Protocol on the International Registration of Marks; and
• the Nice Agreement on the International Classification of Goods and Services.
The names and pseudonyms of natural and legal persons are protected by the Civil Code. Improper use of names may give rise to claims for invalidation and compensation for damages. Trade names (ie, the names of companies as listed in the Commercial Register) are protected under the Commercial Code (219/1897, German Imperial Law Gazette). According to Section 29 of the Commercial Code, trade names must be distinct from other commercial designations in the same location or political municipality. The protection of trade names is regulated in Section 37 of the Commercial Code and includes injunctive relief and compensation for damages. Further, Section 9 of the Unfair Competition Act provides for the protection of unregistered company names and trade names, including trade dress, as long as they have been used in commerce and the trade dress is well known to the public. The protection of trade names starts with entry in the Commercial Register. In all other cases, unregistered marks require a ‘verkehrsgeltungsnachweis’, which measures the distinctiveness of the sign within the relevant trade circles, to establish protection. A verkehrsgeltungsnachweis can be proved in the course of a lawsuit (eg, through opinion polls).
Any legal or natural person may apply for and own a trademark. If the applicant does not have its domicile, seat or commercial establishment in Austria, it must appoint an Austrian attorney, patent attorney or notary as a local representative before the Austrian Patent Office. If the applicant has its domicile, seat or commercial establishment in the European Economic Area or Switzerland, it is sufficient to appoint a local authorised recipient. If a legal professional is appointed as representative, power of attorney is not required. However, the representative must be duly empowered. If the representative is not a legal professional, power of attorney is required (original or certified copy).According to Section 1 of the Trademark Protection Act, any sign can be a trademark, as long as it can be permanently and intelligibly depicted graphically (eg, words, numbers and three-dimensional (3D) shapes). The most common trademarks in Austria are text, text-image and image trademarks. 3D, sound, hologram, position, colour and haptic marks are also allowed, as long as they can be depicted graphically. Therefore, movement, signal, fragrance and flavour marks may not be registered in Austria.
In order to be registered as a trademark, the sign must be capable of distinguishing the goods and services of one enterprise from those of others by either inherent or acquired distinctiveness. Section 4 of the Trademark Protection Act states the main grounds for refusal of registration, as follows:
• marks that reproduce official symbols;
• marks that do not fulfil the requirements of Section 1 of the Trademark Protection Act (ie, that cannot be represented graphically);
• marks that have no distinctiveness;
• marks that consist only of descriptive or generic elements;
• marks that consist only of a shape that: results from the nature of the goods as such; is necessary to obtain a technical result; or gives substantial value to the goods;
• marks that are contrary to public policy or accepted principles of morality;
• marks that can deceive the public; and
• marks that wrongfully designate the geographical origin of wines and spirits.
However, some of these grounds for refusal – such as descriptiveness and genericness – are relative and can be overcome under certain conditions.
An application to register a trademark with the Austrian Patent Office can be filed online, by post or by fax (although not for colour marks). After receiving the application, the Austrian Patent Office examines the trademark application with regard to formality requirements and any absolute or relative grounds for refusal, and conducts a similarity research. The Austrian Patent Office notifies the applicant or its representative of such findings and the applicant or representative can file counterstatements or withdraw the application. The proceedings end either with registration of the trademark or rejection or dismissal of the application by way of a decision that can be appealed. After registration, the trademark is published in the Österreichischer Markenanzeiger. The trademark can be renewed indefinitely for 10-year periods. The Austrian Patent Office does not guarantee certain timeframes for registration. However, in practice, unopposed proceedings may take between three and six months. The timeframes for opposition proceedings may be extended on application; therefore, the timeframe differs from case to case.
The Trademark Protection Act provides for an opposition procedure. The owner of an earlier trademark (registered or pending) can challenge a later conflicting trademark registration within three months of publication in the Österreichischer Markenanzeiger. Prior registration of a trademark or application thereof (provided that the trademark will be registered) constitutes grounds for opposition. A member of the competent division of the Austrian Patent Office will hear opposition proceedings. Opposition decisions of the Austrian Patent Office can be appealed to the Vienna Higher Regional Court.
In addition to opposition, a cancellation application may be submitted where a trademark infringes prior registered or well-known unregistered trademarks. Cancellation applications can also be based on commercial designations. A cancellation application can be filed by any party on the grounds that a trademark should not have been registered based on absolute grounds for refusal. Further, any party may request cancellation of a trademark that has not been in genuine use for five years. The Trademark Protection Act sets out further grounds for cancellation (eg, the trademark has become generic).
The Austrian Patent Office provides an online search tool whereby anyone can search for Austrian, EU and international trademarks that are protected in Austria. It is possible to search by name, application number, registration number, text contained in the mark, type of mark (eg, image, image and text, physical, colour, sound, hologram or position mark), state of the mark, application or registration date and Nice classes. Further, the Service of Industrial Property offers searches for identical and similar trademarks. The fees for such searches depend on the timeframe (eg, €130 for five classes within five working days, €160 within 24 hours and €180 within three hours). Each 10 additional classes cost €25. The search can also include trade names (for an additional fee of €35).
Trademark infringement is subject to both civil and criminal penalties. When faced with actual or threatened infringement of their rights, rights holders are entitled to file a legal action. As stated in the Trademark Protection Act, the causes for legal action based on trademark infringement are the use of:
• an identical mark for identical goods or services;
• an identical or similar mark for identical or similar goods or services; or
• an identical or similar sign for dissimilar goods or services, where the registered trademark is well known in Austria and the use takes unfair advantage thereof.
The infringement of trademark rights entitles the registered rights holder or licensee (depending on contractual rights) to the following claims:
• Cease and desist – the infringer has the duty to stop the infringement.
• Adequate remuneration – this claim is irrespective of fault.
• Damages – if the infringer has acted negligently or intentionally, a claim for damages (based on lost profits) or delivery of the infringer’s unfairly gained profits is justified. Compensation is calculated using a reasonable royalty rate, usually equivalent to the payment of a hypothetical licence fee. Where the amount of damages cannot be assessed, it is possible to claim double the amount of the adequate remuneration instead. Such a claim requires proof of a minimum of gross negligence on the part of the infringer. A claim for damages must prove actual damage and establish a causal link between the infringement and the damage incurred. In addition, the burden of proof regarding negligence on the part of the infringer lies with the claimant.
• Destruction – the rights holder may request the seizure and destruction of infringing goods and the means used to reproduce the trademark. Alternatively, the offending trademark may be removed from the goods in question.
• Information – as long as doing so is not inappropriate in relation to the severity of the infringement or unlawful regarding confidentiality obligations, the infringer must disclose information regarding the origin and scale of the infringing goods and services.
• Accountability – the infringer must disclose financial information so that damages may be assessed.
• Exclusion – the public may be excluded from the trial.
• Publication – the final decision will be published at the infringer’s cost.
The rights holder may request a cease and desist order to stop the infringing use. A cease and desist claim requires the risk of reoffending. If the claimant proves infringement, the risk of reoffending is assumed and the defendant must disprove such assumption. If there is an imminent risk of first infringement, it is also possible to file a preventive action for a cease and desist order. Legal actions for cease and desist may be combined with applications for preliminary injunctions. Since the preliminary injunction is provisional, the court can grant interim relief only. As such, the outcome of the preliminary injunction must be reversible. Preliminary injunctions are enforceable immediately. However, the court granting the interim relief may suspend enforceability or make enforcement dependent on security.
The time limit to file a cease and desist order is not specifically regulated under the Trademark Protection Act. Therefore, such actions must be filed within three years of gaining knowledge of the infringement and infringer based on the general statute of limitations in Section 1489 of the Civil Code. If the holder of earlier registered rights has knowingly tolerated the use of a later sign in Austria for five consecutive years, it is not entitled to request a cease and desist order for the use of the later sign. This is not the case if the later sign has been used in bad faith or if such registered trademark was applied for in bad faith. According to the Trademark Protection Act, the Vienna Commercial Court has exclusive jurisdiction for civil law remedies based on trademark infringement. The further instances are the Vienna Higher Regional Court and the Supreme Court.
Further to civil infringement proceedings, the intentional infringement of trademark rights and unregistered trade names is punishable by a fine under the Trademark Protection Act. This fine may be set by the court up to 360 rates per diem. If the offence is committed on a commercial basis, an additional penalty of up to two years’ imprisonment may be imposed. Criminal infringement proceedings may be initiated only by the person or business damaged by the infringement – not by the public prosecutor. Not only is the infringement of registered trademarks punishable, but also the use of names, trade names or other special designations of a business in order to distinguish goods and services, if such use gives rise to a likelihood of confusion. According to the Trademark Protection Act, the Vienna Criminal Court has exclusive jurisdiction for criminal law remedies based on trademark infringement. Both individuals and legal entities may be the subject to criminal procedures for infringement; however, employees or other authorised persons who carry out the infringement on their employers’ orders are not subject to criminal charges.
A change of ownership of an Austrian trademark should be registered in the Trademark Register to ensure the publication of such proceedings. However, this recordal is merely declarative; even if the change of ownership is not recorded in the register, the acquirer can enforce its rights, but must prove the acquisition of ownership. When filing for a change of ownership, it is necessary to attach the certificate of transfer (the original or a certified copy). Further, the signature of the former owner must be notarised or legalised. Licences can be registered, although this is not a requirement. When doing so, the licence agreement must be submitted and the signature of the licensor must be notarised or legalised. Depending on the licence agreement, the licensee itself may start infringement proceedings without the licensor’s consent.
A trademark which is a sufficiently original creative work (eg, a logo or even a slogan) can be protected simultaneously by copyright law where it meets the standards of originality under the Copyright Act.
The Austrian country-code top-level domains (ccTLDs) ‘.at’, ‘co.at’ and ‘.or.at’ are governed by nic.at GmbH, which manages the issuance and administration of these domains. When registering a domain name, the applicant must ensure that the domain name does not infringe third-party rights (eg, name rights or trademark rights) or unfair competition law. Applications are rejected only if they obviously infringe third-party rights. No special dispute resolution provision regulates the Austrian ccTLDs; relevant legal disputes are decided by the civil courts. However, legal disputes regarding a domain may be registered with nic.at GmbH and a ‘wait status’ may be requested for a domain in order to prevent transfer before the end of the legal dispute. There is no special anti-cybersquatting act in Austria. However, the Unfair Competition Act provides protection against forms of cybersquatting (eg, domain grabbing). There are three new generic top-level domains (gTLDs) in Austria – ‘.wien’, ‘.tirol’ and ‘.vig’. All three have been granted by the Internet Corporation for Assigned Names and Numbers. Alternative dispute resolution procedures are available for these new domains, such as the Uniform Domain Name Dispute Resolution Policy and the Legal Rights Objections. By filing an application for a new gTLD, the applicant agrees to accept the applicability of these alternative dispute resolution systems, which aim to facilitate fast and cheap resolution of domain name disputes.
From a trademark law point of view, the Benelux countries (Belgium, the Netherlands and Luxembourg) are to be regarded as one entity. Consequently, the registration of a trademark can relate only to Benelux as a whole. On September 1 2006 the Benelux Convention on Intellectual Property (Trademark Convention) came into force. The Benelux countries are (as a single trademark entity) a signatory to:
• the Paris Convention for the Protection of Industrial Property;
• the Madrid Agreement on the International Registration of Marks; and
• the Madrid Protocol.
As the Benelux countries are (as a single trademark entity) a member state of the European Union, the Community Trademark Regulation (40/94) is applicable.
Article 2(2) of the Trademark Convention states that trademark protection is acquired through registration of a trademark. Article 2(19) further states that only the holder of a registered mark can claim protection, with the exception of the holder of a well-known trademark in the sense of Article 6bis of the Paris Convention. Examples of well-known trademarks are COCA-COLA and NOKIA. Therefore, in general it is not possible to claim protection for unregistered trademarks, even if the trademark is genuinely used throughout Benelux. In other words, a trademark owner can rely on a trademark in court proceedings only insofar as it is registered. Although prior use does not establish trademark rights, it can play an important role in relation to a subsequent trademark application made by a third party. If a trademark applicant knows or should have known of a third party’s prior use in Benelux of an identical or similar trademark for identical or similar goods, its application may be regarded as having been made in bad faith.
Bad faith is one of the grounds for a nullification action. Furthermore, in its landmark Winner Taco judgment of June 2004, the Benelux Court of Justice held that an absolute first user of a trademark which decides to register the mark after noticing that a third party has started using and/or has registered that same trademark can maintain its trademark registration. The third party which has used and/or registered the trademark in the meantime cannot successfully seek nullification of the later registration by the absolute first user, for instance on the grounds that the application was made in bad faith or too late.
Any natural or legal person can apply for registration with the Benelux Office for Intellectual Property (BOIP) and own a Benelux trademark. The Trademark Convention sets no conditions regarding the place of business or nationality of the registrant. It is also possible to register a Benelux trademark in the name of more than one person or undertaking. In the case of multiple registrants, each registrant must cooperate if the trademark is assigned or licensed. If the applicant does not appoint a trademark representative with a registered address within the European Economic Area (EEA), the applicant must have a registered address or principal place of business within the EEA or provide the BOIP with an address for correspondence within the EEA.
Article 2(1) of the Trademark Convention provides that trademarks may consist of any sign capable of being represented graphically – in particular, words (indications), designs, prints, stamps, letters and numerals, and shapes of goods or their packaging – provided that the sign is capable of distinguishing the goods or services of a company. This list is not exhaustive. Therefore, it may be concluded that, for example, sounds, smells and variable signs can be registered as trademarks. However, in practice, the fact that graphical representation is required may present an obstacle to registration. A sign must possess distinctive character in relation to the goods and/or services for which protection is sought. Signs that are devoid of distinctive character cannot be registered as trademarks; neither can purely descriptive marks. The Trademark Convention further indicates that there are three exceptions which are excluded from trademark protection:
• signs that consist exclusively of a shape which results from the nature of the goods themselves;
• signs that consist exclusively of a shape which gives substantial value to the goods; and
• signs that consist exclusively of a shape which is necessary to obtain a technical result.
It is irrelevant whether such a shape has acquired a distinctive character through use; these shapes simply cannot be monopolised. Further, the following marks will not be granted trademark protection:
• marks that are contrary to public policy or accepted principles of morality, or that have not been authorised by the competent authorities and are to be refused or invalidated pursuant to Article 6ter of the Paris Convention;
• marks that are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services;
• marks that are similar to an older collective trademark for similar goods or services which has lapsed in the three years prior to filing;
• marks that are similar to an older trademark for similar goods or services which has expired in the two years prior to filing, unless the owner of the older trademark has consented to registration or the older trademark has not been genuinely used in Benelux for an uninterrupted period of five years;
• marks that are confusingly similar to a well-known trademark in the sense of Article 6bis of the Paris Convention;
• marks that are the result of a trademark application made in bad faith; and
• marks that consist of a denomination of origin for wines or spirits that originated elsewhere.
There is no limit as to the goods and/or services for which trademark protection can be sought, with the exception of goods or services that conflict with public policy and accepted principles of morality.
The BOIP, based in The Hague, the Netherlands, is the official institution responsible for the registration of trademarks and designs. The applicant can file its trademark online via BOIP Online Filing (in Dutch or French). Alternatively, the applicant may file a paper form (in Dutch or French) by post, by fax or by hand. Upon request of the applicant an availability search will be conducted (before September 1 2006 this availability search was obligatory) to find out if there are any existing trademarks for specific products or services that can obstruct the registration of a trademark. The BOIP provides a search report within three weeks, composed on the basis of specific search criteria for verbal and visual elements. This list is for information purposes only. Upon receipt of the report, the applicant can consider the older trademarks and decide whether to withdraw its application before it is published in the Benelux Trademarks Bulletin. The costs for such availability search are €150 for the basic search (for up to three classes; any additional class costs €20). The BOIP has the authority to refuse a trademark application based on the following absolute grounds:
• The sign is not a trademark in the sense of Article 2(1) of the Trademark Convention (see above);
• The trademark is devoid of distinctive character;
• The trademark consists exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or provision of the services, or other characteristics of the goods or services;
• The trademark consists exclusively of signs or indications that have become customary in the current language or in the genuine and good-faith practices of the trade;
• The trademark is contrary to public policy or accepted principles of morality;
• The trademark is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services; or
• The trademark consists of a denomination of origin for wines or spirits that originated elsewhere.
Further, EU Regulation 510/2006 on the protection of geographical indications and designations of origin (for agricultural products and foodstuffs) provides that an application for registration of a trademark shall be refused if it relates to product names concerning products of the same class that are registered in accordance with the regulation or if it corresponds to one of the situations referred to in Article 13 of the regulation, provided that the application for registration of the trademark was submitted after the date of publication of the protected status of the geographical indication or designation of origin. A refusal must concern the trademark as a whole. However, refusal of part of the list of goods and services applied for is possible. Testing on absolute grounds also applies to international trademark applications. The BOIP will notify forthwith the applicant of its intention to refuse (partially) the registration and the applicant can object thereto within three months of notification. This period can be extended at the applicant’s request or ex officio by the BOIP. It has become common practice for the BOIP to grant the applicant six months in which to object.
If the BOIP issues a final refusal, the applicant can file an appeal with the competent court of appeal in Brussels, The Hague or Luxembourg, depending on the address given in its application. If neither the applicant nor its trademark representative has an address within Benelux, the applicant can choose one of the three courts of appeal. It is possible to appeal against a court of appeal decision in cassation with the competent supreme court in Belgium, the Netherlands or Luxembourg. Cassation has suspensory effect. The appeal must be filed within two months of the applicant’s notification of the refusal. In the Bovemij (Europolis) case the Benelux Court of Justice held that a court may take into consideration new facts and additional evidence (eg, acquired distinctiveness through use) when deciding the validity or otherwise of a refusal by the BOIP to register the application. However, the Benelux court stated that the applicant may not make any such new factual claims if the aim is to obtain an order for a partial registration or for a registration with restrictions, which would deviate from the application as examined by the BOIP.
The owner of an older trademark has a two month period in which to file an opposition with the BOIP, starting from the first date of the month following publication of the application. Once the BOIP has notified the parties that the opposition is admissible, a two-month ‘cooling-off’ period will start to give the parties the opportunity to come to an amicable settlement. This period may be extended at the parties’ joint request. When the cooling-off period has ended the BOIP will notify the parties of the commencement of opposition proceedings. The opposing party must then file its written arguments and further evidence within two months of the notification. The applicant can, within two months of the end of the period for written arguments, reply to these and can also request evidence demonstrating the genuine use of the older trademark. If this evidence is requested, the opposing party will be granted a two-month period to submit this evidence. The opposition proceedings close if the opposing party fails to meet this requirement. If the opposing party succeeds in providing the evidence, the applicant will be granted a two month period to comment on this evidence and, if it has not done so already, to reply to the written arguments initially submitted by the opposing party. If the applicant does not request evidence demonstrating the genuine use of the older trademark, the period for reply is also two months.
Possible grounds for opposition include the following:
• The older trademark is identical and registered for identical goods and/or services;
• The older trademark is identical or confusingly similar and registered for identical or similar goods and/or services and there is a likelihood of confusion (ie, likelihood of association with the older trademark) on the part of the public; or
• The older trademark is a well-known trademark in the sense of Article 6bis of the Paris Convention and the younger trademark is liable to create confusion.
Opposition proceedings can take place only against trademark applications for similar goods and services – on the basis of either an older registration or an unregistered well-known mark in the sense of Article 6bis of the Paris Convention. Opposition proceedings cannot be brought against applications for trademarks which could be infringing on the basis of Article 5(2) of the EU First Trademarks Directive (89/104/EEC). In such cases the trademark owner has recourse to infringement proceedings before the courts of common jurisdiction. The BOIP’s decision on the opposition is subject to appeal and ultimately to an appeal in cassation. The same rules for appeal and cassation apply.
In general, if no complications (eg, refusal/opposition) arise during the application proceedings, registration will take place within approximately six months of filing. A Benelux trademark registration will remain valid for a period of 10 years, starting from the date of filing. The trademark can be renewed indefinitely for further consecutive 10-year periods. The ® and ™ symbols have no legal status in Benelux. However, the use of these symbols is permitted only for registered trademarks and trademark applications, respectively; otherwise such use will be considered misleading.
Cancellation/surrender: The holder of a Benelux trademark can order the registration of the trademark to be (partially) removed from the register at any time. The removal applies to the whole Benelux area. The trademark will also be removed from the register if the validity period of the registration has expired.
Nullification: Any interested party, including the Public Prosecutions Department, can seek the nullification of a trademark that:
• is not a trademark in the sense of Article 2(1) of the Trademark Convention;
• is devoid of any distinctive character;
• consists exclusively of signs or indicationswhich may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or provision of the services, or other characteristics of the goods or services;
• has become customary in the current language or in trade;
• is contrary to public policy or accepted principles of morality;
• is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or services;
• is a denomination of origin for wines or spirits that originated elsewhere;
• conflicts, pursuant to EU Regulation 510/2006, with registered names of agricultural products and foodstuffs that are granted protection under this regulation; or
• is similar to an older collective trademark for similar goods or services which lapsed in the three years prior to application, provided that the nullity is invoked within five years of the date of registration.
Further, any interested party (but not the Public Prosecutions Department) can seek the nullification of a trademark that is:
• younger than the application for a similar trademark;
• similar to an older trademark for similar goods or services which expired in the two years prior to application, unless the owner of the older trademark has consented to the registration or the older trademark has not been genuinely used in Benelux for an uninterrupted period of five years (Article 2(4)(d) of the Trademark Convention);
• confusingly similar to a well-known trademark in the sense of Article 6bis of the Paris Convention (Article 2(4)(e) of the Trademark Convention); or
• the result of a trademark application made in bad faith (Article 2(4)(f) of the Trademark Convention).
Nullity under Article 2(4)(d) must be invoked within a period of three years following expiry of the prior registration; nullity under Articles 2(4)(e) and (f) must be invoked within a period of five years following the date of registration. This period of five years shall not apply to trademark registrations referred to in Article 2(4)(e), which were filed in bad faith. The interested party can seek nullification based on these grounds only if the owner of the older trademark participates in the court proceedings. Not mentioned in the Trademark Convention, but accepted in Dutch case law, is the nullification of a trademark based on the fact that the owner is an unknown entity (not to be confused with erroneous spelling of the name of the owner). Depending on the grounds, the action must be brought within three or five years of the date of registration of the trademark in question. An exception is made for a trademark that was applied for in bad faith and that is confusingly similar to a well-known trademark in the sense of Article 6bis of the Paris Convention: in such case no time limit applies.
Revocation: Any interested party can seek the revocation of a trademark for non-use if the trademark is not genuinely used for the goods and services for which it is registered, in the course of trade in Benelux, for an uninterrupted period of five years. Such genuine use also exists if the trademark is used by the manufacturer only in its trade with distributors which sell the product under their own trademark.
Other grounds for revocation include the following:
• The trademark has become a generic term due to the trademark owner’s inactivity; or
• The trademark may deceive the public, for instance as to the nature, quality or geographical origin of the goods or services. Revocation can no longer be sought if the trademark owner starts to use or resumes use of its trademark before the action is filed. This ‘revival’ of the trademark is often referred to as ‘Heilung’. However, Heilung is not possible if an imminent revocation action comes to the attention of the trademark owner and the trademark owner begins using or resumes use of its trademark in the three months prior to the revocation action. Further, where a trademark is at risk of revocation for non-use, the trademark owner can no longer enforce its trademark rights against a third party that registers a conflicting mark while its own trademark is vulnerable to revocation; nor can the trademark owner oppose the use of that new trademark. The nullification or revocation of a trademark must be sought in court. If the court decides that the trademark is indeed null and void or is liable to revocation, it will order the cancellation thereof ex officio. Invalidation: A third party cannot have a trademark registration declared invalid because it has been incorrectly registered – for example, because a three-dimensional trademark is registered as a two-dimensional trademark. In certain circumstances the third party can seek revocation of the trademark because it is not genuinely used as registered – for example, if a registered figurative trademark is restyled and used in a completely different way by the trademark owner. If the trademark owner itself wishes to amend its trademark registration because it was incorrectly registered, the only option is to file a new application.
Benelux trademark law: It is not possible to claim protection for unregistered trademarks in Benelux. Prior use of a trademark plays a role only if nullification is sought of a bad-faith trademark application, meaning that the trademark applicant knew or should have known of a third party’s prior use of an identical or similar mark in Benelux. If a trademark application is pending, it is possible to claim ‘reasonable compensation’ from a party that infringes the trademark right between publication of the trademark application and registration. If necessary, the trademark applicant can obtain an accelerated trademark registration upon payment of an additional fee.
In Benelux, enforcement of a registered trademark is possible against:
• identical trademarks for identical goods or services;
• confusingly similar trademarks for identical or similar goods or services;
• identical or similar trademarks for different goods or services, if the earlier trademark is well known in Benelux and the later trademark takes unfair advantage of, or is detrimental to, the distinctive character or repute of the earlier trademark; and
• identical or similar signs that are not used as trademarks (eg, company names) if the sign takes unfair advantage of, or is detrimental to, the distinctive character or repute of the earlier trademark and there is no valid reason for use of this particular sign.
A valid reason might be an older company name, use of a sign in comparative advertising or use related to free speech (eg, in a news item). It is also possible to enforce a registered trademark right which is well known in Benelux against an identical or similar trademark registered for identical or similar goods or services if the later trademark takes unfair advantage of, or is detrimental to, the distinctive character or repute of the earlier trademark. In Benelux, there is no separate court action based on dilution. Since dilution results from damage caused to the distinctive character of an earlier trademark, dilution is one of the possible grounds for an infringement action.
Procedural law: The enforcement of a registered trademark right is a matter of national civil law, which varies in the different Benelux countries. An injunction will be allowed for the entire Benelux area. Further, damages and legal costs can be claimed. In the Netherlands, for example, any party with an urgent interest of any kind may seek temporary injunctive relief and temporary court orders from the summary judge of a competent district court. In IP infringement cases the urgent interest is normally assumed. In most cases a court order will be enforceable with the help of a penalty that will be due if the defendant fails to comply with the order.
The BOIP does not require the provision of legalised documents in order to assign (partially) a trademark to a new owner. It is sufficient to furnish the BOIP with any document which clearly demonstrates that the trademark has been assigned. This document can be a deed of assignment, or an agreement or extract thereof. However, it must be an original document signed by the parties or a certified copy. In order for the assignment to have external effect with respect to third parties, the assignment must be recorded in the Benelux Trademarks Register. This also applies to a licence in respect of a trademark.
In Benelux, a figurative mark or threedimensional trademark can also be eligible for protection as a design or as a copyrighted work of art, provided that the requirements for such protection are satisfied. A design can be protected in Benelux if it is new and has individual character in relation to existing designs. A work of art with individual and original character is eligible for copyright protection. Signs that cannot be considered as a trademark – for example, because they are too complicated to distinguish the goods or services of an undertaking – may be eligible for copyright protection.
There is no special legislation governing trademark use and protection on the Internet. Trademark law plays an important role in relation to third-party registration of domain names and the use of metatags. Domain names are usually registered on a first come, first served basis and in principle a third party cannot oppose the registration. If the domain name is a registered trademark, however, the trademark owner can oppose the domain name under the Trademark Convention. It is even possible to oppose a domain name if it is not used as a trademark (to distinguish identical or similar goods and/or services). In such case the trademark owner must establish that:
• the domain name takes unfair advantage of, or is detrimental to, the distinctive character or repute of its earlier trademark; and
• the domain name registrant has no valid reason to use this particular domain name.
The same applies to third-party use of a trademark as a metatag.
In Brazil, trademarks are governed by the Law on Industrial Property (9,279/1996). Brazil is a party to the following international treaties:
• the Paris Convention for the Protection of Industrial Property;
• the Agreement on Trade-Related Aspects of Intellectual Property Rights; and
• the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.
As a general rule, the Industrial Property Law states that ownership of a mark is acquired through a granted registration, following which the rights holder has the right to exclusive use of the trademark throughout the national territory. However, the law also provides protection for owners of marks that have not yet been registered with the Brazilian Patent and Trademark Office (BPTO). An example is the right of prior use, which establishes that any person who, at the date of priority or filing date of the application, has been using in good faith an identical or similar mark for at least six months to distinguish or certify an identical or similar product or service has a preferential right to registration. Another example is trademarks that are well known in their field of activity, as per Article 6bis(1) of the Paris Convention. Well-known trademarks are given special protection regardless of whether they have been previously filed or registered in Brazil. The BPTO has powers to reject ex officio a trademark application that wholly or partially reproduces or imitates a well-known trademark.
On the other hand, in the event of the owner of a well-known mark filing an opposition or administrative nullity action based on its mark, it has 60 days from filing this in which to file an application to register its well-known mark in Brazil. The law also establishes that signs that imitate or reproduce a third-party mark are not registrable as trademarks if the sign is intended to distinguish a product or service that is identical or similar to that covered by the existing mark and is likely to cause confusion or association with such mark. As a consequence, the law enables the owner of a mark that has not yet been filed or registered in Brazil to challenge third parties which attempt to register similar or identical trademarks. Similar to the aforementioned situation, the rights holder has 60 days in which to file an application for registration of its mark in Brazil, starting from the filing date of the opposition or administrative nullity action.
The Law on Industrial Property states that a natural or legal person subject to either a public or private law regime may register a mark. Business entities that are subject to private law regimes may apply to register a mark covering only activities that they effectively and lawfully carry out either directly or through companies that they control either directly or indirectly. Similarly, natural persons may apply to register only marks that cover their professional activities.
A trademark application must include:
• a power of attorney, duly executed and signed by the applicant’s authorised representative (it need not be notarised, legalised or apostilled). If the power of attorney is not lodged at the time of filing, it can be submitted to the BPTO within 60 days of the filing date;
• in the case of a priority claim, a simple copy of the priority application comprising all goods and/or services to be filed in Brazil. If this is not lodged at the time of filing, it can be submitted to the BPTO within four months of the filing date; and
• in the case of composite or device marks, a clear sample of the mark so that copies can be made in accordance with BPTO filing requirements.
The law establishes that any distinctive, visually perceptible sign may be registered as a trademark, provided that it fulfils the legal requirements. The visual representation requirement excludes non-traditional trademarks (eg, olfactory, sound and gustatory marks) from the scope of protection. However, the protection of three-dimensional (3D) signs – which are considered non-traditional trademarks – has been admitted in Brazil since the enactment of the Industrial Property Law in 1997. Article 124 of the law gives examples of unregistrable signs, including:
• signs of a generic, necessary, common, usual or merely descriptive character (when related to the product or service to be distinguished) or those commonly used to designate a characteristic of the product or service, except when the sign is presented in a sufficiently distinctive manner; and
• names, prizes or symbols of sporting, artistic, cultural, social, political, economic or technical official or officially recognised events, as well as imitations likely to cause confusion, except when authorised by the competent authority or entity promoting the event.
Once the application has been filed, it is published and interested parties can file an opposition within 60 days. If an opposition is filed, the applicant will be notified to respond within 60 days. After the term for opposition and counterarguments has expired, the examination is conducted and potential conflicts with senior trademarks are considered. During the examination period, official actions or requests may be issued and must be responded to within 60 days. If an applicant fails to respond to an official requirement, the application will be shelved. However, if a response is filed, the examination will continue, even if the requirement has not been satisfied or if the applicant’s response was to lodge a formal challenge to the official action or request. In the absence of opposition, the examiner will consider the results of the availability search. If conflicts with prior registrations are found, the examiner will reject the application. If a possible conflicting registration which could be cited as grounds for rejection is under forfeiture or subject to court proceedings or orders, the examiner will stay the junior application pending a final decision on the respective case. The same applies to possible conflicting senior applications that are still under examination. Once an examination has been concluded, a decision will be issued either allowing or rejecting the application. In the event of rejection, the applicant has 60 days to file an appeal to the BPTO president.
The trademark registration is effective for 10 years from grant and may be renewed for equal and successive periods. The renewal request must be made during the last year of the registration term and must be accompanied by proof of payment of the respective fee. If a renewal request has not been made by the end of the registration term, the registrant may make such a request within the following six months on payment of an additional fee.
The registrant must initiate the use of its trademark within five years of grant, failing which the registration may, at the request of any person with a legitimate interest, be declared extinct. Moreover, if use of the mark has been interrupted for more than five consecutive years or if, within that time, the mark has been used in a modified form that implies alteration of its original distinctive character as found on the certificate of registration, the registration may, at the request of a third party, be deemed extinct. Once the registration is published in the Official Gazette, a 180-day term commences in which any person with a legitimate interest may file an administrative nullity action. An administrative nullity action may also be commenced ex officio by the BPTO and the registrant will have 60 days to respond. Once the term for counterarguments has expired, even if no response has been presented, the issue will be decided by the BPTO president. This decision brings the administrative stage to a close. A registration may be subject to a declaration of administrative nullity if a third party can prove that it was granted in conflict with the law. Any person with a legitimate interest or the BPTO may file a judicial nullity action against a registration or the administrative act that annulled a registration.
The following trademark office searches are available:
• identical trademark search;
• similar trademark search;
• search per class; and
• search of device marks.
The Industrial Property Law sets out two administrative mechanisms for a rights holder to enforce its rights: opposition and administrative nullity action (see above).
In addition, the rights holder can enforce its rights through criminal and civil proceedings, as provided for in Articles 189 and 190 (crimes against marks) and Articles 207 to 210 (civil measures) of the law. For civil proceedings, the injured party may file a lawsuit seeking the cessation of the infringing act, coupled with a claim for damages. The lawsuit may also include an ex parte preliminary injunction request, with a view to the immediate cessation of the harmful conduct until a decision on the merits can be rendered, subject to the specific requirements of the Civil Procedure Code. In order to obtain a preliminary injunction, the plaintiff must demonstrate a prima facie good case (ie, that there is a likelihood of success on the merits of the case) and that delay in granting the relief sought would be likely to give rise to harm that is irreparable or extremely difficult to redress. The plaintiff may also seek the imposition of a daily penalty for failure to abide by the preliminary injunction. If the interim relief sought is granted, the defendant will be restrained from practising the infringing act pending a final and definitive ruling on the substantive lawsuit. In some circumstances, a court will only grant interim injunctive relief if the petitioner posts a bond or a fiduciary guarantee to cover any losses incurred by the respondent.
A criminal action requires the filing of a criminal complaint; although if the crime is committed against armorial bearings, crests or official public distinctions, a criminal action will be commenced by the Public Prosecution Service. In terms of criminal proceedings, one very important provision is the possibility of filing a preliminary criminal search and seizure action, aimed at gathering evidence of acts of infringement before the infringer has a chance to destroy or hide it. Pursuing a preliminary criminal search and seizure action is normally more straightforward than undergoing the more complicated civil proceeding of early production of evidence. Given that it is possible to rely on evidence obtained under a search and seizure warrant in both civil and criminal proceedings, an application for preliminary criminal search and seizure is frequently a useful starting point for civil infringement proceedings, as well as for criminal proceedings per se.
Nullity actions against trademark registrations and against administrative acts upholding a rejection decision or annulment of a trademark registration are submitted to the Rio de Janeiro Federal Court (the BPTO is a party to all such actions and thus they must be filed in the federal courts). The Rio de Janeiro Federal Court has four courts specialising in intellectual property at first instance. At appeal level, the Regional Federal Court of the Second Region, with jurisdiction over the states of Rio de Janeiro and Espirito Santo, has two specialist IP panels. Infringement actions must be filed before state courts as the BPTO does not participate in such proceedings.
Civil remedies include an order for immediate cessation of the infringing act (the plaintiff may request the imposition of a daily penalty for failure to comply with a preliminary injunction or with a first-instance decision) and compensation for unauthorised use of the trademark. In a lawsuit seeking cessation of the infringing act and a damages award, the judge may grant an ex parte preliminary injunction in order to avoid irreparable loss or harm that would be difficult to repair. In such circumstances, the court may require a petitioner to post a bond or a fiduciary guarantee and may order the seizure of all merchandise, products, packaging, labels and other materials that bear the counterfeit or imitated mark. Criminal remedies include preliminary criminal search and seizure measures, imprisonment and fines.
The law applies three criteria when calculating damages:
• the benefits that would have been gained by the injured party had the infringement not occurred;
• the benefits obtained by the infringing party; and
• the remuneration that the infringing party would have paid to the rights holder for a licence to use the protected rights legally.
Since 2003 the Superior Court of Justice has held that proof of the infringement of a trademark right is sufficient in itself to give rise to a right to damages, independent of any evidence of actual harm caused to the injured party.
Any person with a legitimate interest or the BPTO may file a judicial nullity action against a trademark registration. A judicial nullity action is statute barred following the expiry of five years from the date of publication of the granting decision.
Once a civil trademark infringement action has been filed, the defendant is notified to respond within 15 days. The plaintiff may respond to the defendant’s answer within 10 days. There are usually two hearings at first instance: a conciliatory or preliminary hearing, in which the parties try to settle the case amicably; and an evidentiary hearing, in which the expert and technical assistants may be cross-examined if their findings disagree (the relevant questions having been filed and responded to in writing before the hearing); depositions are taken from the parties and the listed witnesses are heard. This second hearing occurs only in cases where there is a need for evidence to be produced. At the close of the hearing, the judge may immediately make a final order (the final decision at first instance) or he or she may direct that the parties submit final briefs. In the latter case, the judge will issue the final order following the submission of the briefs and their consideration. It is possible to file an appeal against this order to the State Court of Appeal, and an order of the State Court of Appeal may be challenged in a special appeal to the Superior Court of Justice or an extraordinary appeal to the Federal Supreme Court. A final decision on infringement and nullity actions may take between one and two years at first instance. A final decision on second instance may take up to two years.
Applications and registrations may be assigned on condition that the legal requirements for requesting registration are met by the assignee. The assignment of a trademark application or registration covers only the trademark; no goodwill or other business assets need be assigned in order for an assignment to be valid. A trademark assignment application must include:
• a power of attorney executed and signed by an authorised officer of the assignee (this need not be notarised, legalised or apostilled); and
• an assignment document to be executed and signed by the authorised officers of the assignor and assignee, with all signatures notarised before a notary public. This document must also include the signature and details of the identity of two witnesses (no notarisation is required for the witnesses’ signatures).
The assignment of a trademark application or registration takes effect between the contracting parties from the moment it is executed and signed by the assignor and assignee. However, in order to be effective against third parties, the assignment must be registered at the BPTO. The assignment is effective against third parties from the date of publication in the Official Gazette.
A licence agreement takes effect between the contracting parties from the moment it is executed. However, a trademark licence agreement must be recorded with the BPTO in order to be effective against third parties. It will be effective against third parties from the date of publication in the Official Gazette. Registration of the licence agreement with the BPTO is also important if royalties are agreed to. The remittance of payments from trademark licences will be accepted only after grant of a respective trademark registration by the BPTO. Retroactive payments before the grant of the registration are not allowed. Registration with the BPTO is not required to constitute proof of use.
Trademark rights may overlap with copyright and industrial design rights. A logo or a device trademark can also be protected by copyright, provided that it is an original work within the terms of the Copyright Law. The particular form (design) of a product or its finishing or packaging may be protected under the provisions covering 3D trademarks, industrial designs and copyright, provided that the requirements for each form of protection are met.
Since October 2010 Brazil has had an administrative conflict management system, SACI-Adm, for domain names using the country-code top-level domain ‘.br’. According to the SACI-Adm Regulations, a rights holder may oppose a domain name on the grounds that there is a previously filed or registered trademark before the BPTO; or that the opposing party owns a trademark that, although not filed or registered with the BPTO, is considered to be well known in its field of activity within the terms of the Industrial Property Law. The decision rendered in the SACI-Adm procedure will determine either cancellation of the domain name or its transfer to the rights holder. The Brazilian courts have not yet specifically addressed the question of whether the use of a third party’s trademark in keyword advertising constitutes infringement. However, the judiciary has already issued rulings indicating that such use may constitute an act of unfair competition when it is likely to confuse or re-direct consumers. In such a case, rights holders can invoke the regulations for protection against unfair competition.
In March 2014 the federal government introduced major amendments to the Trademarks Act – designed to facilitate implementation of the Nice Agreement, the Singapore Treaty and the Madrid Protocol – in Bill C-31. However, Bill C-31 also contains fundamental changes to the current trademark legislation, including the elimination of use as a registration requirement. Bill C-31 received royal assent in June 2014 and the amendments are expected to come into force in 2017. Bill C-8, the Combating Counterfeit Products Act, was introduced in 2013 to improve legal remedies for counterfeiting and address a longstanding trade issue. It was granted royal assent in December 2014 and new border detention provisions (the request for assistance), additional criminal penalties for counterfeiting and a broadened definition of ‘trademark infringement’ all came into force on January 1 2015. Additional changes are pending in Bill C-59. If passed, these will ensure that trademark agents have privilege for communications relating to trademark protection and give administrative authorities clear power to allow time extensions for various force majeure closures.
Canada is a signatory to the Paris Convention for the Protection of Intellectual Property, which provides for the right of priority on the basis of an application filed in a contracting state and lays down rules that all contracting states must follow. Legislation to implement Canada’s obligations under the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights came into force on January 1 1996. Among other things, this introduced a comprehensive set of procedures for the protection of geographical indications for wines and spirits.
Canada offers protection to both registered and unregistered trademarks and trade names, including logos, shapes and some non-traditional trademarks. The owner of an unregistered trademark or trade name may not only assert its rights over others (by way of a passing-off action), but also rely on those rights to prevent registrations of confusingly similar trademarks.
Any person – including trade unions, businesses and government administrative authorities, and their agents – may apply for trademark registration. Section 30 of the Trademarks Act establishes that goods and services must be described in “ordinary commercial terms”. In addition, applicants must identify at least one specific filing ground. Currently, use of the mark must commence before a registration will issue; applicants that file based on proposed use must submit a declaration attesting to use of the mark with the goods or services in the application, before registration. Under Bill C-31, use will no longer be a prerequisite to registration. Any applicant that has used or intends to use its mark in Canada and is entitled to register it may apply for registration. If unopposed, the application will issue to registration once the opposition period expires.
The Trademarks Act prohibits the registration of marks that cannot function as a trademark, unless the applicant can show that the mark has acquired distinctiveness as of the application filing date. These include:
• marks that are primarily or merely names or surnames;
• words that are clearly descriptive or misleadingly descriptive of the goods or services, their origin or the persons that created them; and
• three-dimensional (3D) shapes.
If such a mark has already been registered in the applicant’s country of origin and can have distinctive character in Canada, considering the manner in which it has been used and advertised, it may be registrable. However, this exception will not exist once Bill C-31 comes into force. Marks that are primarily functional are also not registrable. This will be clarified when Bills C-8 and C-31 are implemented, as both prohibit the registration of signs with a primary utilitarian function. Once Bill C-31 enters into force, it will be possible to register a broader range of signs, including tastes, textures and smells. However, examiners will also be given the power to object to such applications for lack of distinctiveness and it is anticipated that it will become more difficult for such marks, and others with a low degree of inherent distinctiveness, to be approved without evidence of acquired distinctiveness in Canada.
Canada has no statutory definition of a ‘famous mark’. Fame or reputation may affect enforcement or opposition results, since the test for confusion includes analysing the extent to which a mark is known. However, the Canadian courts have said that fame is not a trump card. In 2006 the Supreme Court’s decisions in Mattel Inc v 3894207 Canada Inc (2006 SCC 22) and Veuve Clicquot Ponsardin v Boutiques Cliquot (2006 SCC 23) clarified previous case law on the scope of protection to be afforded famous marks. Following these, the courts have been reluctant to expand the scope of protection to goods or services that are significantly different from those for which the marks are known or registered.
Section 9 of the Trademarks Act grants special protection to certain types of mark, including ‘official marks’ – trademarks that have been adopted and used by public authorities under significant government control in Canada – and prohibits the adoption by anyone in connection with a business, as a trademark or otherwise, of any name consisting of or nearly resembling an official mark.
Searching before use and filing is advisable and should include searches of the register, as well as common law rights. While the Canadian Intellectual Property Office (CIPO) does not provide searches, the Trademarks Register is searchable online at www.cipo.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/h_wr03082.html. Once the changes set out in Bill C-31 are implemented and use information no longer appears on the register, marketplace and other searches to determine the scope and duration of actual use will become very important for potential applicants.
The registration process begins with an application being filed (online or a hard copy) with CIPO. Currently, applicants must identify at least one filing ground and must set out the goods or services in ordinary commercial terms. Once Bill C-31 is implemented, applicants will no longer need to identify any filing grounds, but will have to classify the goods and services according to the Nice Classification. After filing, the application is examined on both absolute and relative grounds. The Trademarks Office will cite as confusing only registered trademarks or previously filed applications. Under the amended act, examiners will also be entitled to object on distinctiveness grounds. Applicants have the opportunity to respond to such objections and, if appropriate, to amend the application or submit evidence in support. If all objections are overcome, the application is approved for opposition. The time from filing to approval generally takes at least eight to 12 months, unless substantive objections are raised. CIPO adheres to strict timelines within which to respond to examiners’ reports and limits extensions, unless exceptional circumstances exist.
Once the examiner is satisfied that all requirements have been met and objections overcome, a notice of approval is issued and the application is advertised for opposition in the Trademarks Journal. The application may be opposed by any party within two months. There are currently four grounds of opposition in Canada:
• non-compliance with Section 30 of the Trademarks Act (pertaining to technical deficiencies in the application);
• non-registrability under Section 12(1);
• non-entitlement, referring to prior use or to a confusingly similar trademark (registered or unregistered), trade name, or previously filed trademark application; and
Challenges based on non-distinctiveness and confusion are often related, since if the applicant’s mark is found to be confusingly similar to the opponent’s, it cannot be distinctive. If the registrar finds that the statement of opposition fails to raise at least one valid ground, the opposition will be rejected. Otherwise, the registrar forwards a copy of the statement to the applicant, which must file a counterstatement or have the application deemed abandoned. Each party may file evidence to support its position, cross-examine, file written arguments and attend an oral hearing. The Opposition Board’s decision may be appealed to the Federal Court, the Federal Court of Appeal and, in limited instances, the Supreme Court. New evidence may be filed on appeal to the Federal Court. Two new grounds of opposition will be added once Bill C-31 comes into force:
• At the filing date, the applicant was not using and did not propose to use the trademark in association with the goods and services identified.
• At the filing date, the applicant was not entitled to use the trademark in Canada in association with the goods and services identified in the application.
The test for confusion is whether, as a matter of first impression in the mind of the average consumer with imperfect recollection, the use of both marks in the same area and in the same manner is likely to lead to an inference that the respective goods or services are produced by the same company. Consideration is given to all of the circumstances, including:
• the inherent distinctiveness of the trademarks or trade names and the extent to which they have become known;
• similarities in the goods, services and channels of trade; and
• the degree of resemblance between the trademarks or trade names in appearance or sound or in the ideas suggested by them.
The Supreme Court’s decision in Masterpiece Inc v Alavida Lifestyles Inc (2011 SCC 27) confirmed that:
• the location of prior use is not relevant when analysing confusion before registration;
• resemblance should be considered on a mark-by-mark basis – even one confusingly similar mark may invalidate or prevent registration;
• the mark as applied for should be considered (as opposed to the mark as used), as rights to a word mark permit use of that mark in design format;
• resemblance should focus on elements of the marks that are most striking or unique;
• resemblance will often have the greatest effect on confusion, so this is where most analyses should begin; and
• with respect to the nature of the goods or services, cost is not irrelevant, but is not determinative.
If there is no opposition, or if an opposition is decided in the applicant’s favour, under the current Trademarks Act, the application will be allowed and the registrar will accept no further challenges. A registration fee is required and, if the application was based on proposed use in Canada, CIPO must be advised that use in Canada has commenced by filing a declaration of use. Once the changes contained in Bill C-31 are in force, no registration fee will be required and an application will automatically issue to registration once the opposition period expires or, if opposed, upon the opposition’s rejection by the Opposition Board. Registration of a trademark constitutes prima facie evidence of ownership and gives the owner the exclusive right across Canada to use the mark in association with the goods and services for which it is registered. Currently, registrations are valid for 15 years and renewable for further 15-year periods on payment of a renewal fee. The term of protection will be reduced to 10 years upon implementation of the amendments in Bill C-31. Evidence of use is not required to renew a trademark registration in Canada.
Once a registration is more than three years old, it becomes vulnerable to challenges for non-use, pursuant to Section 45 of the Trademarks Act. This is a summary procedure determined by the registrar. Any person may request the registrar to send a notice to a registrant requiring evidence of use, in the form of an affidavit or statutory declaration. There is no cross-examination. Each party is entitled to file submissions or attend a hearing. The registrar’s decision may be appealed to the Federal Court and new evidence can be filed on appeal. In addition, the Federal Court has exclusive jurisdiction to expunge or amend a registration on the grounds of invalidity set out in Section 18. These include the following:
• The mark was not registrable at the date of registration;
• The mark is not distinctive (determined at the date of the expungement proceedings);
• The mark has been abandoned; or
• The applicant was not entitled to secure the registration, which assesses competing rights between trademark owners (subject to Section 17, which stipulates that a challenge based on prior use or a confusingly similar mark may be made only by that person or a successor, and cannot be brought more than five years after registration). Under Bill C-31, any mark that the Federal Court finds to be likely to unreasonably limit the development of any art or industry can be expunged.
A rights holder may take action for improper use of its trademark based on infringement, passing off or depreciation of goodwill. Owners of registered marks can bring an infringement action under Section 19 or 20, usually combined with an action for depreciation of goodwill under Section 22, as well as an action for passing off. Owners of unregistered marks may bring only an action for passing off and are likely to succeed only in the geographical area in which the mark has an established reputation. Success in a passing-off action depends on proof of actual or likely damage. Since January 1 2015, owners of registered trademarks have also been entitled to record their marks with the Canada Border Services Agency, as part of the new request for assistance programme. Under this, customs officials are entitled to temporarily seize suspect goods when they are imported into Canada, to allow the rights holder to confirm whether the goods are counterfeit and, if so, commence civil proceedings for infringement.
A cease and desist letter may be sufficient to stop the other party’s undesirable conduct.
Action can be commenced by application to the court or by pleadings, and a plaintiff may request a summary trial, summary judgment or an interim injunction pending trial. However, summary or interim orders are rarely granted. Both the Federal Court and provincial courts have jurisdiction over infringement and passing-off actions. Any lower-court decision may be appealed. A rights holder may also apply to a court for an order for interim custody (pending determination of the status of the allegedly infringing goods) or, in limited cases, an order preventing the import of infringing goods. The plaintiff may be requested to give an undertaking as to damages in these situations. Successful court proceedings may result in an injunction, damages and an award of costs and an order for the destruction, export or other disposition of any offending goods, packages, labels or advertising material. The plaintiff must choose either damages or profits. As yet, statutory damages are not possible. Generally, the winning party is entitled to some portion of its legal fees and disbursements. The cost, length of the proceedings and enforceability of a judgment must all be considered before choosing court action. Punitive damages are available in the case of trademark infringement where the defendant’s conduct is so “malicious, oppressive and high-handed that it offends the court’s decency”.
Trademarks, whether registered or unregistered (including pending trademark applications), are transferable according to Section 48 of the act.
A registered trademark or pending application is transferable either in connection with or separately from the goodwill of the business with which it is associated. However, where the transfer of a mark results in multiple owners, the mark may lose its distinctiveness. While a trademark assignment need not be recorded with CIPO, recordal ensures that the assignment is recognised as valid and enforceable against third parties and that pertinent documents are directed to the proper owner. A photocopy of the assignment document and the necessary government fees (currently C$100 per mark) are required. A change of name can be recorded without any supporting documentation. Changes arising from mergers require a photocopy of the merger document to be filed. There are no government fees for recording changes of name, mergers or changes of address. The registrar will also accept a security agreement for recordal on the register free or charge.
There are no provisions in the act for recordal of an assignment of an unregistered trademark or trade name, and such assignments are therefore not recorded at CIPO. Both registered and unregistered marks may be licensed in Canada, pursuant to Section 50. Licences need not be in writing, although a written record – plus evidence of actual control over use by the licensor – is advisable. Licences are not usually recorded with CIPO.
Some overlap is possible between trademark law and copyright law where the subject matter involves logos or design trademarks. Artistic works, when used as a trademark, may also be protected by copyright, provided that they are original. Industrial designs may also overlap with trademarks. For example, the shape of the product or its packaging may be registered as a distinguishing guise or as an industrial design. The Supreme Court has disapproved of the concept of ‘evergreening’ the monopoly conferred by other IP rights, particularly patents, through the use of trademarks. However, the Trademarks Act does not expressly prevent this.
A domain name may be registered as a trademark, provided that it functions as such.
The Canadian Internet Registration Authority (CIRA) administers registrations for top-level country-code ‘.ca’ domain names and restricts registrants through its Canadian presence requirements to certain qualifying parties, including those holding a Canadian trademark registration that corresponds to the domain name at issue. Eligible parties may lodge complaints seeking the transfer of domain names that have been registered in bad faith through the CIRA Domain Name Dispute Resolution Policy. Panels require complainants to demonstrate prior rights in the mark, and the registrant’s bad faith and lack of legitimate interest in the domain name, before they will order a transfer. With regard to keyword advertising, Canadian courts have held that use of a competitor’s mark is allowable as long as there is no misrepresentation. Similarly, use of a registered mark in a website metatag has also been found not to be infringing or depreciate goodwill, as such tags are not visible to the public and do not create a deception.
China’s legislation governing the registration and protection of trademarks comprises:
• the Trademark Law and its Implementing Regulations;
• the Rules for Trademark Review and Adjudication;
• the Provision for the Establishment and Protection of Well-known Trademarks; and
• other related provisions promulgated by the State Administration for Industry and Commerce under which the Trademark Office and the Trademark Review and Adjudication Board (TRAB) are established.
China is a signatory to all major international treaties regarding registration and protection of trademarks, including:
• the Paris Convention for the Protection of Industrial Property;
• the Madrid Agreement concerning the International Registration of Marks;
• the Madrid Protocol; and
• the Nice Agreement.
The holder of an unregistered mark has the right to use a trademark, no matter whether it is registered. However, if a mark is to be used on tobacco products, it must be registered.Use of an unregistered mark in an extensive manner can give a descriptive mark acquired distinctiveness and thus make it eligible for registration.
Well-known unregistered marks and other prior used unregistered marks can serve as grounds to challenge the registration of a later filed trademark. The Trademark Law provides that an unregistered right, including unregistered trademarks, can be the basis of an opposition/invalidation to a trademark application/registration if:
• the trademark infringes upon the prior unregistered right;
• the trademark has already been used by another party and enjoys a certain reputation;
• the trademark was filed by the mark owner’s agent or representative without authorisation; or
• the trademark is identical or similar to an unregistered mark previously used by another party on identical or similar goods, and the trademark owner knew of the existence of the unregistered mark through a contractual, business or other relationship.
As a general rule in China marks should be registered in order to prevent them from being used by other parties. Unregistered marks receive only limited protection unless they are well known. The owner of an unregistered but well-known mark can prevent others from registering or using a mark on goods or services that are identical or similar to those bearing the well-known mark if the mark at issue is a reproduction, imitation or translation of the well-known mark and likely to cause confusion. ‘Well-known trademarks’ are trademarks that are well known to the relevant public. The determination and protection of well-known marks depend on numerous variables. When determining whether a mark is well known, the following factors could be considered:
• extent of the relevant public’s awareness of the trademark;
• duration of use;
• duration, extent and geographical scope of any publicising work for the trademark;
• protection records of the trademark as a well-known trademark; and
• other factors concerning the mark’s popularity.
Any natural person, legal entity or other organisation can file and own a mark in the course of its production or business operations.
For non-Chinese applicants, a power of attorney signed by its authorised representative to appoint a Chinese trademark agent and the applicant’s certificate of good standing (or passport) are required for trademark applications. Usually, photocopies of these documents without notarisation and legalisation are sufficient for filing trademark applications in China.
Any mark consisting of words, devices, letters, numbers, three-dimensional marks, combined colours and sounds or a combination of these factors, which can distinguish the goods of a natural person, legal entity or other organisation from those of others, can qualify as a trademark.
The following signs shall not be used as a trademark:
• those identical or similar to the name, flag, emblem, song or medals of China or its army, and those identical to the name or the symbol of the central government as well as the place or symbolic building thereof;
• those identical or similar to the state name, national flag or emblem, or military flag of any foreign country, except with the approval of the government concerned;
• those identical or similar to the name, flag or emblem of any international organisation, except with the approval of the international organisation concerned or where the mark is unlikely to mislead the public;
• those identical or similar to the official sign or inspection mark indicating control and guarantee, except where official authorisation has been granted;
• those identical or similar to the symbols or names of the Red Cross or the Red Crescent;
• those that discriminate against people of any nationality;
• those that are deceptive and which are likely to mislead the public to misidentify the quality or other characteristics or place of origin of the goods; and
• those having an adverse social impact.
Geographical names for administrative divisions at or above county level and foreign geographical names that are well known to the public shall not be used as trademarks, unless that have other meanings or serve as a component of a collective mark or certification mark.
None of the following marks qualify for trademark registration:
• marks made up solely of the generic names, designs or models of the goods on which they are used;
• marks which refer only to the quality, main raw materials, function, use, weight, quantity or other features of the goods in respect of which they are used; and
• marks lacking any distinctive features.
However, any such marks can be registered if it can be shown that they have acquired distinctive features as a result of use and thus become distinguishable.Device marks that are in a shape that originates from the nature of the goods, or is necessary to achieve a technical effect or to enable the goods to keep substantive value, are not registrable as three-dimensional trademarks.
The timeframe for the Trademark Office to examine a trademark application is nine months from the receipt date of the application. After the trademark is filed, the Trademark Office will first examine its formality. If the office considers that the formal requirements have been met, but that amendments are necessary, it will ask the applicant to amend the application within 30 days of receipt of the notification of amendment. After the amendment is accepted by the Trademark Office, it will issue an official filing receipt to the applicant. The Trademark Office will then proceed with the substantive examination of the trademark application. If the trademark is found to lack distinctiveness, be prohibited or be identical or similar to a third party’s prior trademark application or registration for the same or similar goods, the office shall refuse the application and will not publish the mark in question.
Applications that have passed examination will be published in the Trademark Gazette for three months for opposition. A prior rights holder or an interested party that deems that the published trademark violates its prior rights, or any person who deems that the published mark is prohibited or lacks distinctiveness may raise an opposition before the Trademark Office within three months of the publication date. After an opposition is filed, the Trademark Office shall make a decision on the opposition within 12 months of the expiration date of the publication period, although an extension of six months is available. If the opposed party is dissatisfied with the Trademark Office’s decision, it may file an application for review with the TRAB. If the opponent is dissatisfied with the Trademark Office’s decision, it may not file an application for review, but can file an invalidation request after the trademark is registered.
A mark will become registered if there is no opposition filed against its registration or it is found that the opposition filed is not justifiable.
Non-use cancellation: If a registered mark is not used in China for three consecutive years without justification, it becomes susceptible to a non-use cancellation action. Upon receipt of such an application, the Trademark Office will notify the mark owner to submit, within two months, either:
• evidence of use of the mark in the three years prior to the date of the application for cancellation; or
• justified reasons for its failure to use the mark.
If the registrant fails to submit sufficient evidence or acceptable reasons, the Trademark Office will cancel the registration. ‘Use’ of a mark refers to affixing trademarks to commodities, commodity packages or containers, commercial documents, advertisements, exhibitions and other commercial activities to distinguish the origin of the commodities by the trademark owner or authorised licensees.
Distinctiveness is essential for registration. A mark is considered to lack distinctiveness if it becomes the generic name or figuration of the goods for which the mark is to be registered. If a registered trademark has become the generic name of the goods, any party may file a cancellation application against it with the Trademark Office. Consequently, rights holders should ensure that they use the mark in a proper way to prevent it from becoming generic.
The Trademark Office shall declare a registered trademark invalid if it finds that it is a prohibited mark or lacks distinctiveness, or if the registration was acquired by fraud or other unfair means. Any other party may request the TRAB to invalidate such a registered trademark. If a registered trademark violates the prior rights of another party, the prior rights holder may, within five years of the registration date of the said trademark, apply to the TRAB to invalidate it.
After registration, a trademark should be renewed every 10 years. If the registrant fails to proceed with the renewal procedure upon expiry of the grace period, the trademark shall be cancelled.
Infringement of a registered trademark is subject to administrative action, customs measures and civil litigation, which are the three main channels for enforcing trademark rights in China. In serious cases, trademark infringements may be subject to criminal penalties and the persons directly responsible may be prosecuted for criminal liabilities and be subject to imprisonment. An unregistered well-known trademark is also protectable by administrative action and civil litigation. However, much more evidence must be produced to prove the mark’s reputation than for a regular registered trademark.
Local Administrations of Industry and Commerce (AICs) are the government authorities in charge of administrative actions and may carry out on-site investigations, take raid actions, seize infringing products and impose fines on infringers within their jurisdictions. Local customs offices can take customs actions ex officio or based on a request to prevent infringing products’ entry into or exit out of China. The Chinese court system comprises courts at four levels: the Supreme Court on the top, higher courts in each province and municipality, intermediate courts at city level and district courts at district or county level, as well as IP courts established in Beijing, Shanghai and Guangzhou in late 2014. Many intermediate courts and a few district courts have established IP tribunals. Accordingly, a trademark infringement case initiated by a trademark owner should be brought before an IP court or IP tribunal of the court that has proper jurisdiction.
Generally speaking, AIC actions and customs measures are less costly and faster. Many administrative actions before AICs can be completed in three months from the filing of a complaint to the issuance of a written decision. On the other hand, AICs and customs offices do not have the authorisation to award damages. In civil litigation, trademark owners can claim damages and have more control over the proceeding. For example, the trademark owner can request a preliminary injunction, evidence preservation and property preservation and settle the case if needed. Chinese civil litigation is a two-instance system: most cases at first instance can be completed within one year, while cases at second instance take a few months.
As in many other civil law countries, damages in China are used to provide compensation for losses suffered by the trademark registrant; therefore, the amount of damage shall be equal to the losses of the mark owner, which includes reasonable expenses incurred in stopping the infringement. In practice, the amount of damages is calculated using:
• the actual losses suffered by the trademark registrant;
• the profits of the infringer; or
• a multiple of the trademark royalties.
If it is difficult to establish the amount of damages based on the above methods, the court may award, at its discretion, statutory damages of up to Rmb3 million depending on the circumstances. For bad-faith infringement, compensation may be between one and three times the damages determined in the aforesaid manners.
If a registered trademark mainly describes or directly indicates the features of the goods for which it is used, the trademark owner has no right to prohibit others from using it fairly. If, prior to the application date of the registered trademark, another person has been using an identical or similar trademark on the same or similar goods and has acquired a certain influence, the trademark owner has no right to prohibit this person from continuing to use the mark in the same manner. If the trademark owner fails to provide either evidence of actual use in the last three years or evidence that others have suffered loss in a litigation case, the defendant may be exempt from paying damages. If a seller of infringing goods can prove that the goods were obtained legitimately in good faith and discloses the source, it can be exempt from paying damages.
When a trademark registrant has evidence to prove that another party is infringing its registered mark or that such infringement is imminent, and that if such infringement is not stopped in time it is likely to cause irreparable harm to the registrant, the registrant may, prior to instituting legal proceedings, apply to the court for interim measures, including a preliminary injunction and property preservation measures. In addition, if evidence of infringement could be lost or would be difficult to obtain at a later time, the registrant or an interested party may, prior to instituting legal proceedings, apply to the court for an order to preserve evidence. After receiving an application for such interim measures, the court is required to issue a ruling within 48 hours.
To record assignment of marks, the assignor and the assignee should jointly file an application for assignment with the Trademark Office. Both the assignor and the assignee are required to sign a power of attorney respectively and submit their valid certificates of good standing for the purposes of recordation of assignment. If the assignor has valid registrations or applications for the same or a similar mark in respect of the same or similar goods, all such registrations or applications should be assigned to the same assignee.
Under the Trademark Law, when a trademark registrant licenses another party to use its registered mark, in addition to jointly executing an application form for recordation of licence, the licensor and the licensee must also issue a power of attorney respectively and provide their respective certificate of good standing. A trademark licence can only be used against a third party of good faith if it is officially recorded.
There are many areas of overlap between trademark rights and other rights, such as prior copyrights and trade name rights. In particular, prior rights can serve as prior basis to lodge oppositions if the opponent has no prior trademark rights in China.For instance, a logo can be protected under both the trademark law as a trademark and the copyright law as an artistic work. In one case, an applicant that owned a prior trademark registration over a logo with respect to goods in Class 07 became aware of an offending trademark application filed by a third party for the same logo but designating goods in Class 25. The applicant finally prevailed in an opposition against this offending application on the grounds that it infringed upon its prior copyright over the logo.
In China, many online infringements rely on traditional rights established offline. Therefore, although domain names are registered on a first come, first served basis, prior registered or used marks and company names still form an important basis for most actions against cybersquatting.The China Internet Network Information Centre has implemented a domain name dispute policy, which allows an interested party to apply for arbitration with the China International Economic and Trade Arbitration Commission in Beijing or at the Hong Kong International Arbitration Centre. Compared with litigation before a court, domain name arbitration is fast and economical. However, an application for arbitration in respect of a disputed domain name must be filed within two years of the initial registration of the disputed domain name. To recover an infringing domain name, the applicant must prove that a prior right to a domain name meets the following essential criteria:
• The disputed domain name is identical or confusingly similar to its brand name or mark;
• The disputed domain name holder has no right or legitimate interest in the domain name; and
• The disputed domain name was registered in bad faith.
French trademarks are governed mainly by Law 1991-7, which implements the EU First Trademarks Directive (89/104/EEC) and is codified in the Intellectual Property Code. The code was amended several times, in particular by Law 2007-1544, which implements the EU IP Rights Enforcement Directive (2004/48/EC).
France has ratified the following international conventions and treaties:
• the Paris Convention for the Protection of Industrial Property (March 20 1883);
• the Madrid Agreement (April 14 1891);
• the Madrid Protocol (June 27 1989);
• the Nice Agreement (June 15 1957);
• the Vienna Agreement (June 12 1973);
• the Trademark Law Treaty (October 27 1994);
• the World Trade Organisation’s Agreement on Trade-Related Aspects of Intellectual Property Rights (April 15 1994); and
• the Singapore Treaty on Trademarks (March 27 2006).
French trademark law confers no exclusive right to the owner of an unregistered mark. However, a well-known mark within the meaning of Article 6bis of the Paris Convention may be protected under civil law, even if it has not been registered in France, if:
• an unauthorised use of the mark by a third party is likely to cause damage to the mark owner; or
• such use constitutes an unjustified exploitation of the mark.
In order to enjoy such protection, the well-known mark must be recognised by a substantial proportion of the public in relation to the goods/services concerned. French courts assess the well-known character of the mark, taking into consideration factors such as the seniority of the mark, the scope and the intensity of its use, and the promotional and advertising investments.
Any natural person or legal entity can apply for a French trademark before the French Institut National de la Propriété Industrielle (INPI). The application can be filed by the owner itself or its representative. A representative is mandatory if the trademark has several applicants or if the applicant is not resident in France, an EU member state or the European Economic Area. If the representative is neither a lawyer nor a patent attorney, it must at least be established in the European Union or the European Economic Area and must have a power of attorney (neither notarised nor legalised).
A trademark can be registered if it is capable of distinguishing the goods/services of one undertaking from those of another. A French trademark may consist of any sign capable of being represented graphically. The Intellectual Property Code gives examples of such signs, including:
• denominations in all forms – words, surnames and geographical names, letters and numerals;
• audible signs – sounds and musical phrases (represented on a stave); and
• figurative signs – devices, logos, shapes (particularly those of a product or its packaging) and shades of colour, provided that the description of those colours specifies an international identification code for each colour.
A sign that has no distinctive character or that is descriptive or generic may not be protected as a trademark. The distinctive nature of the sign shall be assessed at the time of the application in relation to the goods/services for which registration is sought. The following signs, for instance, have no distinctive character:
• signs that constitute the necessary, generic and usual designation of the goods/services;
• signs that designate a feature of the product/service (eg, quality, quantity, geographical origin); and
• signs that consist exclusively of the shape imposed by the nature or function of the product, or a shape that gives the product its substantial value.
Distinctive character may be acquired by use, except when the sign is of the kind described in the last bullet point above. The following may not be adopted as a mark or an element of a mark:
• signs excluded by Article 6ter of the Paris Convention (eg, state emblems, official hallmarks, flags), as well as those of the Red Cross;
• geographical indications for wines/spirits that do not originate from that geographical area;
• signs that are contrary to public policy or morality, or whose use is prohibited by law; and
• signs that are liable to mislead the public, particularly as regards the nature, quality or geographical origin of the goods/services.
A sign may not be adopted as a trademark where it infringes prior rights, particularly:
• a registered earlier mark or a well-known prior mark within the meaning of Article 6bis of the Paris Convention;
• a company name or a trade name/signboard known throughout the national territory, where there is a risk of confusion in the mind of the public;
• a protected designation of origin;
• a copyright;
• rights deriving from a protected industrial design;
• personality rights of another person, particularly his or her surname or pseudonym; and,
• the name, image or repute of a local authority.
In addition, since an application for a mark that is identical or similar to a prior registered mark is considered to be trademark infringement in France, a prior rights search should be carried out before filing a trademark application.
Prior trademark searches usually concern either identical marks/company names or similar marks. In most cases, both types of search are necessary in order to secure a trademark application. A search for identical marks is possible using INPI’s online database. However, such search includes neither prior company names nor any analysis of the similarity between the goods/services of the earlier identical marks and the goods/services for which registration is sought. Consequently, it is recommended to call on French trademark professionals to conduct such a search and analysis. The same is true of searches for prior similar marks, as the assessment of the similarity between prior marks and the applied-for mark has to be made with reference to French case law and practice.
Applications for registration should be filed before INPI together with proof of payment of the filing fees. They should include:
• information on the applicant;
• a sample of the mark; and
• a list of the goods/services for which registration is sought, specifying the classes of the Nice Classification concerned.
Failure to provide the information above or proof of payment will result in the inadmissibility of the application. If priority is claimed, the reference of such priority should be provided. In case of foreign priority, the applicant shall provide INPI with an official copy of the prior application (with a translation) and proof of the right to claim priority within three months of filing the application in France. Only one mark may be applied for per filing. If INPI considers an application admissible, it will be published in the Trademark Gazette within six weeks of the filing date.
INPI examines all applications to determine whether:
• the application and the attached documents satisfy the conditions set by law; and
• the sign may be registered as a mark, based on the criteria listed above.
However, INPI does not conduct any search for prior rights during the examination process. If an application is considered unfit for registration, INPI will issue an objection, with a deadline for the applicant either to amend the application or to reply to INPI’s objection (one month for formal shortcomings and two months for substantive shortcomings). In the absence of a response by the deadline or if INPI rejects the applicant’s changes, a final refusal of registration will be issued. Such refusal may concern all or part of the application, depending on the scope of the irregularity or the objection raised by INPI.
Within two months of publication of an application for a French trademark in the Trademark Gazette or, for an international registration, in the World Intellectual Property Organisation Gazette, an opposition may be filed, in person or through a representative, by:
• the owner of a prior registered mark or a prior application;
• the owner of a prior well-known mark; or
• the exclusive licensee of such marks, unless otherwise stated in the licensing agreement.
The two-month deadline is not extendible. A representative is mandatory in the same circumstances as for filing applications. The opponent has to submit proof of ownership of the mark on which the opposition is based. If the opposing mark was registered at least five years before the date of opposition, the applicant may request that the opponent provide evidence of use of its mark. The opponent shall then prove use for at least one (not necessarily all) of the goods/services covered by its prior mark or provide proper reasons for non-use. INPI should decide on the opposition within six months of filing of the opposition. In the absence of a decision within such timeframe, the opposition shall be deemed rejected. However, in practice, INPI always makes a decision before the end of the six-month period. This period shall be suspended in the following cases:
• ex officio by INPI if the prior mark has not yet been registered;
• at the request of one of the parties if there is a claim pending before the courts; or
• at the request of both parties, for three months, renewable once at the request of both parties.
INPI’s opposition decisions are appealable before specialised courts of appeal, within one month of the notification of the decision if the appellant is French, and within three months if the appellant is not from France. The territorial jurisdiction of these appellate courts is determined by the domicile of the appellant; the Paris Court of Appeal has exclusive jurisdiction where foreign appellants are concerned.
The applicant may request, in writing, the complete or partial withdrawal of its application at any point in time until the technical preparation for registration begins.
Unless the application is rejected or withdrawn, the mark is registered in the National Trademarks Register for 10 years from the filing date. Registration of an unopposed application takes approximately four to five months from the application date, while registration of an opposed application takes about 10 to 11 months. INPI issues the registration documents about two to three weeks after the registration.
Registered trademarks are renewable every 10 years, by declaration. At the renewal, the owner of the trademark shall not modify the sign nor extend the list of goods/services. However, the renewal may apply only for part of the goods/services stated in the initial registration. Proof of use is not required for renewal. A renewal declaration should be submitted to INPI in the six months preceding the expiry of the registration. An application for renewal may also be filed within an additional six-month period, upon payment of additional fees. Renewal shall take effect on the day following the expiry date of the registration. INPI issues the renewal documents about two to three months after the renewal.
Cancellation: The validity of a registered mark may be challenged through a cancellation action or in infringement litigation before the courts:
• on absolute grounds (impossibility of graphic representation; absence of distinctive character and descriptiveness; unlawful signs); or
• on relative grounds – namely, earlier rights.
A cancellation action based on absolute grounds may be brought by any interested party or the public prosecutor, whereas relative grounds may be invoked only by the owner of an earlier right (or its licensee). Representation by an attorney at law is compulsory in these judicial actions. The first-instance courts usually issue a decision within nine to 18 months. Their decisions are appealable before courts of appeal.
Acquiescence: If the owner of a trademark has acquiesced to the use of a later identical or similar mark for five successive years while being aware of such use, and if the later mark was applied for in good faith, the owner of the earlier right shall no longer be entitled to act against the use of the later mark in respect of the goods/services for which the later mark has been used.
Revocation for non-use: If, within a successive period of five years starting on the publication of registration, the mark has not been put to genuine use in connection with all or part of the goods/services for which it is registered, and there are no proper reasons for non-use, the rights of the mark owner shall be revoked. Such revocation can be invoked by any interested party or as a counterclaim in infringement proceedings. In this respect, use of the mark in a modified form that does not alter its distinctive character is considered genuine use. The owner of the mark for which revocation is requested bears the burden of proof of genuine use of its mark. Evidence of use shall be provided for all goods/services for which the trademark is registered. Failing that, the mark will be revoked for the goods/services for which genuine use was not proved. If use of the mark started or resumed within three months of the request for revocation, after the owner of the mark has become aware of a request for revocation against its mark, such use shall be disregarded. Revocation shall take effect retroactively as of the date of expiry of the five-year period mentioned above.
Revocation for genericisation: If a mark has become the common name in trade for a product/service for which it is registered, its owner’s rights shall be revoked for such good/service.
Revocation of a misleading mark: The registration of a mark shall also be revoked if the mark has become misleading, particularly as regards the nature, quality or geographical origin of a product/service.
Surrender: A registered mark may be surrendered at any time in respect of all or part of the goods/services for which the mark is registered.
Anyone that uses a mark without the authorisation of its owner, by reproducing the mark or imitating it for identical or similar goods/services, shall be liable for trademark infringement. In order to determine an infringing act, the court must assess:
• the identity or similarity of the conflicting signs on the basis of visual, phonetic and intellectual criteria; and
• the identity or similarity of the goods/services concerned.
Civil infringement proceedings can be brought before specialised courts by either the owner of a mark or the exclusive licensee, if the licence is recorded in the Trademark Register. A licensee whose licence agreement has not been recorded can intervene in infringement proceedings only to claim for remedy for damages that it suffered. An infringement action must be brought within three years of the infringement. Such infringement may be proved by any means. To secure evidence of the infringement and to obtain any information related to it, the rights holder may obtain from a competent court an order to carry out a seizure at the premises of the alleged infringer. Such order authorises a bailiff to seize the suspected infringing products (effective seizure) or to visit the alleged infringer’s premises to collect evidence of the infringement by taking pictures of the suspected infringing goods or taking samples (descriptive seizure). The rights holder shall then summon the alleged infringer on the merits before a court within 20 working days or 31 calendar days, whichever is the longer, as from the seizure. Otherwise, the seizure shall be annulled at the request of the alleged infringer. Prior to an infringement action, the rights holder can also request an injunction in order to prevent an imminent infringement or any further infringement, by means of summary proceedings. Such proceedings may be ex parte if the circumstances require that such measures be issued without the defendant being heard.
In order to be enforceable against third parties, the following information should be recorded in the Trademark Register:
• information relating to the owner and the mark, as well as acts affecting the existence or scope of the mark;
• acts affecting the ownership/enjoyment of the rights on the mark (eg, assignment agreement); and
• changes of name, legal form or address of the owner.
The recordation of a licence is not compulsory, but is useful for evidentiary and opposability purposes and for the licensee to be able to act in infringement litigation. The applicant of such recordation shall provide INPI with a copy or an abstract of the deed stating the change in ownership or use of the rights (not legalised, but translated into French).
Trademarks and other IP rights can overlap. Thus, a subject matter may be protected as a trademark, by copyright or as a design if it satisfies the requirements for such protection.
Under French law, unauthorised use of a trademark on the Internet also constitutes trademark infringement. The rights holder may sue those that unlawfully use its mark on the ground of trademark infringement or unfair competition. According to case law, the French courts have jurisdiction over infringements on websites that are intended for French consumers (depending on the language, the currency or the measurement units used on the website). Law 2004-575, which implements the EU E-commerce Directive (2000/31), establishes liability regimes applicable to internet access providers (IAPs), hosting service providers (HSPs) and website editors in case of an illegal act on the Internet, including trademark infringements. Article 6.I.2 of Law 2004-575 defines ‘HSP’ as the natural or legal person who, for the provision to the public through online public communication services, stores signals, writings, images, sounds or messages of any kind. By virtue of Article 6, IAPs and HSPs have no general obligation to monitor the information that they transmit or store, or actively to seek illegal activities. They are liable only if they knew of the illegal act or if they did not act promptly in order to delete the illegal content or make the content inaccessible when they became aware of it. As to domain names, the ‘.fr’ naming rules provide expressly that it is the responsibility of the person registering or using the domain name to ensure that it does not breach third parties’ rights. A dispute resolution procedure called Syreli is available for disputes over ‘.fr’ domains, in addition to judicial actions. This system is managed by AFNIC, the registry of the ‘.fr’ top-level domain; decisions are issued within two months of receipt of a complaint.
The following are enforceable in Germany: German trademarks, Community trademarks (CTMs), German trademarks based on international registrations, names and non-registered trade designations. German trademarks are governed by the Trademark Act, which implements the EU Trademark Directive (89/104/EEC) and the Regulation on Trademark-Related Administrative Proceedings. CTMs are governed by the EU Community Trademark Regulation (207/2009) and the Community Trademark Implementing Regulation (2868/95). International registrations that extend to Germany are governed by the Madrid Protocol and the Trademark Act. Names and non-registered commercial designations are governed by the Civil Code and the Trademark Act.
Germany has also acceded to several multilateral and bilateral international treaties, such as the Paris Convention for the Protection of Industrial Property, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks and the Agreement on Trade-Related Aspects of Intellectual Property Rights (see www.wipo.int/wipolex/en/ and www.dpma.de/english/index.html).
Commercial designations are protected against newer identical or confusingly similar trade designations once they are first used in Germany, but details of this protection can be complex (eg, the protection may be locally restricted and there may be coexistence in the case of natural persons with the same name). Unregistered trademarks and other commercial designations (eg, business symbols) are protected against newer identical or confusingly similar trademarks and commercial designations only from the date on which they acquire a sufficient degree of public recognition in the specific German market. The required minimum threshold is determined on a case-by-case basis. If the sign is distinctive, a degree of recognition from between 20% and 25% of relevant consumers is sufficient to pass the threshold test. However, if the sign is descriptive or not distinctive for other reasons, it must also have acquired distinctiveness through use in Germany. Accordingly, the threshold for this is set at 50%. Unregistered trademarks used only outside Germany to the required substantial degree may be afforded protection in accordance with Article 6bis of the Paris Convention only if the mark is well known. This will usually require between 60% and 70% recognition. These requirements must be proved by opinion polls conducted in accordance with requirements established by precedent.
Any natural or legal person may apply for and own a trademark. While representation is not necessary before the German Patent and Trademark Office (DPMA) or the Federal Patent Court – which has jurisdiction over certain trademark matters (although not infringement cases) – applicants or owners with no domicile, seat or commercial establishment in Germany must appoint a German representative. German attorneys at law and German patent attorneys must be duly empowered, although no power of attorney need be submitted to the DPMA or the Patent Court. Other representatives must submit a power of attorney in writing (either in German, or the original with a German translation). No notarisation is required. However, foreign applicants and owners may need to comply with their local formal requirements. Registration may be applied for a mark that consists of any sign capable of being represented graphically – particularly words, numbers, graphical devices and three-dimensional shapes. Other signs are capable of registration to the extent that they can be graphically represented (eg, colour (combinations), sound sequences and scents). The graphically represented sign must be capable of distinguishing the goods or services of one undertaking from those of other undertakings in a legal manner. Signs are not eligible for registration if they:
• are devoid of any distinctive character;
• are descriptive;
• are used by competitors to describe their goods and services;
• consist exclusively of the shape which results from the nature of the goods as such, are necessary to obtain a technical result or give substantial value to the goods;
• are contrary to public policy or accepted principles of morality;
• could potentially deceive the public – for example, in regard to the nature, quality or geographical origin of the goods or services;
• consist of legally protected signs and have not been authorised by the competent authorities; or
• have been applied for in bad faith.
However, the grounds mentioned under the first to third points above may be overcome by acquiring around 50% distinctiveness.
The DPMA will examine the trademark application with regard to formalities (eg, correct classification of goods and/or services and full payment of the application fees) and absolute grounds for refusal. Any deficiency will be raised by the DPMA in an official action granting the applicant at least one month in which to reply. These periods are extendable on request. This decision may in turn be appealed within one month of notification, by either an administrative appeal to the DPMA or a direct full appeal to the Patent Court, depending on the status of the person at the DPMA who first issued the decision. A decision of a DPMA appeal division may be appealed to the Patent Court. Decisions of the court may, on rare occasions, be appealed to the Federal Court. Publication and registration of a trademark occur when the DPMA has issued the allowance (without any official action, this is likely to be completed between three and six months from the application, although can vary greatly). The trademark has effect with regard to third parties from the date on which it is recorded in the Trademark Register, which is also the date from which the five-year grace period is calculated within which the trademark must be put to genuine use, unless an opposition is filed. In the case of an opposition, the start date is deferred to the date on which a final decision is reached on the opposition. An opposition may be filed three months after a trademark registration is published, provided that the corresponding fees are also paid. The rights on which the opposition is based and its scope must be clearly indicated.
A separate opposition must be filed for each right on the basis of which the newer mark is opposed. Generally, opposition proceedings are documentary proceedings with no oral hearing. A typical case will involve one or two rounds of short submissions. Currently it can take at least a year for the first decision in opposition proceedings before the DPMA. An opposition may be based on older German trademarks and CTMs, international trademarks in force in Germany and trade designations which are protected in Germany. It is also possible to base an opposition on older trademark applications. An admissible opposition that is based on older rights will succeed if the newer mark or the goods and services claimed in its specification are identical or (confusingly) similar to the older right on which the opposition is based. This includes a danger of association with the older mark. Basically, the scope of protection afforded to older well-known, famous or notorious trademarks will be broader. If the mark must be used, the owner of the opposed newer mark may contest genuine use. In such a case the opponent must establish genuine use during the preceding five-year period to the satisfaction of the DPMA in written proceedings. An important difference in comparison with CTM opposition proceedings is that the relevant usage period rolls forward (ie, genuine use must have taken place when the newer mark was applied for and continue until the date on which the final decision is made), unless non-use is exceptionally excused.
An opposition can also be based on the grounds that the opposed trademark was registered in the name of an agent or other representative of the (normally foreign) trademark owner. If and to the extent that an opposition succeeds, the opposed trademark will be expunged from the register once the ruling is final and binding. Any owner may relinquish its trademark completely or with regard to certain goods and/or services by filing a corresponding written request with the DPMA at any time.A trademark that is not put to genuine use within five years of the date of registration or, as the case may be, the final decision in opposition proceedings is deemed invalid. However, as long as maintenance fees are paid, the mark will continue to exist on the public records, because no declaration or evidence of use is required. If a trademark must be genuinely used, any third party may file a request for revocation at any time. If the owner does not object to this within two months, the mark will be revoked. In case of an opposition, the third party is informed and may then file a revocation action based on non-use with the exclusively competent German regional court. If the owner has commenced genuine use before the revocation request is filed, the trademark will not be revoked even if it had not been used for more than five years. However, use that commences less than three months before the cancellation request after the owner became aware of its potential filing will not be considered. Any party may file a request for revocation, and the trademark may be cancelled, if:
• the trademark has become the common name in the trade for the goods or services in respect of which it is registered as a consequence of acts or the inactivity of the owner; or
• use made of the mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services.
Further, any party may file a request for revocation if the owner is not fulfilling its legal requirements. The trademark may also be revoked and cancelled due to the existence of absolute grounds for refusal if the obstacle to protection still exists at the time that the decision on the application for cancellation is made and cancellation is requested within 10 years of the registration date. In respect of an enumerated number of grounds, a trademark may be cancelled ex officio if the procedure is commenced during the first two years after the registration date and the registration manifestly contravenes a finite number of provisions. These grounds may apply only to some of the goods and services for which the trademark is registered, in which case the cancellation will concern only that part of the trademark.
As an alternative to opposition proceedings, the owner of older rights may file at any time a request for cancellation based on an older trademark or trade designation in force in Germany. However, even if the other requirements are met, the registration may not be cancelled if the owner of the older mark has knowingly tolerated the use of the newer mark for the goods or services in respect of which it is registered for a period of five consecutive years – unless the newer mark was obtained in bad faith or the owner of the older right previously consented to registration and use. Further, cancellation is not possible if the older mark could have been cancelled on the date of publication of registration of the younger trademark. Cancellation requests based on original or subsequent absolute grounds for refusal, lack of standing to own a trademark and lack of genuine use may be filed with the DPMA. An action for cancellation for revocation or because of the existence of earlier rights (only by the owner of such rights) may also be commenced before the competent higher regional court. The trademark may be renewed 10 years after the application filing for some or all of the goods and services for which it is registered by payment of the applicable maintenance fee. All renewals and deletions will be recorded in the register, which may be accessed online at www.register.dpma.de.
Civil infringement proceedings may be based on a conflict with older rights. Typically, infringement claims will first be asserted against the infringer by sending a warning letter that requests it to cease and desist with a contractual penalty clause. Unless the infringer gives such an undertaking, the action requesting an order to cease and desist will remain admissible. The rights holder may seek an interlocutory injunction from the competent regional higher court (the competence of specific chambers is concentrated on the state level in a few courts in each state) if the matter is urgent. The petitioner must request injunctive relief soon after learning about the infringement (this period is not legally defined, although it is generally agreed to be within four weeks). Unless the infringer acknowledges the court order as final and binding, the petitioner will have to institute normal infringement proceedings. The following remedies are available in civil infringement proceedings:
• claims to cease and desist, which do not depend on the infringement being culpable;
• claims for actual damages (which may be demonstrated via three alternative methods: licence analogy; actual damages suffered by the rights holder; and profits made by the infringer which are attributable to the infringement, or unjust enrichment;
• claims for destruction and recall, or permanent removal from sale, unless this would be disproportionate;
• claims for information concerning the origin and sales channels of unlawfully marked goods or services (in special cases, these claims may also exist against certain third parties);
• claims that the infringer submit or allow access to banking, financial or commercial documents where these are required for the assertion of the compensation claim, unless this would be disproportionate. The court has the power to guarantee confidentiality protection;
• information claims, which under certain circumstances may be granted through an ex parte interlocutory injunction; and
• claims for the publication of the final judgment.
Reasonable attorneys’ fees and court fees are awarded, depending on the extent to which a party prevails. Wilful trademark infringement is a criminal act and may be punished. The local public prosecutor’s office is empowered by the Federal Act of Criminal Procedure to commence proceedings on its own initiative or upon receiving a complaint. The possibility of the rights holder influencing the investigation, including the speed at which it is conducted, are limited. The seizure and eventual destruction of imported counterfeit goods in Germany is possible under German and EU regulations, in regard to which detailed information is available from the German Customs Office at www.zoll.de/english_version/d0_protection_property/a0_trademark/index.html.
A change of ownership with regard to a German trademark takes place outside the register through the operation of law (eg, legal succession) or on the basis of an agreement (eg, assignment). While it is not mandatory to record such a change in the register, this is highly recommended in order to ensure that rights can be enforced without delay. The validity and the form of such a change of ownership depend on the applicable law. With regard to a registered trademark as such, there are no formal requirements. A German representative who is a German attorney at law or patent attorney may request the recordal of a change of ownership in the register without submitting a copy or original of the underlying legal instrument. In all other cases documentary proof must be submitted. Trademark licences are also granted outside of the register. A licensee may itself start infringement proceedings only with the consent of the licensor/owner of the licensed right. There is no statutory requirement to register a licence. Commercial designations and names are regarded as being inextricably associated with the relevant business operation or company (eg, goodwill) and may not be transferred without the business operation as such or licensed to another company. The related legal issues are complex.
A trademark that is an individual and sufficiently original creative work may also be protected by copyright. This not only applies to device marks, but on rare occasions may also include slogans that meet a high standard of originality. Further, there may be a nexus between trademark infringement and the German Unfair Trade Practices Act. This legal area is mapped out by many precedents and is highly complex. Enforcement resembles trademark infringement matters to a certain extent, but claims differ substantially.
The top-level country-code ‘.de’ is governed by DENIC eG. A dispute concerning a ‘.de’ domain name may be registered with DENIC in order to prevent its transfer. Disputes must be resolved amicably or, if this is not possible, in court. A substantial body of trademark case law applies to cyberspace, just as it does to the offline world. For example, a domain name that is similar or identical to a registered trademark also requires use for identical or similar goods or services in order for a trademark-based claim to succeed. Cases of famous marks or bad-faith domain name registration may be different. Bearing this in mind, precedents have established that metatags can be infringing. AdWord usage, on the other hand, will not normally constitute infringement unless the displayed advertisement contains something that is infringing.
In India, trademarks are protected through a combination of both specific statutes (eg, the Trademarks Act 1999) and ancillary legislation incorporated under, for example, the Customs Act 1962 and the Companies Act 1956. The Trademarks Act and related rules prescribe the procedure to be followed before the Trademarks Registry. In the case of civil proceedings initiated before the courts, the Code of Civil Procedure 1908 applies, while in the case of customs recordal, the Intellectual Property Rights (Imported Goods) Enforcement Rules 2007 apply.
Where trademarks or names are used in a company name, the Companies Act applies, alongside the rules prescribed under it. Criminal enforcement cases are brought under the Penal Code 1860. In addition, there are government guidelines, as well as other guidelines from regulators such as the Advertising Council. In some cases, unique legislation, such as the Emblems and Names (Prevention of Improper Use) Act 1950, also apply. The Indian courts have taken the lead in issuing landmark decisions on several issues, including recognition of trans-border reputation and goodwill, trademark violations in respect of unrelated goods, online counterfeiting and protection of celebrity rights.
In India, an unregistered trademark is entitled to protection under the tort of passing off. Section 27(2) of the Trademarks Act expressly provides for an action for passing off. The plaintiff must prove that:
• the trademarks are similar;
• the defendant is deceptively passing off its goods as those of the plaintiff; and
• there is bound to be confusion in the minds of consumers. The test to be applied is whether a person of average intelligence and of imperfect recollection would be confused.
While the Indian courts prefer evidence (eg, sales or advertisements) pertaining to India, they have come a long way in terms of recognising trans-border reputation and goodwill as a basis for enforcing rights. Using a later mark and taking unfair advantage of an earlier mark give statutory recognition to the concept of trademark dilution. In Bourjois Limited v Naunihal Singh (2013VAD(Delhi)311) the court, after applying the test of trade connection, held that the spa services provided by the defendant were closely related to the plaintiff’s cosmetic products. The defendant’s use of the identical mark BOUJRIS thus amounted to passing off its services as those of the plaintiff.
Sections 29 and 30 of the Trademarks Act clearly allow for an action based on infringement. Unlike passing off, in an infringement action there is hardly any burden on the plaintiff since entitlement is already established through registration. However, an infringement action does not lie against a prior user, implying that Indian courts attach a greater degree of importance to prior use (in many cases including prior international use) than to prior registration.
Searches for identical marks, phonetic equivalents and device marks can be carried out in the Trademarks Registry’s online records. The scope of searches has been broadened by the recent order of the Delhi High Court in Shree Nath v Allied Blenders and Distillers (MIPR2015(2)246), wherein the division bench formulated the ‘theory of synonyms’ for determining similarity between the trademarks OFFICER’S SPECIAL and OFFICER’S CHOICE. The court held that the rival marks were not identical, but were likely to cause deception as both convey the same meaning.
The registrar examines the mark and may communicate to the applicant any objections to it through a consolidated examination report. The applicant may then file a claim to contest or seek a hearing. In Intellectual Property Attorneys Association v The Controller General of Patents, Designs and Trade Marks (WP(C) 3067/2016 and CM APPLs 12987-12988/2016) the Delhi High Court stayed the order of abandonment of applications issued by the Trademarks Registry in cases wherein no notice for seeking the applicant’s response was served on the applicant.
Opposition can be filed within four months of the mark being published in the Trademark Journal. Anyone may oppose or object to a registration on the grounds of possible deception, confusion, dilution or descriptiveness.
If the mark is unopposed or the opposition dismissed, it proceeds to registration. The applicant may withdraw the application at any time during the opposition proceeding. Section 91 of the Trademarks Act provides for an appeal against an order or decision of the registrar to the IP Appellate Board (IPAB).
Once granted, a registration can be cancelled on the grounds that it was wrongly granted or remains on the register contrary to the law or due to a failure to observe certain limitations or conditions imposed thereon. A registered trademark can also be cancelled on the grounds of continuous non-use for five years and three months from date of grant of registration. A registered trademark can be cancelled by the registered owner on making an appropriate request to the relevant authority. The rectification action must be instituted by an aggrieved party. Partial cancellation for certain goods or services is possible. The petition can be filed with the Trademarks Registry or the IP Appellate Board. In the unusual case of Hindustan Unilever Limited v M/s Three-N-Products (P) Ltd (Order 117/2012), the IPAB ordered in a rectification petition that the trademark AYUR – which had been on the Trademarks Register for 25 years – be struck off the register on the grounds that AYUR is a generic term that cannot be monopolised. In deciding the petition, the IPAB considered the fact that the mark AYUR was contested in several oppositions.
Damages and other reliefs: Previously, the only remedies available in an action for infringement or passing off was an injunction (interim or final) and, in some cases, damages and/or costs, delivery of infringing stock of goods and/or rendition of accounts.In many cases an injunction is the most appropriate remedy. For example, in Bata India Ltd v AM Turaz (2013(53) PTC536 (Del)) the apex court held that the lyrics of a song containing the names of large corporations – including the Bata Group, Tata Group and Reliance Group – were per se defamatory to their corporate brands. The court further ordered that plays of the song include a disclaimer that the names mentioned are mere examples and that no injury or disrespect is intended to a particular brand or person. In some cases, the plaintiff may also seek an order for a court commissioner to visit the defendant’s premises to:
• search and seize any infringing goods in the defendant’s possession; and
• seal the defendant’s premises (Anton Piller injunction).
Another relief is an order to freeze the defendant’s assets or books of accounts pending adjudication (Mareva injunction). The courts have taken an aggressive stance against infringement by awarding damages, particularly in cases relating to the violation of well-known trademarks. Leading cases on damages in India include the following:
• Disney Enterprises Inc v Bharti (2013 (54) PTC 372 Del) – compensatory damages of Rs200,000 and punitive damages of Rs300,000 were awarded against the defendant.
• Cartier International AG v Gaurav Bhatia (226(2016)DLT662) – the Delhi High Court granted the highest ever punitive damages, totalling Rs10 million, for the infringement of trademarks and selling of counterfeit luxury brands online.
• Philip Morris Products SA v Sameer (Bombay) (2014(58)PTC317(Del)) and Philip Morris Products SA v Singh (Kolkata) (209(2014)DLT1) – the court granted nominal damages and costs to the plaintiff in consideration of the profile of the defendant. However, this was one of the rare instances in which the court has granted damages in a preliminary judgment.
Customs actions: The government has recognised the need for IP rights protection at its borders as a key defence against infringement. Under the Intellectual Property Rights (Imported Goods) Enforcement Rules, rights holders may register their IP rights with Customs to safeguard themselves against imports of counterfeits.
John Doe orders: The judiciary’s approach to counterfeiting shows an increasing trend of granting John Doe orders if a strong prima facie case is established. In Louis Vuitton Mattetier v Aggarwal (CS (OS) 2296/2011) the Delhi High Court issued a John Doe order along with an Anton Piller order. The order enabled the plaintiff to execute several raids over a one-month period in a New Delhi market in order to trace counterfeit Louis Vuitton goods and thereafter implead each party dealing in such counterfeits as defendants in the suit.
Counterfeit purchase undertakings: Counterfeit purchase undertakings are increasingly used to reduce costs, avoid litigation and ensure certainty. The rights holder’s lawyers or representatives personally confront a counterfeiter and serve a cease and desist letter upon a retailer selling counterfeit goods. The retailer must agree to comply with the undertaking or risk legal action.
Plea bargaining: There is a growing trend for settling IP infringement matters by way of plea bargaining. In State v Prakash (FIR 189/05 (Del)), a case involving steel buckets bearing the mark TATA, the court settled the matter by way of a plea bargain, following which the accused parties paid a fine of $222 each.
Unique orders: In Luxottica SRL v Munny (CS (OS) 1846/2009) the court disposed of the case following an agreement between the parties that instead of damages, the defendants would donate a specified amount to charity and 500 pairs of unbranded glasses to the visually disabled. In SRF Foundation v Shri Ram Education Trust ((2016)182PLR3) the division bench of the Delhi High Court recognised the doctrine of shared goodwill and common family legacy in the field of trademark litigation. The parties were given concurrent rights to use their family name “Shri Ram” in respect of their schools.
Cross-border reputation: The courts have also recognised that a mark can acquire reputation or goodwill without actual use in India. In Jolen Inc v Jain (MIPR 2010 (2) 176) the Delhi High Court applied the principle of cross-border reputation (established in NR Dongre v Whirlpool Corporation (AIR 1995 Delhi 300)) to recognise the plaintiffs’ right over the JOLEN mark owing to its prior adoption outside India and its international reputation and goodwill. In Las Vegas Sands Corp v Bhasin Infotech and Infrastructure Pvt Ltd (2012VIIAD(Delhi)362) the court recognised the trans-border reputation of the plaintiff’s trademarks VENETIAN and VENEZIA with respect to its hotels and services in Las Vegas and Macau. In support of this finding, the court relied on documents (eg, magazines, travel guides and websites) in circulation in India as well as the large number of visitors from India who had availed of the plaintiff’s services.
Restraints even where products are restricted: The court in Playboy International Incorporated v Malik (2001 PTC 328 (Del)) concluded that the PLAYBOY mark had become exclusively associated with the plaintiff due to extensive use all over the world, even though the products sold under this mark were banned in India.
Parallel imports: The judiciary’s attempts to combat parallel importation are commendable. In Philip Morris Products SA v Sameer (Bombay) (2014 (58)PTC317(Del)) and Philip Morris Products SA v Singh (Kolkata) (209(2014)DLT1) the court – while upholding the principle of national exhaustion as laid down in Samsung Electronic Co Ltd v Lalani (CS (OS) 1600/2006) – held that in order to claim protection under the normal rules of parallel importation, the importer/defendant must prove that the initial purchase of the trademarked goods was legal and that the goods were “lawfully acquired”. Indian courts prefer evidence such as bills of lading, invoices, receipts of payment of import duty, excise duty, import licences and sales tax certificates in deciding whether the goods were lawfully acquired.
Three-dimensional, shape, sound and texture marks: These marks are registrable and enforceable. In Ferrero SPA v MAA Distribution (India) Pvt Ltd (2010 (44) PTC 717 (Del)) the Delhi High Court restrained the defendants from marketing and selling chocolates and confectionery in order to protect the device, shape and distinctive wrapping of the plaintiff’s FERRERO ROCHER mark. Further, in Ferrero SPA v Dugar (2013 (55) PTC 277 (Del)) the court granted an injunction on the grounds that the continued marketing and sale of the defendant’s product would result in continued infringement of both the registered trademark and trade dress of the plaintiffs’ products. In India, the Yahoo! yodel and the ICICI tune are protected as sound marks.
Trade dress: The test of deceptive similarity applies in a passing off action regarding the trade dress of the product. The party claiming the passing off of trade dress must prove that the trade dress has acquired secondary meaning or goodwill or a reputation in the market in relation to the trade dress. In Skechers USA INC v Pure Play Sports (IA 6279/2016 in CS(COMM) 573/2016, Delhi High Court) the casual slip-on style of shoes was protected as trade dress and the defendants were restrained from using strikingly similar trade dress.
Gesture/motion marks: Protection has been granted in India in relation to gesture or motion marks that have become distinctive through use.
Well-known marks: The Trademarks Act clearly stipulates grounds under which a mark may be considered well known. In recent years both the Indian courts and the Trademark Registry have held an increasing number of marks (eg, TOSHIBA, TATA, FORD, ICICI and LOUIS VUITTON) to be well known in India. Consequently, these have been granted protection against use for unrelated goods. In Toyota v Mangal (CS (OS) 2490/2009, order dated July 8 2016) the Delhi High Court gave a mark well-known status after analysing its trans-border reputation. After extensive arguments, the court held that PRIUS’s global reputation as the world’ first hybrid car had spilled over into India, so much so that it was a well-known mark. A critical point of distinction in this decision was that it held the PRIUS mark to be well known despite it not being registered in India. This case was also remarkable because the court applied the concept of judicial notice, which is rare in trademark law. The Trademarks Registry has issued a (non-exhaustive) list of well-known trademarks based on judicial pronouncements.
Celebrity rights: Celebrities’ personality and name rights are protected under the laws of passing off. In DM Entertainment Pvt Ltd v Baby Gift House (MANU/DE/2043/2010) the court restrained the defendant from selling lookalike dolls of pop icon Daler Mehendi and held that unauthorised commercial use of the personal identity of a celebrity is a clear invasion of the celebrity’s exclusive right to commercialise his or her personality and images.
Fictional characters’ names: IP rights pertaining to fictional characters were recognised in Sholay media and entertainment Pvt Ltd v Sanghavi (2016IIAD (Delhi)286), wherein the defendants were restrained from using the SHOLAY, GABBAR and GABBAR SINGH trademarks, as such use amounted to infringement of the plaintiffs’ registered trademarks.
A trademark, either registered or unregistered, can be assigned. There are certain restrictions on assignment and transmission in order to prevent the creation of multiple exclusive rights. The courts have recognised the ability of plaintiffs to enforce rights in the absence of a recordal of assignments and devolution of title based on the execution of title documents. In Sun Pharmaceuticals Industries Ltd v Cipla Ltd (2009 (39) PTC 347 (Del)) the court ruled that where a trademark has been assigned, the fact that it is pending registration will not preclude the claimant from bringing an action for either passing off or infringement. A person entitled to a registered trademark by assignment or transmission is merely required to apply to the registrar in order to be registered as the mark owner. The applicant must prove its title only where there is reasonable doubt about the veracity of a statement or document. In UTO Nederland BV v Tilaknagar Industries Ltd (2012 (49) PTC 249 (Bom)) the court held a trademark licence to be invalid on the grounds that the clauses of the licence agreement implied an absence of quality control provisions.
A single object may enjoy multiple IP rights protection – namely, as a trade secret, copyright, patent and/or trademark. The copyright and trademark regimes may both apply to the same item, while design and trademark registrations may both be obtained for the same sign.
The ‘.in’ Domain Name Dispute Resolution Policy (.inDRP) sets out the terms and conditions applying to disputes between the registrant of an ‘.in’ domain name and a complainant. In order to protect a domain name under the law of passing off, it is essential that the second-level domain name is not a generic word, but rather an invented or coined word. In Plus Inc v Consim Info Private Limited (2010 (42) PTC 507 (Bom)) the court denied protection under the law of passing off to a registered domain name, owing to its descriptive nature. In Christian Louboutin Sas v Bajaj (CS(OS) 2995/2014) the court restrained the defendant from using the plaintiff’s well-known trademark on its commercial website after considering the proposition that the normal rules of parallel importation do not extend to the Internet due to considerations such as the anonymity and ubiquity of the Internet, and that the availability of counterfeit goods outside the exclusive channels may affect the aura of prestige surrounding the plaintiff’s luxury goods. In Shreya Singhal v Union of India (AIR2015SC1523) the court assessed the constitutional validity of the safe harbour for intermediaries and held that notice to an online marketplace to take down content must be given pursuant to a court order. All in all, the legal framework for trademarks in India seems well balanced, notwithstanding some procedural delays.
The protection of industrial property rights in Italy is regulated by the Civil Code and the Industrial Property Code. The Industrial Property Code was brought into force in 2005 by Decree-Law 30/2005; it was subsequently reformed by Legislative Decree 131/2010. Further, the implementing regulations of the code were introduced by Ministerial Decree 33/2010.
Italy is party to several international treaties, agreements and conventions, including:
• the Paris Convention for the Protection of IP Rights;
• the Agreement on Trade-Related Aspects of Intellectual Property Rights;
• the Madrid Agreement and the Madrid Protocol on the International Registration of Trademarks;
• the EU Community trademark system; and
• the Nice Agreement on the International Classification of Goods and Services.
The Industrial Property Code recognises “signs already known as marks” as valid IP rights which may bar the registration and use of subsequent trademarks. As a general rule, unregistered trademarks enjoy similar protection to registered trademarks. However, the following should be taken into account:
• Unregistered marks do not benefit from the presumption of validity; the burden of proof in civil proceedings is therefore higher than in the case of registered trademarks.
• Unregistered marks cannot form the basis of an opposition and can be enforced against subsequent registration only by means of civil action.
• The prior use of a sign which results in the sign becoming only locally well known does not exclude the novelty of a subsequent trademark.
• Locally well-known unregistered trademarks may still be used locally, regardless of the subsequent registration by a third party of an identical or similar trademark for identical or similar goods and services. However, this prior use does not affect the novelty and validity of the subsequent third-party registration.
Further, according to Article 6bis of the Paris Convention, foreign registrations that are well known in Italy may enjoy protection as unregistered trademarks.
To establish unregistered trademark rights, use of a sign must be effective and continuous. As stated above, such use may affect the validity of a subsequent registration only if it leads the previously used mark to become more than merely locally well known.
According to Article 19 of the Industrial Property Code, any natural or legal entity that “uses or intends to use” a mark can apply for its registration in Italy, as long as the application is not made in bad faith. Marks can be used by either the applicant or an authorised third party, and use is considered genuine if it is true, continuous and effective. A representative of the rights holder requires power of attorney before filing; however, this power of attorney need not be notarised or legalised.
As a general principle, a trademark may consist of any sign that is capable of being represented graphically, as long as it is capable of distinguishing the goods and services of one undertaking from those of other undertakings. This includes words (including personal names), designs, letters, numerals, sounds, shapes of goods or their packaging and colour shades and combinations. The following are excluded from registration:
• signs which cannot be represented graphically;
• signs without distinctive character;
• signs which consist exclusively of generic indications of the goods and services or descriptive indications as to the type, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services or any other characteristics of the same;
• signs which consist solely of a shape that: is dictated by the nature of the product; is necessary to obtain a technical result for the product; or gives substantial value to the product;
• signs which are contrary to law, public order or decency; and
• deceptive signs – in particular, signs which mislead the public as to the geographical origin, nature or qualities of the relevant goods and services.
The above exclusions may be applied by the Italian Patent and Trademark Office (IPTO), whereas only third parties can contest the following:
• signs which may infringe third-party author rights, IP rights or any other exclusive rights;
• signs which are identical or similar to earlier registered trademarks (having effect in Italy), where this may cause confusion among the relevant public;
• signs which are identical or similar to unregistered trademarks, company names, company signs or domain names, provided that the conditions set forth above for unregistered signs are met;
• signs which are identical or similar to an earlier trademark which enjoys a reputation for dissimilar goods or services, where use of the latter mark without due cause would take unfair advantage of or be detrimental to the distinctive character or reputation of the earlier trademark; and
• signs which are applied for in bad faith.
Trademark applications must be filed with the IPTO. An e-filing system was implemented in 2006; however, it is in the process of being completely revised. Once the application is filed, the IPTO will perform an examination based on formal requirements and absolute grounds for refusal. If the application does not meet formal requirements or must be refused on absolute grounds, the IPTO will issue a formal notification to the applicant, which is granted a period of at least two months to complete or revise the application or file observations in response to the refusal. The IPTO will then examine the applicant’s response and decide whether to accept the application or reject it, either totally or partially. If the application meets the requirements, it will then be published for opposition or observation by third parties.
The IPTO is not entitled by law to carry out any kind of search of prior rights; therefore, no official searches are available. An official online database is available at www.uibm.gov.it, but the search tools are very limited at present. The IPTO is revising the e-filing system (as mentioned) and implementing a database system that should provide users with better and improved tools.
The Industrial Property Code provides for an opposition system, which was implemented in 2010 and officially entered into force as of July 1 2011. Oppositions against Italian trademark applications must be filed within three months of publication of the application in the Official Bulletin of Trademarks. This period cannot be extended. Oppositions against Italian designations of international registrations must be filed within three months of the first day of the month following that in which registration of the international application is published in the World Intellectual Property Organisation Gazette of International Marks. This period cannot be extended. A notice of opposition can be directed against a single application and can be based on the rights included in Articles 8 and 12 of the Industrial Property Code, namely:
• earlier trademarks that have been applied for, have been registered or have effect in Italy at the time of filing of the contested application;
• portraits and personal names to which the applicant of the contested mark has no rights; and
• well-known signs – namely: names of persons; signs used in the fields of art, literature, science, politics or sports; and designations and acronyms of events and those of non-lucrative entities and associations, including the relevant emblems.
Unregistered trademarks, company names, domain names, well-known trademarks under Article 6bis of the Paris Convention and reputation claims cannot be enforced through opposition. These can be enforced only through invalidation actions. A notice of opposition must be filed with the IPTO in writing. The notice must be written in Italian and include all required documents. An opposition fee of €250 (plus postage) must be paid before filing the notice. The notice can be submitted to the IPTO in person or by registered mail or registered email. If a representative is appointed, power of attorney is required; however, the power of attorney need not be notarised or legalised. The notice will not be accepted if it is filed by a person which is not entitled to do so. The Industrial Property Code considers the following as legitimate opponents:
• applicants and holders of earlier trademarks (under Article 12);
• authorised exclusive licensees of earlier trademarks (under Article 12); and
• persons, entities and associations that hold relevant rights (under Article 8).
If the opposition is accepted, the IPTO will notify the applicant of the contested mark (the first communication). The notification will be issued within two months of the expiry of the opposition period. The parties then have a two-month cooling-off period in which they may reach an amicable settlement, which may be extended by joint request of the parties by up to 12 months from the date of receipt of the first communication. If an agreement is reached within this period, the parties must inform the IPTO. Otherwise, the opposition enters the adversarial stage. Within two months of the expiry of the cooling-off period, the opponent may file additional supporting documents or arguments, which the IPTO will forward to the applicant, setting a term for filing its observations. Within this term, the applicant may also request the opponent to submit proof of effective use of the enforced earlier trademark, if it was registered more than five years before the date of publication of the contested application. Evidence of effective use must be filed within 60 days of the relevant notification (this term may be extended up to six months). At the end of the adversarial stage, the IPTO will decide on the opposition, either refusing the contested application (in full or in part) or rejecting the opposition and awarding costs to the winning party (which may consist of the opposition fee and up to €300 of professional fees). The losing party may appeal to the Board of Appeal within 60 days of notification of the IPTO decision. If, after making all efforts provided by the law, the IPTO cannot serve the applicant with the notice of opposition, the opposed application will be rejected ex officio. In the case of an opposition against the Italian designation of an international registration, the IPTO will issue a provisional refusal, setting a three-month term for the applicant to appoint an Italian representative to defend the designation. If no representative is appointed, the provisional refusal becomes final and the designation is rejected with no further action required from the opponent.
Where no objections are raised by the IPTO and no third-party oppositions or observations are filed, an application can mature to registration in approximately nine to 12 months. A trademark is valid for 10 years from the filing date and can be renewed – for all or part of the originally claimed goods – for unlimited subsequent 10-year periods. There is also a grace period of six months after the official deadline, provided that the renewing party pays a surcharge. Renewal registrations are assigned new renewal application and registration numbers and a renewal certificate is issued within a couple of months of the renewal date.
Surrender: A trademark holder can always surrender its registration. Surrender must be recorded on the register by means of an appropriate declaration (subject to fiscal registration).
Revocation: If a trademark is not put to genuine use for five consecutive years after registration, it becomes vulnerable to revocation for non-use, which may be filed by any interested party. If use of the mark begins or resumes after the five-year period of non-use but more than three months before the claim for revocation is filed, the registration cannot be revoked, except in the case of rights in the trademark acquired by third parties through filing or use.
Invalidation: After registration of the mark, holders of conflicting earlier rights or any interested party (on the basis of absolute grounds for refusal) may file a claim for its invalidation. Invalidations are civil proceedings and must be filed before an IP court (tribunale delle imprese). The timeframe from filing of the claim to judgment may vary depending on the complexity of the case, but the average timeframe is two to three years.
The competent courts for any IP matter – involving registered or unregistered rights – are the tribunale delle imprese (enterprise tribunals): 21 highly specialised sections of the civil courts (approximately one for each Italian region). Where one of the parties is a foreign eenterprise, competence is limited to 11 of these possible locations, depending on the domicile or head office of the Italian counterparty to the suit. In cases of either imminent or ongoing violation of an IP right, the rights holder may request the IP court to grant provisional remedies. The main remedies that can be requested are:
• seizure (of products, tools and production plants, accounts and invoices and advertising materials);
• description (ie, inspection of products, production plants, accounts, advertising materials and any associated documents in order to collect documentary evidence of the infringement and the extent thereof); and
• injunction (enforceable at the infringer’s premises, those of subsidiaries and warehouses, and against third parties not identified in the petition).
The average period from filing of the petition to grant of the remedy is one month. Regarding compensation for damages, Italian judges usually take into account all appropriate factors, such as negative economic consequences – including the lost profits of the rights holder and unfair profits made by the infringer – and moral prejudice caused to the rights holder. The infringer can be forced to return all profits earned. According to Articles 473 and 474 of the Criminal Code, the infringement of a registered IP right so as to create the risk of confusion among the public is a criminal offence. Public prosecutors can therefore prosecute the felony independently if there is public deception. Consequently, even where it is advisable, it is not strictly necessary to file a criminal complaint. Article 517ter of the Criminal Code applies where the infringement does not involve an actual risk of confusion among the public. In this case, the rights holder must file a criminal complaint.
There are no specific requirements in Italian law to finalise an assignment, insofar as documents are concerned. An assignment must take written form in order to be recorded in the Trademark Register. It may be recorded by means of the original, notarised assignment deed (foreign deeds must be legalised and include a sworn Italian translation), or by means of a simplified declaration stating that the title has already been assigned. The declaration must be executed by both parties, but there is no need for notarisation or legalisation of signatures. Before recording the assignment with the IPTO, fiscal registration of the assignment deed or declaration is required. It takes approximately one year for the assignment to be recorded in the register, but the assignment is effective as of the date of filing of the petition.
A merger is recorded by means of a petition filed with the IPTO and a certificate proving the merger, issued by the Commercial Registry or other competent authority. If the document is in a foreign language, an Italian translation must be provided. Official fees must be paid, which vary depending on the number of titles against which the merger is recorded. Although the merger is not immediately recorded in the register, it is effective as of the date of filing of the petition.
A change of name or address is recorded by means of a petition filed with the IPTO. A power of attorney is required, but there is no need to provide additional documents. The petition for a change of name or address may be included in the renewal application at no extra cost.
Trademarks can be the object of both exclusive and non-exclusive licences, which can relate to all or some of the goods or services protected by the registration. No particular forms or formalities are required. However, according to Article 23.4 of the Industrial Property Code, the licensing of a trademark must not mislead the public as to the essential characteristics of the goods and services. Recording a licence in the Trademark Register is not compulsory, although it is advisable for the sake of public advertisement. Effective and continuous use of a trademark by a licensee is considered genuine for the purpose of use requirements.
Under certain circumstances, the Industrial Property Code permits cumulative and simultaneous protection of an item by trademark, design and copyright. In particular, logos may be protected as both trademarks and designs. The shapes of products and their packaging, as well as designs, may enjoy both design and 3D trademark protection, provided that they fall within the limits outlined above for shapes. Copyright protection may also be invoked for the artistic value of a logo or the item itself. Utility patent protection may also be considered in some cases.
The enforcement measures specified above can be applied in case of the unauthorised use of an IP right as a domain name, metatag or hyperlink. In addition to an injunction prohibiting the use of an unlawful domain name, the judicial authority may provisionally order the transfer of that domain name to the rights holder under certain circumstances (eg, payment of a bond), according to Article 133 of the Industrial Property Code. The authority that administers domain names, .IT Registry, provides a list of centres for the resolution of domain name disputes.
The Trademark Law and its related regulations govern the registration and protection of trademarks in Japan. In addition, the Unfair Competition Prevention Law protects well-known trademarks, both registered and unregistered, as well as certain configurations of goods, from unauthorised use.
The following international treaties apply in Japan:
• the Paris Convention for the Protection of Industrial Property;
• the Trademark Law Treaty;
• the Nice Agreement on the International Classification of Goods and Services;
• the Madrid Protocol; and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).
Under the Trademark Law, unregistered marks are protected only in certain circumstances. Prior user’s rights: Even if an unregistered mark is identical or similar to another’s registered mark, a prior user may continue to use the mark provided that:
• at the time of the subsequent trademark application the unregistered mark is well known to consumers or dealers in Japan for goods or services relating to the prior user’s business; and
• the prior user has no intention of engaging in unfair competition in its use of the unregistered mark.
The prior user:
• may not seek an injunction or compensatory damages against the infringer;
• may use its unregistered mark only within the specific region in which the mark was used at the time of the subsequent trademark application, and only in relation to the goods or services for which it was used at the time; and
• may assign the mark only along with its business.
Unregistered marks that are well known or famous, as well as certain configurations of goods, are protected under the Unfair Competition Prevention Law. The law provides that where unfair competition causes damage to a person’s business, that person may seek an injunction and, if the damages were caused negligently or intentionally, compensatory damages. ‘Unfair competition’ includes:
• use of another’s mark that is well known to consumers or dealers as identifying its goods or business, thus causing confusion (or the likelihood of confusion) with that party’s goods or business;
• use as one’s own of another’s mark that is famous to consumers or dealers as identifying its goods or business; or
• imitation of the configuration of another’s goods (except when such configuration is indispensable for ensuring the function of the goods themselves).
An individual or corporation that intends to use a trademark for goods or services related to its business may apply for trademark registration and own a trademark right. Actual use is not a requirement for trademark registration.
Protected: The Trademark Law provides that a trademark should be recognisable by human perception and shall consist of characters, figures, signs, three-dimensional (3D) shapes, colours or any combination thereof, or sounds, and be used for goods or services relating to the applicant’s business. In April 2015, motion marks, hologram marks, colour marks per se, sound marks and position marks also became registrable as trademarks. A trademark right is granted when an examiner of the Japan Patent Office (JPO) determines that the mark meets all registration requirements. It is an exclusive right to use the mark with respect to designated goods or services, which becomes effective throughout Japan upon registration of the trademark with the JPO. The Trademark Law follows the first-to-file principle.
Not protected: Under the Trademark Law, a trademark application will be rejected unless the following substantive requirements are satisfied:
• The mark is sufficiently distinctive for consumers to distinguish the applicant’s goods or services from those of others;
• The mark qualifies as registrable under the Trademark Law; and
• The application does not violate any treaties.
Some trademarks that lack distinctiveness – excluding generic terms – may still be registered if the applicant can prove that they have acquired distinctiveness for specific uses. Further, a well-known trademark consisting of a geographical name and a generic term for a product or service that is owned by an industrial business cooperative association, a commerce and industry association, a chamber of commerce and industry or a specified non-profit corporation (including an equivalent foreign legal entity) may be registered, provided that it fulfils the other requirements. Even if a mark is sufficiently distinctive, it will be rejected if it falls under one of the various bars set out in Section 4 of the Trademark Law concerning the public interest or an individual interest.
Examples of public interest prohibitions include:
• trademarks that consist of a national flag, coat of arms or other insignia of Japan or any foreign nation, the Red Cross or similar;
• trademarks offending public order or morality;
• trademarks that are misleading as to the quality of the goods or services;
• 3D trademarks comprising solely functional features that are essential to the use or purpose of the goods or their packaging; and
• trademarks that comprise foreign well-known trademarks and are used in bad faith.
Examples of individual interest prohibitions include:
• trademarks comprising the name or portrait of another person;
• trademarks that are identical or similar to another’s well-known mark and used for identical or similar goods or services;
• trademarks that conflict with a prior registration;
• trademarks that cause confusion with respect to the source of the goods or services;
• trademarks for wines or spirits that indicate regional origin in a manner prohibited by the TRIPs Agreement or the JPO; and
• trademarks that are identical or similar to another’s well-known trademark in Japan or abroad as identifying the relevant goods or services if the applicant uses such mark in bad faith.
Measures against non-use of trademark: Where there is justifiable doubt as to whether the applicant is conducting, or is planning to conduct, business in connection with the designated goods or services, the examiner will preliminarily reject the mark and notify the applicant of the reasons why. This refusal may then be overturned if the applicant certifies the use or intended use of the trademark under the application where it has designated:
• a wide range of goods or services;
• two or more dissimilar retail services; or
• general retail services.
An applicant may file a trademark application with the JPO in person, by mail or online. Once formal registration requirements are satisfied, the examiner will consider whether the application meets the substantive requirements for registration. If the examiner finds reasons to reject the application, he or she will notify the applicant accordingly within 18 months. The applicant may submit written arguments or amendments in response. If the applicant does not reply to the JPO’s notice, or if its written arguments or amendments fail to overturn the reasons for rejection, the JPO will issue a refusal decision. The applicant may appeal the JPO’s decision, which will become final and conclusive if no appeal is sought. If an appeal is requested, the application will be scrutinised by a panel of trial examiners. If the panel issues an unfavourable ruling, the applicant may appeal to the IP High Court; if it fails to do so, the rejection decision becomes final.
If the examiner determines that there are no reasons to reject the application, or if such reasons are defeated, he or she will issue a registration decision. It takes an average of five months from filing an application to a registration decision, if the JPO finds no reason to reject the application. A trademark right is established upon registration of such right with payment of the registration fee. The trademark registration will then be published in the Trademark Gazette. The term of protection lasts for 10 years from the date of registration. The trademark right may be renewed every 10 years by filing a request for renewal within six months prior to the expiration date.
Anyone may file an opposition to registration within two months of the trademark being published in the Trademark Gazette. Once an opposition is filed with the JPO, the panel of trial examiners will consider whether it has merit.The grounds for opposition are similar to those for rejection (ie, lack of distinctiveness and unregistrability). However, an opposition may also be filed if the trademark application conflicts with a prior application.If the JPO intends to accept the opposition and revoke the registration, it must provide notice of the reasons for this and give the rights holder an opportunity to contest such notice.If the rights holder succeeds in its arguments against opposition, the trademark registration will be maintained; otherwise, it will be revoked. The opponent may take no action against a decision to maintain the registration. Thus, in order to contest a registration once maintained, the opponent must demand an invalidation trial.In case of a decision to revoke registration, the rights holder may appeal to the IP High Court. If it does not appeal, the decision becomes final and conclusive.
Aside from successful opposition, a registered trademark may be removed from the Trademark Register for the reasons outlined below.
Cancellation/surrender: A rights holder may voluntarily cancel its trademark right. The cancellation may apply to all or only some of the designated goods or services.
Invalidation: An interested party may request a trial to invalidate a trademark registration on the basis of similar grounds to those available in an opposition to trademark registration; additionally, invalidation may be sought based on facts that occurred after registration.An invalidation trial may be commenced even after a registered trademark right has expired or has been relinquished. However, an invalidation trial based on grounds such as lack of distinctiveness or individual interest prohibitions may not be brought more than five years after the date of registration.Once a decision to invalidate a registration has become final, in principle, the trademark right is retroactively deemed never to have existed.
Revocation: Anyone may request a trial to revoke a registered trademark based on the following grounds:
• Non-use – if a registered trademark has not been used in Japan by a rights holder or its licensee for at least three consecutive years.
• Improper use – if a rights holder or its licensee uses a registered trademark in an improper manner.
• Similar trademarks owned by different persons – if similar registered trademarks come to belong to different persons as a result of the transfer of a registered trademark right, and one person uses such mark with the intention of committing an act of unfair competition and in a manner that may cause confusion with the other’s goods or services.
Where a trademark owner’s rights are registered in a country that either is a signatory to the Paris Convention or the Trademark Law Treaty, or is a member of the TRIPs Agreement, the rights holder may seek revocation of a Japanese trademark registration if its agent or representative files the trademark application without the owner’s authorisation within five years of such unauthorised registration.
The JPO provides a public database called the Japan Platform for Patent Information, in which trademarks can be searched in a variety of ways.
The unauthorised use of a mark that is identical or similar to a registered trademark in relation to identical or similar goods or services constitutes infringement. The Trademark Law provides that certain preparatory activities shall be deemed to constitute infringement. These include:
• the possession of the designated goods, or goods similar to the designated goods or services, affixed with the registered trademark or a trademark similar thereto on the goods or their packaging for the purpose of assignment, delivery or export; and
• the manufacture, assignment, delivery or import of products to be used exclusively for the manufacturing of products indicating the registered trademark or a trademark similar thereto.
Where infringement occurs, the owner of the registered trademark (or its registered exclusive licensee) may enforce its rights by filing a trademark infringement suit in district court. Alternative dispute resolution before certain private entities, such as the Japan Intellectual Property Arbitration Centre, may also be considered. Remedies for trademark infringement available under the Trademark Law are outlined below.
Civil remedies: The plaintiff may seek an injunction against an infringing party (or a party that is highly likely to infringe) which acts with or without negligence or wilfulness. Together with an injunction, the plaintiff may seek an order for destruction of the infringing goods and removal of the facilities used to commit the infringement, as well as other measures necessary to prevent the infringement. The plaintiff may also seek a preliminary injunction. To obtain this, the plaintiff must show irreparable harm due to the infringement; courts sometimes require that a bond be posted. In the case of negligent or intentional infringement, compensatory damages are also available. Under the Trademark Law, an infringer’s negligence is presumed. To ease the burden of assessing damages, the Trademark Law provides the following optional measures for calculating damages:
• the owner’s expected profit per item multiplied by the number of infringing items sold, to the extent of the owner’s production or sale capability;
• the actual profit made by the infringer; or
• an amount equivalent to the deserved royalties.
Where the rights holder proves the amount using one of these measures, this will be presumed to be the damages incurred. However, the rights holder may seek actual damages exceeding this by proving the amount of such damages. A plaintiff may additionally claim other damages, such as consequential damages (eg, intangible damage to brand reputation) and attorneys’ fees, although the courts tend to affirm claims for attorneys’ fees only to a limited extent. There are no punitive damages under the applicable Japanese laws. The rights holder may seek an order for rehabilitation of brand reputation, including corrective advertising.
Criminal penalties: Intentional trademark infringements are subject to criminal penalties of up to 10 years’ imprisonment and/or a fine of ¥10 million in certain cases.
Civil remedies: The owner of either a registered or unregistered trademark whose business has suffered (or is likely to suffer) damage from unfair competition may file suit in a district court seeking an injunction against an infringing party (or a party that is highly likely to infringe), regardless of whether that party is acting negligently or wilfully. The plaintiff may also seek an order for the destruction of the infringing goods and removal of the facilities used to commit the infringement, as well as other measures necessary to prevent the infringement. In case of negligent or intentional infringement, the rights holder may claim compensatory damages. As with the Trademark Law, the Unfair Competition Prevention Law also provides optional measures for calculating the rights holder’s damages. However, unlike under the Trademark Law, negligence is not presumed.
Pursuant to the Civil Code, the plaintiff may also seek:
• restitution for unjust enrichment for infringement, with or without negligence or wilfulness; and
• an order for rehabilitation of brand reputation, including corrective advertising in the case of negligent or intentional infringement.
Criminal penalties: The misappropriation of a well-known mark with the intent to commit an act of unfair competition is punishable by imprisonment and/or a fine.
A party which is not satisfied with the district court’s decision may appeal to the competent appellate court, whose decision may subsequently be appealed to the Supreme Court on limited grounds.
A rights holder or applicant may assign its rights relating to the trademark or trademark application.
Assignment of status as applicant: The assignor or assignee must file a notice of change of ownership with the JPO. The assignment will take effect once such notice is filed.
Assignment of registered trademark: An application to register the transfer of a trademark right must be filed either by both the assignor and the assignee, or by the assignee alone if it has obtained such consent from the assignor.The change in ownership will take effect once it is entered in the Trademark Register.
If an applied-for or registered trademark transfers by merger, inheritance or other general succession, this will have immediate effect. However, the successor must notify the JPO by filing a notice of change of ownership of the application (before registration) or an application to register the transfer of the trademark right (after registration).
Exclusive licences (senyo shiyoken) must be registered to be effective. While registration is not compulsory for non-exclusive or exclusive licences other than senyo shiyoken, registration will allow the licensee to maintain its rights to the trademark in the event of any third party’s subsequent acquisition and/or exclusive licence for such trademark right.
Where a trademark – especially a 3D trademark – is a new technological invention or device, it may also be protected as a patent under the Patent Law or as a utility model under the Utility Model Law. If the trademark is a new, functional and ornamentally featured design, it may also be protected as a design under the Design Law. However, these rights are protected only if they are registered with the JPO. Where the trademark is an original and creative expression as a result of intellectual or cultural activities, it will also be protected under the Copyright Law, without any registration. The Corporation Law prohibits the bad-faith use of a trade name or company name that causes confusion with a different company’s name.
The Trademark Law provides that the ‘use’ of marks includes use on the Internet in the following manner:
• providing trademarked goods or services via the Internet (eg, online distribution of trademarked products);
• providing services through a website displaying a trademark (eg, mobile banking services displaying trademarks on the monitor or screen); and
• providing information consisting of advertisements, price lists or other business documents relating to trademarked goods or services on or through the Internet.
Protection under the Unfair Competition Prevention Law extends to an act of unfair competition on the Internet. With respect to cybersquatting, the Unfair Competition Prevention Law protects owners of registered and unregistered marks by providing that no one may obtain, keep or use in bad faith a domain name that is identical or similar to a trademark owned by a third party.
Kenya’s legal framework for trademarks comprises:
• the Constitution;
• the Trademarks Act;
• the Paris Convention for the Protection of Industrial Property;
• the Madrid Agreement Concerning the International Registration of Marks;
• the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks;
• the Nairobi Treaty on the Protection of the Olympic Symbol; and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Common law rights in unregistered trademarks are recognised under Section 5 of the Trademarks Act and may be enforced through a passing-off action. In a passing-off action, the proprietor of the unregistered mark must demonstrate that its trademark has acquired sufficient reputation through use for members of the public to be misled by a defendant’s conduct into thinking that the defendant’s goods are those of the proprietor. Unregistered trademarks are also protected under Section 15A of the Trademarks Act on proof of their well-known status in Kenya. Well-known marks generally require a great degree of use (not necessarily direct use in Kenya) that has resulted in a high degree of knowledge or recognition of the mark in the relevant sector in Kenya.
Any person claiming to be the proprietor of a trademark that it uses or proposes to use may apply to register the mark. Where an applicant appoints an agent to act on its behalf, the applicant must provide the agent with a power of attorney signed in the agent’s favour. This power of attorney need not be legalised. A mark must contain at least one of the following to be registrable:
• the name of a company, individual or firm, represented in a particular manner;
• the applicant’s signature or that of its predecessor in business;
• an invented word or words; or
• a word or words having no direct reference to the character or quality of the goods and not being a geographical name or surname.
Any other distinctive mark not falling under these criteria is registrable only with evidence of distinctiveness. Collective and certification marks are also registrable. The following are generally excluded from registration:
• marks whose use would be likely to deceive or cause confusion;
• marks that closely resemble registered trademarks and are proposed to be registered in respect of the goods or services covered under the prior similar registrations;
• touch, scent, taste and sound marks;
• the words ‘patent’, ‘patented’, ‘registered’, ‘registered design’, ‘copyright’, ‘entered at Stationer’s Hall’, ‘to counterfeit this is a forgery’ or similar words;
• representations of the head of state of any foreign state, or any colourable imitation thereof;
• the phrases ‘Red Cross’ or ‘Geneva Cross’ and representations of the Geneva and other crosses in red or the Swiss federal cross in white on a red background or silver on a red background, or such representations in a similar colour or colours;
• any specified emblems, likenesses and names under the National Flag, Emblems and Names Act (these may be registrable where the applicant obtains the written permission of the competent authority);
• any honour, award, title or abbreviation of a title created by the president;
• armorial bearings, insignia or flags of any foreign state or international intergovernmental organisation;
• any title or abbreviation of any international intergovernmental organisation; and
• marks consisting of or containing the Olympic symbol.
For personal searches, the registry charges KSh1,000 (approximately $10) for every 15-minute period that the search exercise takes. The fees for official searches (see Table 1) as well as the registry rate chargeable for personal searches are exclusive of taxes and any professional fees chargeable by an agent.
• Identical/similar marks – Available – First class – KSh3,000 for residents and $150 for non-residents – Each subsequent class – KSh2,000 for residents and $100 for non-residents.
• One class/all classes – Available – First class – KSh3,000 for residents and $150 for non-residents – Each subsequent class – KSh2,000 for residents and $100 for non-residents.
• Trade names/slogans – Available – First class – KSh3,000 for residents and $150 for non-residents – Each subsequent class – KSh2,000 for residents and $100 for non-residents.
• Traditional graphic marks – Available – First class – KSh3,000 for residents and $150 for non-residents – Each subsequent class – KSh2,000 for residents and $100 for non-residents.
• Non-traditional graphic marks – Not Available.
On filing a trademark registration application and paying the filing fees at the Trademarks Registry, the filed application is examined and a report issued thereafter indicating:
• approval of the application for advertisement;
• a requirement for a disclaimer of the right to the exclusive use of generic elements of the trademark (this disclaimer requirement must be either accepted within 30 days or challenged within 90 days of its issuance – both periods being extendable upon application); or
• a reasoned refusal of the application. This refusal can be challenged within 90 days of its issuance (this period is also extendable upon application).
• Application First class $200 – Each subsequent class $150
• Advertisement First class $60 – Each subsequent class $50
• Registration First class $100 – Each subsequent class $150
• Power of attorney $50
• Stamp duty $3 (approximately)
After examination, approval and payment of advertisement fees, the application is advertised in the Industrial Property Journal. The law provides for an extendable period of 60 days from the date of advertisement during which any person may oppose the application. If the application is opposed, the registration process is halted and opposition proceedings are commenced. The grounds of opposition do not affect the timeframe within which the opposition should be filed.
If the application is not opposed, or if an opposition is filed but overcome by the applicant, a certificate of registration of the trademark is issued upon payment of the registration fee. In Kenya, trademarks are registered for 10 years and may be renewed indefinitely for further consecutive periods of 10 years. After registration, trademarks may be removed from the register upon expiry or through cancellation or surrender.
Upon expiry, a trademark may be removed from the register subject to conditions (if any) as to its restoration. However, under Section 23(4) of the Trademarks Act, such a trademark will – for a period of one year following removal – still be deemed to be on the register in case of an application for registration of a similar trademark. However, the registrar of trademarks or the High Court has discretion to ignore the expired registration during the one-year period in prescribed circumstances. Before a trademark registration expires, the registrar must send two notices of the impending expiry to the proprietor of the registered trademark inviting it to renew the registration. The first notice must be sent between 30 and 60 days before expiry, while the second must be sent between 14 and 30 days before expiry. If the notices are not heeded and the registration expires, the expiry will be published in the Industrial Property Journal. The proprietor may renew the trademark during the 30-day period following publication. If the registration is not renewed during this 30-day period, it may be removed from the register. However, the removed trademark may be restored upon application and payment of the renewal and restoration fees, subject to availability and any conditions that the registrar may impose.
An aggrieved party may apply for cancellation of a trademark registration on the grounds of non-use or wrongful entry in the register. To prove non-use, the aggrieved party must show that:
• the trademark was registered without any genuine intention of use in relation to the goods or services for which it is registered and there has been no such use from the date of registration until one month before the filing date of the cancellation application; or
• the trademark has not been put to genuine use in relation to the goods or services for which it is registered for a continuous period of five years or longer until one month before the filing date of the cancellation application.
To prove wrongful entry, the aggrieved party must show that the trademark was entered in the register without sufficient cause or that its continued registration is wrongful.
A registered trademark may be surrendered, upon application by the proprietor, in respect of all or part of the goods for which it is registered. The proprietor must notify any interested parties of the proposed surrender at least 90 days before filing the surrender application. No notice is required where the interested parties have consented to or are not affected by the surrender. After the surrender has been registered, it is then advertised in the Industrial Property Journal.
The change of name of a registered proprietor (eg, through merger or special resolution) may be recorded against each trademark that is registered in the name of that proprietor. Such recordal requires the filing of an application in standard form (Form TM20) and payment of the necessary fees ($150 for the first trademark and $50 for each additional trademark).
The approximate timeframes for the conclusion of various procedures at the registry are:
• Unopposed registration: Approximately six to 12 months (provided that no refusals or oppositions arise).
• Opposition: Two years.
• Renewal: Three to four months.
• Merger: Three to four months.
• Change of name: Three to four months.
Opposition proceedings may be instituted by any person before the registrar on the basis of prior registered or unregistered rights. The applicant for registration bears the burden of proving that the opposition is without merit. Evidence must be tendered through statutory declarations although the registrar has discretion to take oral evidence in addition to or instead of the evidence tendered by way of statutory declaration. The registrar’s determination is made based on the balance of probabilities. Opposition proceedings can only yield orders for the registration of the trademark for which an application for registration is made or for the refusal of such registration. The registrar also has discretion to award costs. Appeals against decisions of the registrar are heard by the High Court, subject to filing a notice of appeal at the registry within 60 days of the date of the decision, with possible further appeals being heard by the Court of Appeal.
A person that is aggrieved by the existence of a trademark on the register may apply to the registrar to have it cancelled. Cancellation proceedings may be founded on both registered and unregistered rights, and can yield only expunction orders and orders for costs. The aggrieved party bears the evidentiary burden. The evidentiary and appellate rules which apply to oppositions also apply to cancellation proceedings.
Trademark infringement proceedings may be instituted before the High Court only in respect of registered trademarks. These proceedings may be used to obtain:
• injunctions (both interim and permanent);
• account of profits; and
• orders for delivery up or destruction of the offending goods.
Both documentary and oral evidence may be tendered in such proceedings and appeals are heard by the Court of Appeal.
Passing-off actions may be instituted by owners of both registered and unregistered trademarks. The comments on evidence, remedies and appeals made in respect of infringement proceedings above also to passing-off actions.
Section 36B of the Trademarks Act provides that where the proprietor of earlier rights in a trademark acquiesces for a continuous period of five years to the use in Kenya of a registered trademark that is confusingly similar to its own trademark, that proprietor loses the right to apply for cancellation or to restrain the use of the registered trademark in Kenya. However, such a proprietor may continue to use and exploit its earlier rights in its own mark. Damages may be awarded with the aim of restoring the plaintiff to the position that it would have been in had the wrong not been committed. Nominal damages are awarded to a plaintiff as a matter of right where the plaintiff proves that an infringement of its rights has occurred. Where a plaintiff is of the view that it is entitled to a significant amount of damages, the plaintiff may seek an inquiry as to damages before the court, at its own risk as to costs. Punitive or exemplary damages are also awarded where the defendant’s conduct is shown to have been calculated to make a profit that would far outweigh any compensation payable and where there is injury to the plaintiff’s reputation. In infringement and passing-off proceedings, the burden of proof lies with the plaintiff, as the governing principle is that he who alleges must prove. Additionally, trademark rights can be enforced through criminal proceedings instituted against parties that possess and trade in counterfeit products. Proceedings before the registrar take on average two years to conclude, while the courts take two to three years to conclude infringement and passing-off cases. Actual timeframes may be considerably longer or shorter.
Registered trademarks may be assigned either partially or fully. Unregistered trademarks are similarly assignable if, at the time of assignment:
• they have been used in the same business as a registered trademark; and
• they are assigned at the same time and to the same person to which that registered trademark has been assigned or transmitted.
Registration of the assignment agreement is mandatory and failure to register renders it inadmissible in court as evidence of proof of title to the trademark, except as between the parties to the agreement, unless the court otherwise directs. There is no legalisation requirement for the assignment agreement. Under the Trademarks Act, a person may be registered as a licensee under a full or partial trademark licence. There is no mandatory requirement to register licence agreements. However, it is beneficial to register such agreements, as upon registration:
• the licensee obtains capacity to sue for infringement; and
• the licensee’s permitted use of the trademark is deemed to be use by the registered proprietor and is a defence against any cancellation action brought against the trademark on the grounds of non-use.
A statutory declaration must be provided by the registered proprietor upon registration, indicating details about the licensor-licensee relationship. There is no legalisation requirement for the licence under the Trademarks Act.
Where logos and artistic signs which are protected as artistic works under copyright law are used as trademarks in the course of trade, they may additionally be registered as trademarks. Where such an overlap arises, the use and purpose of the logos and the nature and duration of the desired protection should be considered to determine the most suitable IP protection regime.
The use of marks as domain names in the course of trade can constitute genuine trademark use. As such, unauthorised use in this regard can be redressed through trademark infringement or passing-off actions. Additionally, where a party is aggrieved by the wrongful registration of a domain name by another entity, it may seek further redress through the following avenues.
KENIC Alternative Domain Name Dispute Resolution Policy: The Kenya Network Information Centre (KENIC) is charged with the administration of the country-code top-level domain (ccTLD) for Kenya (‘.ke’). KENIC’s Alternative Domain Name Dispute Resolution Policy (ADRP) provides for voluntary alternative dispute resolution proceedings for disputes relating to the Kenyan ccTLD. The process under the ADRP involves impartial mediation overseen by KENIC as a first step, followed by arbitration (if the mediation fails to achieve a resolution within 15 days). The arbitrator is agreed upon by the parties or – failing such agreement – appointed by a KENIC-accredited dispute resolution service provider. The arbitrator can:
• dismiss the dispute;
• order the transfer of the domain name registration (in case of abusive registrations); or
• cancel the domain name registration (in case of offensive registrations).
KENIC’s ADRP defines an ‘abusive registration’ as a domain name which either:
• was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to a complainant’s rights; or
• has been used in a manner that takes unfair advantage of a complainant’s rights.
An ‘offensive registration’, on the other hand, is defined as a domain name in which the complainant cannot necessarily establish rights, but whose registration is contrary to law, against good morals or likely to be offensive to any class of person. Appeals are heard by a panel of three arbitrators appointed by a KENIC-accredited dispute resolution service provider. Where a party to proceedings before KENIC or the arbitrator initiates court proceedings in relation to the domain name dispute that is before KENIC or the arbitrator, the mediation or arbitral proceedings are suspended immediately.
The courts can also adjudicate disputes over abusive or offensive domain name registrations that relate to the Kenyan ccTLD and other generic top-level domains (gTLDs), and can order the transfer of abusive registrations or cancellation of offensive registrations.
Domain name disputes may also be resolved under the Uniform Domain Name Dispute Resolution Policy (UDRP) and the rules thereunder. All registrants that register domain names in top level domains with registrars that subscribe to the UDRP accept the terms of the UDRP, which are invariably incorporated by reference into the domain name registration agreement between the registrar and the registrant. Clause 4 of the UDRP requires registrants to submit to mandatory administrative proceedings adjudicated by Internet Corporation for Assigned Names and Numbers approved dispute resolution service providers such as the World Intellectual Property Organisation’s Arbitration and Mediation Centre.
The Trademarks Act 2002 defines and controls the New Zealand system for the registration of trademarks. The laws and regulations governing trademarks in New Zealand are set out in:
• the Trademarks Act 2002;
• the Trademarks Amendment Act 2003;
• the Trademarks Amendment Act 2005;
• the Trademarks Regulations 2003;
• the Trademarks Amendment Regulations 2006;
• notes of the Intellectual Property Office of New Zealand (IPONZ);
• decisions of the commissioner of trademarks; and
• decisions of the New Zealand courts.
The Trademarks Act 2002 is based on the Singapore Trademarks Act 1998, which in turn is based on the UK Trademarks Act 1994. There are also a number of pieces of legislation that make reference to and govern specific aspects of the use of trademarks, including:
• the Geographical Indications (Wine and Spirits) Registration Act 2006;
• the Major Events Management Act 2007; and
• the Fair Trading Act 1986.
New Zealand is a signatory to the following international treaties:
• the Paris Convention for the Protection of Industrial Property (1883);
• the Nice Agreement on the International Classification of Goods and Services for the Purposes of Trademark Registration; and
• the Vienna Agreement on the International Classification of the Figurative Elements of Marks.
Although the Trademarks Act 2002 prohibits the owner of an unregistered mark from bringing proceedings for infringement, the owner still has rights under the tort of passing off or the Fair Trading Act 1986. ‘Passing off’ is an action brought to protect against unfair competition between traders. In particular, it is concerned with misrepresentations made by one trader which damage the goodwill of another. For a plaintiff to succeed in a passing-off action, it must prove to the satisfaction of the court that:
• it has goodwill and reputation in its trademark in relation to its goods and/or services;
• the defendant’s actions misrepresent the origin of the defendant’s goods and/or services to customers or potential customers; and
• the plaintiff has suffered loss as a consequence of the defendant’s actions. The Fair Trading Act 1986 provides for statutory regulation of misleading and deceptive conduct and false or misleading representations, with the general aim of achieving fair competition in trade. In practice, it is generally easier to establish a cause of action under the Fair Trading Act than under the tort of passing off. Under the act a plaintiff need show only that members of the public are likely to be misled or deceived by the action of the defendant. The plaintiff does not have to prove damage or the likelihood of damage to the plaintiff’s business.
Unless the plaintiff can establish that its name, mark or get-up is distinctive, there will be nothing to attach that name, mark or get-up to the plaintiff’s goodwill, and the plaintiff will have no action against the defendant for damage to that goodwill. Whether or not the plaintiff’s name, mark or getup is distinctive is a question of fact and degree. The amount of use required to establish rights in relation to an unregistered trademark varies depending on the circumstances.
Under the Trademarks Act 2002 a person claiming to be the owner of a trademark may apply for the registration of the mark in the prescribed manner and on payment of the prescribed fee. The applicant must have legal status and be capable of holding personal property – this includes individuals, companies, corporate bodies and government departments. Where an application is made in the name of a partnership, it must contain the names of all the partners. An application cannot be made in the name of any trust unless the trust is incorporated. Where the trust is unincorporated, the application may be made in the individual names of the trustees as it is the trustees who legally own the property. An application may be made by two or more persons as joint applicants. Finally, in all cases the applicant must have an address for service in New Zealand.
The Trademarks Act 2002 defines a ‘trademark’ as a sign that is capable of being represented graphically and that is capable of distinguishing the goods or services of one trader from those of another. A ‘sign’ is defined as including a brand, colour, device, heading, label, letter, name, numeral, signature, shape, smell, sound, taste, ticket, word or any combination of signs.
IPONZ examines each trademark application to determine whether it complies with the requirements of the Trademarks Act 2002. Examination of the application takes place approximately two weeks after the application is filed. The applicant has 12 months in which to overcome any objections and place the application in order for acceptance. This deadline may be extended on request. In addition to formality issues, an application may be refused if the trademark or use of the trademark:
• has no distinctive character;
• is directly descriptive of the goods or services;
• is likely to deceive or cause confusion;
• is contrary to New Zealand law or would otherwise be disentitled to protection in any court;
• is likely to offend a significant section of the community;
• was registered in bad faith;
• is a geographical indication; or
• is a commonly used chemical name.
In addition, an application may be refused if there is a trademark belonging to a different owner, with earlier priority, which is:
• an identical or similar mark for the same or similar goods or services;
• an identical or similar mark that is well known in New Zealand in respect of the same or similar goods; or
• an identical or similar mark that is well known in New Zealand in respect of any goods or services, if use would be taken as indicating a trade connection.
If and when any objections raised are overcome, a notice of acceptance will issue and details of the application will be advertised for opposition purposes.
Anyone may oppose the registration of a trademark by filing a notice of opposition at IPONZ. The opposition period is three months from the advertisement of the application. The notice of opposition must include a statement of grounds on which the opponent objects to registration of the trademark. The usual grounds are that:
• the mark sought to be registered is confusingly similar to another trademark which is either registered or in use by another party;
• the mark is descriptive or incapable of distinguishing the applicant’s goods or services from those of others;
• the mark is deceptive; and/or
• the mark has been misappropriated from another party.
A counterstatement must be filed within two months of the applicant receiving the notice of opposition. The counterstatement should set out which facts in the notice of opposition, if any, the applicant admits. If no counterstatement is filed, the applicant is deemed to have abandoned the application unless the commissioner otherwise directs. The opponent must file evidence in support of the opposition within two months of receiving the counterstatement. If the opponent fails to file evidence, or notice of its intention not to file evidence, before the deadline, the opposition will automatically be deemed abandoned. The applicant may file evidence in support of its trademark application within two months of receiving the opponent’s evidence (if any). If the applicant files evidence in support of the application, the opponent may file evidence in reply within one month of receiving the applicant’s evidence. This evidence must be strictly in reply to matters raised in the applicant’s evidence. On completion of the evidence, IPONZ will schedule the matter for a hearing. Submissions may be given in writing or presented orally by counsel (or both). All deadlines during the opposition period are extendible. An application for an extension of time must be made in writing setting out any grounds that justify the extension sought. If the commissioner thinks it appropriate, or upon application of a party to the proceedings, the commissioner may halt the proceedings, usually where meaningful settlement negotiations are underway between the parties. However, the proceedings cannot be halted for more than six months at a time.
Once an accepted application is more than six months old and the opposition period has expired, IPONZ will issue the certificate of registration. The initial term of a New Zealand trademark registration is 10 years from its filing date or priority date, whichever is the earlier. A registration may be renewed for further periods of 10 years upon payment of renewal fees. If a trademark registration is not renewed at expiry, it will cease to have effect after the date of expiry. IPONZ will advise the owner of the registration that it has expired and the mark will be removed from the register. Once a trademark has been removed from the register for non-payment of the renewal fee, the owner of the mark may apply to restore the mark within 12 months of the expiry of the mark. This period cannot be extended. Under the Trademarks Act 2002 the status of a lapsed registration is upheld for one year from the date of removal. During this period, a lapsed registration will be considered to be a registered trademark for the purposes of trademark examination.
A trademark registration may be removed from the register or its scope reduced by a successful application for revocation of the trademark. Broadly, the grounds on which a trademark may be revoked are as follows:
• The trademark was not put to genuine use in the course of trade in New Zealand, by any owner for the time being, in relation to the goods or services in respect of which it was registered during the relevant period;
• The use of the trademark was suspended for an uninterrupted period of three years or more;
• Due to the activity or inactivity of the owner, the trademark has become a common name in general public use for a product or service in respect of which it is registered (ie, generic);
• A product was formerly manufactured under a patent or a service was formerly a patented process and two more years have elapsed since the expiry of the patent, and the trademark is the only practical name or description for the product or service; and
• Due to the manner in which the trademark is used, the mark is likely to deceive or confuse the public, for example as to the nature, quality or geographic origin of the goods or services.
A person has standing to file an application to revoke a registered trademark if that person is “aggrieved”. An aggrieved person includes:
• an alleged infringer of a mark;
• a person who is in the same trade as the owner of the registered mark; or • a person with a substantial or real interest in the removal of the registered mark.
In revocation proceedings, the onus to prove that a registered trademark should be revoked rests on different parties, depending on which of the above grounds is relied upon. If the application is based on non-use, the initial onus is on the trademark owner to prove that the registered trademark should not be revoked. In all other cases the onus is on the person applying to revoke the registration to prove that the relevant grounds exist. Within two months of receiving an application to revoke the registered trademark, the owner or licensee may oppose the application by filing a counterstatement. If the owner or licensee fails to file a counterstatement within the relevant period, the commissioner must determine the application on the documents filed by the applicant for revocation. If a counterstatement is filed, the applicant must file evidence in support of the revocation application or notify the commissioner that it does not intend to file evidence or withdraw the application within two months of receiving a copy of the counterstatement. Within two months of receiving the applicant’s evidence in support, the trademark owner or licensee may file evidence in support of registration or notify the commissioner that it does not intend to file evidence. If evidence is filed, the applicant for revocation will be given one month to file evidence strictly in reply. Where the application to revoke the registered trademark is based on non-use, the owner or licensee must include evidence of use of the trademark or of special circumstances restraining the use of the mark in the counterstatement.
An aggrieved person may apply to IPONZ or the High Court for a declaration that the registration of a trademark is invalid, to the extent that the mark was not registrable at the date of application. Grounds for invalidity include that:
• the trademark is not a sign or a trademark;
• the applicant is not entitled to claim to be the owner of the mark;
• the mark is not registrable in terms of the act or is prohibited from registration by the act; and/or
• use of the mark is contrary to law or has otherwise been disentitled to protection in any court.
The trademark owner may oppose the application by filing a written counterstatement within two months of receiving the application for a declaration of invalidity. If the owner fails to file a counterstatement within the relevant period, the commissioner must determine the application on the documents filed by the applicant. If a counterstatement has been filed, the applicant must:
• file evidence in support of the revocation application;
• notify the commissioner that it does not intend to file evidence; or
• withdraw its application within two months of receiving a copy of the counterstatement.
Within two months of receiving the applicant’s evidence in support, the trademark owner may file evidence in support of registration or notify the commissioner that it does not intend to file evidence. If evidence is filed, the applicant for a declaration of invalidity will be given one month to file evidence strictly in reply.
A trademark registration may be cancelled voluntarily by the owner in relation to all or any of the goods or services in respect of which it is registered.
The register is recorded electronically in the IPONZ database. It can be searched through the IPONZ website (www.iponz.govt.nz) or manually at the IPONZ Document and Information Services Centre. A search can be conducted in respect of any of the fields of information that are recorded on the register. The following searches are available:
• identical trademark search;
• similar trademark search;
• search per class;
• search of all classes;
• search of trade names and slogans;
• search of traditional graphic marks; and
• search of non-traditional graphic marks.
Legal action for infringement can be taken only
once the certificate of registration has been issued.
Infringement occurs where there is unauthorized
• a sign identical to the registered mark in
relation to any goods or services in respect of
which the trademark is registered;
• a sign identical to the registered mark in
relation to any goods or services that are
similar to any goods or services covered by
the registration, if such use would be likely
to deceive or cause confusion;
• a sign that is similar to the registered mark in
relation to any goods or services that are
identical or similar to any goods or services
covered by the registration, if such use would
be likely to deceive or cause confusion; or
• a sign identical or similar to the registered
mark in relation to any goods or services that
are not similar to the goods or services in
respect of which the trademark is registered
where the trademark is well known in New
Zealand and use of the sign takes unfair
advantage of, or is detrimental to, the
distinctive character or repute of the mark.
In addition, the use of the sign must be likely to
be taken as being use in a trademark sense.
The usual relief available to a trademark owner
in an infringement action includes:
• an interim or permanent injunction;
• an inquiry as to damages suffered by the
owner or an account of profits earned by the
• an order requiring erasure, removal or
obliteration of the offending sign, or delivery
up of infringing articles where the offending
sign cannot be removed.
Damages for trademark infringement run from
the date of filing the application, so although
legal proceedings cannot be instigated until a
mark has been registered, damages may be
recovered for the period during which the
application was pending.
Under the Trademarks Act 2002 the owner of a
registered trademark may apply to the High
Court for relief if the trademark is infringed.
Infringement proceedings are heard and decided
by a sole judge.
Cost awards in legal proceedings are entirely at
the court’s discretion, but they will usually be
awarded in favour of the successful party.
The following is a basic timetable for litigation
before the High Court:
• The statement of claim and notice of
proceeding are filed with the High Court and
served on the defendant;
• The defendant has 30 days from service of the
proceedings to file a statement of defence; and
• Case management conferences, discovery
and inspection take place.
Once all interlocutory matters have been dealt
with, the matter will be ready for trial.
Depending on the circumstances, the trial may
take place 12 to 18 months after proceedings
have been commenced.
6. Ownership changes – legalization
A trademark application or registration may
be assigned by the owner of the trademark to
anyone entitled to own a trademark registration.
A trademark may be assigned with or without
the goodwill of the business associated with
The assignment application must be completed in
the correct form and accompanied by a copy of the
transfer document, such as a deed of assignment
and, if appropriate, an English translation.
The deed of assignment must be executed in a
manner appropriate to bind the assignor. No
legalization or certification is required.
There are no penalties for not recording an
assignment and no time limits as to when an
application to record an assignment must be made.
7. Areas of overlap with related rights
The most common areas of overlap, other than
the various laws discussed above, are copyright
and design law. Copyright protection may be
available for trademarks which are represented
in a logo, device or stylized format.
In addition, where the trademark in question is
the shape of the goods themselves, provided that
the design has not been disclosed it may also be
possible to obtain registered design protection
for the shape.
8. Online issues
Registration of a domain name without use does
not (technically) constitute trademark
infringement. Using a domain name for a
website that does not offer or promote goods or
services is unlikely to be considered use of a sign
“in a trademark sense”.
Where the domain name is the same as or similar
to a registered mark, and is associated with a site
that promotes or sell goods or services that are
the same as or similar to those in relation to
which the trademark is registered, use of the
domain name is likely to infringe the registered
mark as the domain name is being used “in a
IP rights in trademarks and business names can
be infringed where they are incorporated into
metatags without the proprietor’s consent. This
conduct can be characterized as passing off, a
breach of the Fair Trading Act 1986 and, if a
registered trademark is used as a metatag,
Disputes relating to ‘.co.nz’ domain names
The Internet Corporation for Assigned Names
and Numbers Uniform Dispute Resolution
Policy is not available for ‘.nz’ country code
On June 1 2006 the Office of the New Zealand
Domain Name Commissioner issued its Dispute
Resolution Service Policy (DRSP). All ‘.nz’
registrants agree to be bound by the DRSP when
they register or renew a ‘.nz’ domain name.
The DRSP applies to a respondent when a
complainant asserts to the commissioner that:
• the complainant has rights in respect of a
name or mark which is identical or similar to
the domain name; and
• in the hands of the respondent, the domain
name is an unfair registration.
The DRSP defines ‘rights’ as including, but not
limited to, rights enforceable under New Zealand
law. These rights can include:
• New Zealand registered trademarks;
• foreign registered trademarks;
• unregistered trademarks;
• names of celebrities or sporting
• certain geographical names.
A complainant will be unable to rely on rights in
a name or term which is wholly descriptive of
the complainant’s business.
The DRSP defines ‘unfair registration’ as where a
• was registered or otherwise acquired in a
manner which, at the time when the
registration or acquisition took place, took
unfair advantage of or was unfairly
detrimental to the complainant’s rights; or
• has been, or is likely to be, used in a manner
which took unfair advantage of or was unfairly
detrimental to the complainant’s rights.
Unlike the Uniform Dispute Resolution Policy,
there is no requirement that the complainant
show that the domain name was registered in
National trademarks in Poland are governed by the Industrial Property Law 2000 (as amended) and the EU Community Trademark Regulation (207/2009). Polish trademark law is harmonised with EU law through EU Directive 2008/95/EC. Poland is a party to the following international conventions and treaties:
• the Paris Convention for the Protection of Industrial Property;
• the Madrid Agreement Concerning the International Registration of Marks, and its Protocol;
• the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
• the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks;
• the Agreement on Trade-Related Aspects of Intellectual Property Rights; and • the Singapore Treaty on the Law of Trademarks.
There are two types of protection for unregistered marks in Poland: protection as a well-known trademark under Article 6bis of the Paris Convention and protection as an unregistered mark under the Unfair Competition Law 1993. According to the Unfair Competition Law, the holder of an earlier unregistered trademark used on the market can prevent third parties from using later marks that are identical to or similar to the unregistered mark, if this could mislead the public as to the origin of the goods or services. A sufficient level of distinctiveness and use as a trademark is crucial for a mark to enjoy protection under the law (ie, use in the course of trade and for the goods and services for which protection is sought). If the unregistered trademark is well known, protection can also be sought under the Industrial Property Law. In particular, the holder of a trademark that is well known in Poland may demand cessation of the use of an identical or similar trademark in respect of identical or similar goods, if such use could mislead the public as to the origin of the product. An earlier well-known trademark can also be an obstacle for registration of a later trademark. A trademark is deemed to be well known if it is known to the majority of potential customers of the relevant goods or services (ie, more than 50%). However, if the trademark is highly distinctive, a lower threshold may be justified.
Ownership Any natural or legal person can apply for and own an individual trademark registration. Under some circumstances, a jointly owned trademark registration may be granted to a group of natural or legal persons. Collective or guarantee trademarks can also be registered. Applicants for such trademarks are obliged to file rules on the use of such trademarks. A trademark application can be filed by the applicant itself or its representative. Foreign applicants must be represented by a Polish patent attorney.
To be protected as a trademark, a sign must be capable of being represented graphically and of distinguishing the goods or services of one undertaking from those of others. In particular, the following signs may be considered as trademarks: words, designs, ornaments, combinations of colours, threedimensional shapes of goods or packaging, melodies or other acoustic signals. According to Polish law, both absolute and relative grounds for refusal are examined ex officio.
Trademark protection will not be granted for a sign that:
• is not considered a trademark; or
• is devoid of sufficient distinctive character – for example, which: is incapable of distinguishing the goods and services concerned; consists exclusively or mainly of elements that designate the kind, origin, quality, quantity, value, intended purpose, manufacturing process, composition, function or usefulness of the goods; or has become customary in the current language and is used in fair and established business practice.
The grounds for refusal resulting from insufficient distinctiveness can be overcome by proving that the applied trademark has acquired distinctiveness through use before the filing date. Trademark registration will be also refused for a sign that:
• constitutes a form or feature of the goods or their packaging which is dictated exclusively by their nature, is necessary to achieve a technical result or gives substantial value to the goods;
• its use infringes third parties’ personal or economic rights;
• is contrary to law, public order or morality;
• could mislead the public as to the nature, properties or geographical origin of the goods;
• incorporates without authorisation names, flags or symbols of Poland, other countries or international organisations;
• incorporates officially recognised signs accepted for use in trade (eg, safety marks, quality marks or hallmarks of legalisation), such that the public could be misled as to the nature of such signs, unless the applicant can prove its right to use them;
• incorporates symbols of a religious, patriotic or cultural nature, whose use could hurt religious feelings, a sense of patriotism or national tradition; or
• where intended for wines and spirits, contains geographical indications that do not match the goods’ true origin, such that the public could be misled.
Protection will not be granted for a trademark that has been applied for in bad faith. Registration will also be refused for an application in respect of identical or similar goods where the trademark applied for is identical or similar to:
• a registered geographical indication, unless the applicant is entitled to use that indication and the trademark registration is not supposed excessively to restrain other entitled parties from using the registered geographical indication;
• a registered geographical indication or designation of origin for agricultural products or foodstuffs;
• a registered geographical indication related to spirits;
• an earlier well-known trademark; or
• a trademark that has previously been registered in Poland whose registration has ended, provided that the interval between the lapse of registration and the filing date of the similar trademark is no longer than two years (excluding trademarks that have lapsed due to non-use or where the owner of the earlier trademark agrees to registration of the later trademark).
Furthermore, registration will be refused for a trademark that is:
• identical to a trademark that has previously been registered or applied for (provided that the latter is subsequently registered) for identical goods or services;
• identical or similar to a trademark that has previously been registered or applied for (provided that the latter is subsequently registered) for identical or similar goods or services, if there is a risk of confusion, in particular by evoking associations with the earlier mark; or
• identical or similar to a renowned trademark that has previously been registered or applied for (provided that the latter is subsequently registered) for any kind of goods, if it would provide the applicant with an unfair advantage without due cause or be detrimental to the distinctive character or repute of the earlier trademark. This provision applies to well-known trademarks accordingly.
Each trademark application may include only one trademark. Multi-class applications are allowed, subject to payment of an extra fee for each additional class above three classes. A trademark application is subject to examination by the Patent Office on both formal and substantive grounds. If obstacles to a trademark application are found, the Patent Office will request the applicant to remedy any deficiencies within a fixed period. Trademark applications will be published three months after the filing date. Following publication, third parties may submit observations against registrability of the trademark. A party filing observations does not become a party to the proceedings. The applicant will be notified by the Patent Office about any possible grounds of refusal and invited to make comments or amendments. Until a decision has been issued, applicants may make additions and corrections to the application, provided that such additions or corrections do not alter the essential characteristics of the trademark or extend the list of the goods for which protection is sought. If the grounds for refusal cannot be overcome, the registration will be refused. A request for re-examination of the case can be filed, and that decision can be appealed to a regional administrative court.
Trademarks are registered for 10 years from the filing date, provided that the fee for the first protection period has been paid. Failure to pay the fee on time will make the registration void. The trademark registration can be renewed every 10 years, at the request of the trademark owner.
Any party can oppose registration of a trademark within six months of publication of the registration. The grounds for opposition are the same as those for invalidation. If the opposition is justified, the trademark will be declared invalid.
The trademark registration lapses on the expiry of the 10-year protection period for which it was granted, if no extension request is submitted and the renewal fee is not paid. A trademark registration can also be surrendered for all or part of the goods or services for which it was granted.
A trademark registration can be revoked on the following grounds:
• Non-use – the trademark has not been used for five consecutive years, unless there was a serious reason for non-use (the request for revocation will be dismissed if genuine use started or resumed before the request was filed).
• Loss of distinctiveness – due to the actions or negligence of the rights holder, the trademark has become customary for the registered goods or services.
• Subsequent misleading effect – due to the actions of the rights holder or with its consent, the trademark may mislead the public as to the nature, quality, characteristic features or geographical origin of the goods.
• Removal from the register – the rights holder (legal person) has been removed from the relevant register (ie, has ceased its legal existence).
The trademark right ends on the date of the event giving rise to revocation of the trademark.
A trademark may be declared invalid in whole or in part where the statutory requirements for registration of the trademark have not been met. The party requesting invalidation must prove its legal interest therein. An invalidation request will be rejected, in particular, if:
• the party requesting invalidation on the basis of its earlier rights (eg, the owner of a well-known trademark) was aware of and tolerated the use of the conflicting trademark for five successive years, unless the trademark was registered in bad faith; or
• five years after registration, the registered trademark has acquired distinctiveness through use.
Opposition, revocation and invalidation proceedings are conducted by the Litigation Division of the Patent Office. Such decisions can be appealed directly to the administrative courts.
The Patent Office conducts no searches on behalf of third parties.
The law provides for both civil and criminal actions against trademark infringement and counterfeiting. Enforcement of trademarks can be supported by the border measures available under the new EU Customs Regulation (608/2013), which entered into force on January 1 2014.
Infringement of a registered trademark consists of unlawful use in the course of trade of:
• a trademark that is identical to a registered trademark in respect of identical goods;,/
• a trademark that is identical or similar to a registered trademark in respect of identical or similar goods, if there is a risk of confusion, including due to association between the trademarks; or
• a trademark that is identical or similar to a renowned trademark in respect of any kind of goods, if such use would give the user an unfair advantage or be detrimental to the distinctive character or the repute of the earlier trademark.
The rights holder cannot prohibit a third party from using a mark that is identical or similar to its own mark if it has failed to use the mark in the five years following registration.
In general, trademark infringement matters are handled by common civil courts. The only specialised trademark court in Poland is the court appointed in accordance with EU Regulation 207/2009 to deal with Community trademarks and designs. Polish patent attorneys are entitled to represent rights holders before the courts in civil proceedings regarding enforcement of both Polish and Community trademarks. Polish court proceedings are highly formalised. In order to initiate court proceedings, a statement of claim must be lodged with the court of first instance. The statement of claim must be reasoned and supported by relevant evidence. Generally, parties are obliged to provide any evidence at the earliest possible opportunity – for the plaintiff, that is when bringing an action with the court; for the defendant, that is in its response. Later filed evidence, motions and explanations can be admitted, although this is at the judge’s discretion. The first-instance decision can be appealed to the Court of Appeal. The Court of Appeal’s decisions may be subject to a cassation complaint to the Supreme Court.
A rights holder whose trademark has been infringed may demand:
• cessation of the infringing activities;
• surrender of unlawfully obtained profits;
• compensation for damages (in case of wilful infringement); or
• publication of the judgment or relevant information.
The court may order that unlawfully manufactured or marked products and the means used in their manufacture or marking be removed from the market or assigned to the rights holder in lieu of damages. Alternatively, the court may order that the illegal goods be destroyed. Where the infringement was unintentional and the court decides that cessation or destruction would be excessively severe for the infringer, the court may order the infringer to pay a reasonable amount of money on behalf of the trademark holder instead of cessation or destruction, if such payment would adequately meet the interests of the rights holder.
A request for an interim injunction may be filed before initiating court proceedings, together with a lawsuit or in the course of court proceedings. If the request is filed before bringing a lawsuit, the court – upon granting the injunction – will set a deadline for the initiation of a lawsuit against the infringer. If this deadline is not met, the interim injunction will lapse. An interim injunction request before initiating infringement proceedings is heard in ex parte proceedings. In order to obtain an interim injunction, the rights holder must prove its legal interest and justify the injunction by proving the existence of the infringed rights and the factual circumstances of the infringement. The evidence threshold for granting an injunction is lower than in the main proceedings. The rights holder must also define the claims to be secured by the injunction and the method of injunction (eg, seizure of the goods by a court bailiff or a ban on sales). An interim injunction is granted for the duration of the main proceedings and lapses no later than one month after the main proceedings end. If the plaintiff loses the lawsuit or withdraws the action before the court verdict is given, the alleged infringer can demand compensation for damages that it suffered due to the injunction. Requests for the disclosure of information and to secure evidence are also allowed and are usually used in cases involving financial claims.
Trademarks can be enforced after registration. Where the infringer acted in good faith, infringement claims can be brought in respect of the period following publication of the trademark application or, where the infringer was notified earlier, from the date of notification. The limitation period for infringement claims is three years from the date on which the rights holder learned of the infringement; this period runs separately for each infringement. Claims are time barred once five years have elapsed since the infringement.
Criminal actions can be undertaken against counterfeiting products. A counterfeit trademark is any trademark that is identical to or indistinguishable in the course of regular trade from a registered trademark, and which is unlawfully used for the goods covered by the trademark registration. Anyone that marks goods with a counterfeit trademark or a registered trademark without authorisation for the purpose of putting them on the market is liable to a fine, the limitation of freedom or two years’ imprisonment. In order to initiate an investigation, the rights holder must submit a motion. After filing a motion, the proceeding is continued ex officio (no motion for investigation is required). For aggravated crimes, the perpetrator is subject to more severe penalties (imprisonment of between six months and five years) and the proceedings may be initiated ex officio.
A trademark registration or pending application may be assigned or subject to succession. The assignment agreement is valid only if it is in writing. All changes must be entered in the Trademark Register in order to be effective against third parties. Special rules apply to the transfer of jointly owned, collective and guarantee trademarks.
The holder of a registered trademark may authorise another party to use the trademark by signing a licence agreement. The licence agreement is valid only if it is in writing. A licensee may grant a sub-licence only with the rights holder’s consent. Granting further sublicences is not permitted. Although registration of a licence agreement is not obligatory, the exclusive licensee recorded in the register may, to the same extent as the rights holder, enforce its claims in the event of infringement, unless the licence agreement stipulates otherwise.
Registered trademarks can enjoy cumulative protection based on the Unfair Competition Law. An ‘act of unfair competition’ is defined as an act against the law or good custom if it threatens or infringes the interests of another company or customer. This regulation is used by rights holders to support claims against taking unlawful advantage of the reputation of or goodwill in a trademark. A specified act of unfair competition is the marking of goods or services, or lack of such marking, that may mislead customers as to the origin, quality or other essential features of the goods or services, as well as concealing a risk of using the goods or services. Shape marks, product packaging and device marks (eg, logos) are often registered simultaneously as designs and trademarks. They may also enjoy copyright protection.
There is no special regulation protecting rights holders against unauthorised use of their trademarks on the Internet. Online infringements are protected on the basis of general regulations governing trademarks or unfair competition activities.
Part IV of the Russian Civil Code incorporates all IP laws into a single statute, with trademark legislation set out in Chapter 76 of Section VII. Russia is party to the following multilateral international agreements:
• the Paris Convention for the Protection of Industrial Property;
• the Madrid Agreement Concerning the International Registration of Marks;
• the Protocol to the Madrid Agreement Concerning the International Registration of Marks;
• the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks;
• the Nairobi Treaty on the Protection of the Olympic Symbol;
• the Trademark Law Treaty;
• the Singapore Treaty on the Law of Trademarks; and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights.
No rights exist in an unregistered mark unless it is well known according to Article 6bis of the Paris Convention and recognised as such according to Articles 1508 and 1509 of the Civil Code. An unregistered mark can be protected if, due to intensive use, it has become widely known in Russia among the relevant consumers with respect to the goods of the person seeking protection of the mark and is recognised by the Russian Patent and Trademark Office (PTO) to be well known in Russia. Further, according to Articles 1538-1541 of the Civil Code, a mark used by a legal entity or an individual entrepreneur to distinguish its commercial enterprise may be protected as a commercial designation if the mark has sufficient distinctiveness and its use by the owner in respect of the enterprise is known within a certain territory.
A legal person or an individual entrepreneur may apply for and own a mark.
The owner of a registered trademark has the exclusive right to use the trademark. It can prevent all third parties from using, without its consent and in the course of trade, identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion. However, the rights holder cannot prohibit use of the registered trademark in respect of goods placed on the market in Russia or in the Eurasian Economic Union by the owner or with its consent. The owner of a well-known mark can also prevent third parties from using, without its consent, identical or confusingly similar trademark for other goods, provided that such use would indicate a connection between those goods or services and the owner of the well-known mark, and provided that the interests of the owner of the well-known trademark are likely to be damaged by such use.
The examination procedure includes a formal examination of the application – conducted within one month of filing – and a substantive examination of the mark. During the formal examination, the application and accompanying documents shall be checked for compliance with the statutory requirements. During the substantive examination, the mark is checked for compliance with the conditions set out in the Civil Code:
• the acceptability of the applied-for subject matter as a trademark; and
• the absence of absolute and some relative grounds for refusal of registration.
In particular, the following indications cannot be protected:
• indications without distinctiveness (distinctiveness acquired through use is considered);
• indications that consist only of certain elements (eg, those generally used for the indication of certain goods or those that characterise those goods);
• indications that contain elements that are false or misleading to the consumer in respect of a product or its manufacturer, or that are contrary to public interests or the principles of humanity and morality;
• indications that are identical or confusingly similar to official names and images of particularly valuable objects of the cultural heritage of the Russian people or of worldwide cultural or natural heritage;
• indications that are identical or confusingly similar to the earlier trademarks of other persons protected in Russia or applied for registration with respect to the same or similar goods. A letter of consent from the owner of the earlier trademark shall be accepted by the PTO, unless the registration of the trademark will mislead consumers;
• indications that are identical or confusingly similar to appellations of origin protected in Russia with respect to any goods;
• indications that are identical or confusingly similar to a company name or a commercial designation (or their elements) used by another person with respect to the same or similar goods or services, or a name of an achievement in breeding registered in the State Register of the Protected Achievements of Breeding; and
• indications that conflict with the earlier copyrights of other persons, some earlier personal rights and earlier rights to industrial designs and compliance marks.
No opposition procedure is available in Russia. However, after the publication of the trademark application, any third party can submit to the PTO their observations regarding registrability of the applied mark. Those observations shall be considered during examination of the trademark. However, filing the observations does not give those third persons any other procedural rights. Moreover, nothing is published about submitted observations, and the PTO does not publish the outcome of its examination of the observations.
Depending on the results of the substantive examination, the PTO shall make a decision about the registration of the trademark. If registration is accepted, within one month of receipt of a document certifying payment of the statutory fee, the PTO will enter the trademark in the State Register of Trademarks and Service Marks. A trademark certificate is issued within one month of the date of registration.
Invalidation: Trademark protection may be contested and held invalid:
• in full or in part for the whole term, if there are absolute grounds for refusal or earlier exclusive rights in firm names, trade names or copyrights;
• in full or in part within five years of the date of the registration’s publication in the Official Gazette, if there are earlier trademarks or appellations of origin;
• in full within the whole term if protection was granted to someone who is neither a legal person nor an individual entrepreneur;
• in full within the whole term of protection, if protection was granted to a mark having later priority with respect to another person’s trademark that had been recognised as well known;
• in full within the whole term if protection was granted in the name of an agent or representative of a person who is the owner of the mark in a Paris Convention member state without such owner’s authorisation; or
• in full or in part during the whole term of protection, if the rights holder’s actions relating to registration of the trademark or another confusingly similar trademark have been duly recognised as an abuse of rights or unfair competition.
During consideration of objections to trademark registrations filed based on the first three grounds above, when adjudicating, the circumstances of the matter as of the date of the objections are considered. The grant of protection to a well-known mark may be invalidated in full or in part if the protection was granted unlawfully.
Termination: Trademark protection is terminated:
• on expiry of the 10-year term of protection (this can be extended indefinitely for further 10-year periods);
• in the case of a collective mark, if the IP Rights Court orders this due to the use of the mark on goods without common qualitative or other general characteristics;
• if the IP Rights Court orders this based on a petition by an interested person where the trademark was not used for a continuous three-year period after registration;
• if the rights holder ceases business through liquidation (for a legal entity) or the termination of business activity (for a natural person);
• where the rights holder abandons its exclusive right to the mark; or
• if the PTO orders termination based on a petition by an interested person, where the mark has become a commonly used indication for the designation of certain goods.
Trademark procedures take the following periods of time:
• registration – 12 to 14 months;
• renewal – two to three months;
• registration of transactions (eg, licences, assignments, pledges) – two to three months; and
• change of name – two to three months.
The PTO conducts searches for similarity with earlier trademarks (including those applied for registration or recognised as well known), registered appellations of origin and registered industrial designs.
The Civil Code stipulates that the rights holder shall have the exclusive right to use its registered or protected trademark:
• for goods, labels and packaging which are manufactured, offered for sale, sold, displayed at exhibitions and fairs or used commercially in Russia, or stored and transported or imported into Russia for this purpose;
• while performing jobs and providing services;
• on documents introducing the goods in commerce;
• while offering goods for sale; and
• on the Internet, particularly in domain names and in other forms of address.
Any unauthorised commercial use of a protected trademark shall be considered infringing, and goods, labels and packaging on which the trademark or a confusingly similar sign is unlawfully placed shall be regarded as counterfeit.
The illegal use of a trademark entails administrative penalties for such offences, which are seizure of counterfeit goods (as well as materials and implements used for production of the counterfeit goods) and a fine as follows:
• individuals – twice the cost of the counterfeit goods, but no less than Rb10,000;
• legal entities – five times the cost of the counterfeit goods, but no less than Rb100,000; and
• officers – triple the cost of the counterfeit goods, but no less than Rb50,000.
An administrative procedure usually takes three to four months from discovery of the offence to the first court decision.
The rights holder may claim in court the following remedies in civil proceedings:
• cessation of the authorised use of the trademark;
• reimbursement of damages;
• removal of all counterfeit goods from the market and their destruction;
• publication of the court’s decision; and
• compensation instead of damages between Rb10,000 and Rb5 million.
A claim for unconditional compensation is preferable where there is no documentary proof of damages. The rights holder may claim compensation within the scope mentioned above. The court may moderate the amount with consideration for the specifics of the case. Preliminary injunctions are available. The court may order injunctive relief preventing the defendant from performing actions related to the subject matter of the proceedings or ordering the seizure of the defendant’s property. A petition for injunctive relief shall be considered by the court no later than the day after the claimant files such petition. Before ordering injunctive relief, the court may ask the claimant to provide a deposit in case of possible damages or to present the court with financial security. A civil trademark infringement case, from filing to the first-instance court judgment, takes an average of four to six months.
The illegal use of a trademark shall entail criminal responsibility only if the infringement occurs repeatedly or if the damage exceeds Rb250,000. Criminal penalties include:
• a fine of Rb100,000 to Rb300,000 or up to two years’ salary or other income of the convicted person;
• compulsory community service for up to 480 hours;
• corrective or disciplinary work for up to two years; and
• imprisonment for up to two years with a fine of up to Rb80,000 or up to six months’ salary or other income of the convicted person.
If committed by an organised group, the same crime is punishable by:
• a fine of Rb500,000 to Rb1 million or between three and five years’ salary or other income; or
• disciplinary work for up to five years; or
• imprisonment for up to six years and, optionally, a fine of up to Rb500,000 or up to three years’ salary or other income.
The rights holder may claim reimbursement of damages by the infringer. It may initiate civil claims within the ambit of criminal proceedings. Criminal proceedings consist of two stages: preliminary investigation and court hearings. A concerned person can file an application with the police to begin criminal proceedings, which end with the first-instance court pronouncing sentence. This may be appealed to the court of higher instance. Criminal proceedings last an average of two years. Common to all kinds of enforcement proceedings (administrative, civil and criminal) is another measure: after the judgment is handed down, the prosecutor may ask the court to liquidate the legal entity that repeatedly or grossly infringed trademark rights.
The illegal use of a trademark may be classed as an act of unfair competition (in case there is competition on the market). The Russian Anti-monopoly Service is empowered to consider unfair competition cases in special administrative procedures. Such procedures start on the basis of a complaint filed by any person concerned and terminate with the decision of the Russian Anti-monopoly Service. The decision may be appealed to a court.
The total costs of filing and trying an infringement suit comprise state fees, attorneys’ fees and other expenses. State fees shall be paid upon filing of a claim based on the amount of claim, from Rb2,000 to Rb200,000. The amount of the claim shall be determined by the claimant in accordance with the amount claimed, including corresponding penalties and interest. The state fee for an immaterial claim for recognition of right is about Rb6,000. The costs of proceedings may include payments to experts and other persons involved in proceedings.
In order to prevent the import of counterfeit goods, the rights holder may file an application with the Russian Customs Service requesting that its trademark be entered into the Customs IP Register. Customs pays special attention to goods carried across the border which are marked with trademarks entered on the register. If it suspects that these are counterfeit, Customs shall suspend release of those goods and immediately inform the rights holder or its representative. During the prescribed term, the rights holder (or its representative) has the right to inspect the goods suspended from release and take legal action, if necessary.
Established in 2013, the IP Rights Court is a specialised commercial court with jurisdiction over cases concerning IP disputes. As a first-instance court, the IP Rights Court shall consider:
• appeals against the decisions and actions/failure of actions of the PTO;
• patent invalidation suits for reason of wrong ownership or inventorship; and
• trademark cancellation actions for non-use.
As a court of cassation, the IP Rights Court shall consider cases heard by the IP Rights Court at first instance and IP infringement cases considered by first-instance commercial courts and commercial appeal courts. All cases are heard by a panel of at least three judges. The court may engage experts to clarify specific questions on the matter of dispute; for these purposes, it may send a binding order to any authority, organisation or person.
The statutory limitation for initiating a civil court action is three years. An action based on prior rights against a trademark registered in good faith may be filed, depending on the grounds, within five years of registration or within the term of the mark’s validity. Actions against trademarks registered in bad faith may be contested and annulled during the whole term of the trademark’s validity.
A rights holder can freely dispose of its exclusive right to the trademark, particularly by assignment or a licence contract. A transfer of the exclusive right without a contract is also possible, particularly in case of universal succession in title and a charge on the rights holder’s property. The rights holder can assign its trademark to another person in respect of all or part of the goods for which it has been registered. Assignment is not allowed where it may mislead consumers with regard to the goods or the manufacturer. In case of a licence, the licensee must ensure that the goods which it manufactures and sells bearing the licensed trademark match the quality requirements prescribed by the licensor. The licensor shall have the right to control compliance with those requirements. If the territory of a licence is not specified, the licensee may use the trademark throughout the Russian Federation. If no term of a licence is specified, it is considered to be provided for five years. For the purposes of maintaining trademark protection, the licensee’s use can be attributed to the rights holder and considered as proper use of the trademark. Thus, in case of a cancellation action for non-use, the owner can prove use by submitting the documents proving the use by the licensee or another person under the owner’s control. The licensor which issues an exclusive licence cannot use the licensed trademark in the scope granted to the exclusive licensee unless so provided by the licence agreement. In case of an assignment, a licence (franchise) or pledge contract with respect to a trademark, the fact of the deal must be registered with the PTO. The law specifies the deal information that must be communicated to the PTO (the financial terms of the contract are not required to be disclosed and submission of the contract is optional). An assignment between commercial entities may not be without consideration.
A sign – whether a word, graphical, three-dimensional or any other kind – that is registered as a trademark can also be protected by other laws, such as under copyright law as an original work or as a registered design right.
The rights holder’s exclusive rights cover the right to use the trademark in a domain name or in other online use. Thus, it can prevent third parties from using the mark in domain names that are identical or confusingly similar to its own mark where such use would result in a likelihood of confusion. Disputes between rights holders and domain administrators shall be resolved by the courts. In case of cybersquatting, the court usually decides in favour of the earlier rights holder.
Trademarks, service marks and other marks may be protected in Korea under the Trademark Act. Further, the international conventions to which Korea is a signatory – such as the Agreement Establishing the World Intellectual Property Organization, the Paris Convention for the Protection of Industrial Property, the Madrid Protocol on the International Registration of Marks and the Agreement on Trade-Related Aspects of Intellectual Property Rights – have the same legal effect as domestic laws. Many procedural provisions of the Patent Act are applied to the Trademark Act. The protection of famous or well-known marks is governed by the Unfair Competition Prevention and Trade Secret Protection Act. The general provisions of the Criminal Law apply to the criminal sanction of trademark infringement, and the Criminal Procedure Act applies to the investigation, indictment and Criminal Court hearing of such cases. The Civil Procedure Act also sets out the civil remedies for trademark infringement. The Customs Tax Act provides for the protection of trademarks at national borders. As in other jurisdictions, the rights in a given trademark have their limits under the Fair Trade Law and the Act on Investigation of Unfair Trade Practices and Remedies against Injury of Domestic Industry. In addition, the Fair Trade Commission guidelines establish permission standards for parallel imports.
The trademark regime is based on a first-to-file system rather than a first-to-use system. Therefore, the actual use of a mark is not a precondition for obtaining trademark registration; nor does it provide, in most cases, any priority or advantage for registration. The only unregistered marks that are accorded some degree of protection under the Trademark Act and the Unfair Competition Prevention and Trade Secret Protection Act are those recognized as well-known marks in Korea. If a trademark acquires well known status, the owner is entitled to prevent others from registering or using similar or identical marks, and/or from causing consumer confusion with other goods or services. The Trademark Act effectively protects well known marks by prohibiting the registration of:
• trademarks that are identical or similar to another person’s trademark which is well known among consumers as indicating the goods of that other person, and that are used for identical or similar goods (Article 7(1)(ix));
• trademarks that are likely to cause confusion among consumers as to the origin of the goods or services, since they are recognized as designating the goods or services of another person (Article 7(1)(x));
• trademarks that are likely to mislead or deceive consumers as to the quality of the goods (Article 7(1)(xi)); and
• trademarks that are identical or similar to another person’s trademark which is well known among domestic or foreign consumers as indicating the goods of that other person, and that are used for the unfair competitive purpose of gaining improper profit or damaging that other person (Article 7(1)(xii)).
In addition to the Trademark Act, the Unfair Competition Prevention and Trade Secret Protection Act is available as a means to protect a well-known unregistered trademark from those seeking to misappropriate the goodwill associated with that mark.
Secret Protection Act defines an ‘unfair competitive act’ as the use of identifiers identical or similar to the name, trade name, trademark, container or packaging of another that is well known in Korea – or the sale, distribution, import or export of goods bearing such identifiers – so as to cause confusion with another’s goods or to dilute another’s identifier. There are three requirements under the act as set forth below:
• The source identifier must be well known in Korea;
• The offending mark or trade dress must be similar or identical to the well-known source identifier; and
• The likelihood of confusion or dilution due to the similarity must be established.
The standard for establishing the well-known status of an unregistered mark, in order to benefit from protection under the Trademark Act and the Unfair Competition Prevention and Trade Secret Protection Act, is very high and requires a substantial amount of use evidence. In determining whether a mark is well known, the courts will generally review evidence relating to:
• the period of sales;
• the volume of sales;
• advertising volume and expenditure;
• the status of the trademark registration;
• the number of outlets; and
• any other evidence showing exposure of the trademark to local traders and consumers as a source indicator. As it may be difficult to establish the well-known status of a mark, it is advisable to register trademarks in order to secure protection.
In general, any individual or corporation with legal capacity is entitled to register a trademark. Therefore, a corporation without legal capacity cannot enjoy trademark or related rights. However, foreigners who have no residential or business address in Korea are entitled to enjoy trademark or related rights if:
• their country of residence allows Korean nationals to enjoy trademark or related rights under the same conditions as its own nationals;
• their country of residence allows Korean nationals to enjoy trademark or related rights under the same conditions as its own nationals when Korea allows its own nationals to enjoy trademark or other related rights; or
• they enjoy trademark or related rights under a treaty or equivalent.
The Trademark Act defines a ‘trademark’ as any of the following which is used on goods relating to a person’s commercial activities in order to distinguish its goods from those of others:
• a sign, character, figure, three-dimensional shape or any combination thereof; or
• any combination of colour with any of the above items.
Thus, sounds or smells (whether alone or as elements) cannot be protected as trademarks. Also, colours in themselves cannot be protected as trademarks: protection is available only where a colour is combined with another component such as a sign, character, figure or threedimensional shape. However, in order to be registrable, the combination must be distinctive and not commonplace or simple.
All trademark applications are subject to substantive examination by the Korean Intellectual Property Office (KIPO) before a registration or rejection is to be issued. A decision on a trademark application is normally issued within about six to eight months of the filing date. If the examiner finds no reason to reject the application, a decision will be issued to publish the application in the official Trademark Gazette for public inspection and opposition. If no opposition to the registration is raised within a 30-day period, and if the examiner has no other reasons to reject the application, the mark will be granted registration. It generally takes eight to 10 months from the application date for a mark to be registered, if no opposition is raised.
Anyone may file an opposition to a trademark application within 30 days of its publication in the Trademark Gazette. This period cannot be extended, but if an initial notice of opposition is filed within the 30-day period, the opponent has an additional 30 days in which it may amend, add to or supplement the grounds for opposition. Once an opposition has been filed, the examiner will send a copy of the opposition brief to the applicant, inviting it to respond to the opposition. In addition, before the application is published, any person may submit information to KIPO during its review explaining why the requested mark should not be granted registration.
If there is no opposition to the registration during the publication period, or if no successful opposition is lodged, the registration will be fee to KIPO within two months of receiving notice of the grant. Within a few days of receiving payment, KIPO will issue a certificate of trademark registration.
Renewal: A trademark registration is for an initial term of 10 years which can be renewed perpetually upon filing a renewal application without having to prove the use of the trademark. There is currently no substantive examination system for renewal applications, and thus it only takes approximately two to three months to complete a renewal procedure.
Cancellation/revocation: Trademarks that become illegal after registration will be cancelled under the Trademark Act (Article 73), which sets out several grounds for cancellation of a trademark registration. Anyone – not just the interested parties – can bring a cancellation action based on:
• the trademark owner’s unfair use (Article 73(1)(ii));
• unauthorized registration by an agent or representative of the owner of a mark that is protected in a member country of international treaties (Article 73(1)(vii));
• unfair use by the licensee (Article 73(1)(viii)); or
• consumer confusion caused by the separateassignment of a similar mark (Article73(1)(ix)).
Although there are many technical grounds for cancellation, there are four categories of improper or insufficient use of which trademark owners should be aware:
• Non-use – non-use of a trademark for a period of three years constitutes grounds for a cancellation action (Article 73(1)(iii)). A registered trademark may be cancelled if it is not used by its owner, or by an exclusive or non-exclusive licensee, in the three years immediately preceding the date of a cancellation action brought by an interested person, without justifiable reason (eg, a government prohibition of import). One important effect of winning a cancellation action is that the petitioner may obtain a registration for a trademark identical or similar to the cancelled mark within the three-month priority period.
• Unfair use by trademark owner – the trademark owner may not intentionally mislead or deceive consumers as this may cause consumer confusion as to the quality or origin of the goods. Unfair use occurs when the trademark owner intentionally uses a similar trademark on the designated goods, or intentionally uses the trademark or a similar trademark on goods similar to the designated goods (Article 73(1)(ii)).
• Unfair use by licensee – unfair use of a trademark by an exclusive or non-exclusive licensee constitutes grounds for a cancellation action, unless the trademark owner has exercised reasonable care in preventing such unfair use by the exclusive or non-exclusive licensee (Article 73(1)(viii)).
• Other circumstances – revocation of a registered trademark may also be requested in the case of consumer confusion caused by either the illegal use of a collective mark (Article 73(1)(v)) or amendment of the articles of association for a collective mark (Article 73(1)(vi)); or other types of illegal assignment, such as: separate assignment of a mark designating similar goods or services; partial assignment of a joint trademark right without the consent of other owners; or assignment of a business emblem separated from its business.
Except for cancellation based on non-use or illegal assignments, a cancellation action must be brought within three years of the date on which the facts forming the basis for the cancellation action occur. Further, a cancellation action based on the unauthorized registration by a representative or agent of a trademark owned by a foreign trademark owner must be brought within five years of registration.
Invalidation: A mark can also be removed from the register on the grounds that it is invalid. Invalidation actions are substantially identical to the impediments to registration. These are outlined below.
• generic name (Article 6(1)(i));
• a trademark conventionally used for the designated goods (Article 6(1)(ii));
• descriptiveness (Article 6(1)(iii));
• a trademark consisting only of a conspicuous geographical name or its abbreviation, or a map (Article 6(1)(iv));
• a trademark consisting only of a common surname or appellation that is indicated in the manner it is generally used (Article 6(1)(v));
• a trademark consisting only of a simple and common mark (Article 6(1)(vi)); or
• a trademark that might otherwise not be understood by consumers as indicating the goods of a certain owner (Article 6(1)(vi)).
Exceptions are available where the mark has acquired secondary meaning through use (Article 6(2)).
• a trademark similar to official indications of states or international organizations (Article 7(1)(i));
• a trademark that falsely represents a relationship with states, races, nationals, public o
• a trademark that is identical or similar to a well-known mark that indicates a state or public organization, a non-profit institution or an enterprise for the public interest (Article 7(1)(iii));
• a trademark that is contrary to public order or morality (Article 7(1)(iv));
• a trademark incorporating a mark that is identical or similar to medals or honorary certificates awarded at government exhibitions (Article 7(1)(v));
• a trademark consisting of the name, appellation, trade name, portrait, signature, seal, pen name, professional name or pseudonym of a renowned person, or the abbreviation thereof (Article 7(1)(vi));
• a trademark that is identical or similar to a senior mark when the trademark is to be used on goods identical or similar to the designated goods of the senior mark (Article 7(1)(vii));
• a trademark that is identical or similar to a mark for which registration has expired or been invalidated, if: one year has not elapsed since the date of expiration of the registration or the date on which the invalidation decision became final and conclusive; and the trademark is to be used on goods which are identical or similar to those designated under the expired or invalidated trademark (Article 7(1)(viii));
• a trademark that is identical or similar to another person’s trademark which is well known among consumers as indicating the goods of that other person, and which is used for identical or similar goods (Article 7(1)(ix));
• a trademark that is likely to cause confusion among consumers as to the origin of the goods or services, since it is recognized as designating the goods or services of another person (Article7(1)(x));
• a trademark that is likely to mislead or deceive consumers as to the quality of the goods (Article 7(1)(xi));
• a trademark that is identical or similar to another person’s trademark which is well known among domestic or foreign consumers as indicating the goods of that other person, and that is used for the unfair competitive purpose of gaining improper profit or damaging that other person (Article 7(1)(xii));
• a three-dimensional trademark, such as a bottle or container, which serves a functional purpose only and lacks any distinctive element (Article 7(1)(xiii)); and
• a trademark designating wines, liquor or similar goods, if it is composed, partially or entirely, of a geographical indication relating to the product’s origin and the geographical indication is located in a member country of the World Trade Organization (Article 7(1)(xiv)).
In the case of a cancellation action, the trademark rights are revoked from the time the cancellation decision is finalized. In contrast, the trademark rights are considered never to have existed once an invalidation decision becomes final. An invalidation action may be brought by any interested person or examiner, and may be brought after the trademark registration has expired. An invalidation action under Articles 7(1)(vi) to (ix), (xiv) and Article 8 (first-to-file rule) must be brought within five years of the date of registration or renewal.
KIPO does not perform any searches.
The trademark owner has the exclusive right to use the registered trademark on the designated goods (Article 50), and is entitled to exclude others from using a mark that is identical or similar to the registered trademark in respect of goods which are identical or similar to the designated goods (Article 66(1)(i)). The trademark owner can take the following courses of action in cases of unauthorized use of the trademark (Article 65). Civil or criminal actions are handled by general courts, while the Patent Court is responsible for administrative actions such as, among others, invalidation and cancellation trials.
Preliminary and/or permanent injunction: Any trademark owner or exclusive licensee may request a court to order that a person who has infringed or might infringe the trademark cease such infringement (Article 65(1)). Where a trademark owner or exclusive licensee makes a request under Article 65(1), it may seek:
• the destruction of the infringing items;
• the removal of equipment used to manufacture the infringing items; and
• other acts necessary for the prevention of infringement (Article 65(2)).
Compensation for damages: In an action for damages, the plaintiff has the burden of proving the basis and the amount of damages. The Trademark Act does not recognize punitive damages. Under the act, the trademark owner may claim actual damages, or seek forfeiture of the profits derived from the infringing activities or the payment of a standard royalty. Alternatively, the trademark owner could claim damages in an amount equal to the total sales of infringing goods multiplied by its own profits per product. The courts do not grant punitive damages for infringement of trademark rights.
Restoration of business reputation: If a person causes damage to the business reputation of a trademark owner or exclusive licensee by intentionally or negligently infringing the trademark or exclusive licence, the trademark owner or exclusive licensee may request the court to order any measures necessary to restore its business reputation instead of or in addition to compensation for damages (Article 69).
Criminal law: Under the Trademark Act, there are several key provisions that address criminal actions. In the case of trademark infringement, any person who has infringed a trademark right or exclusive licence may be liable to imprisonment for up to seven years or a fine of up to W100 million (Article 93). When the violation is committed by a representative, officer or employee of a legal entity, the legal entity will be liable for the same fine as the offender (Article 97). However, under Article 51 of the Trademark Act, trademark rights are not extended to the following:
• trademarks indicating, in a common way, a person’s name, title or trade name, portrait, signature, seal, famous pseudonym, professional name or pen name, or a famous abbreviation thereof (although this will not apply where a registered mark has been used with the intention of violating the rules of fair competition);
• trademarks indicating, in a common way, the generic name, place of origin, quality, raw materials, efficacy, usage, quantity, shape (including shape of packaging), price, method or time of manufacturing, processing or use, or time of use of goods identical or similar to the designated goods of the registered trademark;
• trademarks customarily used on the designated goods of the registered trademark or similar goods, and marks consisting of famous geographical names or their abbreviations, or of a map; and
• trademarks comprised solely of a threedimensional shape to guarantee the function of the designated goods of the registered trademark or the packaging thereof.
Even if another’s use of an unregistered trademark is not actionable under the Trademark Act, it may be actionable under the Unfair Competition Prevention and Trade Secret Protection Act. In order to bring a successful action under the Unfair Competition Prevention and Trade Secret Protection Act, the following main elements should be proven:
• The source identifier must be well known in Korea;
• The offending mark must be similar or identical to the well-known source identifier; and
• There must be a likelihood of confusion or dilution due to the similarity.
As with the Trademark Act, the Unfair Competition Prevention and Trade Secret Protection Act provides for both civil and/or criminal relief.
Preliminary injunction: The average period from complaint to a decision is approximately four to six months, depending on the complexity of the issues presented by the case.
Permanent injunction: A permanent injunction generally takes between six months and one year to obtain.
Damages actions: The average time period from complaint to first instance district court judgment is between eight and 12 months.
To change the status of the ownership of a trademark, the assignment must be registered with KIPO. Specific documents are necessary to register a change in assignment in any given case. Two common examples are outlined below.
If the ownership of a trademark is to be wholly assigned to another person, the following documents are required:
• a deed of assignment signed by the assignor;
• a notarized certificate of incorporation (nationality) of the assignor;
• power of attorney from the assignor; and
• power of attorney from the assignee.
If a trademark owner is to merge with another person to form a new successor entity, the following documents are required:
• a certificate proving the merger; and
• power of attorney signed by the new successor entity.
The recordation of the change of ownership (either by assignment or merger) generally takes approximately 10 days.
Licence recordation is not mandatory. However, there are certain statutory effects (or benefits conferred upon a recorded trademark licensee) when a trademark licence is recorded with KIPO. For recorded exclusive licences, the benefits are as follows:
• the licensee is entitled to use the licensed mark exclusively even against the trademark owner;
• the licensee can independently file an infringement action against a third party, without consent of the trademark owner; and
• the licensee can grant sub-licences to third parties, with the trademark owner’s consent.
Recorded non-exclusive licences allow the licensee to claim the right to use the trademark against a new trademark owner who acquired the trademark after the recordation of the nonexclusive licence or against an exclusive licensee who later obtained the exclusive right. Licence recordation requires the following documents to be submitted with the application:
• a notarized trademark licence agreement indicating exclusive or non-exclusive licence or a notarized authorization for exclusive or non-exclusive trademark use;
• a notarized certificate of incorporation (nationality) of the licensor (if KIPO deems it necessary to verify the licensor);
• power of attorney from the licensor; and
• power of attorney from the licensee.
The recordation of a licence generally takes approximately 10 days.
A device mark can be protected under the Design Act if it is the shape, pattern or colour, or a combination of these, of an article (or part thereof) that produces an aesthetic visual impression and is thus registered as a design with KIPO. A device mark can be protected under the Copyright Act if it is considered to be a work of fine art that has independent artistic value. Where the use of a registered trademark on designated goods conflicts with another’s patent right, utility model right or design right that was applied for prior to the date of filing of the trademark application, or with another’s copyright that has been in effect since before that date, the trademark owner or the exclusive or non-exclusive licensee may not use the registered trademark on the portion of the designated goods that gives rise to the conflict without a licence from the owner of the earlier right.
The amended Unfair Competition Prevention and Trade Secret Protection Act, which took effect on July 21 2004, contains a specific statutory provision barring cybersquatting of famous marks in Korea. Under the amendment, the registration, holding, transfer or use of a domain name incorporating an element that is identical or confusingly similar to another’s famous trademark or trade name in Korea without legitimate purpose constitutes unfair competition. Further, the Internet Address Resource Act, which took effect on July 30 2004, provides additional legal grounds for the prevention of cybersquatting involving domain names in the ‘.kr’ domain. The act expressly prohibits the unlawful registration of a domain name incorporating another’s trademark or trade name and enables the right holder to seek cancellation of the offending domain name registration in court. A trademark or trade name owner that wishes to acquire a third-party registrant’s domain name incorporating its trademark or trade name can also file an administrative proceeding with the Internet Address Dispute Resolution Committee (IDRC), a subdivision of the National Internet Development Agency, which is the local agency governing domain name matters in Korea. If the trademark or trade name owner prevails, it may request the registrar to implement the favourable IDRC decision (eg, through transfer of the domain name), unless the respondent (eg, the registrant) appeals within 14 days of receiving notice of the decision.
Distinctive signs are principally governed by the Trademark Act (17/2001), which replaced the former Trademark Act (32/1988) and was complemented by Royal Decree 687/2002. In 2006 the Trademark Act was further amended by Act 19/2006, which implemented the EU IP Enforcement Directive (2004/48/EC). Civil actions for trademark infringement are comprehensively covered in the Trademark Act, while criminal actions for infringement are defined in Book II, Title 13, Section 11 of the Criminal Code (10/1995), as amended by Act 15/2003 and by Act 5/2010.
At an international level, the Trademark Act has adapted Spanish law to the general legal framework established within the international community. In particular, the following international treaties have been integrated into Spanish law:
• the Paris Convention for the Protection of Industrial Property;
• the Madrid System for the International Registration of Marks (Madrid Agreement (1891) and Madrid Protocol (1989));
• the Nice Agreement on the International Classification of Goods and Services for the Registration of Marks;
• the Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks;
• the Trademark Law Treaty; and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).
At EU level, the Trademark Act has integrated the Trademarks Directive (2008/95/EC), the Community Trademark Regulation (207/2009) and the IP Enforcement Directive.
The Trademark Act 2001 follows the principle that trademark rights come into existence upon valid registration under the Trademark Act. However, the owner of an unregistered well-known mark has the right to:
• file an opposition to an application for registration of a sign that is identical or confusingly similar to its own, for identical or similar goods;
• file a civil action to invalidate an identical or similar trademark registered for identical or similar goods; and
• file a civil action against the unauthorised use of the unregistered mark for identical or similar goods.
Article 3(2) of the Trademark Act 1988 extended limited protection to the owners of unregistered well-known marks, but stated that such protection was granted to the “user” of the mark. Therefore, the act expressly required the use of the unregistered well-known mark within the Spanish territory in order to claim protection. The revised Trademark Act makes no reference to use of the unregistered mark in Spain as a prerequisite for claiming protection. Hence, in principle, the Trademark Act requires only that the unregistered mark be well known in order to be protected.
Article 3 of the Trademark Act identifies the following categories of persons who can legitimately obtain a Spanish trademark or trade name:
• Spanish natural or legal persons, and foreign natural or legal persons who have their habitual residence or a serious and effective industrial or commercial establishment in Spain;
• foreign natural or legal persons who enjoy the benefits of the Paris Convention or who are nationals of a World Trade Organisation (WTO) member state; and
• foreign natural or legal persons whose home state recognises the right of Spanish nationals to register such rights (mutual recognition principle).
A representative of the rights holder requires a power of attorney before filing. However, this need not be notarised or legalised.The Trademark Act also sets out, in Article 2(2), that if a person applies to register a trademark in breach of either third-party rights or a legal or contractual obligation, the aggrieved party may enforce its ownership of the trademark before the Commercial Court, provided that the claim is brought within a period of five years from publication of the notice of registration or the time at which the trademark is first used in Spain.
Protected: Article 4 of the Trademark Act establishes the requirements for trademark registration. It provides that a trademark may be any sign that is capable both of being represented graphically and of distinguishing in the market the goods or services of one undertaking from those of others. Article 4(2) completes the definition with an inclusive list of signs that may constitute trademarks:
• words or combinations of words, including those capable of identifying persons;
• figures, symbols and drawings;
• letters, numerals and combinations thereof;
• three-dimensional shapes, including wrappers, containers and the shape of goods or their packaging;
• sounds; and
• any combination of the above, without limitation.
Not protected: Articles 5 to 10 of the Trademark Act set out the grounds for refusal of registration. A trademark cannot be registered in Spain if it contravenes these provisions. The same provisions apply as grounds for invalidation of a trademark registration (Articles 51 and 52). Thus, while a trademark may be entered in the Trademark Register in contravention of these prohibitions, it may still lack validity and may thus be declared invalid by a final court decision on the basis of absolute or relative grounds for refusal set out in Articles 5 to 10 of the Trademark Act. Article 5 contains a list of 11 absolute grounds for refusal, which mainly correspond to those set out in Article 3 of the Trademarks Directive. The following signs may not be registered as a trademark:
• signs that are not registrable because they do not fulfil the requirements set out in Article 4 of the Trademark Act;
• signs that lack distinctive character;
• signs that comprise exclusively signs that serve in trade to designate the characteristics of the relevant goods or services;
• signs that consist exclusively of signs or indications that have become customary to designate the relevant goods or services in the current language, or in the good-faith and established practices of the trade;
• signs that consist exclusively of a shape which results from the nature of the goods themselves, which is needed to obtain a technical result or which gives substantial value to the goods;
• signs that are contrary to law, public policy or accepted principles of morality;
• signs that may deceive the public – for instance, as to the nature, quality or geographical origin of the relevant goods or services;
• signs identifying wines or spirits that contain a geographical indication, where those wines or spirits did not originate in that geographical area, even if the true origin of the goods is indicated or if the geographical indication is translated or used along with expressions such as ‘kind’, ‘type’, ‘style’ or ‘imitation’;
• signs that include or imitate the coats of arms, flags, decorations or other emblems of Spain, its autonomous communities, its towns, provinces or other local entities, unless the appropriate consent has been given;
• signs that have not been authorised for use by the competent authorities and that are to be refused pursuant to Article 6ter of the Paris Convention; and
• signs that include badges, emblems or coats of arms other than those covered by Article 6ter of the Paris Convention, which are of particular public interest, unless the appropriate authorities have granted consent to the registration.
Article 6 sets out relative grounds for refusal or invalidation in case of conflicts with identical or similar earlier rights, in the same terms as Article 4(1) of the Trademarks Directive. Hence, according to Article 6(1) of the Trademark Act, the following signs may not be registered as a trademark:
• signs that are identical to an earlier trademark, where registration is sought for identical goods or services; and
• signs that are identical or similar to an earlier trademark, where registration is sought for identical or similar goods or services and there is a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trademark.
Article 6(2) of the Trademark Act defines what is meant by an ‘earlier trademark’ in the same terms as Article 4(2) of the Trademarks Directive:
• Spanish registered trademarks, trademarks registered internationally and effective in Spain, and Community trademarks, with a filing or priority date that precedes the trademark application;
• registered Community trademarks, which under the Community Trademark Regulation constitute a valid claim to seniority over Spanish registered trademarks or trademarks registered internationally and effective in Spain, even if they have been surrendered or have lapsed;
• trademark applications that fall under the above categories, subject to their final registration; and
• unregistered trademarks that are well known in Spain on the filing or priority date, pursuant to Article 6bis of the Paris Convention.
Article 7 further prohibits the registration of the following:
• signs that are identical to an earlier trade name designating activities which are identical to the goods or services for which registration is sought; and
• signs that are identical or similar to an earlier trade name, where registration is sought for goods or services identical or similar to the designated activities and there is a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trade name.
Article 8, informed by Article 4(4)(a) of the Tradmarks Directive, sets out relative grounds for refusal or invalidation in case of a conflict with identical or similar earlier registered trademarks and trade names that are famous or well known in Spain. Hence, Article 8(2) defines a ‘well-known trademark’ as a sign that is generally known by the relevant sector of the public for the goods, services or activities covered. Article 8(3) provides that a famous trademark is one that is well known by the general public. The Trademark Act thus establishes that the greater the degree of public knowledge and the more well known the mark, the greater the protection it enjoys. In this way, the protection afforded to such marks is extended beyond the principle of speciality: a trademark application will be refused even if the goods or services for which registration is sought are dissimilar to those for which an identical or similar well-known or famous mark is registered. This reinforced protection applies if the use of the later mark might suggest a connection between the goods or services covered and the owner of the well-known or famous mark, or in general where such use, without due cause, would take unfair advantage of, or be detrimental to, the distinctive or well-known character or reputation of the earlier mark. Further grounds for refusal or invalidation set out in Article 9 of the Trademark Act coincide with those set out in Article 4(4)(c) of the Trademarks Directive (eg, rights related to the name or surname of a person, copyright). Article 10 of the act sets out relative grounds for refusal or invalidation in case of unauthorised registration by an agent or representative; these are established in the same terms as Article 6septies of the Paris Convention. Unless it can justify its actions, the agent or representative of a rights holder located in a Paris Convention or WTO member state may not register that trademark in Spain in its own name without the owner’s consent.
The trademark registration system is established in Articles 11 to 30 of the Trademark Act and in the complementary regulation (Royal Decree 687/2002).
The application to register a trademark must be filed before the Spanish Patent and Trademark Office (SPTO). Once an application is filed, the SPTO will examine it for compliance with the formal requirements. If the application is admissible, the SPTO will conduct an electronic search of earlier rights that may be incompatible with the application, based on relative grounds for refusal. The SPTO will notify the owners of any potentially incompatible earlier rights that have been detected so that they may file an opposition if they consider it appropriate; however, the SPTO will not refuse an application ex officio due to the existence of an incompatible earlier right. At the same time as notifying the owners, the SPTO will publish the application in the Industrial Property Official Gazette. Following publication, the SPTO will conduct an ex officio substantial examination of the application to determine whether:
• there are absolute grounds for refusal; or
• the application includes or comprises a name, surname, pseudonym or any other sign identifying a person other than the applicant to the general public.
If no oppositions are filed and the ex officio examination raises no objections, the trademark will be registered. If objections are raised in the substantial examination, the proceedings will be halted and the applicant will be notified accordingly. The applicant has one month from such notification to submit arguments in support of its application, or to withdraw, limit, amend or split the application. Regardless of whether the applicant responds, the SPTO will decide whether to grant or refuse registration, specifying the grounds for its decision. If grounds for refusal exist only for some of the goods or services for which registration is sought, the refusal of registration will be limited to the goods or services at issue. The grant or refusal of registration will then be published in the Industrial Property Official Gazette. The applicant can contest the SPTO’s decision through an administrative appeal procedure within one month of its publication. In such case the SPTO will review its decision to determine whether the administrative acts granting or refusing registration were performed in accordance with the law.
Publication of the trademark application triggers a two-month period during which any party that believes its rights may be damaged can file an opposition to the registration based on absolute and/or relative grounds for refusal. The opposition procedure is identical to that followed where the SPTO raises objections to the application: the applicant will be notified of the opposition and given the opportunity to respond, and the SPTO will then decide whether to grant or refuse registration and publish its decision in the Industrial Property Official Gazette. Again, the decision may be appealed through an administrative appeal procedure within one month of publication.
A trademark may be removed from the register by the SPTO or by the courts. A trademark may be cancelled by the SPTO if it is not duly renewed (renewals must be made every 10 years) or if it is surrendered by the owner (the owner may surrender the trademark for all or some of the goods or services for which it is registered; surrender will not be permitted where this may affect the rights of third parties – for example, where the rights are subject to licences, attachments or call options). Contentious-administrative courts and commercial courts (the specialised IP courts in the civil jurisdiction) may reject or declare a trademark invalid.
Contentious-administrative courts: Any unsuccessful party in an administrative appeal process may lodge an appeal before the contentious-administrative courts within two months of publication of the SPTO’s administrative appeal decision in the Industrial Property Official Gazette. Article 53 of the Trademark Act extends the final and binding nature of decisions issued in the contentious-administrative jurisdiction to the civil jurisdiction. Hence, an application for invalidation of a trademark may not be filed with the commercial court if it relies on grounds that have already been considered in a contentious-administrative appeal.
Commercial courts: As set out in Article 55 of the Trademark Act, a trademark will be cancelled by a commercial court if:
• it has not been put to genuine and effective use in the Spanish market in connection with the goods or services for which it is registered. If such use is not made from the time of registration or ceases for an uninterrupted period of five years, without legitimate reason, the trademark may be cancelled if a revocation application is filed before the commercial courts;
• as a result of the owner’s activity or inactivity, the trademark has become a common name for the goods or services for which it is registered;
• the trademark becomes misleading as a consequence of its use in the market; or
• the owner no longer has the capacity to own a Spanish trademark.
The courts can also invalidate a registration on absolute and relative grounds where the registration has been obtained unlawfully. The absolute grounds, set out in Article 51, are as follows:
• The trademark is in breach of Article 3 of the Trademark Act (ie, the owner is not entitled to own a Spanish trademark);
• The trademark is in breach of Article 5 (ie, there are absolute grounds for refusal); or
• The rights holder acted in bad faith when filing the trademark application.
An invalidation action based on absolute grounds will not be time barred. The relative grounds for invalidation are set out in Article 52 and comprise registration in breach of Article 6, 7, 8, 9 or 10. However, if the owner of the earlier right has tolerated the use of the infringing mark for a period of five successive years, the right to bring an invalidation action will lapse, unless the infringing mark was registered in bad faith. An owner of prior rights which wishes to take action against a registration filed in good faith has five years from the date of publication of the notice of registration or the date on which the owner of prior rights becomes aware of the later trademark being used in Spain. There is no time limit for action by an owner of prior rights against a registration filed in bad faith.
The SPTO can perform official searches. These include searches for identical and similar word marks and trade name searches (official searches for traditional graphic marks and non-traditional graphic marks are not available). It is possible to request an official search either for identical signs or for similar signs.
Under Article 40 of the Trademark Act, registered trademark rights may be enforced through the commercial and criminal courts. Civil actions for registered trademarks: Article 41 of the Trademark Act lists the civil actions that a registered rights holder can bring against an infringer before the commercial courts. Among other things, the rights holder may seek the following remedies:
• cessation of the infringing acts;
• delivery or destruction of the infringing goods at the infringer’s expense;
• delivery or destruction of the means principally used to commit the infringement at the infringer’s expense;
• transfer of ownership of the infringing goods and the means intended to commit the infringement; and
• publication of the judgment at the infringer’s expense.
Article 43 establishes the legal criteria to calculate the compensation for damages, which includes not only the losses suffered but also the gains that the trademark registration holder has failed to obtain as a result of the infringement of its right. The level of such compensation is fixed, at the injured party’s discretion, according to one of the following criteria:
• the negative economic consequences suffered by the injured party, including the profits that the rights holder would have obtained if the infringement had not occurred, the profits obtained by the infringer as a consequence of the infringement and moral damages; or
• the royalty that would have been due if the infringer had requested authorisation to use the IP right.
The compensation for damages shall also include the expenses incurred by the rights holder during the investigations carried out to obtain reasonable evidence of the infringement. In addition, the rights holder can request a compensation for the damages caused to the prestige of the trademark – in particular, due to a faulty fabrication or an inadequate presentation of the illicit goods. The rights holder is also entitled to request interim measures to ensure the effectiveness of the judgment adopted in the main action. Three criteria must be satisfied to obtain an interim injunction:
• fumus boni iuris (ie, a prima facie case);
• periculum in mora (ie, urgency); and
• the provision of a bond to guarantee potential damages to the defendant.
An interim injunction may be issued either ex parte or following a contradictory hearing. The Trademark Act sets no time limits for the pursuit of interim relief. However, as one of the criteria to be satisfied in order to obtain an interim injunction is urgency, the rights holder should file the corresponding request as soon as possible after becoming aware of the infringing acts. Civil actions for unregistered trademarks: The Trademark Act grants protection to unregistered trademarks that are well known in Spain. Therefore, since an unregistered well-known trademark is considered almost equivalent to an unknown registered trademark, there are no difficulties in enforcing such rights.
Criminal actions for registered trademarks: Criminal actions for trademark infringement are defined in Article 274 of the Criminal Code. Criminal proceeding can be commenced against those who intentionally manufacture, import, store or sell counterfeit goods. The legal penalties are:
• imprisonment of between six and 24 months;
• payment of damages (legal criteria established pursuant to Article 43);
• payment of a fine; and
• destruction of the infringing goods.
Only the owners of registered trademarks can seek protection under criminal law.
The timeframe for civil actions for the protection of registered and unregistered trademarks is around a year at first instance and around two years for an appeal judgment.
In accordance with Article 11 of the Trademark Law Treaty, the Trademark Act does not require legalisation. Instead, the presentation of legalised documents is left at the applicant’s discretion. According to Article 39 of the Trademark Act, use of a mark by a third party with the rights holder’s consent is attributed to the rights holder. Therefore, use by a licensee is attributed to the rights holder as far as such use is made within the limits of the licence agreement.
Article 4(1) of the Trademark Act provides that any sign may be registered and protected as a trademark if it is capable of being represented graphically and of distinguishing in the market the goods or services of one undertaking from those of others. Therefore, an object of copyright, a design protection or rights related to the name or image of a person may also be protected as a trademark, provided that it fulfils the requirements of Article 4(1). However, the absolute grounds for refusal as set out in Article 5(1)(e) must be taken into account. It is thus not possible to register as a trademark utility models (technical effect of the shape) or, in some cases, industrial designs (substantial value of the shape).
Article 34(3)(e) recognises that a registered rights holder has the exclusive rights to use its trademark on interconnected communication networks and as a domain name. Therefore, the owner of a registered or unregistered well-known trademark may prevent third parties from using its mark in this way without authorisation.
The basic domestic legislation in Sweden is the Trademark Act (1960:644) together with the government ordinance enacted under it, the Trademark Ordinance (1960:648). The EU First Trademark Directive (89/104/EEC) is implemented in the Trademark Act. The act also contains certain provisions that are requirements of the Community Trademark Regulation (40/94). Other domestic laws regulating trademark protection are:
• the Collective Trademark Act (1960:645);
• the Marketing Act (1995:450);
• the Customs Act (2000:1281);
• the Business Names Act (1974:156); and
• the Names Act (1982:670)
Several international conventions and agreements form part of the legislative framework regarding trademarks in Sweden. As noted, by virtue of its membership of the European Union, the Community Trademark Regulation and the First Trademark Directive apply in Sweden. Sweden has also signed the following international conventions and agreements:
• the Paris Convention for the Protection of Industrial Property Rights;
• the Agreement on Trade-Related Aspects of Intellectual Property Rights;
• the Trademark Law Treaty;
• the Nice Agreement; and
• the Madrid Protocol on the International Registration of Marks.
Unregistered marks are protected if they are established in Sweden through use. The owner of the established trademark enjoys the same legal protection as the owner of a registered mark.
Unregistered marks are protected by the Trademark Act. An unregistered trademark is considered as established if it has become known as a sign for the goods provided under the trademark to a significant section of the relevant consumers at which it is directed. An unregistered trademark may also be protected under the Marketing Act. Third-party use of a trademark can be prohibited under the act if:
• the mark is identical or similar to a well known trademark and will cause confusion as to the origin of the third party’s goods; or
• such use constitutes parasitic use that exploits the reputation of a well-known mark.
The legal basis for registration and ownership of trademarks is regulated by the Trademark Act. Any natural person or legal entity can apply for and own a trademark. The trademark owner has the exclusive right to use or to permit others to use the trademark. The registration and examination of the trademark application are carried out by the Swedish Patent and Registration Office (PRV).
According to the Trademark Act, a trademark can consist of any sign capable of being represented graphically, including personal names, designs, letters, numerals, and the shape of goods or their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. A trademark may not be registered if it lacks distinctiveness. A sign that on its own, or with only minor changes or additions, represents the kind, character, quantity, use, price, geographical origin or time of manufacture of the goods shall not be deemed to have distinctiveness. Also, a trademark may not be registered if it consists only of a shape:
• derived from the nature of the goods;
• that is needed to achieve a certain technical result; or
• that is intended to give the goods substantial value.
Furthermore, a trademark may not be registered if:
• the sign includes a national or international sign or municipal arms that may not be used as a trademark without authorization, or a sign which could be confused with the aforementioned signs;
• the sign is intended to mislead the public;
• the sign in any other way is contradictory to law or general order, or is intended to cause offence;
• the sign includes or consists of something that is intended to be perceived as another party’s firm name, family name, artist’s name or similar name, or another party’s portrait, unless the name or portrait refers to someone long since deceased;
• the sign contains something that is intended to be perceived as the title of another party’s protected literary or artistic work, of which the title is distinctive, or violates another party’s copyright;
• the trademark is confusingly similar to a firm name used in business by another party, or another party’s trademark which is registered after a prior application or which is established when the application is made;
• the trademark is confusingly similar to a sign that is used by another party at the time of application, where the application has been made with knowledge thereof and the applicant has not used its trademark before the other trademark was put to use;
• the trademark is confusingly similar to a trademark covered by a prior international trademark registration in force in Sweden; or
• the trademark is confusingly similar to a prior Community trademark.
The PRV ensures that the registration formalities are observed by the applicant upon receipt of the application and that there are no absolute grounds for refusal. Furthermore, the PRV ensures that the list of goods or services corresponds with the Nice Classification and is in conformity with PRV rules. If the PRV finds that a trademark is partly descriptive and has reason to assume that registration of the mark may cause uncertainty as to the scope of the exclusive right, this element may be explicitly excluded from the registration. In such case the PRV will issue an official action and request that the applicant accept a disclaimer for the descriptive part of the trademark. The PRV will also make a search for relative grounds for refusal and for prior registered rights in the form of Swedish, Community or international trademark applications or registrations, Swedish company names and Swedish surnames. If trademarks, company names or surnames are found which may present an obstacle to registration, the PRV will issue an official action to the applicant. The applicant can argue against the official action and/or obtain consent from the holder of the prior right. If the prior right is identical to the trademark in the application, the examiner may not accept consent, as two identical registrations may be considered deceptive to the public. The PRV’s decision may be appealed to the Swedish Court of Patent Appeals and thereafter to the Swedish Supreme Administrative Court. Amendments to the Trademark Act abolishing examination on relative grounds by the PRV are under discussion and are – tentatively – expected in 2008.
When a registration has been published by the PRV, any party may file an opposition against registration within two months. The opposition must provide reasons. No opposition fee is required. The PRV will consider the opposition and notify the owner of the registered right, inviting it to submit its observations. The PRV will then decide to uphold, alter or revoke the registration. Alteration can be made only with the consent of the affected party. The PRV’s decision may be appealed to the Swedish Court of Patent Appeals and thereafter to the Swedish Supreme Administrative Court. A registered trademark may be revoked at any time after its registration if it subsequently emerges that the trademark was registered contrary to the provisions of the Trademark Act.
The PRV registration fee is Skr1,700 (approximately €180) for the first class and Skr800 (approximately €85) for each additional class if the application is filed by fax or post. If the application is filed electronically the fees are Skr1,300 (approximately €140) for the first class and Skr600 (approximately €65) for each additional class. The renewal fee is Skr1,400 (approximately €150) for the first class and Skr700 (approximately €75) for each additional class. The application is registered and published after examination by the PRV in accordance with the above. If the application is complete and there are no other obstacles, the application is usually registered 10 to 12 weeks after the application was filed. A Swedish trademark registration is valid for 10 years and should be renewed every 10 years. The validity period runs from the date of registration. Renewals are usually registered six to eight weeks after the application was made. Five years after the completion of the registration procedure, a requirement of use sets in. This means that any interested party may make a claim to a district court for revocation of the mark if it has not been put to use. If the trademark owner cannot document that the mark is in use or has been used for the relevant goods and services during the five years since registration, the mark may be partially or completely revoked. The same applies if the trademark has not been used for a consecutive period of five years. The PRV does not monitor whether the requirement of use is fulfilled, and use is not a condition for renewal.
Revocation: A registered trademark right can be revoked if the trademark:
• is registered in conflict with the provisions of the Trademark Act;
• is misleading;
• no longer has distinctiveness;
• is contradictory to general order;
• is intended to cause offence; or
• has not been put to effective use five yearsfrom the completion of the registration procedure or has not been used for a consecutive period of five years – unless there is a reasonable reason for the non-use.
If one or more of the above conditions are fulfilled, anyone to whom the registration is detrimental can request that the trademark be revoked by a district court.
Removal: Atrademark will be removed from the Trademark Register at the owner’s request or if the registration is not renewed. The trademark can also be removed from the register if the registration is revoked because of opposition or if the trademark has been revoked through a court decision.
The following applies regarding searches conducted by the PRV:
• The earliest date from which searches are available is 1885.
• Asearch for identical/similar trademarks costs Skr4,800 (approximately €510) and includes three classes. Searches in additional classes cost Skr600 (approximately €65) per class.
• Asearch of all classes is possible at a cost of Skr600 per class. However, it is also possible to pay hourly for the search at Skr600 per hour, which usually ends up being a cheaper option.
• Searches include names and slogans.
• A search of traditional graphic marks is possible. At a cost of Skr1,500 (approximately €160), it is possible to order a search only for logotypes without text.
• Search of non-traditional graphic marks (eg, sound or smell marks) is possible.
Opposition proceedings: Opposition has to be made within two months of the registration date. Opposition is a fast and cheap way to prevent similar trademarks from being registered. Opposition is possible only against registered Civil proceedings. To prevent actual use or to obtain damages for unlawful use of the trademark, the owner of the trademark must file an action with the district court. The court can grant interim injunctions prohibiting further use of a trademark under certain circumstances and if a deposit is made for the alleged infringer’s possible loss. The district court can also order that infringing products be destroyed – this also includes equipment used in their manufacture – or altered.
Criminal proceedings: Careless or intentional violation of a trademark right can be punished by a fine. Under particular aggravating circumstances, especially if the aim is to profit unlawfully from the infringement, the punishment can be up to two years’ imprisonment.
Customs control: The trademark owner may ask Customs to seize infringing goods upon arrival at the border. EU Customs Regulation 1383/2003 allows Swedish Customs to take action against goods that are suspected of infringing IP rights. Trademark owners have the opportunity to request that Customs seize suspected infringing goods, but the request must follow certain guidelines stipulated in the regulation. If Customs seizes infringing goods, the trademark owner or the trademark owner’s attorney will be informed. The owner is given three days to request detention of the goods. When Customs receives the detention request, it will send the name and address of the consignee to the owner or the owner’s attorney. Thereafter, the trademark owner has another 10 days to decide whether the seized products are to be released or destroyed. If the trademark owner does not want the products to be released, it must either come to an agreement with the consignee of the goods that the goods can be destroyed or start proceedings against the consignee with the district court for an order of destruction.
Securing evidence: The Trademark Act includes the possibility of so-called ‘infringement investigation’. If a trademark owner suspects someone to be infringing its rights, the owner may request that the district court order an infringement investigation to secure evidence of the infringement. Such a decision can be taken if the trademark owner proves that it is likely that infringement is taking place and makes a deposit. The infringement investigation is conducted by the sheriff’s office.
An interim injunction and decision on infringement investigation can in certain circumstances be decided without the counterparty being informed of the request or allowed to submit any petition. Such decisions can be granted within a few weeks. The timeframe for enforcement in civil actions is between two and three years for both registered and unregistered trademarks. The timeframe for enforcement in criminal proceedings is often shorter, depending on the complexity of the case. In the case of opposition proceedings it is difficult to estimate a timeframe. The terms to reply are often longer in the PRV as compared to the district courts. Often the parties try to reach a settlement and request further extensions of time. Once the parties have made their final petitions, the PRV usually makes a decision within 18 months.
Full transfer: Trademark rights can be transferred in connection with the transfer of the company itself. The trademark right can also be transferred on its own. If the parties have not agreed otherwise the trademark right will transfer along with the company/business in the case of an acquisition. A transfer of the trademark will be entered in the Trademark Register upon request. The registered owner in the Trademark Register is presumed to be the owner of the trademark. However, there is no legal requirement that the transfer be recorded in the register. The original transfer agreement or, preferably, a confirmation of the agreement is to be sent to the PRV in order to register the assignment. Documentation is available at the the PRV’s website (www.prv.se).
Partial transfer: It is possible to transfer part of a trademark registration. In such case either both parties can be registered as owners of the registration in the Trademark Register or the registration can be divided into two registrations for a fee. A licence can be registered at the PRV upon request. However, this is not a requirement. Documentation is available at the PRV website.
Changes: The timeframe for a change of company name or transfer is approximately six to eight weeks from the date the application was filed.
Pledge agreements/registrable transactions: A person that has been granted a security interest in a certain trademark may apply to have the pledge agreement registered at the PRV.
Legalization of relevant documents: Legalization of documents is not necessary in Sweden.
The Copyrights Act, the Marketing Act and the Design Act overlap to some extent with the Trademark Act. In some situations trademark owners can enjoy cumulative protection of trademark law, copyright law, design law and marketing law. Under the Copyright Act any artistic work is protected. Therefore, device marks or the shape of the goods or their packaging can often also be protected by the Copyright Act. The same types of elements can be protected by the Design Act if the design is new and distinguishable. Finally a trademark may enjoy protection under the Marketing Practices Act as described above.
As a general guideline, the rules that govern trademarks also govern marks that are used online. It is not stipulated in the Trademark Act that the use has to be in a specific medium. This means that use of a trademark on the Internet is protected by the Trademark Act in the same way as if the use had been made on the physical marketplace. The other related laws mentioned above are applicable online. Disputes over domain names under the countrycode top-level domain ‘.se’ are handled through alternative dispute resolution (ADR). ADR applies to disputes where the domain name holder does not have a right or justified interest in the mark that forms the domain name and the application or registration was made in bad faith.
Examples of bad faith include registration of a domain name:
• with the aim of selling or assigning it;
• in order to prevent a third party from using its mark as a domain name;
• with the aim of disrupting the business of a competitor;
• that is comprised of another party’s trademark, company name or family name; or
• without having a right or justified interest in that name.
The basic principles for trademark protection in Switzerland are contained in the Federal Act on the Protection of Trademarks and Geographical Indications and the Trademarks Regulation, both of which have been repeatedly revised. The legislation is largely in harmony with the former EU First Trademarks Directive (89/104/EEC); however, as Switzerland is not an EU member state, the Community trademark regime does not apply. On June 21 2013 a revised law regarding ‘Swissness’ was passed by Parliament, providing better protection for “Made in Switzerland” and the Swiss cross and establishing an administrative trademark cancellation action for non-use. The amendment should enter into force on January 1 2017; however, a transitional period will apply until December 31 2018.
Switzerland has signed most pertinent international agreements, including:
• the Paris Convention for the Protection of Industrial Property;
• the Nice Agreement on the International Classification of Goods and Services;
• the Madrid Agreement on the International Registration of Marks;
• the Madrid Protocol;
• the Agreement on Trade-Related Aspects of Intellectual Property Rights; and
• the Trademark Law Treaty.
The bilateral free trade agreement between Switzerland and China recently entered into force. This treaty contains a chapter dedicated to the protection of intellectual property.
Generally, trademark rights are established through entry in the trademark register (under Article 5 of the Trademark Act). Well-known unregistered trademarks may enjoy protection under Article 6bis of the Paris Convention. The Federal Administrative Court has clarified that Swiss citizens and companies may invoke this protection only if they own a foreign trademark registration. The use of unregistered signs may also be protected as follows:
• by the Federal Law against Unfair Competition 1986;
• as moral rights to a name;
• as foreign trade names under the Paris Convention;
• as geographical indications; and
• by copyright law.
The Trademark Act provides the right to continue using a sign if a third party subsequently registers an identical or similar mark.
Any natural or legal person from any country can apply for trademark registration in Switzerland. Under Article 42(1) of the Trademark Act, foreign applicants must indicate a Swiss correspondence address. Normally, the applicant need not submit evidence of its existence (eg, certificate of incorporation) or representation (eg, power of attorney). There is no requirement of use or intent to use for filing a trademark application. The current fees are Sfr550 for filing an application in up to three classes and Sfr700 for a renewal, irrespective of the number of classes. Multi-class applications are possible.
All signs that are capable of distinguishing the goods or services of one undertaking from those of others are registrable. Provided that they can be represented graphically, marks may be:
• figurative representations;
• three-dimensional (3D) shapes;
• moving images;
• combinations of such elements; or
• other non-traditional marks (eg, touch and smell marks).
The Federal Administrative Court has accepted smell marks in principle, but denied protection in a particular case due to a lack of graphical representability (FAC B-4818/2010 – Almond smell). The Trademark Act differentiates between individual certification and collective marks. Article 2 of the Trademark Act (in accordance with Articles 6quinquies (B)(ii) and (iii) of the Paris Convention) excludes from registration signs that are:
• in the public domain or merely descriptive, unless they have acquired secondary meaning;
• merely shapes constituting the nature of the goods themselves or that are technically necessary for the goods or their packaging;
• misleading; or
• contrary to public policy, morality or applicable law.
The relevant languages of registration are the official languages (French, German, Italian and Rhaeto-Romanic) and basic English, which is considered to be known by the average consumer.
Public domain: Signs that are in the ‘public domain’ are signs that lack distinctiveness or must be kept free for trade. However, suggestive words that raise no specific expectations and new combinations of descriptive signs that create a distinctive general impression may be registered. Signs that lack distinctiveness include:
• single numerals or single letters of the Latin alphabet. However, a single letter may gain secondary meaning if there is no indispensable need to keep it free (FSC 134 III 314 – M). Numerals or letters in words are protectable (eg, ‘seven’ or ‘zet’). Combinations of at least two letters and/or numbers may also be protectable;
• simple geometrical signs (eg, circles and rectangles) – but not necessarily combinations of these;
• descriptive signs – for example, words that describe the quality, quantity, purpose, value, geographical origin or other characteristics of the goods or services; or slogans without a distinctive element. The following were refused protection due to lack of distinctiveness: KEYTRADER in Class 36; ePostSelect in Classes 9, 38 and 42; VERY IMPORTANT PHARMACY in Classes 3, 5 and 44; CE’REAL in Class 30; MAGNUM in Classes 29 and 32; EXPRESS ADVANTAGE in various classes; and OKTOBERFEST-BIER (the Administrative Court – unlike the European Office for Harmonisation in the Internal Market – rejected protection for this sign (FAC B-5169/2011) as it constituted a mere designation for a sort of beer);
• general indications of quality or purely promotional signs (eg, SUPER, MASTERS, TOP or ROYAL);
• common or banal signs (eg, ENTERPRISE, NETTO and top-level domains such as ‘.com’ and ‘.ch’); and
• registered trademarks which have subsequently become understood merely as a technical term. However, the degeneration of such sign requires strict proof (Commercial Court Zurich, sic! 2015, 24 – BOTOX/CELLCARE BOTOCARE).
Names of persons and characters may be registered as trademarks, unless they are frequently cited to describe certain goods or services (eg, MOZART for audio products). According to the Federal Institute of Intellectual Property (IPI) guidelines, signs containing a thematic reference are not usually registrable. A trademark may consist of distinctive and non-distinctive elements, provided that one element is distinctive. No disclaimers are required for non-distinctive elements. Signs which must be kept free for trade are those which are indispensable to that trade (eg, POST for postal services, the colour blue for beverages or MARCHÉ for restaurant and food services). Signs that are not absolutely indispensable for trade but initially lack distinctiveness may acquire secondary meaning and be registered on evidence of extensive use as a trademark in Switzerland (usually 10 years). The criteria for proving secondary meaning have become stricter: the IPI requires proof of use in all Swiss territories and in French, Italian and German (FSC 128 III 441, 444 – Appenzeller, FAC B-8240/2010 – Aus der Region, für die Region). In borderline cases, opinion polls may be required to prove that the sign has acquired secondary meaning.
Shape marks: Shape marks that are 3D signs additionally applied to goods (ie, the star on Mercedes-Benz cars) usually present no problems. More problematic are marks that represent the shape of the goods or their packaging – in general, these cannot be registered if their features are merely of an aesthetic nature, determined by technical necessities or the same as the expected and familiar shapes in the sector. However, the combination of shapes with two-dimensional elements (eg, words and logos) that significantly affect the overall impression can render a sign distinctive.
Misleading signs: A trademark is misleading if it creates expectations that are not fulfilled by the goods or services represented (eg, CAFÉ for coffee substitutes). The most relevant cases in this field are geographical terms that mislead as to the origin of the designated goods or services. The IPI is strict when it comes to geographical terms and holds that a sign consisting of or containing a geographical term evokes the expectation that the goods designated originated in that location. This presumption is rebuttable. In practice, a sign is not a geographical indication if:
• the place is unknown in Switzerland;
• the sign has a clear and direct symbolic character or other meaning;
• the place is obviously unsuitable for production or commerce of the goods claimed;
• the sign is a designation of type;
• the sign has acquired secondary meaning; or
• the sign has degenerated into a denomination of a genus (eg, Hamburger for a food product).
Marks exempted from geographical indication status have included VICTORIA, SAVANNAH and WILSON. The Federal Administrative Court is apparently more liberal than the IPI, exempting the terms KALMAR, PHOENIX MILLS and COS from geographical indication status in the relevant context. Applications for marks that include the geographical origin of the goods/services may still be registered if the covered goods are restricted to the origin suggested (eg, SAN FRANCISCO FORTY NINERS for US clothing and AFRI-COLA for African beverages).
Public policy: Signs against public policy, morality or Swiss law include religious symbols and the names of prominent individuals without their consent (eg, MOHAMMED for alcoholic beverages, BUDDHA BAR in Classes 9 and 41 and MADONNA in various classes). Signs against applicable law include those containing protected names and emblems (Swiss national legislation goes beyond Article 6ter of the Paris Convention). Practice is restrictive and signs containing a sign or emblem that is identical or similar to a protected sign have been refused protection, including:
• UNOX – for being confusingly similar to UNO;
• SC STUDIO COLETTI – since SC is the protected abbreviation of the Stockholm Convention on Persistent Organic Pollutants (FAC B-2768/2013); and
• a sign that was similar to the RED CROSS mark (FSC 140 III 251).
Evidence of use need not be submitted to the IPI in order to maintain a trademark registration. Trademarks that are not used for an uninterrupted five-year period may be challenged before the civil courts on the grounds of non-use, unless proper reasons for non-use exist. Non-use may be invoked by the defendant in opposition proceedings and before the civil courts. At present, only an ordinary court proceeding is available for non-use cancellation. The new law entering into force on January 1 2017 provides for simplified proceedings before the IPI to remove unused marks from the Trademark Register. Generally, the trademark must be used as registered. However, under Article 11(2) of the Trademark Act, minor variations are still permissible in order to prove genuine use. In practice, it has become increasingly difficult to prove genuine use. The decision in P&C highlights the importance of use of the trademark as registered, as the mark as used was found to be different (FAC B-6251/2013 – P&C).
The IPI examines applications on absolute grounds only, irrespective of whether they are national or international. No substantive examinations on relative grounds for refusal exist. These may be raised by the rights holder in opposition or civil proceedings. The timeframe from application to registration is usually 10 days to six months. Accelerated examination can be requested for Sfr400. The IPI will then examine the application within four weeks. Swiss trademark applications may be amended in any way during the application process (particularly in order to overcome provisional rejections). However, in the case of significant amendments, the application date will shift to the date on which these amendments were filed. IPI decisions can be appealed to the Federal Administrative Court and then to the Supreme Court.
Swiss trademarks are published following registration. Oppositions to a registration may then be filed by the owners of:
• prior Swiss trademark applications and registrations;
• prior international registrations designating Switzerland; and
• trademarks that are well known in Switzerland under Article 6bis of the Paris Convention.
The non-extendable three-month filing period starts from the publication date (for national registration) or the first day of the month following publication in the World Intellectual Property Organisation Gazette (for international registration). The fee is Sfr800. Compensation awarded to the prevailing party is between Sfr1,000 and Sfr2,000. If use of the prior mark is not challenged, the proceedings usually take one to two years. IPI opposition decisions can be appealed to the Federal Administrative Court, whose decision is final.
The trademark is protected as of the application date for a 10-year period and can be renewed for further 10-year periods. A six-month grace period exists for late renewal.
The IPI may rectify errors, but may not cancel registered trademarks on its own initiative. Under Article 35 of the Trademark Act, it will delete a trademark registration on failure to renew, on the request of the owner or if it has been declared null and void by a final judgment.
The owner of an earlier mark may prohibit others from using an identical or similar mark for identical or similar goods, including company names and domain names. The owner of an infringed trademark may introduce an opposition, civil action, criminal action and/or action before an arbitration court. Provisional injunctions and customs measures may be available. The Trademark Act indicates no time limit for actions other than opposition proceedings. After four to eight years, the courts may dismiss an action due to forfeiture. In case of bad faith, there is usually no forfeiture. Provisional injunctions should be brought before the court within three months. In criminal proceedings it is often difficult to present sufficient evidence of intent. In civil actions, the calculation of damages can likewise prove complex. Punitive damages are not available. The registered trademark owner enjoys a presumption that its rights are valid. The key question is usually whether there is likelihood of confusion in the relevant trade circles. Regarding likelihood of confusion, the main factors taken into account are the similarity of the signs and the goods or services and the distinctiveness of the earlier mark. Diluted or weak trademarks (eg, marks with suggestive content, such as CHIC for Class 3, ELLE for women’s clothing and NEWCARE for care products) enjoy a narrower scope of protection than characteristic marks, well-known marks and trademarks that constitute part of a series. Regarding famous trademarks, Article 15 of the Trademark Act also allows a rights holder to take action against use in relation to any goods or services if the distinctiveness of its trademark is jeopardised or its reputation is exploited or affected. Customs may suspend the import, export or transit of suspicious goods ex officio or on application. Customs will suspend clearance for 10 working days (extendable for another 10 working days) and provide samples. The applicant must then obtain preliminary measures before the court. Simplified proceedings are available. For example, the consent of the declarant/holder/owner is deemed to be given if it does not expressly object to destruction (Article 72d of the Trademark Act).
Defences may include:
• nullity/invalidity of the earlier mark;
• prior use;
• private non-commercial use (however, private import, export or transit can be stopped under Article 13(2bis) of the Trademark Act);
• fair (ie, descriptive/informative/decorative) use;
• exhaustion of rights; and
Remedies may include:
• declaratory judgment;
• an order to disclose the origin of goods;
• rendering of accounts;
• damages/redress/surrender of profits;
• publication of the judgment;
• destruction of infringing goods;
• criminal penalties (eg, imprisonment or a monetary fine); and
• customs assistance.
No specialised trademark courts exist in Switzerland, but the Trademark Act provides that each canton must designate one court for civil actions concerning IP disputes. This is usually the higher cantonal court or the commercial court. However, it is advisable to select the right forum based on the particular case. Decisions of the higher cantonal courts can be appealed to the Federal Supreme Court.
Swiss trademark applications and registrations may be totally or partially assigned with or without the goodwill of the business. A deed of assignment is usually submitted to the IPI.
Trademark rights can overlap with other rights, particularly copyright, designs, moral rights (eg, rights in one’s own name), rights to a company name and rights under geographical indication and unfair competition laws. The Trademark Act protects owners against the use of confusingly similar marks in connection with similar goods and services as an identifier of commercial origin. Other types of use – such as comparisons with a competitor’s products, imitations of trade dress and denigration – may be pursued under the Unfair Competition Act. In practice, both acts are often invoked simultaneously (FSC 6B_411/2013).
The Trademark Act, the Unfair Competition Act and laws on the protection of moral rights and company names typically deal with online issues arising in connection with trademarks. Although trademark infringement may be established only where a website involves similar goods and/or services (Higher Court of the Canton of Appenzell Ausserrhoden, D2Z 12 2, sic! 2014, 632 – axxeva/adexxa), other laws may apply in the case of an inactive site or a site containing dissimilar goods or services. The Unfair Competition Act may allow proceedings against unfair behaviour. In addition, several municipalities (ie, Montana, Lucerne, Frick and St Moritz) have successfully challenged domain names that included their geographical names before the civil courts, based on the Unfair Competition Law and their right to a name. In May 4 2009 the Cantonal Court of Grisons confirmed that it had jurisdiction over a ‘.com’ domain name containing a Swiss geographical indication (Cantonal Court of Grisons, ZFE 08 3; subsequent Supreme Court Decision 4C.341/2005). Disputes over domain names may also be decided and settled by a World Intellectual Property Organisation panel under the Rules of Procedure for Dispute Resolution Proceedings for ‘.ch’ and ‘.li’ Domain Names (‘.li’ being the top-level domain for Liechtenstein), which have been adopted by SWITCH (the ‘.ch’ and ‘.li’ registry). Under Paragraph 24(c) of the rules, the panellist will grant a cancellation request if the registration or use of the domain name constitutes a clear infringement of a right in a distinctive sign that the claimant owns under the law of Switzerland or Liechtenstein. Trademark rights, rights under the Unfair Competition Act and rights to a name or company name may be invoked regarding domain names. Waiting too long before initiating proceedings can prejudice a case: in DCH2014-0008, the panellist held that the claimant had forfeited its rights by waiting for about eight years and dismissed the claim.
In the United States, trademarks are governed by federal and state law. The Lanham Act is a federal statute that governs the registration and enforcement of trademarks used in either interstate commerce or foreign commerce that has a substantial effect on US commerce. Each of the 50 states has statutes providing for registration and protection of trademarks used in that state. Both federal and state law protect unregistered or ‘common law’ marks. Federal and state trademark laws coexist in the United States. Courts generally interpret state trademark laws in a manner consistent with federal law.
The United States is a signatory to several international treaties relating to trademarks, including:
• the Paris Convention;
• the North American Free Trade Agreement;
• the General Agreement on Tariffs and Trade;
• the Agreement on Trade-Related Aspects of Intellectual Property Rights;
• the Madrid Protocol; and
• the Singapore Treaty on the Law of Trademarks.
In the United States, trademark rights are acquired through use, not registration. The first party to use an inherently distinctive mark in commerce acquires rights to the mark for the associated goods and services in the geographic market in which the mark was first used or has acquired recognition. There are two exceptions. The first party to file a federal intent-to-use application that later results in a registration obtains priority dating back to the date of filing. Thus, the applicant can obtain priority over someone who first used the mark after the filing date of the intent-to-use application. For marks that are not inherently distinctive, the first to acquire secondary meaning in the mark (rather than the first to use the mark) acquires priority.
To acquire rights in a mark, the applicant must make good-faith use of the mark in the ordinary course of trade (ie, not as a result of trade made merely to reserve a right in a mark). There is no bright-line rule for determining the use necessary to acquire trademark rights. The rule is flexible, in order to account for differences in the kinds of transaction made across different industries and for different types of goods and services. Use sufficient to support a claim of rights can also be established through prior use as a trade name or other use analogous to trademark use.
Trademarks used in either interstate commerce or foreign commerce that affects US commerce are eligible for federal and state registration. Marks used within a state only may be registered only in that state.
Two types of federal trademark registration exist. The Principal Register is for marks that are inherently distinctive or have acquired distinctiveness. The Supplemental Register is for marks that are not inherently distinctive (ie, descriptive marks), but that are capable of acquiring distinctiveness and that otherwise meet the requirements for registration.
Registration of a mark on the Principal Register:
• satisfies the burden of proof that the registrant owns the mark, that the mark is valid and that the registrant owns the exclusive right to use the registered mark in commerce for the goods or services specified in the registration;
• serves as constructive notice of the registrant’s ownership and use of the mark;
• achieves incontestable status after five years;
• eliminates certain defences to claims of infringement and dilution;
• can be relied on to prevent the import of infringing goods;
• enables the registrant to file suit for infringement of the mark in federal court;
• may be cited against applications for registration of confusingly similar marks; and
• entitles the registrant to use the ‘®’ designation.
Registration on the Supplemental Register:
• enables the registrant to file suit for infringement of the mark in federal court;
• may be cited against applications for registration of confusingly similar marks; and
• entitles the registrant to use the ‘®’ designation.
To apply for a trademark registration, the applicant must be the owner of the mark – that is, the party which applies the mark to goods or services that it offers or intends to offer, either directly or through a licensee. Applicants may be natural persons, entities, nations, states or other governmental bodies.
Power of attorney is not needed to file a trademark application unless the applicant or registrant is already represented by a qualified practitioner and a new qualified practitioner wishes to act with respect to the application or registration. In that case, the new qualified practitioner must file a new power of attorney or revocation of the previous power, signed by the individual applicant or registrant or someone with legal authority to bind a juristic applicant or registrant (such as a corporate officer).
A trademark can be anything capable of distinguishing the source of goods and services from those of others, including words, symbols, slogans, three-dimensional (3D) shapes, colours, sounds and trade dress. Marks must be inherently distinctive (eg, fanciful, arbitrary or suggestive terms) or have acquired secondary meaning (eg, descriptive terms that have acquired a special significance such that consumers associate the term with a single source). The following cannot be federally registered:
• immoral or scandalous matter;
• deceptive matter;
• matter that may disparage, falsely suggest a connection or bring into contempt or disrepute;
• any flag, coat of arms or other insignia of the United States, any state or municipality or foreign nation;
• matter protected by statute or convention (eg, the Red Cross or Olympics);
• the name, portrait or signature of a particular living individual or deceased US president, without consent;
• generic, merely descriptive or deceptively misdescriptive terms;
• geographically descriptive or misdescriptive terms; and
• names that are primarily merely surnames.
Once an application is filed with the US Patent and Trademark Office (USPTO), the application will be assigned to an examining attorney for review, usually within three to five months of filing. The examining attorney will determine whether the application complies with the formal requirements for applications, such as identifying:
• the mark;
• the correct class(es) and the goods and services; and
• the filing basis (eg, use of the mark in commerce, intent to use the mark in commerce or a foreign application or registration).
The examining attorney will also examine the application for substantive deficiencies, including whether the mark is distinctive and whether it conflicts with any prior federal application or registration. If the examining attorney identifies any basis for refusing registration, he or she will issue one or more office actions identifying the basis for refusal. The applicant has six months from the date of each office action to amend the application or resolve the issues. The six-month deadline cannot be extended, but the applicant may file a petition to revive an application unintentionally abandoned within two months of the notice of abandonment. If the examining attorney does not identify any basis for refusing registration or determines that the applicant has overcome any deficiencies, he or she will approve the mark for publication. If the examining attorney determines that the applicant has not overcome the deficiencies, he or she will issue a final refusal. The applicant has six months from the date of final refusal to appeal to the USPTO Trademark Trial and Appeal Board (TTAB). The applicant may also file a request for reconsideration with the examining attorney, but this does not affect the term for appeal. Accordingly, any request for reconsideration should be filed with the appeal.
Any party which believes that it would be injured by federal registration of a mark may oppose the application within 30 days of publication of the mark. The opposing party may seek an initial 30-day extension, which will be granted for any reason, or a 90-day extension, which will be granted for good cause. An opposing party which obtains an initial 30-day extension may seek an additional 60-day extension on a showing of good cause. An opposing party which obtains a total extension of 90 days may seek an additional 60-day extension on consent of the applicant or a showing of extraordinary circumstances. The extensions cannot exceed a total of 180 days from publication. The opposition is commenced by filing a notice of opposition. Among other things, oppositions can be based on:
• prior conflicting trademark rights;
• lack of distinctiveness;
• deceptive matter; and
The sole issue decided by the TTAB is whether the mark that was applied for will be registered. The TTAB cannot grant an injunction prohibiting the applicant from using the mark or award damages or attorneys’ fees. An opposition proceeding is similar to civil litigation in the United States in that the parties are entitled to broad discovery of any information or documents relevant or reasonably calculated to lead to the discovery of admissible evidence. Unlike in civil litigation, after discovery, the TTAB does not conduct a live trial. Rather, the ‘trial’ is conducted on paper and may be followed by a hearing. An opposition proceeding can last several years. However, using accelerated case resolution (which prohibits extensions of deadlines), the opposition proceeding takes just 16 to 18 months. The losing party may seek reconsideration, appeal the decision to the US Court of Appeals for the Federal Circuit or seek review of the TTAB decision de novo by a federal district court.
After publication, an unopposed application for a mark that is based on use in commerce, a foreign registration or an extension of protection of an international registration to the United States will be granted registration by the USPTO. The time from filing to registration is approximately four to six months if no office actions are issued. For unopposed applications based on the applicant’s intent to use the mark in commerce, the USPTO will issue a notice of allowance approximately two months following publication of the application. The applicant has six months from the date of the notice of allowance either to:
• submit a statement of use and specimen showing the mark in use in commerce; or
• request a six-month extension to file a statement of use.
A total of five extension requests may be filed. If the applicant does not file a statement of use or extension request within six months of the notice of allowance, the application will be abandoned.
To maintain the registration, the registrant must file documents attesting to the use of the mark in commerce – or establishing excusable non-use – between the fifth and sixth anniversary of registration. The registrant may also file a declaration of incontestability. Registration must be renewed every 10 years. Failure to file maintenance documents will result in cancellation and/or expiration of the registration. There is a six-month grace period after the deadlines, contingent on payment of an additional fee.
The USPTO will automatically cancel registrations when maintenance documents have not been timely filed. Moreover, any party which believes that it will be damaged by an existing registration may seek its cancellation. The cancellation proceeding is initiated by filing a petition to cancel. A cancellation proceeding filed within five years of registration of the mark may be based on any grounds that would have prevented initial registration. A cancellation proceeding filed after the fifth anniversary of registration is limited to certain grounds, such as claims of abandonment or fraud or claims that the mark has become generic.
The USPTO database can be searched online at no cost. The USPTO does not conduct searches on behalf of applicants before filing. The USPTO database includes live and dead federal trademark applications and registrations. It does not include state trademark registrations or common law uses. However, commercial providers provide more comprehensive searches.
Trademark enforcement in the United States can be expensive and time consuming. As a result, trademark owners often enforce their trademark rights through informal means, such as cease-and-desist letters and negotiation of a settlement. If a trademark owner cannot successfully enforce its rights through informal means, the primary method for enforcement is through a civil action.
A trademark owner can bring a civil action to enforce trademark rights in federal or state court. If the trademark owner files in state court, the case may be removed by the defendant to federal court under certain circumstances. The trademark owner can proceed with the action only in courts that can exercise personal jurisdiction over the defendant and where venue is proper.
The most common causes of action in trademark cases in federal court are:
• trademark infringement – based on use of a mark in commerce that is likely to cause confusion with respect to a federally registered mark;
• unfair competition – based on use of a mark that is likely to cause confusion with respect to a registered or unregistered mark;
• trademark dilution – based on use of a mark that is likely to dilute the distinctiveness of a famous mark by blurring or tarnishment;
• trademark counterfeiting – based on use of a mark that is essentially the same as a federally registered mark on goods covered by the registration; and
• cybersquatting – based on registration, use or trafficking in the domain name containing the trademark of another with the bad-faith intent to profit therefrom.
The court may grant injunctions based on principles of equity, preventing violation of a mark. The court may also order seizure of counterfeit goods. In addition, the court has authority over the defendant’s trademark registration, including the power to order cancellation.
The court may award damages for trademark infringement subject to principles of equity. The prevailing rights holder is not automatically entitled to recovery of damages, but is generally entitled to recover damages that it actually suffered from the infringement. The court may increase the award up to three times the actual damages. The rights holder may also be able to obtain an award of the defendant’s profits if the infringement was wilful. The court may increase or decrease an award of profits if it finds the award inadequate or excessive. In cases involving wilful infringement using a counterfeit mark, unless the court finds extenuating circumstances it must enter judgment for the greater of three times such profits or damages. Alternatively, the court may award statutory damages of up to $2 million for trademark counterfeiting. Punitive damages are not available under federal trademark law. The court may award reasonable attorneys’ fees to the prevailing party in exceptional cases. In all cases, the prevailing party may recover costs, but costs are limited.
Trademarks may be assigned, licensed or pledged as security. For an assignment of a trademark to be valid, the trademark must be conveyed along with the goodwill it symbolises. The assignment of a mark that is the subject of federal registration or application must be in writing. The assignment of a federally registered or applied-for mark should be recorded in the USPTO within three months of the date of the assignment. Otherwise, it is void against a subsequent purchaser giving value who has no notice of the prior assignment. Trademarks may be licensed on an exclusive or a non-exclusive basis, but the licensor must exercise quality control over the licensee’s use of the trademark. Licensing without quality control results in a naked licence, which can lead to the loss of trademark rights. Merely including a quality control provision in a written licence agreement is insufficient. The licensor must make a good-faith effort to exercise quality control over the licensee. The licensee’s use of a licensed mark inures to the benefit of the licensor. A trademark may be pledged as security for a loan or other indebtedness. To perfect a security interest in a federally registered trademark, the security interest must be recorded at the USPTO. Different rules apply for perfecting a state trademark registration or common law mark.
In certain circumstances, overlapping rights may simultaneously protect a particular trademark. For example, state law rights of publicity protect the exclusive right to use a person’s name, voice, signature, likeness and persona for commercial purposes. In any application to register a mark that appears to refer to an individual’s name, the USPTO requires both a statement as to whether the mark refers to a living individual and proof of the consent of that individual, if he or she would be associated with the mark by the public. A trademark may also qualify for copyright protection under the Copyright Act if it demonstrates sufficient original and copyrightable expression. The advantage of copyright protection is that liability is premised upon the copying; likelihood of confusion need not be proved. Because copyright protection does not extend to titles and short phrases, word marks typically will not qualify for copyright protection. However, logos, 3D marks, sound marks and audiovisual marks could potentially qualify. The unauthorised use or infringement of another’s trademark may also violate and give rise to liability under state unfair trade practices laws. These laws, and the manner in which they are enforced, vary from state to state. In some states, a private right of action is recognised. In others, the law can be enforced only by the state’s attorney general.
The general laws prohibiting trademark infringement, unfair competition and dilution apply to the Internet. Whether use of another’s mark online (eg, in sponsored advertisements) constitutes trademark infringement depends on whether the use creates a likelihood of confusion. Federal law prohibits cybersquatting, which is defined as the registration, use or trafficking of domain names containing the trademark of another with the bad-faith intent to profit therefrom.
UK trademark law differs in several important respects from the law in other EU member states, despite the implementation by the UK Trademarks Act 1994 (as amended) of the EU Trademarks Directive (89/104/EEC) (now codified in Directive 2008/95/EC) to approximate the laws of EU member states. These differences include:
• provisions relating to unjustified threats of trademark infringement proceedings;
• the statutory protection given to a licensee which has recorded its licence;
• the Civil Procedure Rules, which affect how cases must be run both before and after proceedings are issued;
• the operation of the Company Names Tribunal in relation to opportunistic company name registrations;
• the operation of the Intellectual Property Enterprise Court (IPEC), which involves caps on the costs which the court may award to a successful party;
• the dispute resolution service which applies to ‘.uk’ domain names; and
• the law of passing off to protect unregistered rights.
There is no law of unfair competition or unregistered trademarks per se in the United Kingdom. However, unregistered marks are protected indirectly by the common law tort of passing off, which is aimed at preventing misrepresentations by one trader which lead to deception and damage the goodwill of another. A successful claimant in a passing-off action will need to prove the classical trinity of goodwill, misrepresentation and damage:
• Goodwill – the claimant must establish goodwill or a reputation attaching to a manner of trading (usually a distinguishable badge, brand or mark). The existence of goodwill will be decided on a case-by-case basis and depends entirely on the facts. The mark need not be well known; passing off can provide protection to a small business with a small customer base. There is no minimum period of time for which the mark must have been used. However, it will be easier to prove goodwill if the claimant has been using the mark for a substantial number of years.
• Misrepresentation – the claimant must show that the defendant made a false representation which has led or is likely to lead the public to believe that the goods or services offered by the defendant are those of the claimant, or that there is some other form of connection with the claimant. It is not necessary to prove that the misrepresentation was made fraudulently.
• Damage – the most common form of damage is direct loss of sales, but a claimant can rely on other forms of damage. For example, even if the parties are not in competition, the claimant may still suffer damage through association with the defendant where the defendant’s business is not of a reputable type. Loss of licensing opportunities or licensing income may also be a relevant head of damage where the claimant already operates a licensing programme.
Passing off is an entirely independent cause of action, but is often run in parallel with a registered trademark infringement claim where the facts permit. Establishing passing off is generally relatively expensive because of the evidential burden, but in some circumstances a claim in passing off will be the better (and perhaps only) cause of action available to the claimant.
Anyone can apply for a UK trademark registration. There is no need for a power of attorney or other such formalities. However, an applicant must provide an address for service in the United Kingdom, another state of the European Economic Area or the Channel Islands.The act follows the wording of the Trademarks Directive. Therefore, any sign which is capable of being represented graphically and of distinguishing the goods or services of one undertaking from those of others can be registered as a UK trademark. This includes signs which consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging. Section 3 of the act lists the absolute grounds for refusal of registration, as follows:
• The sign cannot be represented graphically or is not capable of distinguishing the goods or services of one undertaking from those of another;
• The trademark is devoid of any distinctive character;
• The trademark consists exclusively of signs or indications which are descriptive;
• The trademark is generic (ie, consists exclusively of signs or indications which have become customary in the trade);
• The sign consists exclusively of: the shape which results from the nature of the goods themselves; a functional shape; or a shape which gives substantial value to the goods (ie, eye appeal);
• The trademark is contrary to public policy or morality, or is deceptive; or
• The application was made in bad faith.
Section 4 of the act prohibits registration of a trademark which consists of or contains “specially protected emblems”, such as:
• the royal arms, flags or a representation of any member of the royal family (unless consent has been given by or on behalf of the queen or the relevant member of the royal family);
• the national flag of the United Kingdom or its constituent countries, if use of the trademark would be misleading or grossly offensive; and
• Olympic symbols (unless the application is made by a person with the relevant authority).
Examination: Examination of the application involves the UK Intellectual Property Office (UKIPO) considering whether the application can be rejected on any of the grounds listed above, with the exception of bad faith. The UKIPO will not refuse an application on relative grounds (ie, because of the existence of an earlier conflicting mark). These can be raised only in opposition proceedings. However, the UKIPO will still search for potentially conflicting earlier marks. It will let the applicant know the results of the search, and the applicant must then decide whether to proceed with the application. If the applicant does proceed, the UKIPO will notify the owners of any earlier UK national marks or international registrations designating the United Kingdom identified in the search about the new application when it is published. It will not notify the owners of earlier Community trademarks.
Opposition: An opposition can be filed on the basis of absolute or relative grounds. An opponent must oppose an application within two months of the date on which the application for registration was officially published. A one-month extension will automatically be granted if the opponent files a notice of threatened opposition before the expiry of this two-month period. The notice of threatened opposition is a simple form which is submitted via the UKIPO website. Earlier trademarks: The owner of an earlier trademark, the opponent, can rely on the following grounds in an opposition:
• The respective marks and the respective goods/services are identical;
• The respective marks are identical or similar and the respective goods or services are identical or similar, with a resulting likelihood of public confusion;
• The respective marks are identical or similar and the earlier mark has a reputation, meaning that the use of the later mark without due cause would: take unfair advantage of the distinctive character or repute of the earlier mark (free riding); be detrimental to the repute of the earlier trademark (tarnishment); or be detrimental to the distinctive character of the earlier mark (dilution or blurring).
The notion of an earlier trademark encompasses:
• UK national registrations;
• Community trademarks;
• international registrations designating the United Kingdom or the European Union;
• an application for any of the above; and
• trademarks entitled to protection in the United Kingdom under the Paris Convention or the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Earlier rights: A third party may also found an opposition:
• where use in the United Kingdom of the mark applied for is liable to be prevented by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trademark or other sign used in the course of trade; or
• by virtue of earlier rights other than an earlier trademark, in particular by virtue of the law of copyright, design rights or registered designs.
If the application is unopposed, the mark usually achieves registration within about four months. The mark will also proceed to registration if an opposition is unsuccessful in relation to some or all of the goods or services. Typically, opposition proceedings are concluded in 12 to 18 months. Opposition proceedings are decided by a UKIPO hearing officer. The hearing officer will make a decision either solely on the basis of the written materials submitted by the parties during the proceedings or after a hearing. The parties can elect whether to have a hearing, although in complicated matters the UKIPO will usually indicate that it thinks there should be a hearing. Scale costs are usually awarded to the successful party in an opposition. UK law provides a unique statutory defence for holders of UK trademark rights: Section 11(1) of the Trademarks Act provides that a UK registered trademark is not infringed by the use of another UK registered trademark in relation to the goods and services for which the latter is registered. A claimant faced with such circumstances will therefore need to seek invalidation of the defendant’s registration in any proceedings. This does not apply to a claim based on a Community trademark; nor is ownership of a Community trademark a defence to a claim based on a UK registration.
Once registered, a mark is registered for 10 years and is (upon payment of a fee) renewable for successive 10-year periods.
Invalidity: A declaration of invalidity has the effect that the registration is deemed never to have been in force in respect of all or some of the goods or services that it covers. A registration may be found invalid on the basis of the absolute or relative grounds listed above.
Revocation: An order for revocation has effect from the date on which the application for revocation was made. A mark may be revoked on the grounds that it has not been put to genuine use for an uninterrupted period of five years and there are no proper reasons for non-use, or on the basis that the mark has become generic or deceptive.
Surrender: A rights holder can surrender its registration in respect of some or all of the goods or services that it covers. The surrender takes effect from the date of publication in the Trademarks Journal.
Pre-action steps: The United Kingdom has highly developed court systems and parties are expected to make reasonable efforts to settle a dispute outside litigation. A party that acts unreasonably may be penalised by way of a costs order when the case reaches trial. In most cases, a trademark owner will thus first send a cease and desist letter to an infringer. This is with a view to obtaining suitable undertakings from the infringer.
Unjustified threats: The United Kingdom’s special law on unjustified threats is a trap for the unwary, although the government has stated that it is going to change the law of threats to provide more protection to lawyers and attorneys acting on behalf of clients and to ensure that merely asking questions or stating the existence of rights does not constitute a threat. It should always be a consideration and may influence tactics in any given matter. The provisions are specific to the United Kingdom and are not derived from the Trademarks Directive. Essentially, as the law stands at the time of writing, the recipient of a threatening letter may bring proceedings for unjustified threats against the sender and may seek the following from the court:
• a declaration that the threats are unjustifiable;
• an injunction to prevent further threats; and
• damages in respect of loss suffered as a result of the threats.
The unjustified threats provisions were designed to dissuade trademark owners from making such threats to secondary infringers (eg, retailers), but their drafting means that a demand letter sent to the source of infringing goods may constitute unjustified threats to that source.
Proceedings: If necessary, civil proceedings can be commenced in the High Court (which includes as a separate court the IPEC) or a designated county court. If successful, the rights holder may obtain an order for:
• a permanent injunction;
• delivery up or destruction of infringing goods;
• disclosure of supplier/customer information;
• product recall;
• payment of an account of profits or damages; and
• payment of legal costs.
Judges deciding trademark cases are typically IP specialists. The IPEC is designed to handle shorter, less complex and lower-value actions. This is with a view to the IPEC providing cheaper and speedier procedures so that small and medium-sized enterprises are not deterred from protecting their rights by the cost of litigation. Longer, more complex and more valuable actions should still be conducted in mainstream High Court proceedings.
Interim injunction: An interim injunction is a discretionary remedy. To obtain one, the applicant must show that it would suffer irreparable harm if an injunction were not granted until the end of a full trial. In particularly urgent matters or if the trademark owner is concerned that the infringer may dispose of the infringing goods, it may be necessary to make the application without notice to the infringer and without first sending a cease and desist letter. For reasons of both substance and presentation, a rights holder must act quickly to obtain an interim injunction.
Section 92 of the act makes certain types of unauthorised trademark use a criminal offence. The unauthorised use offences in Section 92 – such as applying a mark to goods without the consent of the trademark owner or dealing in or keeping goods bearing a mark which has been applied without consent – are aimed at counterfeiting. However, they are worded broadly and routine ‘civil’ infringements have sometimes been prosecuted as criminal acts. A person charged with an offence under the Trademarks Act has a defence if he or she can show that he or she believed, on reasonable grounds, that the use of the mark in the manner in which it was used was not an infringement of the registered trademark. If convicted or pleading guilty, an offender may be sentenced to up to 10 years’ imprisonment and face a substantial fine as well as enquiries into the proceeds of the criminal acts. Any person may bring a prosecution under Section 92, so a trademark owner could bring a private prosecution, although subject to the state’s right to intervene and take over such cases if it wishes to do so. In practice, private prosecutions are more likely to be brought for infringement of copyright under equivalent provisions in the Copyright, Designs and Patents Act 1988.
The Company Names Tribunal is designed to provide a remedy for a complainant that objects to the registration of a company name on the basis that it was registered with the intention of extracting money from the complainant or to prevent it from registering a name in which it has goodwill. Examples of company names which have been changed by the tribunal as a result of successful complaints include Coke Cola Limited, Adidos Limited and Nokia Limited. The tribunal provides a cost-effective remedy in such circumstances and has proven popular with rights holders.
A UK registered trademark must be assigned or licensed in writing. Only the assignor or licensor must sign the agreement for it to be effective, but it is recommended that both parties sign with a view to avoiding disputes about the terms. The assignment or licence should be recorded as soon as possible at the UKIPO. The relevant application form must be signed by both parties, unless a copy of the relevant agreement is provided with that form. If the assignment or licence is not recorded, it is ineffective against a person acquiring a conflicting interest in or under the trademark in ignorance of the assignment or licence.
Failure to record a licence means that the licensee cannot benefit from the provisions of the act which enable licensees, in the case of infringements and where certain conditions are satisfied, to bring proceedings in its own name. It is possible to confer particularly strong statutory enforcement rights on exclusive licensees if the agreement is appropriately worded. The use of a registered trademark by a licensee, with the consent of the owner of that trademark, counts as use by the owner for the purposes of defending a non-use attack on the registration. There is no statutory requirement for a trademark licence to impose quality standards on the licensee. However, it remains UK practice to do so; UK trademark owners that issue bare licences run significant risks.
As mentioned above, related rights such as copyright, design rights and registered designs can be relied on by a third party to oppose a trademark application. This is because, for example, graphic elements of a trademark may be protected by copyright as an artistic work and two-dimensional graphics may be protected by Community designs.
Nominet is the ‘.uk’ domain name registry and operates the Dispute Resolution Service (DRS), under which a trademark owner (whether registered or unregistered) can file a complaint against an abusive registration.The Nominet DRS Policy is similar to the Uniform Domain Name Dispute Resolution Policy. However, there are important differences. For example, a defended complaint filed under the Nominet DRS Policy will enter a mediation stage, during which a Nominet mediator will contact both parties and attempt to mediate a resolution. The complainant in these circumstances must pay a fee for a decision by a Nominet expert only if the mediation is unsuccessful.
In the United Arab Emirates, trademarks are regulated by the Federal Trademark Law (37/1992, as amended by 8/2002). The United Arab Emirates is a member of the Cooperation Council for the Arab States of the Gulf (GCC), and as such has approved a law aimed at unifying the trademark provisions across the GCC countries (Bahrain, Kuwait, Oman, Qatar, Saudi Arabia and the United Arab Emirates). However, the GCC Trademark Law has yet to enter into force, as it must first be enacted by the legislature of each GCC country. At the international level, the United Arab Emirates is a party to the Paris Convention for the Protection of Industrial Property and the World Trade Organisation, which incorporates the Agreement on Trade-Related Aspects of Intellectual Property Rights.
Registered trademarks enjoy exclusive protection under criminal remedies, whereas the scope of protection for unregistered trademarks is limited to civil remedies. Courts have granted special protection against infringement for well-known unregistered trademarks. Although the Trademark Law does not provide specific criteria for considering a trademark to be well known, it sets the threshold for well-known status as “the knowledge of the trademark in the relevant sector of the public obtained as a result of the promotion of the trademark”. The UAE courts have also set some precedents for determining whether a mark is well known. For example, well-known status occurs when a mark acquires international renown; a further factor for consideration is the degree to which it is recognised among the relevant populace. Prior use will establish a right to unregistered trademarks, although it does not automatically give a right over those already registered. However, it can be a ground for challenging those registrations. For the purposes of unregistered marks, the United Arab Emirates follows a ‘first to use’ policy and registration is not strictly necessary to establish rights.
According to the Trademark Law, the parties eligible to register trademarks in the United Arab Emirates include:
• UAE citizens and companies that are active in trade, industry, handicrafts or the service sector;
• non-UAE nationals, whether individuals or corporate persons, pursuing any commercial, industrial handicraft or service activities in the United Arab Emirates or any country granting reciprocal treatment to UAE citizens and companies; and
• legal entities under the public law of the United Arab Emirates.
In all circumstances, the applicant must have a service address in the United Arab Emirates. An application to register a trademark can be filed directly by the applicant or by a trademark representative, trademark attorney or trademark agent, provided that the applicant or other representative is a UAE citizen or domiciled in the country. A representative requires a power of attorney, executed before a notary public and – if executed outside the United Arab Emirates – legalised by the UAE embassy or consulate in the country of execution. The power of attorney must be submitted together with the application at the time of filing. Under Article 2 of the Trademark Law, trademark protection extends to anything that takes a distinctive form, including names, words, signatures, letters, numbers, drawings, symbols, addresses, hallmarks, stamps, pictures, vignettes, notices, packages or any other mark or combination of marks with a distinctive form and in use. Sound can also form part of a trademark.
The following types of mark are not eligible for protection:
• a mark which is: contrary to morality or the public order; identical to a previously registered or well-known mark; confusingly similar to, or a translation of, a well-known mark or other previously registered mark, where registration would confuse consumers; not distinctive in character, or consisting of generic names used in relation to goods, products or services, or familiar drawings and ordinary pictures of goods and products; or identical or similar to a symbol of a purely religious nature;
• a mark which includes: the insignia of the government, flags or other symbols pertaining to the United Arab Emirates, Arab or international organisations or any agencies thereof or any foreign country, without authorisation; the symbols of the Red Crescent or the Red Cross and other similar symbols; geographical names where the use thereof may cause confusion as to the origin or source of the goods, products or services; the name, surname, photograph or emblem of a third party, without authorisation; a title of honour to which the mark is not lawfully entitled; the words ’patent’, ‘patented’, ‘registered’, ‘registered design’, ‘copyright’ or ‘imitation is forgery’, or the like; or national and foreign decorations, coins or paper currency;
• a mark which may mislead the public or contain false information about the origin, source or other characteristics of the goods;
• a mark owned by natural or corporate entities with whom it is illegal to conduct dealings; and
• a mark which, if registered for certain classes, would diminish the value of other products or services distinguished by such mark.
Official searches can be conducted at the Trademarks Office. The available searches are for previously registered identical or similar trademarks and applications thereof. Each search must specify a single class; hence, additional fees are payable for each additional class searched. No search service is available for logos, shapes or graphic marks. It is not possible to search by rights holder.
A trademark application must contain:
• the name, nationality and residence of the applicant;
• a list of goods or services covered (the United Arab Emirates uses the Nice Classification, 10th edition); and
• the trade licence of the applicant and, where the applicant is an individual, a copy of his or her passport.
Applications should also include a short description of the trademark, including any request for a specific colour; if no colour is specified, the trademark will be registered under all colours.
Several supporting documents must accompany the application:
• copies of reproductions of the trademark;
• a copy of the trade licence of the applicant (if it is an entity);
• a notarised power of attorney for the trademark attorney which, if the applicant resides outside the country, must be legalised at that country’s UAE embassy; and
• if the applicant wishes to rely on convention priority, a copy of the priority document filed in the other country.
A physical copy of the application must be submitted to the Ministry of Economy. All documents must be submitted together with the application, and no grace period is provided for late filing. Trademark applications are examined in two stages. The first stage is a formal examination, wherein the examiner will verify that the application complies with all the filing requirements. The second stage is a substantive examination wherein the examiner assesses classification, clarity, descriptiveness, distinctiveness and deceptiveness, as well as whether any conflicts exist with prior registrations.
Any interested party can file an opposition against a trademark application. The opposition period extends 30 days from the date of last publication, which is usually the date on which the application is published in the Trademark Journal. Applications are also published in two local Arabic newspapers in this period. Once an opposition is filed, the Trademark Office will send a notification to the applicant within 15 days of receipt. In turn, the applicant has 30 days (from the date of notification) to file a written reply to the opposition. If the applicant does not file a counterstatement to the opposition, the trademark application is considered to be abandoned. If the applicant files a counterstatement, it must be filed within 30 days. The Trademarks Office will then conduct a hearing with both parties, during which the parties may submit all their supporting documents, and render a decision. An opposition decision of the Trademark Office may be appealed before the Trademarks Committee within 15 days of the decision. Thereafter another appeal may be made before the Civil Court; this is filed in a manner similar to a civil case before the court.
Upon payment of the registration fee, a registration certificate will be issued. The certificate will detail all the relevant information relating to the trademark, including the registration number, the owner, the list of goods or services and the characteristics of the trademark itself. Registration grants the trademark owner exclusive rights to use the mark and prevent any other party from using an identical or similar mark in relation to similar goods in such a way that might mislead consumers. Once registered, any proposed amendment to the trademark must be filed with the ministry. The ministry will examine the mark and determine whether it may be altered. If the amendment application is accepted, the amendment will be published in the Trademark Journal and two local daily newspapers. The timeframe for the entire registration process, excluding oppositions, is approximately 12 months; however, the timeframe will vary depending on the workload or backlog at the Trademark Office. Under the Trademark Law, a registered trademark is protected for 10 years following registration. The registration can be renewed for similar periods of 10 years, without limitation.
A trademark registration can be cancelled in several ways:
• A rights holder can request cancellation via application to the trademarks section of the Ministry of Economy. However, if there is a licence agreement on record for the use of the mark in question, the ministry will require consent from the licensee before removing the mark from the register;
• The Ministry of Economy may cancel a trademark at the request of a third party. The ministry will first notify the rights holder of the reasons for the cancellation application and hear both parties’ arguments before rendering a decision. The ministry’s decision may be challenged in court; and
• A registration may be cancelled for non-use in a court action. This can arise from the request from an interested third party, which must prove that the trademark has not been used for a continuous five-year period. The rights holder can defeat a cancellation action for non-use by proving that the non-use was beyond the rights holder’s control (eg, import restrictions or other government impositions preventing use). The Trademarks Law considers the use of a trademark by a licensee as use by the rights holder, precluding cancellation for non-use.
The owner of a registered trademark has the right to prevent others from using an identical or similar trademark for identical or similar goods or services, where such use will cause confusion among the public. The Trademark Law sets out the different types of offence related to the misuse of a registered trademark that are punishable crimes, including the following:
• counterfeiting or imitating a lawfully registered trademark in a manner that would lead to the deception of the public, whether in relation to the goods and services that the original mark distinguishes, or to similar goods and services;
• knowingly using a counterfeit or imitated trademark;
• affixing to a product a registered trademark owned by another with bad faith or otherwise using that trademark without the right;
• knowingly selling, offering to sell, circulating or possessing (with intent to sell) goods bearing a counterfeit, imitated or wrongfully affixed trademark; or
• knowingly providing or offering to provide services under a counterfeit or imitated trademark or otherwise using a trademark without a right.
The holder of the infringed trademark has three options for enforcement:
• administrative action through the Department of Economic Development, where the available remedies are fines up to Dh30,000 and destruction of the infringing goods;
• criminal action through a complaint to the police and public prosecutor, where the available remedies are fines from Dh5,000 to Dh10,000 and/or up to one year’s imprisonment, in addition to the destruction of the infringing goods; or
• civil action, where the available remedy is the compensation for the damages suffered because of the infringement.
Courts in the United Arab Emirates tend not to award large sums in damages for trademark infringement. Rights holders must prove the actual tort and damage in order to claim compensation; otherwise, the court will order minimum damages. The enforcement of unregistered rights is not possible through administrative or criminal actions; the only option in such cases is civil action. This requires extensive evidence as the rights holder must first prove its rights and then prove the infringement. Administrative actions are usually quick; fines are issued immediately after the infringement is established, while the destruction of the infringing goods may take two to six months. In criminal actions, a first-instance court may issue a decision after six to 12 months; an appeal usually takes another year or so. The timeframe for a civil action is similar to that of a criminal action. However, these are only average timeframes and the circumstances will differ in each case.
A rights holder may assign a trademark to a third party. There is no requirement for the assignment to be contingent on the sale of a business. Assignment agreements must be recorded with the Ministry of Economy as proof of consent to the rights being assigned. The assignment agreement must be notarised and, if executed outside the United Arab Emirates, legalised by the UAE embassy in the country of execution. A rights holder may license its rights to third parties. The Trademark Law regulates licences. It stipulates that the term of a licence must not exceed the term of the trademark registration. The licence agreement must be in a written and notarised contract. Licences executed outside the United Arab Emirates must be legalised by the UAE embassy in the country of execution and receive a stamp from the UAE Ministry of Foreign Affairs. An assignment or licence agreement should be recorded at the Trademark Registry; although this is not mandatory and will not affect validity, the assignment or licence agreement has no effect against third parties until recorded.
The most common overlap of rights in the United Arab Emirates is between trademarks and trade names. For example, the trade name of a company/establishment may serve as a trademark, especially for services; hence, it can be registered as a trademark as well. Other related rights include the design rights which overlap with three-dimensional trademarks. In addition, certain logos and other artistic device marks can be protected under copyright law. The Trademark Law does not prevent simultaneous protection under several rights.
Online infringement is similar to any other infringement noted above, and is subject to the same penalties. In addition, the Law on Combating Cybercrimes imposes increased penalties for crimes committed online. Therefore, if the rights holder can associate the infringer with a UAE entity and/or individual, criminal action can be taken. In some cases, this will result in a website being blocked until a decision is reached on the infringement. A specialised police division tasked with combating electronic crimes is responsible for investigating online links and websites involved with trademark infringements. The division may take steps to block such links and websites from being accessible to UAE internet users, which can mitigate the consequences of online counterfeiting. The Trademark Law does not regulate domain names; however, for any domain names under the ‘.ae’ country code top-level domain, the Uniform Domain Name Dispute Resolution Policy is applicable, under which a complaint can be filed to cancel or transfer the domain name.