04 Trademarks and Geographical Indications

04 Trademarks and Geographical Indications
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Introduction
The Rights in Marks for Goods and Services
Trademarks TMs are a form of PROPERTY TMs are worth money -- part of the value of a company can be in the form of trademarks (a sub-class of intangible assets) Justification Prevent consumer confusion as to source of goods/services Consumers' expectations of quality, etc Reduce consumer research costs Prevent unjust enrichment -- prevent companies from free-riding off another company's goodwill Types of TM cases "Passing-off" cases" Quality Free riding Priority cases Geographical Indicators (GIs) TRIPS Art 22 Indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, AND a given quality, reputation, or other characteristic of the good is essentially attributable to its geographical region Generally speaking, under TM law, geographic terms cannot be protected as trademarks Too anti-competitive Competitors might need to use the geographic term to describe their own product Important for e.g. wines, cheeses, and stuff
International Agreements: TRIPS, Paris Convention, Madrid Protocol p. 444

Paris Convention Art 2 Requires Members to provide National Treatment for foreign nationals of Member countries (w.r.t. the protection of industrial property, which includes TMs) Art 4 Sets forth Paris priority period (6 months for TMs, as opposed to at least 12 mo's for patent)
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Independent protection (same as for patent) Protection must be provided independently from protection that the same mark receives in other countries, including country of origin
However, consider Art 6quinquies "telle quelle" (aka "as-is") provision -- Once the mark is duly registered in the country of origin, other countries must register the mark "as-is", without question any aspect of the form of the mark
TRIPS Art. 2 TRIPS incorporates Paris -- countries must adhere to Articles 1-12 and 19 of the Paris Convention TRIPS also adds Minimum standards that Paris did not Services marks are treated the same as trademarks. Thus, countries MUST allow for the registration of service marks (TRIPS Arts 15 and 16)
(Compare Article 6sexies of Paris -- allows countries to decide whether or not to have registration for service marks)
Madrid Agreement & Madrid Protocol Note: Just like with patents, the Paris Convention assumes that TMs require formalities (formal filings) Two special agreements that attempt to establish a common international registration system, similar to the PCT A Paris country can join either, or both (or neither) See below in "Paris Priority and Registering TMs in Different Countries for details on Madrid Agreement / Protocol
Trademarks
Formalities, Registration, and Use Requirements
Art 15 TRIPS Defines Protectable Subject Matter (TRIPS Art 15)
Countries MUST make any Signs/combinations of signs capable of distinguishing goods/services
Sets Countries' Discretion (TRIPS Art 15)
Member countries MAY make registration depend on acquisition of distinctiveness if the sign is not inherently distinctive (e.g. secondary meaning)
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Members MAY refuse registration if the sign is not visually perceptible e.g. sounds/smells
Members MAY establish own grounds for refusing registration. However, those grounds must be compatible w/ the Paris Conv
Members MAY make registration dependent on actual use of mark
However, actual use cannot be a condition for filing the application for registration of TMs Registration cannot be refused EXCLUSIVELY on the ground that the intended use has not taken place b4 the expiring of a 3 yr pd from the application (see Art 19)
Members MAY make registration dependent on intent to use the mark
Nature of the goods or services
Members may not deny registration because of the nature of the goods/services to which a mark will be applied
Publication, petition to cancel, and opposition
Members MUST publish each TM, either before it is registered, or promptly after it is registered.
Members MUST afford a reasonable opportunity for petitions to cancel the registration (i.e. after the mark has been registered)
Members MAY afford an opportunity for petitions to oppose the registration (i.e. before the mark has been registered) Note: this opposition term only matters if the Member chooses to publish the TMs before they're registered. If the Member publishes TMs after they're registered, then the only option for opponents is to petition to have the registration canceled
Art 19 TRIPS
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Requirement of use
If use of TM is required to MAINTAIN registration, then Members must make the minimum term of non-use to be 3 years However, "valid reasons" for non-use (e.g. import restrictions / gov't requirements) will not count against the TM owner If use is subject to the control of the mark's owner, use of the TM by another person will be recognized as "use" for the purpose of maintaining the registration Paris Conv Art 6 Paris Conditions for the filing and registration are matters of domestic legislation Registration in country of origin is NOT reqd to get rights in other countries (i.e. other Union countries MAY NOT refuse or invalidate a TM on the grounds that a filing, registration, or renewal has not been done in the country of origin - Also remember that Paris defines the country of origin, i.e. of the product)
Territorial / Independent Nature of TMs -- duly registered marks MUST be regarded as independent marks in countries of the Union
Art 5(D) Paris - Notice Requirements are Forbidden
Members are expressly forbidden from requiring mention of the registration of the TM on the good
Paris Priority and Registering Trademarks in Different Countries

Paris Priority: Article 4 Who gets priority?
Any person who has duly applied for the registration of a TM in one of the countries of the Union shall enjoy a right of priority in other countries (for the purposes of registration in other countries)
Any filing having the value of a formal filing shall be recognized as giving rise to a right of priority
Priority Period Length (for TM) The right of priority lasts 6 months SCM Corp v. Langis Foods Ltd (DC Cir 1976) (p. 453) Facts
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Both US and Canada are Paris Convention countries Mar 28, 1969 Langis files app to register in Canada: APPLE TREE, ORANGE TREE, and LEMON TREE May 15, 1969 Langis starts using the marks in Canada SCM starts using LEMON TREE in USA June 18, 1969 SCM files to register LEMON TREE in USA Sept 19, 1969 Langis files for LEMON TREE, ORANGE TREE, and APPLE TREE in US June, 1970 SCM begins using ORANGE TREE and LIME TREE marks July 22, 1970 SCM files to register ORANGE TREE and LIME TREE in US Aug 1971 USPTO published Langis' APPLE TREE and ORANGE TREE marks for opposition Oct 1971 PTO issues registration to Langis for LEMON TREE Then, SCM instituted oppositions to the APPLE TREE and ORANGE TREE registrations, and a petition to cancel the LEMON TREE PTO denied SCM's petitions. SCM then complained in the Dist Ct Dist Ct Found for SCM because it found that SCM had priority in the USA Interpreted the Lanham Act 2(d)
No TM shall be refused registration on the principal register on account of its nature UNLESS it . . . (d) Consists of, or comprises, a mark which so resembles a mark/tradename previously used in the US by another and not abandoned, as to be likely to cause confusion...
Issue Does SCM have priority? Held Langis wins -- the date of filing in Canada grants Langis a constructive USE date, which gives it priority over SCM
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Rule Lanham Act 44(d)
A TM registration application filed by a foreign national shall be given the same force/effect as that which would be given to the same application filed in the US on the same day (National Treatment)
Analysis Dist Ct applied the wrong rule Langis' Paris priority date = 3/28/1969 SCM arg'd
Sec 44(d) only gives a foreign national a constructive filing date in the US as of the date of the foreign filing
Constructive FILING date can be defeated by prior actual use in the USA
Langis arg'd
Sec 44(d) gives a foreign national a constructive use date in the US
DC Cir agreed w/ Langis -- Lanham 44(d) gives a foreign national a constructive USE date in the US Langis' arg is consistent with the Paris Convention: "any filing having the value of a formal national filing . . . shall be recognized as giving rise to a right of priority"
Distinguish Priority Approaches First-to-register For priority -- whoever registers first wins priority Civil law countries Benefits Can obtain priority w/o using mark e.g. you may not have capital to get business up & running before Disadvantages Can be anti-competitive Prevent competitors from registering and using patents "trademark warehousing" - register a bunch of marks, and prevent others from
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using them; attempt to sell them off
First-to-use For priority -- whoever first uses the TM in commerce wins priority Common law countries (e.g. USA)
The US is a prior use country Because of TRIPS and Paris: Registration is also available Benefit of registration = the registration can defeat junior users of the mark in the entire US Registration is possible based on intent-to-use NOTE: NO use or statement of use requirement for applications based on prior foreign applications from the country of origin 44 Lanham Act (SCM case)
But NOTE! Because of Paris/TRIPS
USA also has priority based on intent to use - i.e. priority for registration (Lanham Act 1(b), 15 USC 1051(b))
Benefits Prevents TM warehousing Rewards the first user to productively use the mark, not just the first person to register the mark
Paris Telle Quelle/As-is Provision: Article 6 quinquies Art 6(3) Paris General Treatment Paris treatment = independent treatment (in other countries) of a mark duly registered in a Paris country of origin Art 6quinquies Paris Gives "special benefit" for marks duly registered in the country of origin, which DOES depend on registration Registration "as-is"; i.e. the particular form of the mark cannot be questioned or used to deny registration Once a mark is registered in one country, other countries must register the mark as-is Example Say Country A does not allow smells to be TMed, but Country B does allow this So if user TMs mark in Country B for a smell, then under Paris 6quinquies, the mark can
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still be registered Rule
A(1) - TMs, duly registered in the country of origin, are protected "as-is" in countries outside the origin (subject to the reservations in this article) (i.e. the "form" of the mark cannot be questions by another country Reservations (see below); Certificate of Registration; NO authentication A(2) - Country of origin means: Country where applicant has a real and effective industrial or commercial establishment is, or Country of applicant's domicile, or Country of which applicant is a national B - Subject to Art 10bis (Unfair Competition), TMs covered by this Article may neither be denied registration nor invalidated, except in the following cases: Infringement of 3rd parties' rights No distinctiveness/generic marks (including marks which may serve to indicate place of origin) e.g. "generic" identifies a product category "Genericide" communicates the idea that a distinctive mark becomes generic, i.e. consumers identify a trade mark/name with all brands (e.g. Xerox machine) Contrary to morality/public order C. (1) Things to consider when deciding eligibility => factual considerations including length of time mark has been in use (2) Differences that do not alter distinctiveness cannot be used to deny protection of the TM
D. To benefit from telle-quelle protection, the mark must be registered in the country of origin
E. The renewal of the registration of the mark in the country of origin do not create obligations to renew in other countries F. Paris Priority is not changed for TM applications outside the country of origin, even if the registration in the country of origin takes place after the 6-month priority period expires (i.e. if it takes more than 6 months for the origin country to actually grant the TM, the paris priority date still stays intact)
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United States - Section 211 Omnibus Appropriations Act of 1998 (WTO 2002) (p. 461) (revisted for discussion of telle quelle provisions) Facts Havana Club Mark Omnibus rule 211(a)(1) said: "Notwithstanding any other provision of the law, no transaction or payment shall be authorized or approved with respect to a mark, trade name, or commercial name that is the same or substantially similar to a mark, trade name, or commercial name that was used in connection for a business or asset that was confiscated, UNLESS the original owner has expressly consented EC argued the Panel's finding: That Article 6quinquies required that a mark be accepted as-is. Here, because the Omnibus Act governed payment, it goes beyond merely the form of the TM. US arg'd -- Telle quelle only imposes requirements to accept TM as-is, wrt "form", but not with other aspects of ownership (e.g. renewing, filing, protection, etc) Issue Is Omnibus Appropriations Act 211(a)(1) consistent with Paris and TRIPS? Held No -- 211 is consistent with the telle quelle provisions Panel decision upheld Analysis The telle quelle provision only applies to the form; it does not encompass all features/aspects of the trademark. i.e. 211(a)(1) does not prevent registration of the mark "as-is". Instead, the registration fails for other reasons. The statute serve to prevent the payment of the required fees necessary for registration/renewal in the US. However, the payment of fees is not the "form" of the mark. Furthermore, other provisions of Art 6 Paris allow countries to impose their own rules for registration, filing, etc (based on domestic law) If the court were interpret telle quelle as regulating form, as well as more-than-form, then the telle quelle provisions could be used to circumvent domestic laws The court does not want this
Filing an International Application Under the Madrid System The Madrid System Similar to PCT for Patents Owner of a TM can obtain protection for the TM in each of the contracting states to the Madrid System, for which protection is sought (up to 80 countries) The designated contracting states in which protection is sought do not issue national registrations for the TM; instead, the TM is registered in the International Register maintained by WIPO
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The mark is entitled to protection under national law as if the the TM had obtained a national registration in each of the designated countries.
Madrid System Consists of Two Treaties A Paris Member may be a member of neither, one, or both Madrid treaties Madrid Agreement (1891) US did NOT join the Madrid Agreement Madrid Protocol (1989) Effective in US in 2003 Through a single procedure it is possible to obtain TM protection and the equivalent of national registration in 80 other countries of the world
Filing for International TM Registration Madrid Protocol Allows 2 Filing Options
Basic Application: Based on an existing pending application in the home country
Basic Registration: Based on an existing registered TM in the home country
Madrid Agreement Allows only the Basic Registration option (this is why the US didn't join -US wants to be able to get protection based on pending applications) The Steps (assumes US-based applicant) 1. To file an International Application under the Madrid System, the US applicant must also file a US application US application can be either "Basic Application" or "Basic Registration" (Madrid Protocol) 2. The International Application Must Follow Requirements
The mark and owner indicated in International application must be the same as the mark and owner listed on the the basic application/registration
The list of goods/services on the Intl application must be the same or narrower than in the basic application/registration
TM holder must designate the Madrid contracting states in which protection is sought For EU -- app can either designate separate individual nations w/in EU, or
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the EU as a whole The application is forwarded to the Int'l Bureau of WIPO in Geneva, Switzerland When does the Madrid application arrive at WIPO? W/in 2 months of domestic TM office: WIPO reg date = date of receipt of the Madrid Application in the Madrid Country's TM office After 2 months: The WIPO reg date = a later date of the date of receipt of Madrid App in the Madrid country's TM office WIPO registration = the priority date for priority conflicts in designed countries
3. The nat'l examiner (USPTO in this case) reviews the int'l application to determine to make sure it contains the same required info as the basic application/registration 4. The examiner (here, USPTO) certifies the application and forwards it to the International Bureau of WIPO (assuming the application passed review) 5. WIPO sets the "Date of International Registration" (the Priority Date in the case of competing applications)
If WIPO receives intl application w/in 2 Months of filing w/ USPTO, the Date of International Registration is the date of receipt of the International Application in the USPTO
If WIPO receives Intl Application after 2 Months of filing w/ USPTO, the Date of International Registration will be the date of receipt by WIPO (which is later)
6. Paris Priority is available for TMs filed under Madrid System
A TM owner who has filed a TM application w/ a Paris Union Country can assert the Priority Date as original filing date for all subsequent applications - including Madrid applications - filed w/ other Union countries IF the subsequent application is filed w/in 6 months of the original filing (see illustration 4-1, page 471)
7. Once WIPO receives the Intl App from USPTO (or other TM office) Intl Bureau of WIPO reviews int'l application for compliance w/ Madrid System filing reqs 8. If reqs are met, WIPO immediately registers mark in WIPO's International Register; publish the mark in WIPO's Gazette of International Marks
Once mark is in Int'l Register, Protection of the mark in each of the designated Contracting States shall be the same as if the mark had been deposited directly w/
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the office of that country Effect of International Registration In countries w/ examination system (such as US): TM may be entitled to protection after a further examination by that country In countries w/o examination system (e.g. Italy) The TM is protected immediately once the TM is in the WIPO International Register
9. States may still refuse to extend protection to TM Under Madrid Protocol: Country must notify WIFO w/in 18 months. Failure to notify will result in automatic extension of protection for the mark in that country (subject to std procedures for invalidation of a mark in that country) Under Madrid Agreement (of which US is NOT a member): Country must notify WIPO of refusal w/in 12 months; Failure to do so results in automatic extension of protection to the mark 10. If State refuses protection, WIPO must forward the notice of refusal promptly to the holder of the International Registration.
The holder is entitled to the same remedies under national law (of the refusing state) as if the holder had originally filed directly in that state.
Duration of International Registration Under Madrid Protocol (US is a Member): Intl Reg lasts 10 years in each designated contracting state May be renewed indefinitely for 10-yeear periods Renewal applies to all countries where protection was obtained including the home country During renewal, applicant can also apply to add more designated countries Validity Central Attack (applies to both Madrid Protocol and Agreement) If w/in 5 yrs of Intl Registration, the basic application or registration fails The entire Madrid registration is cancelled If w/in 5 yrs of Intl Registration, the basic application or registration does NOT fail Madrid registration becomes INDEPENDENT of the home country application But if Central Attack is successful, then under Madrid Protocol (only), Applicant can file separate national applications
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Filing date of national applications = date of the (now invalid) International Registration (i.e. keep Madrid Priority date) if: the national application is made w/in 3 mo's from cancellation of Madrid registration the nat'l application is for goods or services "already contained in the international registration" the applicant complies with all National requirements fulfilled (including filing fees)
International Searches International Search is required under the Madrid System WIPO provides copy of entries in the International Register NOTE: A national search may not necessarily uncover international registrations
Ownership and Transfer of Trademarks

Ownership TM ownership depends on the country in which protection is sought: First-to-use First-to-file (See the rules -- Ownership is granted based on the rules) See CB p. 487 Transfer License
Allows licensee to USE the mark (but does not grant ownership rights Art 21 TRIPS No compulsory licenses for TMs
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Policy TMs are associated with the QUALITY of the good/service So there are no compulsory licenses for TMs e.g. Think Compulsory licenses for patents -- a govt can get a compulsory license for a patented medication But the TRADEMARK for the medication cannot be compulsorily licensed Companies would have to make NEW TMs for goods made under that patent
Assignment Transfers ownership of the TM is transferred to the assignee
Art 6quater Paris allows Countries two possibilities: A. TM assignment is made together w/ the transfer of the business assets or the goodwill related to the mark; OR B. Assignment in gross i.e. a country is free to choose: either allow assignments in gross; or prohibit assignments in gross, but then require a transfer of business assets or goodwill Art 21 TRIPS WTO cannot require the assn to be conditioned on the transfer of the "business", i.e. business assets Note: The US rejected "business" goodwill
Vittoria North America LLC v. Euro-Asia Imports, Inc (CA 10, 2001) (p. 488) Facts Vittoria = Italian bike tire mfg Tire co named Hibdon formed agmt w/ Vittoria tires to create co called VNA as a North American distributor of Vittoria tires in US Vittoria assigned TMs to VNA (exclusive distributor of Vittoria tires in USA) Assignment Agmt gave VNA to act against infringers Euro-Asia Imports (EAI) was also importing Vittoria tires into US w/o first getting concent Dist Ct Granted injunction Issue Did Vittoria properly transfer TM rights to VNA, such that VNA had the right to sue EAI?
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i.e. is VNA entitled to protection in the US, under the Tariff Act? Held Affirm -- The Agmt Agmt constitutes a valid transfer of rights Therefore, the injunction is proper Rule Under US Tariff Code 5426, To prove entitlement to protection under the Act, VNA must show: (1) That it is a corp or assoc created/organized w/in the USA, AND (2) That it owns the Vittoria TM in the USA, AND (3) That the TM is registers in the Patent & TM office of the US Customs Service, AND (4) That EAI is importing goods using the Vittoria mark, without consent
A valid assignment of a trademark or service mark requires the transfer of the goodwill associated w/ the mark i.e. you must also take steps to ensure that the quality the goods/services provided by the assignee is on par with the quality of the assignor Analysis Vittoria took steps to ensure that the mark continued to signify high-quality racing tires for bicycles VNAs actions prior and subsequent the transfer to maintain continuity in the use of the mark and the publics perception of the product associated with it Advertisements Sponsorship of professional athletes Trade show Marketing network of sale representatives EAI never alleged disruption in the kind or quality of the tiers caused by the transfer Therefore, the assignment is VALID Policy The purpose for requiring the transfer of goodwill ALONG WITH the transfer of the trade/service mark is to ensure that consumers receive accurate information about the product or service associated with the mark NOTE Does the court have to do all this -- requiring "goodwill?" Nowadays, consumer knowledge (availability of information) and market forces will auto-correct Counter-arg:
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Requiring the transfer of goodwill along w/ the TM ensures that consumers are not harmed during the time when the market would correct itself i.e. customers may be harmed if assignee's goods are not up to par w/ the assignor's goods
Subject Matter and Distinctiveness

General Approach for Trademarks What may constitute a TM:
"Any sign, or combination of signs capable of distinguishing the goods or services of one undertaking from those of other undertakings e.g. words, personal names, letters, numerals, figurative elements, and combinations of colors And any combination of such signs If a sign is NOT capable of distinguishing the relevant goods/services: Member countries may make registrability depend on distinctiveness acquired through use Office for Harmonisation in the Internal Market (OHIM) v. Borco-Marken-Import Matthiesen GmbH (Court of Justice of the EU, 2010) (p. 493) Facts Borco tried to TM the lower-case alpha symbol as a community TM Examiner refused the sign, because it lacked distinctive character Borco appealed The appeal was dismissed Borco brought an action to the General Court. The General Court didn't even bother.. Without carrying out an examination about the distinctive character of the symbol, the General Court held that the sign at issue lacked distinctive character Issues Does the alpha symbol have the "distinctive character" necessary to make it a valid TM? Held No Affirmed -- the General Court correctly applied Art 7(1)(b) of the Regulation No 40/94 Rule Art 4 of Regulation No 40/94 Letters are a category of signs that MAY constitute a Community TM AS LONG AS they are capable of distinguishing the goods/services of one undertaking from another
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For a TM to possess distinctive character for the purposes of Regulation 40/94, it must serve to identify the product as originating from a particular undertaking, and thus to distinguish the product from the products of other undertakings
Analysis The test: Consider the distinctive character w.r.t. (1) the goods/services for which registration has been applied and (2) the perception by the relevant public In short, the letter did not meet the test (seriously, this case is written like a crazy person wrote it)
Product Designs as Trademarks Koninklijke Philips Electronics NV v. Remington Consumer Products Ltd (European Ct of Justice, 2002) (p. 498) Facts Philips developed a triangle-shaped, three-headed rotary electric shaver; in 1985, applied for a TM consisting of a graphic representation of the shape In 1995, Remington (a competing company) began to manufacture and sell (in the UK) a 3-headed rotary shaver (shaped similar to the Philips shaver) Issue Can the 3-headed shape of a shaver be used as a trademark? (4 Questions presented to court) Held No infringement -- the triangle shaver head shape is not a valid trademark that can be infringed Rule Art 2 of EU Directive 89/104/EEC (see CB p. 299) NOTE: A shape can be a trademark, with some exceptions Analysis The shape does not need any "capricious addition". Even a basic shape may be subject to TM protection, as long as the shape is sufficient to give the sign a distinctive character. The Directive does not require that the shape of the article wrt which the sign is registered must include some capricious addition Secondary meaning: The key is that "a relevant class of consumers" associates that shape w/ the company using the shape and no other undertaking, and that the consumers believe that the goods of that shape come from that company Shapes that serve a technical purpose CANNOT be protected POLICY Prevent anti-competitiveness The exclusivity inherent in the TM would limit competitors from supplying
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incorporating that function, or a similar function It would limit competitors' freedom of choice wrt the technical solution they wish to adopt in incorporating the function in their product Traffix Devices Inc v. Marketing Displays Inc (US 2001) (p. 502) Facts MDI obtained some expired patents for a dual-spring system for keeping construction signs upright despite adverse wind conditions Traffix reverse-engineered the MDI sign and made a similar sign MDI sued for TM infringement under Lanham Act, and unfair competition Issue What effect does an expired patent have on a claim of trade dress infringement? Held The expired patent serves as strong evidence that its features are functional No Trademark for functional shapes -- that is the purpose of patent law Essential to the use/purpose of the article If the shape has an effect on the cost or quality of the article Analysis The effect of an expired of a utility is strong evidence that the shape/design is functional Creates a presumption that the article under consideration is functional, and not distinctive Presumption is rebuttable The side seeking to establish trade dress protection must carry the HEAVY BURDEN of showing that the feature is not functional, e.g. by showing that it is merely an ornamental, incidental, or arbitrary aspect of the device Policy Prevent TM of functional shapes because TMs can theoretically last forever NOTES Colors Can be TM in both US and Europe (see CB p. 507) Trade Dress Can be TM Trade Dress = appearance, e.g. interior styling of Steak & Shake restaurants Sounds & Smells In US Sounds and Smells can both be TM
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In EU Sounds can be TM, but Smells cannot EU does not think smells can be sufficiently described e.g. to prove infringement, to describe to consumers/competitors what the mark is
State emblems, official hallmarks, and emblems of intergovernmental organizations In EU Article 6ter Paris Requires countries to "refuse or to invalidate the registration" of "armorial bearings, flags, and other State emblems, of the countries", as well as "official signs and hallmarks" indicating control and warranty adopted by them
Other Nontraditional Marks The Motion of an Object Automobili Lamborghini Holding S.P.A.'s Application (OHIM 2005) (p. 509) Facts Lamborghini wanted to TM the vertical swinging of its doors Issue Can the movement of the doors of a vehicle be protected as TM? Held No -- Door movement not protected as trademark (at least, not in this case) Rule Motion can be TMed if: Distinctive (or secondary meaning) Able to be depicted graphically Not functional Analysis Motion can be protected as TM in some courts German courts say that motion could be protected In this case, no secondary meaning The movement of the door was associated with numerous sports cars and not only Lamborghini's particular sports car
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Grounds for rejection: Article 7 CTMR (b) Trademarks that are devoid of any distinctive character (e) Signs which consist exclusively of: (ii) the shape of goods where necessary to obtain a technical result
Notes
Consider Philips: no registration of shapes whose essential characteristics perform a technical function A product feature is functional IF it limits: The possibility for competitors to supply the product OR The competitors freedom of choice in regard to technical solutions
Compare Traffix: no trademark protection for functional product features A product feature is functional IF: It is essential to the use or purpose of the article OR It effects the cost or quality of the article
Generic Marks Otokoyama Co Ltd v. Wine of Japan Import Inc (2d Cir 1999) (p. 515) Facts Ptf = Otokoyama Co (Japanese Company) Has 4 TMs in the US, for the word Otokoyama Sells sake in the US as "Otokoyama" brand sake Def = Wine of Japan Import (US Company) Import sake bearing the term otokoyama Ptf sued for TM infringement Def counter-sued to cancel otokoyama TMs in the word "otokoyama", because: (1) The term is Generic The term "otokoyama" is a generic term signifying a type of sake It would be like trademarking the term "whiskey" (2) The TM was obtained fraudulently e.g. Ptf lied about the meaning of the term "otokoyama" Dist ct Granted Ptf's motion for prelim injunction against def Def appealed
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Claimed error by dist ct Dist ct didn't consider evidence of Japanese Patent Office (JPO) report explaining why Ptf could not obtain TM of "otokoyama" in Japan Issue Does the fact that a world is generic in foreign country have any relevance for its protection as a TM in the US? Held Yes -- Def should have been allowed to introduce evidence of "otokoyama" meaning and usage in Japan to support its claim that the mark is generic Dist ct erred when it ruled that the JPO decision was irrelevant Rule No trademark for a generic word, a word that translates to a generic word in another language Foreign decisions cannot be used to determine entitlement to US trademark; but they CAN be used for a different purpose Analysis Here the JPO decision was used for the proper reasons i.e. it was not used to prove entitlement. Instead, it was used for 2 reasons: (1) to show that the JPO found that the word "otokoyama" refers to a type of sake, and (2) to show evidence supporting def's claim that the ptf committed fraud on the trademark office
Exclusive Rights
General Approach for Trademarks General Rule TM Infringement is typically shown by proof that defendant's use of a mark is "likely to cause confusion" with ptf's mark, for which ptf has priority Art 16(1) TRIPS codifies the general rule The owner of registered TM has the EXCLUSIVE RIGHT to prevent 3rd parties from using identical/similar signs that would cause a likelihood of confusion (unless the 3rd parties get the consent of the TM owner) EC Trademarks Directive (89/104/EEC) A registered TM confers exclusive rights: Prevent all 3rd parties not having his consent from using (in the course of trade) any sign that is identical w/ the TM in relation to goods/services that are identical to those for which the TM is registered, Any sign that would cause a likelihood of confusion on the public, which includes the "likelihood of association" with the mark (because of identity ["identicalness" {I made that
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word up}] or similarity) Sabel BV v. Puma AG (ECJ 1997) (p. 522) Facts In Germany, Puma has a TM of a bounding cat (like a running Jaguar) for leather and imitation leather, goods/bags made of leather (and imitation leather), and articles of clothing Sabel, a Dutch company, tried to register a similar-looking bounding cat mark in Germany, for similar classes of goods (bags/handbags, leather/imitation, clothing, shoes etc) Puma was like "hell no", and filed opposition to the registration of the Sabel mark The German Patent Office considered there to be no resemblance for the purposes of TM law btwn the 2 marks, and rejected (seriously? look at the book.... have you seen the marks? they look the same!) Puma appealed to the Federal Patents Court, which held in favor of Puma Sabel appealed to the Bundesgerichtshof (which I am taking to mean "Supreme Patent Court of Germany," but who knows?) Issue What is the correct interpretation of the phrase in Art.4 of the European Directive, ... likelihood of confusion", which includes "likelihood of association" between the sign in question and the TM? i.e. Does the "mere assosiaction that the public might make between the two marks, in this case through the idea of a "bounding feline," justify refusing protection to the SABEL mark in Germany, for products similar to those on the list of articles covered by Puma's priority mark? Held The term "likelihood of confusion" should be interpreted as meaning that: The mere asociation that the public might make between the two trade marks (as a result of their analogous semantic content) IS NOT IN ITSELF a sufficient ground for cluding that there is a likelihood of confusion w/in the meaning of Art. 4 Analysis Likelihood of confusion vs. Likelihood of association
Based on the wording of the Directive the concept of likelihood of association is not an alternative to likelihood of confusion
Instead, Likelihood of association serves to define the scope of likelihood of confusion
In the context of famous/distinctive marks, the greater the similarity, the greater the likelihood of confusion But in the case of a not-that-well-known mark, the mere fact that the two marks are
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conceptually similar is NOT sufficient to give rise to a likelihood of confusion
Special Protections for Well-known or Famous Marks
Art 6bis Paris Well known mark can establish priority over other marks Even if, in that country, there is no use or registration
Owner a mark that has achieved fame (but has not been registered) in a country can prohibit registration and use of same/similar marks used on identical or similar goods, which are likely to create consumer confusion w/ the famous mark
Art 16(2) TRIPS
Expands Art 6bis protection to service marks
Art 16(3) TRIPS
Expands art 6bis protection for registered, well-known marks to goods or services that are NOT similar if: Use of the TM would "indicate a connection between those goods/services and the owner of the registered TM, AND
The interests of the owner of the registered TM are likely to be damaged by such use (subject to interpretation, e.g. definitely economic damage and damage of goodwill, etc)
McDonalds' Corp v. Joburgers Drive-Inn Restaurant (South African Court of some sort, 1996) (p. 529) Facts MD first started doing biz in USA in 1955 Registered a bunch of TMs in USA MDs registered South African TMs in 1968, 1974, 1979, 1980, and 1985 Own 52 total TMs In 1992, JB tried started making fast food outlets using the TMs McDonald's, Big Mac, and the golden arches design 1993 - South African entrepreneur tried to expunge McDonalds' marks in South Africa MD opposed expungement
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Court granted expungement MD's application for well-known marks protection was refused MD appealed Issue (1) Must the mark be well-known to all sectors of the populations in which you seek protection? (2) Whatever the relevant sector of the population may be, what degree of awareness w/in that sector is required before a mark can be properly described as well-known? (ie what is the level of awareness in the public mind necessary for a mark to qualify as well-known) Held (1) No -- the mark need only be well-known to persons interested in the goods/services to which the mark relates (2) They must have at least heard of McDonald's and know its marks, or some of them. Overall: McDonalds' wins Rules Court essentially says the proper analysis uses both quant and qual Quantitative = "Substantial number of persons" must know about the mark Qualitative = "Sufficient persons know the mark well enough to entitle it to protection against deception or confusion" Use quantitative and qualitative analysis Quantitative: "A substantial number" of persons must know about the mark How many? A "large majority" Qualitative: "People must know the mark well enough to entitle it to protection against deception or confusion" How well? The knowledge is "similar to that used in the existing law of passing off" (see CB p. 532 -- this is South African law.. Not quoted specifically) Analysis The "relevant sector" in this case is people who can afford to eat fast food Qualitative: How profound is the impact of the mark on invididuals? Of the people who would be likely to eat at/buy from McDonald's, a "substantial portion" know of its marks, and have heard of McDonald's This inference is supported by the zeal shown by Joburgers to appropriate the marks for themselves Quantitative: How many people know about the mark? A large majority -- 77% in one survey, 80% in another Joburgers (JB) was clearly free-riding here
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JB had a different TM for other fast-food joints (Chicken Licken) NOTES In this case, the court made a political decision i.e. technically, under TRIPS/Paris, McDs abandoned its trademark But, McD couldn't really do biz in South Africa because of Apartheid So MD should still maintain its TMs Plus, JB was being a dick -- free-riding Note 2 p. 540 McD registered in 1968 in South Africa, but didn't expand there until 1992. Why? Apartheid. Political strife This is involuntary non-use Note 3 p. 540 - Abandonment? Here, if the mark owner voluntarily fails to use the mark, then should they lose it? See the Russian attorney example Russian atty had Russian Starbucks TM invalidated through nonuse Then he registered the TM and offered to sell it back to Starbucks for $600,000 Ct held in favor of Sbux -- invalidated the registration POLICY seems to favor business
Empresa Cubana Del Tabaco v. Culbro Corp (CA2, 2005) (p. 535) Facts Under US trade embargo, cuban entities, such as Cubatabaco, cannot sell cigars in US The embargo prohibits transfers of property rights 1969 - CT filed application to register COHIBA in Cuba; began selling in Cuba in 1970 1978 - CT filed apps to register COHIBA in 17 co's, but not US 1981 - GC obtains registration of COHIBA mark 1982 - CT begins selling cigars in countries outside Cuba 1983 - CT considered registering COHIBA mark in US, but learned that CG already had obtained US registration 1985 - CT filed app w/ USPTO to register a different mark (BEHIQUE) in US, w/ same trade dress that it used on COHIBA cigars elsewhere 1987 - CT considered challenging GC's 1981 COHIBA registration, but chose not to act. 1992 - Popular magazines (widely circulated) touted the quality of COHIBA cigars made by CT (the real cuban ones, not GC's) GC started selling other cigars using the COHIBA mark, passing off on CT's popularity GC acknowledged that the Cuban (CT) COHIBA cigars were well-known to US cigar
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consumers by the time it launched its new COHIBA cigars Cubatabaco (CT) claims it owns the COHIBA mark in the US, and that General Cigar's (GC) sale of COHIBA cigars in the US unlawfully infringes Issues Does the embargo bar the acquisition by CT of the COHIBA TM in US via the famous mark doctrine? Held Yes -- The embargo bars CT's acquisition of property rights in the US COHIBA TM CT's acquisition of the US COHIBA mark through the famous marks doctrine would constitute a transfer that is prohibited by the embargo i.e. CT cannot get ownership of the mark through famous marks doctrine. App Ct vacates Dist Ct's decision to cancel GC's registration (i.e. GC can use the mark) Rule Embargo Relations Act prohibits a broad range of transactions involving property in which a Cuban entity has an interest "Any transaction for the purpose or which has the effect of evading or avoiding any prohibitions set forth . . . Is prohibited" Analysis Allowing CT to register COHIBA mark would constitute a transfer of TM property (ownership) rights to Cuban company -- this would be illegal under embargo On the face of the Embargo statute, Cuban companies cannot gain ownership of TM Also, the Embargo bars the round-about approach of using the famous marks doctrine to gain ownership rights Notes Another case decided on political reasons (like McDonald's), not based on provisions of TRIPS i.e. Technically, CT should've been able to register the mark under TRIPS and the famous marks doctrine Abandonment is an exception to the famous marks doctrine -- but here, the mark was not technically abandoned, because CT was using the famous mark around the world
Dlution Claims Art 16(3) TRIPS
Expands Paris Art 6bis protection for registered, well-known marks to goods/services that are NOT similar IF There could be a connection, AND
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Likelihood of damage US Lanham Act Defines "Famous Mark" Widely recognized by the general consuming public of the United States as a designation of source of the goods/services of the mark's owner. 15 USC 1125(c) (Lanham Act 43(c)) Relevant Factors in determining "famousness" The advertising of the mark (extent, length of time, etc) The sales of goods bearing the mark The extent of actual recognition of the mark Whether the mark was registered on the principal register or (under something else...... see p. 543) Defines Dilution Dilution By Blurring Association arising from similarity btwn a mark/tradename and a famous mark that impairs the distinctiveness of the famous mark Dilution By Tarnishment Association arising from the similarity btwn a mark/trade name and a famous reputation that harms the reputation of the famous mark Defines Exceptions to Dilution Fair use Advertising for the purpose of comparing goods Parody/criticism/commentary Defines Remedies Injunctive Relief (see CB p. 542) Levi Strauss & Co v. Abercrombie & Fitch Trading Co (CA9 2011) (p. 544) Facts Levi's has been selling jeans since the 1870's. Its jeans have a connecting arch design on the back pocket In 2006, Abercrombie started using a stitching design on the back pocket that Levi claims incorporates the "distinctive arcing elements" of the Levi design Levi's argues that Dist Ct erred in requiring Levi's to establish that its mark was identical or nearly identical to the Abercrombie design Issue Did the dist ct judgment use the wrong standard (which was harmful error)? Held Yes -- dist ct used the wrong standard, and the error was not harmless (i.e. the
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error was possibly harmful to Levi's) (on remand, a court might find likelihood of dilution, which would entitle Levi's to injunctive relief) Rule Degree-of-similarity is only one factor in a multi-factor tests Analysis The dist ct used the "identical or nearly identical" standard, which is a stricter standard. The correct standard is less rigorous -- simply analyze the degree of similarity The ptf only needs to prove that a junior mark is "likely to impair the distinctiveness of the famous mark" (dlution by blurring) Note: This case came after the Trademark Dilution Revision Act, which changed the standard in the US from "actual dilution" (hard to prove) to likelihood of dliution (easier to prove)
The Internet and Keyword Advertising Google France Sarl v. Louis Vuitton Malletier SA (ECJ 2010) (p. 551) Held Google does not commit copyright infringement by creating the technical conditions for displaying a sign, and in fact, getting paid for advertising Analysis Google is a service provider. As such, it cannot be held liable for the data that it has stored at the request of an advertiser, UNLESS, having obtained knowledge of the unlawful nature of those data or of the advertiser's activities, it failed to act expeditiously to remove to disable access to the data The service provider (google) Interflora v. Marks & Spencer (ECJ 2011) (p. 557) Held When a competitor uses an internet advertising keyword that is identical with the TM owner's trademark, and the competitor has not gotten the TM owner's consent to do so... ...The proprietor of a TM is entitled to prevent a competitor from advertising goods/services identical w/ the TM owner's goods/services for which the mark is registered
Abandonment
Art. 19 TRIPS - sets minimum standards Abandonment occurs after uninterrupted period of non-use of at least 3 years
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UNLESS valid reason = obstacles to the use of the TM beyond the holder's will, such as: Import restrictions OR Other govt requirements for food and services protected by the TM See also Problem 4-15, p. 565 Which case falls in min std? Cohiba case Which should not? McDonalds What significance (see p. 565) First, consider regular marks A mark can be not-registered, but you can gain ownership rights in it Thus, a non-registered mark can be abandoned If you have a famous mark, then registration appears to be necessary i.e. for famous marks, you can have protection w/o use and registration So how would you show abandonment? For Art 19 to operate, you still need abandonment?
Exceptions to Rights
Art 17 TRIPS
Member countries may provide limited exceptions to exclusive rights, provided that they take into acct the legitimate interests of the TM owner & 3rd parties e.g. Fair use of descriptive terms; uses for commentary/comparative advertising that DO NOT create likelihood of confusion
Note: Art 17 does not permit compulsory licenses for TMs
KP Permanent Make-up Inc v. Lasting Impression (US 2004) (p. 566) Facts Parties sell permanent makeup -- mixture of pigment and liquid for injection under the skin to camouflage injuries and "modify nature's dispensations Each has used a version of the term "micro color" as one word, or two, singular or plural KP claims it used the single-word version (microcolor) since 1990 or 1991 In 1992, LI applied to USPTO for TM consisting of "Micro Colors" PTO registered the mark in 1993 In 1999, the LI "Micro Colors"' mark became incontestable
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Also in 1999, KP produced an ad brochure with the word "microcolor" LI demand that KP stop using the term. KP then sued LI in C.D. Cal -- wanted decl judgment that its language did not infringe LI's TM, or fair use Dist Ct found fair use Ct App 9 foudn that Dist Ct erred by reaching fair use without first analyzing likelihood of confusion Issue Does the defendant have a burden to negate any likelihood that the practice complained of will confuse consumers about the origin of goods/services? Held No -- the DEFENDANT does not have the burden to NEGATE the likelihood of confusion The PLAINTIFF has the burden of PROVING the likelihood of confusion Rule Burden of Proof is on the Plaintiff to establish likelihood of confusion Analysis CA9 appears to have placed the burden of proof on KP to show absence of consumer confusion. That is the wrong approach
Term of Trademark Registrations

Technically there is no term of a trademark. Technically, TMs can go on forever. Art 18 TRIPS
Countries are obligated to allow a term for registrations to last at least 7 years TMs must also be renewable for terms of at least 7 years (usually w/ the payment of a fee)
Collective Marks and Trade Names p. 571 - 572

(see pp. 571 - 572 -- didn't seem important enough to put in the outline)
Geographic Indications
Distinguish GIs vs TMs Ownership TMs = single owner GIs = commonly used by a "community" of many qualifying entities Function TMs = to identify a particular source (i.e. manufacturer) of a product (or the particular provider of a particular service)
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GIs = to identify the region from which the product originates Basic Approach: Rights and Exceptions Art 22(1) TRIPS - Basic Info Definition of GI
Geographical Indications are indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin
Two fundamental Elements
The term identifies the true geographical origin of the product
The product's quality, reputation or other characteristics are due to its geographical origin
There must be a connection between the product's quality and the territory
Art 22(2) and (3) TRIPS -- Minimum Stds of Protection Countries are obliged to: Prevent use of any means that indicates that a good originates in a geographical area other than the true place of origin in a manner that misleads the public Prevent any use that constitutes an act of unfair competition Refuse registration if use of a TM that is misleading Invalidate registration, if use of that TM is misleading Thus GIs can effectively trump a non-grandfathered TM registration
Art 24 TRIPS - Exceptions Art 24(5), (6), (8), and (9) TRIPS - Exceptions Countries are required to "grandfather" TMs registered, applied for registration, OR used in good faith BEFORE: The effective date of TRIPs provisions in the member country, OR The GI in question is protected in its country of origin Countries have discretion to deny protection to GIs that are generic in the country where protection is sought Countries are exempt from having to protect GIs that are no longer protected in its country of origin or have fallen into disuse there No prejudice to the right of a person to use her name or the name of her predecessor in business
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UNLESS such a use is misleading GI Regulation in the EU Consorzio Del Prosciutto Di Parma v. Asda Stores Ltd (ECJ 2003) (p. 577) Facts Issue dealt w/ "Parma ham" The ham was being sliced & packaged in the UK, and sold in UK store The consortium required meats with the Parma Ham name to be sliced/packaged in Parma, Italy Issue Does community law allows restriction of retail sale as "Parma Ham" of ham duly imported from Parma, but which have been sliced/packaged in the UK (i.e. in 'violation' of the Parma Ham consortium's specifications) Held Generally, community law does not allow certain restrictions on exports
However, in this case, the fact that the PDO (protected designation of origin) is conditioned on the slicing and packaging operations being carried out in the region of protection are justified -- for the protection of the PDO / Geographic Indication
ANALYSIS Art. 29 EC Does not allow measures that have the effect of quantitaive restrictions on exports Does not preclude restriction on exports that are "justified" on ground that (among other things) protect the industrial and commercial property
Heightened Protection for Wines and Spirits; and Exceptions TRIPS Protection of wines/spirits is especially strong Art 23 TRIPS - Wines and Spirits Specifically Protection is provided against use of GIs, regardless if misleading or not Use of disclaimers is irrelevant "even where the true origin of the goods is indicated" Same exceptions apply as for regular GIs on other products + specific "grandfather" provision Countries have the option of allowing the continued use of the name of grape variety
Domain Names / UDRP (McGrady Lecture)

pp. 609 - 622 McGrady Slides 31 - 34
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UDRP
What is UDRP? Uniform Dispute Resolution Process for Domain-name Disputes Alternative Dispute Resolution for the resolution of domain naming disputes Who Decides? Disputes decided by either: 1 Arbitatror, or Panel of 3 arbitrators (if either party requests a panel) Decisions are NOT BINDING ON ANY COURT Requirements
Complainant must allege and prove "bad faith" registration of a domain name, by establishing 3 elements:
(1) Domain name is "identical or confusingly similar" to a trademark/service mark in which complainant has rights, AND
(2) The person who registered the domain name has no rights or legitimate interests in the domain name, AND
(3) The domain name has been registered, and is being used, in bad faith
Notice: The UDRP ONLY governs disputes about "bad faith" Evidence of "Bad Faith" "Bad faith" is the crux of a UDRP claim
(1) Circumstances showing that you registered/acquired the domain name primarily to sell, rent, or otherwise transfer the domain nam registrant to (a) the complainant, who is the owner of the trademark/service mark, or (b) a competitor, for much more than it cost to register the domain name, OR
(2) You registered the domain name primarily to prevent the TM/SM owner from reflecting the mark in a corresponding domain name (provided that you have engaged in a pattern of doing so), OR
(3) You have registered the domain name primarily to disrupt the business of a competitor, OR
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(4) You have intentionally tried to attract internet users, for commercial gain, by creating a likelihood of confusion
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Madonna Ciccone p.k.a. Madonna v. Dan Parisi and "madonna.com" (WIPO Admin Panel Decision 2000) (p. 611) Facts Complainant is Madonna -- the singer. She has a US TM for MADONNA for entertainment services and related goods Respondent makes websites. Around 1998, he registered madonna.com for $20,000 He registered the trademark Madonna in Tunisia; then started operating an "adult entertainment portal site" Resp also tried to offer to transfer the domain name to a hospital (for non-commercial purposes) Madonna filed UDRP action Issue Can Madonna establish bad faith? Rule 3 elements Identical/confusingly similar Resp had no legit interest Domain Registered/used in bad faith Held Yes -- Madonna has satisfied the elements Analysis Confusingly similar --> domain is identical to Madonna's TM No legit rights Respondent registered the site for a porn site, but failed to establish that he has a bona fide offering of goods or services. give a reasonable explanation why he chose madonna.com (as opposed to anything else). Nothing in the record supports a conslusion that Respondent used the term Madonna in good faith, based on its ordinary dictionary meaning The fact that respondent filed for a TM in Tunisia does not give him legitimate rights in America, in good faith (see p. 614). Respondent admits that he registered the TM in Tunisia to protect his interests in the domain name (not e.g. to do business in Tunisia with the Madonna TM) The offered transfer to a hospital does not constitute good faith (even though the hospital is named Madonna Hospital, after the religous image called "Madonna"). Evidence shows that the negotiations began AFTER Complainant filed her complaint Bad faith registration and use Respondent is clearly trying to attract users for commercial gain, by using the Madonna name
Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club (Admin Panel Decision 2001) (p. 616) Facts Complainant is Bruce Springsteen Domain is brucespringsteen.com -- registered by Burgar in 1996.
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Burgar owns 1500 sites, many of which point to his own site, "celebrity1000.com" Issue Bad faith on Burgar's part? Held Bad faith NOT found Rule Same UDRP 3-point test Analysis Confusingly similar Yes -- although, there is no registered TM in the name "Bruce Springsteen", nor is it proven that Springsteen's name achieved secondary meaning (for common law TM rights), still -- the domain name is identical But! Burgar has legit rights in domain name Springsteen fails to meet prong 2 (i.e. respondent DID have legit interest in domain) An internet search of "Bruce Springsteen" returns thousands of hits -- internet users know that not all are "official" sites Thus, it is hard to say the domain name in question is "misleading" Respondent's conduct does not give rise to an inference of commercial intent No bad faith Burgar cannot be said to have tried to sell the domain name (i.e. not trying to troll) There are many websites that include "bruce springsteen" in some fashion -- i.e. no prevention of using the mark Burgar did not attempt to block springsteen from getting other TLDs, such as .org, .net, etc Burgar has no been shown to be blocking the business of Bruce Springsteen
McGrady Slides (UDRP) Procedural Aspects of the UDRP [1] The Complaint [2] Review of the Complaint for Formalities [3] Communication of the Complaint to Respondent [4] The Response [5] Additional Submissions and Early Termination [6] The Panel [7] Decisions [8] Post Decision Duties Substantive Aspects of the UDRP [1] The Domain Must Be Identical or Confusingly Similar to a Mark in Which Complaint Has Rights
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[2] The Respondent Must Have No Rights Or Legitimate Interests In The Domain Name (UDRP Policy 4a.(ii)) [3] The Domain Name Must Be Registered and Used In Bad Faith Claims outside the Scope of the Policy [1] Breach of Contract [2] Breakdown in Business Relationship [3] Claims Against Former Employees [4] Claims Against Former Franchisees and the Franchisee's Vendors [5] Liens Against the Domain Name [6] Competing Trademark Claims [7] Copyright Infringement Claims [8] Defamation Against a Person [9] Bad Faith Renewal [10] Politicians' Names
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04 Trademarks and Geographical Indications

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