Life of a national/EU trade mark ... in a map

Is trade mark law difficult? 

Usually, the response that one gets (with a serious/defeated tone) when asking this question is: "Yes because of the Court of Justice of the European Union that has added all those trade mark functions".

But apparently trade mark law is difficult in general, and many students (undergraduate law students I have at Southampton) confess that they find it challenging to get an idea of what, in general and at the very outset, the "life" of a trade mark law may be about.

I thus thought of preparing a conceptual map that could help my students get a clearer picture of what events may occur in the life of a national EU trade mark, starting from the notion of "sign" to registration and anything after that, ie infringement, invalidity, revocation, etc.

The map is of course a general one, and any feedback from IPKat readers on how to improve it is very welcome!

***


* Vd Article 3 of Directive 2015/2436 (deadline for national transpositions of this provision is 14 January 2019) and Article 4 of the EU Trade Mark Regulation as amended by Regulation 2015/2424 (this provision will enter into force on 1 October 2017).

** These can consist of attempts to register:
  • Identical signs for identical goods/services;
  • Identical signs for similar goods/services where there is a likelihood of confusion, including association;
  • Similar signs for identical/similar goods/services where there is a likelihood of confusion, including association;
  • Identical/similar signs for dissimilar goods/services where earlier mark has a reputation and registration of the later mark would take unfair advantage of its repute/tarnish its repute/dilute (blur) its distinctive character.

*** See here.

**** Due to:
  • Non-use within 5 years’ limit;
  • Use suspended for non-interrupted period of 5 years;
  • TM has become generic;
  • TM used to mislead consumers.

[Originally published on The IPKat on 11 February 2016]

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