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Trademarks

Law Review

Editor
Jonathan Clegg

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© 2017 Law Business Research Ltd


Trademarks
Law Review
First Edition

Reproduced with permission from Law Business Research Ltd


This article was first published in December 2017
For further information please contact Nick.Barette@thelawreviews.co.uk

Editor
Jonathan Clegg

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© 2017 Law Business Research Ltd


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ACKNOWLEDGEMENTS

The publisher acknowledges and thanks the following law firms for their learned assistance
throughout the preparation of this book:

ARMENGAUD-GUERLAIN

BAKER MCKENZIE

BIRD & BIRD LLP

CHRISTOS CHRISSANTHIS & PARTNERS

CLEVELAND SCOTT YORK

ECKERT SEAMANS CHERIN & MELLOTT, LLC

ELZABURU

GORODISSKY & PARTNERS

LUNDGRENS

NORTON ROSE FULBRIGHT

O’CONOR & POWER

PETILLION

SALOMONE SANSONE

TREVISAN & CUONZO AVVOCATI

VEIRANO ADVOGADOS

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CONTENTS

EDITOR’S PREFACE�������������������������������������������������������������������������������������������������������������������������������������� v
Jonathan Clegg

Chapter 1 ARGENTINA �����������������������������������������������������������������������������������������������������������������������1


Santiago R O’Conor and Agustin Castro

Chapter 2 AUSTRALIA �������������������������������������������������������������������������������������������������������������������������7


Frances Drummond and Sophie Lees

Chapter 3 BELGIUM���������������������������������������������������������������������������������������������������������������������������18
Flip Petillion, Jan Janssen, Diégo Noesen and Alexander Heirwegh

Chapter 4 BRAZIL �������������������������������������������������������������������������������������������������������������������������������29


Mauricio Maleck Coutinho

Chapter 5 DENMARK�������������������������������������������������������������������������������������������������������������������������42
Jakob Krag Nielsen and Søren Danelund Reipurth

Chapter 6 EUROPEAN UNION OVERVIEW���������������������������������������������������������������������������������55


Christos Chrissanthis, Xenia Chardalia and Antonia Vasilogamvrou

Chapter 7 FRANCE �����������������������������������������������������������������������������������������������������������������������������78


Catherine Mateu

Chapter 8 GERMANY ������������������������������������������������������������������������������������������������������������������������89


Richard Dissmann

Chapter 9 GREECE �����������������������������������������������������������������������������������������������������������������������������96


Christos Chrissanthis, Xenia Chardalia and Antonia Vasilogamvrou

Chapter 10 ITALY���������������������������������������������������������������������������������������������������������������������������������118
Julia Holden and Giacomo Desimio

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Contents

Chapter 11 MALTA ������������������������������������������������������������������������������������������������������������������������������130


Luigi A Sansone

Chapter 12 NETHERLANDS�������������������������������������������������������������������������������������������������������������138
Steffen Hagen and Ischa Gobius du Sart

Chapter 13 RUSSIA������������������������������������������������������������������������������������������������������������������������������147
Alexander Nesterov, Sergey Medvedev and Ilya Goryachev

Chapter 14 SPAIN ��������������������������������������������������������������������������������������������������������������������������������158


Marta Rodríguez and Patricia García

Chapter 15 UNITED KINGDOM�����������������������������������������������������������������������������������������������������169


Peter Houlihan

Chapter 16 UNITED STATES������������������������������������������������������������������������������������������������������������184


Roberta Jacobs-Meadway

Appendix 1 ABOUT THE AUTHORS ����������������������������������������������������������������������������������������������195


Appendix 2 CONTRIBUTING LAW FIRMS’ CONTACT DETAILS �����������������������������������������203

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EDITOR’S PREFACE

I am very pleased to be able to introduce this new title from the long-established Law Review
series, dedicated to issues around trademark law. Its objective is an ambitious one: to provide
an annual snapshot of the law in this area across a broad range of jurisdictions, not only
summarising key legal provisions but also examining recent developments and trends coming
from the courts, and identifying areas of expected legal activity and legislative change going
forward.
To this end, we have invited a geographically diverse group of leading trademark
practitioners each to provide a chapter of commentary on their own jurisdiction. The broad
structure of each chapter is similar, allowing for clear points of comparison, while leaving
enough space for issues of particular relevance to a given country to be explored. Our authors
have therefore all struck a balance between conveying the key elements of the trademark
landscape in their respective countries, and giving a flavour of the current and commercially
active issues they face. The former must necessarily be concise – this book does not in any
sense aim to provide an exhaustive analysis – but each author has been encouraged to explore
the latter with appropriate weight depending on what has been happening recently in his or
her country.
The commercial importance of trademarks to the business community continues to
grow, and the tools available for securing international protection (for example, the European
Union Trademark system (EUTM) and international registration under the Madrid Protocol)
are still improving and providing businesses with ever broader choices in how to develop
effective international protection. For many years, there has been considerable harmonisation
of trademark laws and practices across many jurisdictions, most obviously in the EU but also
in other countries that have adopted new trademark laws that closely reflect the EU model.
While harmonisation continues to be the direction of travel in some quarters, there are still
many significant differences in the legal treatment of trademarks when viewed globally.
It goes without saying that the online environment, including social media platforms,
continues to grow as a dominant force in the business world. This is reflected in a significant
increase in trademark (and related) law suits around the world, whether relating to key word
advertising, metatags, ‘traditional’ trademark infringement, unfair competition, copyright
or a myriad of other legal issues. At the most fundamental level, the only mechanism for
tackling legal issues that arise on the internet is on a jurisdiction-by-jurisdiction basis, but
this is heavily at odds with the internet operating without reference to geographical borders.
So the areas of trademark law that remain far from harmonised can dramatically increase
the complexity of tackling determined international infringers. Some of these issues come
through in this publication: readers will note the many references to recent and pending legal

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Preface

actions surrounding the internet and social media, and the different treatment some issues
receive in courts across different jurisdictions is clear to see.
The continuing efforts to increase the degree of substantive and procedural
harmonisation internationally in the trademark arena are therefore certainly in the interests
of the business community, and worth pursuing.
There are many other issues dealt with in the chapters of this book which are not
focused on the internet, including parallel imports, registering and enforcing non-traditional
trademarks, counterfeit products, and the interplay between trademarks, company names
and domain names. The nature of the publication is such that not all these areas are addressed
in every chapter: they arise in jurisdictions where they have been the subject of recent legal
scrutiny and are therefore current issues.
Our hope is that readers will find this book a valuable resource and that – since its
content is up to date, business-focused and in the form of a snapshot of each jurisdiction –
one which our colleagues in the trademark field will want to consult regularly.

Jonathan Clegg
Cleveland Scott York
London
November 2017

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Chapter 1

ARGENTINA

Santiago R O’Conor and Agustin Castro1

I OVERVIEW
The trademark registration procedure in Argentina begins with the filing of an application
with the Trademark Office, a department within the National Institute of Industrial Property
(INPI). Once the trademark application is filed, the Trademark Office conducts a formal
examination to determine that the filing requirements are complete and adequate. If they are,
the trademark application will be published once only in the Trademarks Bulletin. Once the
application has been filed, third parties have 30 working days to file an opposition.
When any oppositions have been overcome (or if no opposition is filed by third
parties), the Trademark Office will carry out a substantive examination to determine whether
the trademark application shall mature into registration.
After this last examination, the Trademark Office will issue a certificate of registration,
which will be valid for 10 years, and which can be renewed for an identical term.
If an opposition to the trademark application is filed by a third party, the applicant has
one year in which to obtain the amicable withdrawal of the objection through negotiations,
which generally consist of restrictions or exclusions of the products or services for which the
trademark application has been filed, and the issuance of a letter of undertaking, if necessary.
In the event that the parties do not achieve an amicable agreement, in order to keep the
trademark application in force, the applicant needs to call for a mandatory pretrial mediation
hearing before the filing of an action with the federal courts so as to declare the opposition
to be ill-founded.

II LEGAL FRAMEWORK
i Legislation
The relevant Argentinean legislation is the following.
• Trademark Law No. 22.362 of 26 December 1980;
• Trademark Law Regulatory Decree No. 558/1981;
• the Paris Convention for the Protection of Industrial Property (Stockholm Act,
Articles  13-30, approved by Law No. 223195 of 17 March 1980, and the Lisbon
Agreement, approved by Law No. 17.011 of 10 November 1966); and
• the World Trade Organization TRIPS Agreement, approved by Law No. 24.425 of
7 December 1994.

1 Santiago R O’Conor is a managing partner and attorney at law and Agustin Castro is an associate-attorney
at law at O’Conor & Power.

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Argentina

ii Authorities
The main body responsible for the trademark regime in Argentina is the INPI, which is
in charge of the protection of industrial property rights, including trademarks, patents,
industrial models and designs, and transfers of technology protection.
The General Inspectorate of Justice (IGJ) has the function of supervising the majority
of companies limited by shares and limited liability companies, foreign companies that carry
out normal exercise in the country of acts included in its corporate purpose, companies that
carry out capitalisation and savings operations, and civil associations and foundations, insofar
as they establish their legal domicile in the City of Buenos Aires. The IGJ records in the public
registry the details required by law of shareholding companies, non-shareholding companies,
companies incorporated abroad, civil associations and foundations. It is also responsible for
the protection of company names.
The Dirección Nacional del Derecho de Autor (DNDA) is the governmental body in
charge of copyright protection.
The Network Information Center Argentina (NIC.ar) is in charge of the domain
name registry and ensures the functioning of the domain name system for the country code
top-level domain (ccTLD) .ar.

iii Substantive law


The legal basis for the protection of trademarks is to identify products and services and
provide consumers with information about these and their origin.
In Argentina it is not mandatory to register a trademark; however, the exclusive right on
a trademark is acquired only through its registration with the Trademark Office.
The rights that the registration of a trademark confers in Argentina are as follows:
a ownership of the trademark (in relation to the products or services covered by the
registration);
b the right to use the trademark exclusively;
c the right to assign ownership of the trademark to third parties;
d the right to license the use, exclusively or not, in favour of third parties;
e the right to prevent unauthorised third parties from using the trademark;
f the right to oppose registration at the Trademark Office of trademarks confusingly
similar; and
g the right to request to the Argentinean competent courts the nullity of later trademark
applications that are confusable with the trademark that is already registered.

The Argentinean legal system also recognises as the holder of a domain name a user who
obtains registration at NIC.ar. This gives the user ownership of the domain name and grants
the right to prevent any other user from registering an identical domain name.

III REGISTRATION OF MARKS


i Inherent registrability
After having filed the application, the Trademark Office issues a preliminary report, accepting
(or not) the application for publication purposes. The application will be declared abandoned
should there be a failure to file a timely response to formal objections. If the Trademark Office
finds that the legal formalities have been complied with, it will publish the application for
one day only in the Trademarks Bulletin.

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Argentina

Oppositions to the registration of a trademark must be filed at the Trademark Office


within 30 working days of publication of the trademark.

ii Prior rights
Priority must be claimed by submitting a separate application form at the same time as filing
the trademark application. A non-legalised certified copy of the priority document, with its
public translation, must be filed within 90 working days of the filing date.

iii Inter partes proceedings


As mentioned in Section III.i., oppositions to the registration of a trademark must be filed
at the Trademark Office within 30 working days of publication of the trademark in the
Trademarks Bulletin.
The trademark applicant shall be given formal notice of any oppositions filed by third
parties and of any official objections that may have been raised.
When one year has elapsed after these notifications, the application shall be declared
abandoned if:
a the applicant and the opponent have failed to reach an amicable settlement, and the
applicant has not called for pretrial mediation and filed a court action to have the
opposition removed; or
b the applicant has not responded to any requests by the Trademark Office for further
information or documents.

A court action to have the opposition set aside shall be brought before the Trademark Office,
which will forward the bill of complaint to the Federal Court in Civil and Commercial
Matters of the City of Buenos Aires. The case shall be tried in accordance with the rules for
ordinary proceedings.
When an opposition has been filed, the applicant and opponent may, by common
consent, waive judicial action and communicate this to the Trademark Office within one year
of formal notifications.
Once a decision granting registration has been made, the corresponding certificate shall
be issued to the applicant.

iv Appeals
Decisions refusing registration are subject to appeal to the Civil and Commercial Federal
Chamber of Appeals. The appeal shall be handled in accordance with the rules for ordinary
proceedings and must be logged before the INPI within 30 working days of notification of
the adverse decision.
If this action is not brought within the established period, the trademark application
shall be declared abandoned.

IV CIVIL LITIGATION
i Forums
As already stated, trademark infringement lawsuits in Argentina fall within the jurisdiction
of federal justice. Both civil and commercial actions can be filed by the trademark owner.

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ii Pre-action conduct
Before instituting a court action, it is necessary to comply with a mandatory pretrial mediation
process. However, this is not necessary when filing a request for a preliminary injunction, for
example in a counterfeiting case.

Causes of action
Article 4 of the Trademark Law No. 22.362 states that the ‘property of the trademark and its
exclusivity of use shall be obtained through registration’. Thus, the owner of a trademark can
defend it from the following actions in Argentina.
• Counterfeiting: understood as the exact reproduction of the registered trademark.
• Fraudulent imitation: understood as the action of copying a registered trademark
causing confusion for consumers.
• Use of goods or services that are counterfeit or fraudulently imitated or belonging to a
third party, without authorisation.
• The sale or commercialisation of a trademark that is counterfeit or fraudulently imitated
or belonging to a third party, without authorisation.
• The sale or commercialisation of products and services by including a trademark that is
counterfeit or fraudulently imitated.

iii Conduct of proceedings


It is difficult for the owner of a trademark to prove the real damage caused by the
commercialisation of a counterfeit product or service. To that end, the judge will have to
establish the causal relationship of the sale of the counterfeit product or service, and analyse
the possible award of damages.
The award of damages may not be requested if three years have elapsed from the
moment the counterfeiting took place, or one year after the counterfeiting was known.
Regarding the amount of the claim, it was stated in the case of Ferrum S.A. de Cerámica
y Metalurgia v. Derpla S.A., Sala III, 6 June 2010, that the injured party can request that the
amount of the claim can be fixed to whatever is shown by the evidence. (Although the case
refers to an industrial model, the ruling can also be applied to trademark conflicts.)

iv Remedies
The Argentinean legal system states that anyone who causes damage must repair it. This also
applies to trademark matters.
In order to obtain a damages award, the judge will have to evaluate the circumstances
at the time the infringement took place, including the nature of the infringing products, the
characteristics of the consumers, the extent of the owner’s income from sales, the reputation
of the owner’s trademark, and the money invested in advertising, among other things.
Damage awards in trademark cases are made by payment of an amount of money to
the damaged party.

V OTHER ENFORCEMENT PROCEEDINGS


Besides the award of damages above-mentioned, the owner of a trademark may file an action
for recovery of ownership with the aim of regaining control of the trademark.

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In cases of piracy, a nullity action is more appropriate, that is to say the registration of
a pirated trademark would be ineffective. Nevertheless, the owner of the genuine trademark
may choose between an action for recovery of ownership, as mentioned in the preceding
paragraph, or a nullity action.
The counterfeiting of trademarks is punishable by a maximum of two years in prison,
although a jail sentence is unlikely unless other criminal offences can be proven. However,
criminal offences are common, since trademark counterfeiting usually involves tax evasion,
money laundering and illicit association.
When a trademark owner wishes to stop counterfeit goods, he or she must apply to the
criminal courts. However, companies normally also want to be awarded damages to cover
expenses incurred, which must be sought in the civil courts. A civil action must be filed,
and if the damages are sufficiently high, this may serve as a deterrent to anyone considering
committing similar crimes.
It is important to mention that the Argentinean tax authorities have a Customs Alert
System, consisting of a trademark pre-emptive information system that identifies at the time
of registration of a destination to the importers or exporters who do not hold intellectual
property (IP) rights to a particular merchandise, and warn the holders to identify whether
the merchandise is counterfeit.

VI RECENT AND PENDING CASES


On 10 December 2014, in Bagley Argentina S.A. v. Dilexis S.A., Division II of the Civil
and Commercial Federal Court of Appeals ruled that the shape of the Argentinean cookie
trademark SONRISAS (meaning ‘smiles’), owned by Bagley Argentina SA, was enough to
order Dilexis SA to stop using the shape under its trademark DALE ALEGRIA (meaning
‘give happiness’). The Court of Appeals stated that the Sonrisas cookies, which have the shape
of a smiling face on one side, were confusingly similar to the Dale Alegría cookies, which
also have a smiling face on one side. The importance of this case is that the Court of Appeals
ruled that a smiling cookie shape was not of common use, as was argued by the defendant.
There is a case currently being prosecuted in respect of the counterfeiting of cigarette
packages. In 2015, in the city of Concordia, Province of Entre Ríos, La Tabacalera del Litoral
was accused by Massalin Particulares of counterfeiting its trademarks, illegally manufacturing
Philip Morris cigarettes and of evading tax to an amount of 1.5 million Argentine pesos.
Recently, the Supreme Court of Justice issued an important decision about an internet
case, in which a model called Carolina Valeria Gimbutas had filed two lawsuits against
Google Inc.
In the first case, she requested that Google should remove her personal data (name,
surname and personal image) from its computerised files, stating that they had been used by
the company without her prior consent. She also claimed that Google had linked her name
to internet sites related to pornography, which had damaged her image. She also required
that Google should cease using images of her in the image finder of the website without her
authorisation.
The second cause filed against Google was for the plaintiff to seek compensation in the
form of damages for the linking of her name to websites with pornographic and prostitution
content, in violation of her personal rights to name, honour and privacy. She also claimed
for the reproduction, diffusion and commercial use of her image, made without her consent.

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The Court of Appeal upheld the judgment of first instance, which had rejected both
claims on the grounds that the plaintiff had an extraordinary appeal heard by the Supreme
Court, which had been granted.
Thus, on 12 September 2017, the Supreme Court of Justice ruled in favour of Google
Inc, arguing that under the operating mode of the Google image search, it could not be
concluded that the defendant was responsible for damages claimed by the model, as Google
does not ‘capture’, ‘reproduce’ or ‘put into commerce’ images, but simply facilitate public
internet access to images ‘captured’, ‘reproduced’ or ‘put into commerce’ by others.
Therefore, the rights to an image, although it is expressly protected by the Argentinean
Constitution and international agreements, were not violated by Google, since according to
the Court, Google fulfils a ‘link function’ for content that has been published or uploaded
to the internet by third parties. The defendant was therefore not responsible for the results
of searches carried out on its website, since the same content is available on other websites,
and Google Inc is merely an intermediary between the public user of the internet and other
websites.

VII OUTLOOK
There is a discussion within the Argentinean legal community about the award of damages
regarding the use of non-authorised trademark rights. In the past 10 years, courts have
started to apply an objective proof of damage when a non-authorised use of a trademark
is established. They find this interpretation to be a useful deterrent to the counterfeiting of
trademarks.
The Trademark Office recently executed a technical cooperation agreement with the
United States Patent and Trademark Office (USPTO). This memorandum includes the
training and exchange of experts from both offices to evaluate the best IP practices currently
in use.
The Trademark Office has also developed a new management system and the survey
of internal work processes carried out in all areas of INPI. This involves reviewing all
administrative procedures and circuits with the aim of reducing bureaucracy and simplifying
the processes of all industrial property rights applications, and with achieving the goal of
INPI being modern and agile.
In respect of domain names, the Network Information Center Argentina
(NIC-Argentina) implemented a new platform for managing .ar domain names, which was
implemented on 4 July 2016. In order to register, administer or dispute .ar extensions, it will
now be necessary to register with the Federal Administration of Public Incomes (AFIP), the
federal revenue service.
Registrants should enter their tax code and password on the AFIP website and then
choose NIC-Argentina from the menu. The new platform will validate the information using
the AFIP database.

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Chapter 2

AUSTRALIA

Frances Drummond and Sophie Lees1

I OVERVIEW
Australian trademark law is largely based on one key statute, the Trade Marks Act 1995
(Cth) (TMA). This legislative framework provides the foundations for general trademark
protection in Australia, in addition to establishing certain specialised forms of trademark
protection (such as certification marks).
Australian trademark law has also developed through judicial precedent, particularly in
relation to passing off (a common law cause of action in Australia) and is further supplemented
by consumer protection legislation (specifically, a cause of action for misleading and deceptive
conduct). This chapter provides an overview of Australian trademark law and describes in
detail the process for registering and enforcing a trademark in Australia in both a civil and a
criminal context.
There have been some important cases relating to trademark law and misleading and
deceptive conduct during the past 12 months, a number of which are discussed below. The
most recent of these cases, the Moroccanoil v. Aldi 2 decision of the Federal Court of Australia
(FCA), considered in detail the relevance of intention in relation to misleading and deceptive
conduct. The findings of the FCA are described in Section VI.
In 2016, the Australian Productivity Commission (PC) reported on its examination of
the Australian intellectual property (IP) system, and in that report made a number of reform
recommendations to the government. Following the recent response to the PC Report by
the government, it seems very likely that the Australian trademark system will experience
some change during the next 12 to 18 months. The salient features of the PC Report (from a
trademark perspective) and the government’s response are explored in Section VII.

1 Frances Drummond is a partner and Sophie Lees is a senior associate of Norton Rose Fulbright.
The authors would like to thank Isobel Taylor, associate of Norton Rose Fulbright, for her assistance in
preparing this chapter.
2 Moroccanoil Israel Ltd (MIL) v. Aldi Foods Pty Ltd [2017] FCA 823.

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II LEGAL FRAMEWORK
i Legislation
The statutory framework for trademarks in Australia is the TMA, which was enacted, among
other things, to comply with Australia’s obligations under TRIPS3 and to address the findings
of a government Working Party Report on trademark law reform.4
International trademark treaties do not have direct effect in Australian law. TRIPS
and the Paris Convention5 form part of the trademark legislative framework only to the
extent that they have been implemented by national legislation. Generally, implementation
of international conventions has been effected through the TMA. For example, Section 29 of
the TMA provides a right of priority in Australia for trademark applications that have been
filed in another Paris Convention country within the last six months.
The other international convention of particular relevance to Australian trademark
law is the Madrid Protocol.6 This created a centralised international trademark registration
system, whereby an application for a trademark may be filed in one jurisdiction and then
assessed by several national trademark offices (resulting, if successful, in a series of national
trademarks).

ii Authorities
The Trade Marks Office, which is a division of IP Australia, is responsible for trademarks
in Australia. IP Australia itself is a government agency within the Department of Industry,
Innovation and Science.
The Trade Marks Office is organised under the Registrar of Trade Marks, a role
established by the TMA.7 The Registrar of Trade Marks receives, examines and reports
on trademark applications made under the TMA and is responsible for assessing whether
a trademark application complies with the TMA.8 Other functions include determining
disputes as to the classification of goods and services, and overseeing proceedings for the
removal of a trademark from the register. Pursuant to the TMA, the Registrar of Trade Marks
also has powers to summon witnesses, receive evidence, require the production of documents,
award costs in proceedings before the Registrar and notify any person of any matter that the
Registrar considers should be brought to the person’s notice.9

3 Agreement on Trade-Related Aspects of Intellectual Property Rights, 15 April 1994, Marrakesh Agreement
Establishing the World Trade Organization, Annex 1C, 1869 UNTS 299, 33 ILM 1197 (1994).
4 Working Party to Review the Trade Marks Legislation, Recommended Changes to the Australian Trade
Marks Legislation, Department of Science and Technology (Canberra, 1992).
5 Paris Convention for the Protection of Industrial Property (as amended on 28 September 1979) 21 UST
1583, 828 UNTS 305.
6 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
(as amended on 12 November 2007), opened for signature 28 June 1989 (entered into force on
1 December 1995).
7 Trade Marks Act 1995 (Cth), Section 201.
8 Ibid., Section 31.
9 Ibid., Section 202.

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iii Substantive law


The primary statutory framework for trademarks in Australia is the TMA, as outlined above.
In addition to the general trademark protection offered under the TMA, there are legal
frameworks creating certain special categories of trademarks.
Sections 168 to 183 of the TMA provide a framework for certification marks, which
are a form of trademark used to distinguish goods or services that have been certified by the
owner of the certification mark as having a certain quality or other characteristic.
Plant varieties may be protected under the Plant Breeder’s Rights Act 1994 (Cth). The
Australian Grape and Wine Authority Act 2013 (Cth) and the Australian Grape and Wine
Regulations 1981 (Cth) set out criteria for determining whether wines are protectable as
geographical indications.
The registered trademark rights described above enjoy legal protection within statutory
frameworks. There is not an equivalent statutory framework to protect unregistered
trademarks, neither is there a specific law in Australia to prohibit unfair competition.
However, the common law tort of passing off (which has its origins in English law) and the
statutory cause of action of misleading and deceptive conduct found in Section 18 of the
Australian Consumer Law10 (ACL) may provide relevant actions.
Business names may be registered on the Australian Business Names Register, which is
administered by the Australian Securities and Investments Commission (ASIC). The Business
Names Registration Act 2011 (Cth) and the Business Names Registration Regulations 2011
(Cth) provide the legal framework for business name registrations in Australia. This does not
afford any proprietary right over the registered business name but is a regulatory requirement.
Domain name policy in Australia is administered by .au Domain Administration Ltd
(auDA) pursuant to a government appointment. Domain name registrations in Australia are
subject to auDA’s policies rather than a legal framework. Again, as discussed below, licences
in respect of domain names do not afford a proprietary right over the names unless those
domain names are used as trademarks.

III REGISTRATION OF MARKS


Trademark applications in Australia are usually completed online and the government cost is
calculated per class, ranging from about A$250 to A$480 per class (depending on the method
chosen and the type of mark). From October 2016 separate fees that had previously been
payable upon registration of the mark (in addition to application fees payable on application)
were abolished by IP Australia. Trademark registrations must be renewed every 10 years, at a
government cost of around A$400 per class.
Applications are typically examined within three to four months (although it is possible
to apply for an expedited examination). The examiner will consider the application to confirm
that it meets the TMA registrability requirements and all relevant formalities. If accepted by
the examiner, the trademark will be advertised and open for opposition for two months. If
no oppositions are received, the mark will proceed to registration with the priority date being
the date of the application. If the application receives an adverse examination report, the
applicant has 15 months from the date of the report for the application to be accepted (that

10 Competition and Consumer Act 2010 (Cth), Schedule 2 (Australian Consumer Law).

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is, to respond to the examiner’s objections and have the examiner consider this response and
reconsider the application in light of the response), with extensions of three or six months
available upon payment of additional fees.
As Australia is a signatory to the Madrid Protocol, applicants for or owners of registered
trademarks in Australia can use their applications or registrations as a basis to apply for
international protection in any of the Madrid Protocol contracting countries. Applications
are assessed by the relevant national offices and, if successful, marks are granted effectively
the same protection in the chosen countries as they have in Australia. As with national
marks, international trademark applications may be filed through IP Australia. Conversely,
trademark owners overseas can designate Australia in their Madrid Protocol international
trademark applications. These applications are assessed by the Trade Marks Office in Australia
in the same way as national applications and, if granted, registration gives the overseas owner
the same protection as if they had applied for a national mark in Australia. Use of the Madrid
Protocol for international filings can be significantly cheaper and easier than applying for
national trademarks in each country.
Australia is also a signatory to the Paris Convention, so that applications first filed in
Australia can be filed in another Paris Convention country within six months, claiming the
filing date from Australia. Foreign applicants can file in Australia in the same way. This means
that no Australian application can progress to registration in less than six months to allow
for priority claims.

i Inherent registrability
To be registrable under the TMA, a trademark must be a ‘sign used or intended to be used
to distinguish the goods or services dealt with or provided in the course of trade by a person’
from the goods or services provided by another person.11
The definition of a ‘sign’ in the TMA is extremely broad. A sign can be any of, or any
combination of, the following: letter, word, name, signature, numeral, device, brand heading,
label, ticket, aspect of packaging, shape, colour, sound or scent.12
To be registrable, a trademark must therefore satisfy the requirement of being capable
of distinguishing – either because it is inherently distinctive, or because it has acquired
distinctiveness through use so that in practice it serves to distinguish the goods or services of
the owner.
A note to Section 41(1) of the TMA provides that a trademark is not likely to be
inherently distinctive if it consists wholly of a sign that is used to indicate characteristics
of the goods or services or the time of production of the goods or rendering the services.
This guidance is considered in the context of the goods and services for which registration
is sought – a trademark that lacks distinctiveness for one class of registration may still be
inherently distinctive in relation to another.
The examiner will object to an application if the trademark is considered to be
descriptive or lacking distinctiveness.13 Applicants may be able to overcome this objection by
demonstrating inherent distinctiveness or by providing evidence of use to demonstrate that
the mark has acquired distinctiveness and now serves as an indicator of their organisation.14

11 Trade Marks Act 1995 (Cth), Section 17.


12 Ibid., Section 6.
13 Ibid., Section 41.
14 Ibid.

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It is possible to register a trademark for a domain name but to do so the trademark


owner would need to overcome the distinctiveness hurdles described above. Domain
names are unlikely to be inherently distinctive and instead must acquire distinctiveness so
as to distinguish the goods or services offered under that domain as originating from an
organisation. Even if the composite parts of a domain name would otherwise be descriptive
(such as ‘realestate.com.au’), if the domain name has acquired a secondary meaning so
as to identify goods or services as originating from an organisation it has in fact acquired
distinctiveness and may be registrable as a trademark.15

ii Prior rights
The examiner will also raise an objection if the trademark is considered substantially identical
or deceptively similar to an earlier registered or pending trademark, and covers similar or
closely related goods or services.16 Applicants may be able to overcome such objections by
demonstrating honest concurrent use, prior use dating from before the priority date of the
cited mark, or some other circumstances that satisfy the examiner that the mark should be
registered.17

iii Inter partes proceedings


Once an application has been advertised, third parties can oppose the registration of a
trademark on various grounds, including:
• the grounds for rejection of an application discussed above, being a lack of distinctiveness
or the existence of prior rights;
• that the applicant is not the rightful owner of the trademark, is not intending to use the
mark, or has made the application in bad faith; and
• that the trademark is similar to another (unregistered) mark that has acquired a
reputation in Australia, such that the registration would be likely to cause confusion
among consumers.18

Third parties may also write to the Registrar seeking revocation of acceptance of a trademark
application if they consider that IP Australia has made an error in accepting an application,
usually because of a prior right missed in IP Australia’s search. It is at IP Australia’s discretion
whether it revokes acceptance and such requests are rarely granted. Third parties can also
apply to remove a registered mark if:
• the owner has not used the mark for a continuous period of three years prior to the date
of the application;
• the owner did not have any intention to use the mark when it was registered; or
• the owner has not used the mark in good faith.19

If the owner of the mark wants to retain its registration, it must oppose the removal claim.
The inter partes proceedings described above (except revocation) are heard by a Hearing
Officer from the Trade Marks Office, to whom both parties provide written submissions

15 REA Group Ltd v. Real Estate 1 Ltd [2013] FCA 559, paragraphs 106–110.
16 Trade Marks Act 1995 (Cth), Section 44.
17 Ibid., Section 44.
18 Ibid., Part 5, Division 2.
19 Ibid., Section 92.

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and evidence in advance of the hearing and verbal submissions on the day of the hearing,
although it is possible to have an opposition decided based on written submissions alone. The
Officer will provide a written decision and reasons within three months.

iv Appeals
Either party may appeal to the FCA or the Federal Circuit Court (FCC) within 21 days
of the decision. Appeal hearings are de novo, so that new evidence and arguments can be
introduced.20

IV CIVIL LITIGATION
Common causes of action for civil litigation are trademark infringement under the TMA, the
common law tort of passing off, and for misleading and deceptive conduct under the ACL.

i Forums
The FCA, FCC and supreme courts of the various states and territories can all hear claims
regarding trademark infringement, passing off and misleading and deceptive conduct;
however, in practice, these claims are typically brought in the FCA.21 Intellectual property
is one of nine specialised national practice areas for the purposes of FCA hearings, and
trademarks is a sub-area within the intellectual property national practice area.
The Productivity Commission’s Inquiry Report on IP Arrangements (as referred to in
Section I),22 released in December 2016, noted that few IP cases are currently initiated in the
FCC due to a lack of judges with IP experience. The PC Report recommended introducing
a specialist list in the FCC encompassing features similar to those of the UK Intellectual
Property Enterprise Court, including minimising court appearances, limiting the length of
trials, caps on costs and damages, and a small claims procedure suitable for self-represented
litigants.
In June 2017, the FCC announced a new pilot programme and practice direction for
its Melbourne Registry to streamline the management of IP matters and increase the visibility
of the FCC as an alternative to the FCA. The FCC has appointed three specialist IP judges,
who will implement strict case management of proceedings, including the trial itself which is
limited to two days, to ensure an efficient use of the court’s time and resources.

ii Pre-action dispute resolution


Alternative dispute resolution (ADR), including mediation, arbitration and expert
determination, is strongly encouraged as an alternative to litigation. It is a requirement prior
to launching proceedings in the FCA or the FCC that proper attempts have been made to
resolve a dispute between the parties.23
IP Australia recently launched the IP Mediation Referral Service, which aims to
provide small and medium-sized enterprises (SMEs) with access to qualified, accredited

20 Registrar of Trade Marks v. Woolworths (1999) 45 IPR 411.


21 Trade Marks Act 1995 (Cth), Section 190; Competition and Consumer Act 2010 (Cth) ss 138, 138A,
138B.
22 Productivity Commission 2016, Intellectual Property Arrangements, Inquiry Report No. 78, Canberra.
23 Civil Dispute Resolution Act 2011 (Cth), Section 6.

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specialist mediators to resolve their disputes out of court. In its response to the PC Report,
the government noted that it is currently reviewing the information it provides about IP
infringement and enforcement to enable Australian businesses to take the most appropriate
action to resolve disputes, and will explore other strategies to encourage SMEs to use ADR
mechanisms.

iii Causes of action


The owner of a registered trademark can bring an infringement claim against another party
if a sign that is either identical or deceptively similar to the owner’s registered trademark is
used by the other party as a trademark.24 There are, however, numerous defences to alleged
infringement, including the use of a name or business location in good faith, descriptive use
in good faith, use in comparative advertising, and prior and continuous use.25
Trademark infringement claims are often brought in conjunction with claims for
passing off or misleading and deceptive conduct. As noted above, these causes of action
depend upon whether consumers have been, or are likely to be, misled or deceived as to the
origin of the respondent’s goods or services, incorrectly believing that they come from or
are affiliated with the applicant. Where the applicant has unregistered trademarks or suffers
misuse of company, trade, business or domain name, the applicant will have to rely on these
causes of action.
The leading authority on passing off requires a misrepresentation made in the course of
trade (1) to prospective or actual customers of goods or services supplied by the injured party;
(2) that is calculated to injure the business or goodwill of another trader; and (3) that causes
actual damage to the business or goodwill of the claimant.26
The later English authority of Reckitt & Colman27 is also applied, in which the elements
of passing off (often referred to as ‘the classic trinity’) were identified as (1) the existence of
a reputation; (2) a misrepresentation leading or likely to lead the public to believe that the
defendant’s goods are the plaintiff’s goods; and (3) damage suffered by the plaintiff as a result
of that erroneous belief.

iv Conduct of proceedings
Court proceedings in Australia are similar to other common law systems with advocates
(usually barristers) appearing in person before the courts.
For infringements requiring urgent restraint, the court has the power to order an
interim injunction ordering that the alleged infringer ceases its action immediately, pending
the outcome of the trial.
The court also has powers to require Anton Piller orders, which operate like a search
warrant allowing the applicant to search the alleged infringer’s property without notice and
to seize evidence. Generally, these are only granted in serious cases where there is sufficient
evidence that the subject of the order possesses important evidence and is likely to destroy it
or otherwise cause it to be unavailable for use.
Substantive trademark infringement proceedings are commenced by a statement of
claim. The alleged infringer then has the opportunity to reply to these claims. Following

24 Trade Marks Act 1995 (Cth), Section 120.


25 Ibid., Sections 122 and 124.
26 Erven Warnink BV v. J Townend & Sons (Hull ) Ltd (No. 1) [1979] AC 731.
27 Reckitt & Colman Products Ltd v. Borden Inc (1990) 17 IPR 1.

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this, the parties provide each other with all relevant documents in their possession by way of
discovery. Evidence in support of each aspect of the claim (including the quantum of damages)
is then provided by the applicant, often by way of written statements such as affidavits by
relevant witnesses or experts, and evidence in answer is provided by the defendant. This
evidence is likely to be tested by way of cross-examination of witnesses during a hearing, after
which the judge will rule on the facts, apply relevant law to the case and issue a judgment.
Court proceedings can be lengthy, and resolution of fully contested proceedings can take
more than a year.

v Remedies
The court can grant an injunction to restrain further infringement, passing off or engagement
in misleading or deceptive conduct, and at the option of the applicant, either damages or an
account of profits.28 As a result of recent amendments, the court also has powers under the
TMA to award additional punitive damages for trademark infringement if it considers it
appropriate to do so, having regard to matters such as the flagrancy of the infringement, the
need to deter others from similar conduct, the conduct of the infringer after the infringement
(and particular after being informed of the infringement) and any benefit the infringer has
gained as a result of the infringement.29 This power has been used in recent cases where it has
been difficult to establish actual loss or where infringement has continued following notice of
the relevant trademark owner’s rights.30

V OTHER ENFORCEMENT PROCEEDINGS


The TMA and the ACL contain various criminal offences in relation to counterfeiting, which
are brought by the Australian Federal Police or the Department of Public Prosecutions. In the
case of the ACL, the Australian Competition and Consumer Commission (ACCC) has the
power to commence proceedings. In Australia, it is a criminal offence to:
• falsify a registered trademark;
• falsely apply a registered trademark;
• alter or remove a trademark knowing it is a registered trademark;
• make a die, block, machine or instrument that can help in falsifying or removing a
trademark;
• sell, possess, distribute or import a good, knowing that the trademark has been falsified
or removed;31 and
• make certain false or misleading representations about goods or services, including in
relation to the standard, history, value, place of origin, nature or characteristics of goods
or services.32

28 Trade Marks Act 1995 (Cth), Section 126; Australian Consumer Law, Sections 232 and 236.
29 Trade Marks Act 1995 (Cth), Section 126.
30 See, for example, Halal Certification Authority Pty Limited v. Scadilone Pty Limited [2014] FCA 614 and
Vertical Leisure Limited & Anor v. Skyrunner Pty Ltd & Anor [2014] FCCA 2033.
31 Trade Marks Act 1995 (Cth), Part 14.
32 Competition and Consumer Act 2010 (Cth), Schedule 2 (Australian Consumer Law), Chapter 4.

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The penalties for these criminal offences may include imprisonment or a fine. However, in
practice, criminal proceedings are rarely brought and are typically confined to cases involving
organised crime or public health and safety issues.
The TMA also contains a scheme allowing the Australian Customs Service (Customs)
to seize imported shipments of goods suspected of infringing registered trademarks.33 Rights
holders can lodge a notice of objection with Customs listing the marks they would like to
protect, and Customs then seizes goods imported into Australia bearing these marks if they
are suspected of being counterfeit. The importer has a short time to provide grounds for
releasing the goods, otherwise they are automatically forfeited to Customs and ultimately
destroyed.

VI RECENT AND PENDING CASES


i Developments in misleading and deceptive conduct
The FCA recently handed down its judgment in the case of Moroccanoil Israel Ltd (MIL)
v. Aldi Foods Pty Ltd.34 In this case, extensive evidence was presented about the similarities
between the overall appearance or ‘get-up’ of Aldi’s argan oil range and MIL’s hair products,
with MIL alleging that these similarities constituted misleading and deceptive conduct. There
were also separate, but related, trademark infringement claims. Aldi argued that it intended
to create its own argan oil product range, which would inevitably feature similarities to other
products on the market because those features constituted cues that consumers identified
with the relevant product category or conveyed information in relation to the products’
ingredients. The court held that consumers were unlikely to be misled by any similarities,
in large part because of the different trade channels involved and Aldi’s well-known business
model.
There have been many decisions pursuant to the ACL relating to the role of intention.
While intention is not necessary for a finding of misleading and deceptive conduct under
the ACL, it can in some cases be persuasive or of interest to the decision maker. The latest
decision by the FCA (above) reinforces that even if there is some form of intention (in this
case, intention to reference another person’s product), it will not give rise to a finding of
misleading and deceptive conduct if the court does not find that consumers are likely to
actually be misled or deceived.

ii Trademark ownership and assignment


The Full Court of the FCA in Pham Global Pty Ltd v. Insight Clinical Imaging Pty Ltd 35
confirmed that trademark applications filed in the name of a party other than the rightful
owner of the mark are invalid, and this invalidity cannot be rectified by later assignment
of the application to the rightful owner. This case highlights the importance of ensuring
applications are correct when filed, because it may not be possible to rectify errors at a
later date.

33 Trade Marks Act 1995 (Cth), Part 13.


34 [2017] FCA 823.
35 [2017] FCAFC 83.

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iii Trademark infringement in Google AdWords and website metatags


In Veda Advantage Limited v. Malouf Group Enterprises Pty Limited,36 it was held that using
a competitor’s trademark as a keyword in Google AdWords does not amount to trademark
infringement, nor it is misleading and deceptive conduct under the ACL. One of the reasons
for this decision was that the use of a keyword was not considered to be use of a trademark.
The keyword comprising the trademark is not used to distinguish the goods and services of
the AdWords purchaser from the goods and services of other uses, but rather as a marketing
tool to identify potential customers. The court highlighted that keywords are invisible to
consumers. The judgment suggests that it would be impossible for a keyword to constitute
a trademark infringement – a keyword cannot be understood to be in use to distinguish the
goods and services of one undertaking from another, when the keyword is not visible to
consumers.
By contrast, the recent decision of Accor Australia & New Zealand Hospitality Pty Ltd
v. Liv Pty Ltd 37 demonstrates that the same is not true where trademarks are inserted as
metatags into the source code of a website (which can result in the website responding to
searches for those terms in organic Google results). Drawing this distinction was justified by
the court on the basis that while the source code is not immediately visible on a website, it
is possible to reveal it by performing simple steps in an internet browser. The court came to
this decision notwithstanding that only those with technological understanding would know
how to perform these steps without further instruction and so the metatag might arguably
still be invisible to most consumers.

iv Shape trademarks
The recent case of Clipsal Australia Pty Ltd v. Clipso Electrical Pty Ltd (No. 3)38 has reinforced the
difficulty of obtaining trademark registrations for shapes. Successful shape mark registrations
include the iconic curved Coca Cola bottle and the triangular wedges of Toblerone-branded
chocolate. While shapes are registrable as trademarks under the TMA, applicants have
historically encountered difficulties in obtaining trademark registrations for shapes because it
is often held, including in relation to Clipsal’s dolly light switch at issue in these proceedings,
that a shape does not perform the essential function of a trademark – namely to identify the
goods and services as originating from the owner of the mark. Instead, the shape is seen as
merely a functional aspect of the product itself.

36 [2016] FCA 255.


37 [2017] FCAFC 56.
38 [2017] FCA 60.

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VII OUTLOOK
The coming years are likely to herald some changes to the TMA and Australian trademark
law. The government response to the PC Report was published in August 2017 and took a
positive but cautious approach to the sweeping reforms proposed in the PC Report (although
the PC Report recommendations in relation to trademarks were more conservative than the
proposals for other areas of intellectual property).
The government supports the Commission’s recommendation to reduce the grace
period from five years to three years before new trademark registrations can be challenged
for non-use to assist with decluttering the Trade Marks Register. The Commission also
recommended requiring a statement of ‘use’ or ‘intention to use’ marks at the points of
application, registration and renewal. The government supports this recommendation in
principle, and IP Australia is now expected to undertake further research to determine the
extent of clutter on the Trade Marks Register to inform the reforms.
It does not appear that the government has immediate plans to take up the PC Report’s
other recommendations in relation to trademarks, such as removing the presumption
of registrability and linking the Australian Trade Mark Search database with the business
registration portal.
Separately, IP Australia is consulting on the introduction of divisional applications
for international registrations designating Australia under the Madrid Protocol, and
consequential proposals to harmonise existing practice in Australia for dividing domestic
trademark applications to align with the new international procedures. IP Australia considers
this issue to be a high priority for implementation in 2018.

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Chapter 3

BELGIUM

Flip Petillion, Jan Janssen, Diégo Noesen and Alexander Heirwegh1

I OVERVIEW
In Belgium, interested parties file trademark registration applications with either the Benelux
Office for Intellectual Property (BOIP) or the EU Intellectual Property Office. The latter has
become more common practice because of the larger geographical coverage (in 28 countries)
of the protection and the relatively lower costs compared to the Benelux registration, which
only covers Belgium, the Netherlands and Luxembourg at a cost of one-fifth of the EU
registration. The Benelux registration system remains popular nonetheless for local commerce
and for expedited trademark registrations.
EU and Benelux trademarks are enforced locally before local Belgian courts with
exclusive jurisdiction and composed of specialised judges.

II LEGAL FRAMEWORK
i Legislation
The substantive law on intellectual property rights is codified under Book XI of the Belgian
Code of Economic Law (CEL). Article XI.163 CEL provides that the protection of trademarks
and designs is regulated in accordance with the Benelux Convention on Intellectual Property
(BCIP), which has created a common legal and protective framework for trademarks and
designs in Belgium, the Netherlands and Luxembourg.

ii Authorities
The BCIP established the BOIP and is subject to the interpretation of the Benelux Court of
Justice.
Local courts have jurisdiction in litigation related to trademarks, company names,
domain names and any other sign that may be the subject of a dispute.
Parties to a contract may call upon an arbitrator to decide upon a dispute related to
trademarks, company names, domain names and other signs. Arbitrators may decide upon
all other disputes related to the object, price and modalities of an agreement on these rights
but they cannot declare a trademark invalid. However, they may hear arguments related to
the invalidity.

1 Flip Petillion is the founder and a partner at PETILLION. Jan Janssen, Diégo Noesen and Alexander
Heirwegh are associates at the firm.

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An alternative dispute resolution (ADR) very similar to ICANN’s UDRP system2 was
introduced to handle domain name disputes in the .be domain. The system is frequently used
and involves a reimbursement programme of successful claimants as well as an appeal system.
Cases are handled by the Belgian mediation and arbitration centre (CEPANI). ICANN’s
UDRP and URS apply to other more recently implemented new gTLDs, such as .vlaanderen,
.gent and .brussels.3

iii Substantive law


Registered trademarks
Signs capable of graphic representation that are used to distinguish the goods or services of
one undertaking from those of another and that are not devoid of any distinctive character
can be protected by both EU and Benelux trademarks (Article 2.1 BCIP).
Collective marks can be obtained for signs used to distinguish one or more common
characteristics of goods or services originating from different companies using the trademark
under the control of the holder, which may not use the mark for its own goods or services
(Article 2.34 BCIP).

Unregistered and well-known marks


Even when no trademark registration exists, an entity may prevent others from using
a particular sign in relation to goods or services that may, for example, lead to consumer
confusion by presenting a claim for unfair competition or unfair commercial practices
(Article VI.104 CEL).

Company names
Company names are protected by Article 65 of the Belgian Company Code. The first person
to use a legal name has the exclusive right to use this name throughout Belgium. If another
company chooses a legal name that is identical or is so similar as to cause confusion, it may be
required to change the name and pay damages to the holder of the prior legal name.

Trade names and business names


Trade names are protected by Article 8 of the Paris Convention for the Protection of
Industrial Property, which has direct effect in Belgium. In practice, enforcement is mainly
based on Article VI.104 CEL, which prohibits unfair commercial practices. The first public
user benefits the protection of a trade name in the geographical area in which the trade name
achieved a certain degree of recognition. The scope of protection of a trade name is thus
entirely determined by the way in which this name is used. The more well-known a trade
name is, the larger its protection. Conversely, the right to use a trade name expires once it is
no longer used.

Geographical indications
Designations of origin, geographical indications and traditional speciality guarantees are
governed and protected in Belgium by Article VI.124 CEL, international treaties (such as

2 Uniform Domain-Name Dispute-Resolution Policy. See: https://www.icann.org/resources/pages/help/dndr/


udrp-en.
3 Uniform Rapid Suspension. See: https://newgtlds.icann.org/en/applicants/urs.

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Belgium

1883 Paris Convention on Intellectual Property, 1891 Madrid Agreement on Indications


of Source, 1951 Lisbon Agreement for the Protection of Appellations of Origin and 1994
TRIPS Agreement) and EU regulations 1151/2012/EU and 664/2014/EU.

Domain names
The protection of a domain name in the .be TLD or in Belgian gTLDs, such as .vlaanderen,
.gent and .brussels, are protected by the applicable rules under the Top Level Domain.

III REGISTRATION OF MARKS


i Inherent registrability
Signs capable of graphic representation that are used to distinguish the goods or services of
one undertaking from those of another and that are not devoid of any distinctive character
can be protected by both EU and Benelux trademarks (Article 2.1 BCIP).
Trademarks and collective marks are registered for a period of 10 years with effect from
the date of filing. The registration may be renewed indefinitely for subsequent periods of
10 years (Article 2.9 BCIP).
Registration of a standard application for a Benelux trademark takes approximately
three months, if there are no opposition proceedings. An applicant may also opt for an
accelerated procedure, which allows for registration of the trademark within a couple of days.
In the event of an accelerated procedure, the assessment on absolute grounds and possible
opposition will take place after the registration, which means that the registration may be
cancelled on those grounds shortly after registration.
As with the EU trademark registration procedure, the Benelux trademark registration
procedure provides the possibility for third parties to submit a pre-grant opposition.
The costs involved are as set out below:

Trademarks Application fee (1-3 classes): €240 (digital) - €276 (paper)


Fee for each additional class: €37 (digital) - €42 (paper)

Search fee (1-3 classes): €150


Fee for each additional class: €20

Renewal fee (every 10 years) (1-3 classes): €260


Fee for each additional class: €46
Collective marks Application fee (1-3 classes): €373 (digital) - €428 (paper)
Fee for each additional class: €37 (digital) - €42 (paper)

Renewal fee (every 10 years) (1-3 classes): €474


Fee for each additional class: €46

ii Prior rights
Before filing a trademark application, an applicant should check whether the chosen sign
meets the conditions for protection (distinctive character, availability and lawfulness).
Another party may already use an identical sign or prove the existence of a prior right
to a similar sign.

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iii Inter partes proceedings


Cover oppositions
An opposition against a Benelux trademark must be filed with the BOIP. Any natural or legal
person with trademark rights in Benelux may file opposition against a more recent trademark
on the following grounds:
• the applied-for trademark is identical to the opponent’s earlier trademark, and is filed
for the same goods or services;
• the applied-for trademark is identical or similar to the opponent’s earlier trademark for
the same or similar goods or services, and there exists a likelihood of confusion on the
part of the public; or
• the newer trademark can cause confusion with the opponent’s well-known trademark
within the meaning of Article 6bis of the Paris Convention.

Before arguments are exchanged between the opponent and the trademark applicant, the
BOIP will perform an admissibility check on the opposition and there will be a two-month
cooling-off period to allow parties to self-resolve the conflict. If no settlement is reached,
the opponent must submit arguments within two months of the cooling-off period. The
trademark applicant then has two months to respond or to request proof of use. If the latter
request is made, the opponent must submit proof of use within two months, after which
the trademark applicant has two months to submit a final response. The BOIP may request
additional arguments before taking a decision. The decision made by the BOIP is open for
appeal with the Brussels Court of Appeal, The Hague Court of Appeal or the Luxembourg
Court of Appeal.

Invalidity actions
After the registration of the mark, any interested party may request the invalidation of the
Benelux trademark with the national courts (the commercial court located in the district of
Brussels, Antwerp, Ghent, Liège or Mons).
Grounds for invalidation include (1) the lack of distinctive character of the trademark
and grounds similar to those for a trademark opposition; (2) registration in bad faith; and
(3) the likelihood of confusion with a well-known trademark. Depending on the ground
invoked, a three- or five-year time limit may apply to submit a request for invalidation.

Revocation actions
A party may invoke the revocation of the trademark as a result of it not being genuinely
used for a continuous period of five years, or when it has become generic because of acts or
inactivity of the holder (Article 2.26 BCIP).

Other proceedings
A party may claim for damages resulting from the unlawful use or registration of a trademark
(see Section IV).

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iv Appeals
When confronted with a refusal during the registration procedure, an applicant will receive
a notification of the intention to refuse the registration wholly or partially. Depending on
the ground for refusal, the applicant will be given the opportunity to respond and amend the
application.
The amendments can pertain both to the sign itself and to the classes of goods or
services for which registration is sought.
Failure to resolve the objections to the registration results in complete or partial refusal
of the registration. An applicant may lodge an appeal against such decision with the Brussels
Court of Appeal (comparable to The Hague Court of Appeal, in the Netherlands, and the
Luxembourg Court of Appeal).

IV CIVIL LITIGATION
i Forums
Claims are initiated before the civil court, if the defendant is not a merchant, or before the
commercial court. Courts are located in the districts of Antwerp, Ghent, Brussels, Mons
and Liège.
In opposition cases related to Benelux trademarks, a party may appeal the decisions of
the BOIP with the Brussels Court of Appeal (comparable to The Hague Court of Appeal, in
the Netherlands, and the Luxembourg Court of Appeal).

ii Pre-action conduct
Pre-trial formalities
Cease and desist letter
Except in the case of ex parte proceedings, which have an inherent surprise effect, a claimant is
expected to send a cease and desist letter, with the aim of resolving the dispute amicably prior
to initiating court proceedings. Although such an attempt to resolve disputes amicably is
mandatory, in practice it proves to be impracticable and courts give little or no attention to it.

Protective letter (Schutzschrift)


When a party suspects that a counterfeit seizure is imminent, it may request to be heard by
the competent judge by means of a protective letter. The aim of the letter is to prevent ex parte
counterfeit seizures or to limit their effects. It is common practice to send such a letter in a
sealed envelope with a request to be opened if and when an IP rights holder files a request
for counterfeit seizure.

Counterfeit seizure
When indications of an infringement or an imminent infringement exist, the holder of a
prima facie valid IP right may request in ex parte proceedings the appointment of an expert
to describe the alleged counterfeit and investigate its extent. If the IP infringement cannot
be reasonably disputed, the judge in ex parte proceedings may, upon request and after having
balanced all relevant interests, order conservative measures, which may include the seizure
and withdrawal of litigious goods from distribution channels.

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Alternatives to litigation
Courts will decline jurisdiction if parties have entered into a valid arbitration agreement to
resolve a contractual dispute. Ultimately, the court will reappear in the process as an arbitral
award will require exequatur. All requests for exequatur are handled by the court of first
instance of Brussels.
Other alternatives include mediation, expert determination and expedited arbitration.

iii Causes of action


Cover trademark infringement
For trademarks and collective marks, a person will infringe the rights of the right holder if
that person uses in the course of trade, without the owner’s consent, a sign:
• that is identical to the trademark for goods or services that are identical to those for
which the trademark is registered;
• in respect of which, because it is identical or similar to the trademark and the goods
or services covered by the trademark and the sign are identical or similar, there exists
on the part of the public a likelihood of confusion that includes the likelihood of
association with the trademark; and
• that is identical or similar to the trademark for goods or services that are not similar to
those for which the trademark is registered, where the trademark enjoys a reputation
in the Benelux territory, where use of the sign without due cause would take unfair
advantage of or be detrimental to the distinctive character or the repute of the
trademark. (Article 2.20 BCIP)

Also, in the Benelux territory, a sign may not be used for purposes other than those of
distinguishing the goods or services, where use of the sign without due cause would take unfair
advantage of or be detrimental to the distinctive character or the repute of the trademark. The
sign must not be used in the course of trade to take unfair advantage or to be detrimental. The
infringement can result from use of the sign in books, news articles, media or as a trade name.
For trademarks, defences include the use by a third party in the course of trade of (1) its
name and address; (2) indications concerning the kind, quality, quantity, intended purpose,
value, geographical origin or time of production of the goods or rendering of the service or
other characteristics of the goods or services; or (3) the trademark, where it is necessary to
indicate the intended purpose of a product or service, in particular as an accessory or spare
part; provided that such use is made in accordance with honest practices in industrial or
commercial matters (Article 2.23 BCIP). In addition, a defendant may prove the existence of
a prior right to a similar sign. Proving the acquiescence of the holder of a prior trademark in
the use of the sign is also a valid defence, if the prior trademark holder was aware of the use
for a period of five years (Article 2.24 BCIP). A defendant may also invoke the revocation of
the trademark as a result of it not being genuinely used for a continuous period of five years,
or when it has become generic because of acts or inactivity of the holder (Article 2.26 BCIP).

Unfair competition and passing off


Article VI.104 CEL prohibits acts that are contrary to honest market practices and that
damage or may damage the professional interests of one or more companies. Passing off
and other forms of misrepresentation are considered dishonest practices that fall under the
protection of Article VI.104 CEL.

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Disputes regarding company names


A company name is used to identify a legal person. It is laid down in the company’s notarial
deed of incorporation. It has no marketing purpose. The first person to use a legal name has
the exclusive right to use this name throughout Belgium. Another company cannot use the
identical name as a company name. Also, if a used company name is so similar as to cause
confusion, the company may be required to change its name. The use of an identical or
similar company name and the refusal to change it may give cause to the first user to claim
for damages.

Trade or business names


A trade name is used to distinguish one business from another and for marketing purpose.
The first person to use a trade name in a visible, public and continuous manner will have the
exclusive right to use that name. Therefore, no registration is required to acquire that right.
However, any proof of the date of earlier use may be helpful to solve disputes with other
parties claiming similar rights.
The trade name holder will only be successful in prohibiting others from using
an identical or similar name that could cause confusion with the trade name within the
geographical region (local, more regional or countrywide) and range of activities where the
holder uses said trade name.
A more well-known trade name will benefit from a larger protection.

Domain names
A claimant may bring a .be domain name case to a competent court or CEPANI.
The former may be based on Article XII.22 CEL (domain name Act) or on general rules
of trademark law and market practices.
The latter will be based on the domain name system DNS Belgium registration
conditions and the ADR rules as applied by CEPANI.
A claimant may bring a .vlaanderen, .brussels, .com or other gTLD domain name case
to a competent court or an ICANN-approved UDRP provider.
The former may be based on Article XII.22 if the domain name holder is a resident or
is established in Belgium. Court action (against a resident or a non-resident) may be based
on general rules of trademark law and market practices.
The latter will be based on the DNS Belgium registration conditions and the ADR
rules of an ICANN approved UDRP provider.

iv Conduct of proceedings
The Belgian Judicial Code does not provide for an Anglo-Saxon system of discovery.
Both the claimant and the defendant must cooperate in the production of evidence.
Courts may order injunctions to that effect and order financial penalties to compel parties
to cooperate.
However, there is no mandatory obligation for a party to disclose information that may
jeopardise its own position.

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Written and oral proceedings,


In their submissions, parties must discuss the evidence they submitted.
Courts freely assess evidence submitted by parties. Written documents – especially if
agreed or approved by both parties – will be given more weight than oral declarations.
The Belgian Judicial Code does not provide for a system of examination or
cross-examination of parties and their witnesses, although a judge may order a call for
witnesses; however, this is extremely rarely done.

Legal representation
Parties are usually represented by professional practitioners, members of the bar. Parties rarely
appear in person, unrepresented. Courts will, however, hear an unrepresented party.

Principles of costs recovery


Costs of proceedings before civil and commercial courts include the bailiff’s cost for serving
the writ and enrolling the case with the court’s docket. The losing party will be ordered to
pay the winning party’s legal fees through the payment of a flat-rate amount fixed in a royal
decree.
These amounts are generally considered to be unrealistically low.
Judgments must first be served by a bailiff on the party against whom enforcement is
sought. The costs are dependent on the length of the judgment, and usually vary between
€200 and €400.
If a judgment is not complied with voluntarily, the creditor may proceed to the seizure
of assets. These will be sold and the proceeds will ultimately be handed over to the creditor.
Should the creditor face opposition by the debtor, additional court proceedings will generate
new costs.
In the  United Video Properties v. Telenet  case,4 the  CJEU confirmed that the losing
party should pay reasonable and proportionate legal fees as required by Article 14 of IP
Enforcement Directive 2004/48. On 8 May 2017, the Antwerp Court of Appeal issued the
most recent Belgian decision on this subject and ordered the losing party to reimburse expert
costs. However, the Court refrained from ordering the payment of legal fees exceeding the
maximum amount provided for by royal decree. The Court decided that it is not allowed to
rule contra legem. The Court refused to apply what is generally considered to be the core of
Article 14 of the IP Enforcement Directive, i.e., the prevailing party should be reimbursed a
reasonable and equitable part of its lawyers’ fees.
Except in the case where a bilateral agreement provides for an exemption, a defendant
may ask the court to order a foreign national plaintiff or intervening party to pay a guarantee
as security for the defendant’s costs and possible damages (cautio judicatum solvi ).

Time frames
First instance proceedings on the merits before civil and commercial courts last between six
and 12 months. Appeal proceedings on the merits may last 12 months or longer.
Injunction proceedings last two to four months in the first instance as well as on appeal.

4 C-57/15, 28 July 2016.

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The duration of arbitration proceedings very much depends on the nature and
complexity of the case. The local arbitration centre tends to incite the arbitrators to conduct
the arbitration with respect for the applicable rules and time frame.
Domain name ADR proceedings usually last no longer than 75 days.

v Remedies
The following are the most common forms of interim relief and measures that an IP right
holder may seek from the court.
• Counterfeit seizure: when indications of an infringement or an imminent infringement
exist, the holder of a prima facie valid trademark may request in ex parte proceedings the
appointment of an expert to describe the alleged counterfeit and investigate its extent.
If the trademark infringement cannot be reasonably disputed, the judge in ex parte
proceedings may, upon request and after having balanced all relevant interests, order
conservative measures, which may include the seizure and withdrawal of litigious goods
from distribution channels.
• Investigative or conservative measures: trademark holders can also request investigative
or conservative measures in proceedings inter partes. They may do so at any stage of the
proceedings by means of a preliminary injunction, and request penalties in the case of
non-compliance with the interim order.
• Declaratory relief: trademark holders may request a declaration of validity of their
trademark right and a declaration that their trademark right has been infringed. Such
a declaration may be ordered in conjunction with injunctive relief or when awarding
damages.
• Injunctive relief: prohibiting further infringing activity by the infringer for the duration
of the right.
• Damages: as compensation for the losses caused by the infringement and for lost
profits.
• Destruction of infringing goods, at the expense of the infringer.
• Withdrawal of the infringing products from distribution channels.
• Order for publication: the court may order a party to publicise the outcome of a case,
at its own cost, in one or more journals.

V OTHER ENFORCEMENT PROCEEDINGS


i Criminal proceedings
Infringements are sanctioned by the Criminal Code and Book XV of the Code of Economic
Law, which provides for six levels of sanctions. Most are of a financial nature starting from
between €26 and €5,000 at the first level, and between €500 and €100,000 or imprisonment
for one to five years for knowingly infringing IP rights. These are historical amounts and must
currently be multiplied by six to reflect the current level of sanctions.
Criminal proceedings are initiated at the initiative of an interested party claiming
compensation for damages suffered, or by the public prosecutor.
Criminal proceedings suspend civil proceedings – apart from requests for injunctive
relief – and are conducted under the control of the public prosecutor. In practice, that is
why they are initiated only by the claimant who has no information as to the identity of the
infringer or in the context of a larger criminal investigation.

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The criminal courts may impose a variety of other sanctions that can also be ordered
by civil courts, such as seizure or forfeiture and destruction of the infringing goods (whoever
is the owner), total or partial closure of the establishment operated by the convicted person,
and temporary or permanent disqualification of the infringer from commercial activities.

ii Customs procedures
Pursuant to EU Regulation 608/2013/EU, the Belgian customs authorities may, at their
own initiative or at the request of the right holder, detain goods at the border suspected
of infringing intellectual property rights. Right holders or other entitled persons (such as
licensees) may file a customs application with the Belgian customs authorities in order to
prevent the importation of infringing goods into Belgian territory. The customs authorities
are authorised to act when counterfeit or pirated goods are being imported, exported or
re-exported on Belgian territory.
Customs authorities can take provisional and preventive measures by suspending
the release or detaining the goods suspected of infringing an intellectual property right.
Afterwards, the right holder has the right to inspect and sample the goods in order to confirm
the infringement. The right holder is then required to initiate proceedings to determine
whether an intellectual property right has been infringed within 10 working days (or three
working days in the case of perishable goods). If the Belgian customs authorities are not
informed of the initiation of such proceedings within these periods, the goods shall be
released. There is also a simplified procedure for the destruction of the detained goods if the
holder of the goods has agreed to their destruction, or fails to notify his or her opposition
within a period of 10 working days (or three working days in the case of perishable goods).

VI RECENT AND PENDING CASES


Nowadays, trademark cases are rarely about trademarks only. By way of example, one may
observe an uptick in parallel import cases, which deal with sector-specific regulatory issues
in addition to more traditional questions about exhaustion of the trademark. The objective
necessity requirement to allow repackaging by parallel importers has been interpreted strictly
in recent cases, in which courts asked for concrete and unequivocal evidence showing the
necessity. The Belgian Supreme Court accepted in its judgment of 7 November 2016 that the
objective necessity may be proven by all means, inclusive of presumptions. A judgment of
27 April 2017 by the President of the Commercial Court in Brussels shows that lower courts
are rigorous in their appreciation of the evidence submitted.
Online infringement cases are commonplace. Courts do not hesitate to order cease
and desist measures, coupled with penalties. Efficient measures such as the forced removal
or transfer of a social media profile have been ordered in recent cases. On 21 October 2016,
the President of the Commercial Court in Brussels ordered an individual to cancel his
SoundCloud and Twitter accounts under a penalty of up to €250,000.

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VII OUTLOOK
Best practices among online intermediaries and social media providers serve as an important
filter and often prove to be useful in tackling counterfeit online. However, many self-regulatory
initiatives are limited to outright infringement cases, where content is only removed or
blocked if it is bluntly copying a well-known trademark. One may expect the fine-tuning of
self-regulatory measures also to address cases of confusing similarity. Court action remains
largely inefficient in addressing online counterfeit, in view of the costs and timing.
We observe an approximation of the rules governing EU trademarks and those
governing Benelux trademarks. Belgium courts have applied ECJ case law relating to EU
trademarks to interpret similar concepts under the Benelux Convention on Intellectual
Property. Nevertheless, important differences remain within Benelux between the competent
courts in Belgium, the Netherlands and Luxembourg. The period of time in which a matter is
handled also differs depending on the competent forum. These factors have a negative effect
on legal certainty for trademark holders. One may hope that these concerns will be taken into
account when transposing the recent trademark directive in Benelux.

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Chapter 4

BRAZIL

Mauricio Maleck Coutinho1

I OVERVIEW
The Brazilian trademark system is flexible. Despite proprietary rights being given by law
to the owners of registered marks, marks simply used in commerce or that have only been
applied for can also be protected under unfair competition and anti-dilution doctrines.

II LEGAL FRAMEWORK
i Legislation
The primary domestic legislation is the Industrial Property Law 19962 (the IP Law), which
deals with civil and criminal aspects of trademarks, patents, geographical indications (GIs),
patent designs, industrial designs and unfair competition practices.3
Brazil is a member of the Paris Convention, the TRIPS Agreement and the Nice
Agreement.4 The Brazilian government intends to join the international trademark system
(Madrid Protocol) by mid-2018. The Brazilian Industrial Property Office (BIPO)5 is working
hard to reduce its backlog.
The Brazilian Constitution includes a trademark clause in Paragraph XXIX of Article 5,
which sets out the fundamental rights.6

1 Mauricio Maleck Coutinho is head of the intellectual property disputes team at Veirano Advogados’ São
Paulo’s offices.
2 Federal Law No. 9,279, of 14 May 1996, known as the Industrial Property Law.
3 Copyrights are governed by a separate piece of legislation – Federal Law No. 9,610 of 1998. Federal Law
No. 9,609 of 1998 regulates software.
4 The Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of
the Registration of Marks.
5 The National Institute of Industrial Property (known in Brazil as INPI), the official government body
responsible for industrial property rights in Brazil, is a federal autarchy of the Ministry of Industry,
Foreign Trade and Services. Its services include registration of trademarks, industrial designs, geographical
indications, software, patents, technology transfer and franchise agreements.
6 Constitution of the Federative Republic of Brazil. Title II: Fundamental Rights and Guarantees,
Chapter I: Individual and Collective Rights and Duties, Article 5, Paragraph XXIX – the law will guarantee
the property of marks and other distinctive signs, in view of the public and social interests and the
economic and technological development of the country.

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ii Authorities
The BIPO is responsible for registering trademarks and solving trademark disputes. It also
records licensing agreements on various intellectual property (IP) rights.
Article 124 of the IP Law lists 23 grounds for refusal (absolute and relative). Article 126,
Section 2 gives the BIPO powers to refuse signs that infringe well-known marks.7 The BIPO
also has powers to initiate a revocation if a mark is mistakenly approved.
The BIPO’s powers to interfere in the language of the agreements to be recorded have
been criticised. Consequently, Normative Instruction No.  70 was approved to allow the
BIPO to take a more liberal approach,8 thus incentivising investments in Brazil.

iii Substantive law


The Brazilian trademark system protects signs capable of being visually perceptible, provided
they distinguish the goods or services of one enterprise from the goods or services of other
enterprises.
Despite having this visual requirement – which would, in principle, exclude
non-conventional marks such as sounds and scents from trademark protection – the Brazilian
legal system is flexible, permitting the registration of certain non-traditional marks, such as
holograms, motions, gestural, position and three-dimensional marks.
To date, there are no soundmark registrations in Brazil because the BIPO has taken the
view that they are not allowable according to the IP Law. However, trademarks consisting of
sounds, scents, colours per se can be safeguarded by unfair competition rules.
‘Colours and their names, except when arranged or combined in an unusual
and distinctive manner, are not registrable as trademarks.’9 Consequently, distinctive
combinations of colours used as marks can be registered, for example Visa’s registered mark
for the combination of blue, white and gold.10
Some commentators argue that the ‘visually perceptible’ requisite should be understood
as being similar to the European requirement of graphical representation. This would
potentially make room for non-traditional marks such as sounds or smells to be eligible
for trademark protection in Brazil. But the system is currently not subject to the ‘graphical
representation’ requirement. The IP Law would have to change and the BIPO would have to
update its manual of trademark practice.11
Slogans are eligible for trademark protection only when used as marks.12 Shape marks
with functionality are also not registrable, except as patent designs.
Paragraphs II and III of Article 123 of the IP Law explain the scope of protection of
certification and collective marks.13 Certification marks can be owned by entities with no

7 In the meaning of Article 6 bis (I) of the Paris Convention.


8 Of 11 April 2017 – Approval of agreements.
9 Article 124, Paragraph VIII of the IP Law.
10 Registration No. 006088244, owned by Visa International Service Association.
11 Mauricio Maleck Coutinho, Sounding it out: A global view on registering sound trademarks – Part 2, accessed
on 3 October 2017 at www.thebrandprotectionblog.com/sounding-it-out-a-global-view-on-registering-
sound-trademarks-part-2/.
12 Article 124, Paragraph VII of the IP Law. […] signs or expressions used only as a means of advertising.
13 Article 123 of the IP Law. For the effects of this law, the following definitions apply: Paragraph II –
certification mark: that used to attest that a product or service conforms with determined technical norms

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direct commercial interest in the goods or services, but which can inspect and control the
level of quality expected by the public. The applicant must indicate:
• the conditions to be carefully followed by the trademark users;
• the levels of quality; and
• how these levels are going to be enforced by the brand owner to the users.

Article 7 bis of the Paris Convention triggered the protection of collective marks in Brazil.
The applicant, usually an association, must clearly indicate the conditions to be fulfilled by
the members of the association for using the sign.
There are two types of famous marks: well known and highly renowned. Well-known
marks are protected in their relevant market, irrespective of registration (Article 126) but
recognised by the Brazilian public. Highly renowned marks do not require niche fame and
are protected in all fields (Article 125). Highly renowned marks have to be registered in Brazil
and be recognisable by the general public throughout the country.14
Some commentators argue that marks that are only ‘known’ should be protected even
if the junior mark identifies dissimilar goods.15
Article 124, Paragraph XXIII of the IP Law avoids free ride and unfair advantage,16
protecting unregistered marks17 known by a third party (and not necessarily by the public)
against use or registration.
Article 130, Paragraph III of the IP Law grants to the registrant or applicant the ‘right
to safeguard the integrity and the reputation of a mark’. A considerable number of specialists
and courts say this would be the Brazilian dilution proviso.18
Company names are protected by the Civil Code (Article 1,166).19 Exclusive rights are
enforceable regionally20, 21 but it is also possible to apply for national registration.

or specifications, notably with reference to its quality, its nature, the material used and the methodology
employed; and Paragraph III – collective mark: that used to identify products or services originated by
members of a given entity.
14 Evidence of use and fame in the major Brazilian commercial regions is sufficient, which is similar to the
European approach (community trademarks).
15 ‘Trademark law will probably develop in the sense of always giving more power to trademark owners, when
third parties demonstrate interest in taking advantage, in a parasitic way, of the reputation of the marks, or,
more precisely, of the investments made to promote the marks.’ Nuno Pires de Carvalho, ‘A Estrutura dos
Sistemas de Patentes e de Marcas – Passado, Presente e Futuro’ (‘The Structure of the Patent and Trademark
systems – Past, Present and Future’). Ed. Lúmen Júris. Rio de Janeiro. 2009.
16 Unfair advantage is not only linked to dilution cases, as it is in Europe.
17 Pedro Marcos Nunes Barbosa, ‘A Marca Evidentemente Conhecida do Artigo 124, XXIII, da Lei 9,279/96
e Suas Importantes Implicações Jurídicas’ (‘The Mark Evidentially Known of Article 124, Paragraph XXIII
of the IP Law and its Legal Implications’). Article dated 20 March 2007, accessed on 31 July 2017 at
http://nbb.com.br/pub/propriedade23.pdf.
18 Other specialists affirm that only highly renowned marks in the meaning of Article 125 of the IP Law can
be protected under the dilution doctrine.
19 Article 124, Paragraph V of the IP Law constitutes a relative ground for refusal of a mark that infringes an
earlier company name.
20 In the federal state where the headquarters is located.
21 What was said in relation to famous or known marks is applicable to the enforcement and protection
of company names that also perform as marks, notably in view of the language of Article 8 of the Paris
Convention.

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These names identify the legal person and must be registered with the Trade Registry in
order for the company to exist and operate. Company names differ from trade names, which
are optional and consist of the term under which the company trades.22 Trade names differ
from trademarks, which function as source identifiers of goods or services.
Article 176 of the IP Law states that ‘a GI is constituted by an indication of source23
or an appellation of origin’.24 There are 18 recognised appellations of origin (10 of which are
Brazilian) and 45 Brazilian indications of source (wines, coffee, cachaça and cheese).
The Brazilian Network Information Centre (NIC.br) was set up by the Brazilian
Internet Steering Committee (CGI.br). NIC.br created its own rules to apply to domain
name cases. All .br domain names are registered through Registro.br, which is a department
of NIC.br. Brazil applies the Uniform Domain-Name Dispute-Resolution Policy. Conflicts
can also be solved by the registry25 or through the courts.

III REGISTRATION OF MARKS


There are no multi-class applications and only one type of registration.
It can take one month for an application to be published.26 The filing fee is 355 reais.
If there is no opposition, the mark will be examined for up to two and a half years. If the
application is opposed, that time frame almost doubles.
Evidence of use should be submitted after the registration, to avoid revocations based
on non-use. Use is not a prerequisite to registering a mark but is to keep it on the register.
A mark can be removed from the register if the registrant does not renew it for a
further 10 years, expressly withdraws it from the register, or has the registration revoked or
invalidated.

i Inherent registrability
Marks can be fanciful, arbitrary, suggestive, descriptive and generic (Abercrombie’s levels
of distinctiveness). ‘Suggestive’, ‘arbitrary’ and ‘fanciful’ are prima facie registrable terms as
marks (inherently distinctive).
Generic terms are not registrable as marks. Descriptive signs have to acquire secondary
meaning, so that it is possible for the public to recognise the sign as an origin identifier.
Shape marks can be registered only when they have a distinctive character. Examples are
the get-up of packages that have acquired distinctiveness through use and advertising. These
can function as source identifiers.

22 When applying to register a company name, the applicant provides the trade name.
23 Article 177. An indication of source is considered to be the geographical name of a country, city, region or
locality of its territory, which has become known as a centre of extraction, production or manufacture of a
determined product or for providing a determined service.
24 Article 178. An appellation of origin is considered to be the geographical name of a country, city, region
or locality of its territory, which designates a product or service, the qualities or characteristics of which are
exclusively or essentially due to the geographical environment, including natural and human factors.
25 For example, preferential rights when two companies are applying to register a domain name
simultaneously.
26 If the applicant is an individual or a small business, it can benefit from a considerable discount in the
official fees. This measure aims to incentivise economic development, etc.

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Merely descriptive or generic signs cannot be registered;27, 28 however, ‘an isolated letter,
digit or date, except when sufficiently distinctive’ is registrable.29
If a sign is formed by a descriptive component, it can be registered, but the BIPO will
probably issue a disclaimer in respect of this descriptive element, stating that there would not
be exclusive rights thereon.

ii Prior rights
Brazil has a first-to-file system, and applications are examined in order, based on the filing
date. (The BIPO uses international filing dates.) Priority is given only to elderly or disabled
persons, by order of the courts, when the senior mark cited as anticipation is dead or belongs
to the same economic group.
A person who has been using a mark in good faith for at least six months is eligible
to claim prior rights based in respect to a confusingly similar mark (preferential rights to
registration).
The owner of a well-known mark that has been infringed, but for which no application
has been made in Brazil, will have 60 days after lodging an opposition to file a Brazilian
trademark application.

iii Inter partes proceedings


Anyone can oppose an application on absolute grounds30 but only the proprietor of an earlier
mark or earlier right may oppose on relative grounds.
The most commonly used relative grounds for refusal are ‘confusingly similar signs’ (in
respect to another mark or a previous company name) and ‘dilutive marks’.
Opposition proceedings are in writing only; there is no hearing at the BIPO. The
applicant and the opponent will have only one opportunity each to submit their arguments
and evidence. There is no fast-track procedure for opposition or mediation services provided
by the BIPO. Time extensions are not allowed.
Usually, the opponent does not contact the applicant before lodging an opposition.
Sometimes, cease and desist letters are effective. Costs are not recovered or paid to the winner
of the opposition.
Since Brazil intends to join the Madrid Protocol31 by mid-2018, the BIPO is hiring
and training more examiners to reduce its backlog. As a consequence, having a meeting with
an examiner32 – which had been straightforward in the past – has become difficult and the
quality of the decisions has decreased, increasing the number of cases being brought before
the courts.

27 Article 124, Paragraph VI. […] signs of a generic, necessary, common, usual or simply 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 with respect to its nature, nationality, weight, value, quality and
moment of production or of giving a service, except when presented in a sufficiently distinctive manner.
28 Article 124, Paragraph VI of the IP Law.
29 Article 124, Paragraph II of the IP Law.
30 The lack of distinctiveness is the most common absolute ground for refusal (generic or descriptive).
31 The Protocol relating to the Madrid Agreement Concerning the International Registration of Marks.
32 To call his or her attention to one fact or argument, for example.

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The BIPO compares the marks as a whole and not their differences. It applies tests for
likelihood of confusion resembling the Polaroid test.33 The BIPO and the courts try to assess
as many factual aspects as possible. Some courts are already applying one recent test created
as part of a legal study,34 known as ‘the 360⁰ Test’.
Oppositions must be filed within 60 working days of the publication date.35 The
applicant is then given the option of submitting counterarguments. After that, a decision
is given, which can be appealed.36 Any oppositions lodged after the 60 days are disregarded.
The BIPO sometimes freezes a junior application – irrespective of opposition – to avoid
conflicting decisions, that is to say two confusingly similar marks owned and registered by
different persons.
If it is not used within five years of registration, the mark can be vulnerable to revocation.
The BIPO or anyone with a legitimate interest can start this proceeding. The registrant will
have to prove substantial use of the mark during the previous five years to retain registration
of the mark.

iv Appeals
The most common appeals relate to refusals, registrations, revocation in respect of non-use,
and disclaimers (usually in view of lack of distinctiveness).
An act of grant can be appealed irrespective of any previous opposition.
Appeals proceedings are in writing only (no hearings). The Official Bulletin notifies
the owner to file its counterarguments. There is no fast-track procedure and no mediation
services offered by the BIPO. The appeals examiner is the president of the BIPO.37 No costs
are reimbursed or awarded to the winner of the appeal.
The BIPO can contact a party to clarify a specific point or to obtain better proof of a
fact. This collaborative work optimises the system and allows better decisions to be reached.
The act of lodging an appeal does not suspend the effects of a BIPO decision that is
challenged. The BIPO’s decision on appeal is the final administrative step, therefore that
decision can only be reversed before the courts.

IV CIVIL LITIGATION
The New Civil Procedure Code,38 the content of which was influenced by European and US
systems, came into force in March 2016. Among the key procedural changes are the attempt
to settle the case before the litigation ‘starts’, a cooperative way of litigating in respect of all

33 Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).
34 Filipe Fonteles Cabral and Marcelo Mazzola. ABPI Magazine No. 132 (Brazilian Intellectual Property
Association), September 2014, p. 16.
35 Official opposition fee: 355 reais.
36 Official appeal fee: 475 reais. The granting decision can be appealed but not the allowance. The mark is
entered in the register and then, after the final fee is paid (745 reais), the registration is granted and the
certificate issued.
37 The legal team and clerks or examiners, who issue an opinion to be confirmed and signed by the president.
38 Federal Act No. 13,105 of 16 March 2015.

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parties,39 the agreements the parties can enter into (before and during litigation) in respect of
many aspects and steps of the litigation, such as nominating the court expert, prefixing costs,
time frames, limiting types of evidence and appeals.
After a complaint is filed, a judge will examine any preliminary injunctions and then
summon the defendant with a subpoena to attend a conciliatory hearing. If no agreement is
reached, the time frame within which the defendant must submit a response begins.40
The judge will summon the plaintiff to rebut the response and explain which evidence
should be presented to prove the allegations. The same is done in relation to the defendant.
The disclosure here should focus only on controverted facts.41
More complex matters, such as patent cases (revocation or infringement), generally
demand a technical expert opinion to assist the judge, who must be a specialist. The role of
the judge is to affirm whether the legal requisites for the invention have been met or if an
infringement has taken place.
The parties then submit their comments about the expert opinion and the judge issues
a final first instance decision, which can be appealed to the relevant tribunal.42

i Forums
Brazil has a bifurcated system.43 The state courts hear disputes related to private concerns,
such as infringements, and the federal courts hear cases in which a public body (e.g., the
BIPO) is a party because its decision is being challenged in court. (The defendant would be,
for instance, the trademark proprietor in an invalidity proceeding.)
If a junior user is misusing a senior registered mark, the infringement lawsuit should be
brought before a state court, taking into account, again, that the BIPO does not need to join.
The defendant in the infringement lawsuit usually claims the invalidity of the senior
trademark before the federal court.44 The BIPO will be one defendant and the senior
trademark owner the other.
An infringement case45 is usually suspended for up to one year, until the federal court
decides on the validity of the mark. The aim of this is to avoid contradictory decisions (i.e., a
juridical conflict).46

39 Plaintiff, defendant and judge, so the proceeding can take a reasonable time to achieve a fair and effective
outcome.
40 In the previous system, this hearing took place in the middle of the litigation process, after the parties had
filed the response, rebuttals and informed the court of the evidence they wished to submit.
41 If the fact is accepted as true by both parties, there is no need to invest time and money in bringing
evidence to the court on this fact.
42 The appeals courts (state and federal) review all the facts, allegations and evidence produced by the parties
(i.e., the dispute as a whole), so as to reverse, invalidate or uphold the final first instance decision.
43 This ‘division of work’ was established by Article 109, Paragraph I of the Constitution.
44 Or before the state court, only as a defence argument (no res judicata in this case), so as to find that there
was no infringement. State courts do not have jurisdiction to invalidate a BIPO decision in practice
(res judicata), only federal ones, but, again, the absence of rights will be taken into consideration by the
state court to hold that there was no infringement.
45 Taking into account that an invalidated mark cannot be enforced or infringed, the infringement lawsuit is
usually suspended, pending a judgement on the revocation case filed before the federal court.
46 For example, despite having the trademark registration cancelled, the state court held that there was a
trademark infringement, resulting in the defendant having to pay damages and stop using the mark.

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The Brazilian judiciary is making its courts specialised with the aim of achieving better
and faster judgments. In the state of Rio de Janeiro both state and federal courts at the first
level are specialised in IP.47, 48 Two panels at the Federal Court of Appeals for the Second
Circuit49 specialise in IP cases. In the states of São Paulo and Rio Grande do Sul, the state
appeals courts each have two panels that specialise in IP matters.
The Superior Courts are the Superior Court of Justice (STJ) and the Supreme Court
of Justice (STF). The former hears non-constitutional matters, controlling the application
of federal law, as well as harmonising the Brazilian jurisprudence. The latter enforces the
Constitution. The STJ has two panels that specialise in IP.
Claims are usually grounded by statutory language, by the opinions of authorities or
scholars, and by decisions issued by different courts and levels.

ii Pre-action conduct
In Brazil there is no pre-action conduct code for IP disputes to ‘encourage the parties to
exchange information with each other prior to issuing proceedings to ascertain whether
proceedings can be avoided and, if not, to ensure that the parties understand the issues
sufficiently to ensure that any litigation is dealt with proportionately and in keeping with the
overriding objective’.50
Usually, the plaintiff notifies the defendant before bringing the matter to court.
Unjustified threats and accusations of crimes or infringements can give rise to the liability
of the notifying party. Sometimes, the notified party claims in court a non-infringement
declaration, so as to claim back damages. Attempting to settle before issuing legal proceedings
is not mandatory, but is advisable.
Depending on the complexity of the dispute and respective figures involved,51 the
parties can opt to have the case heard by professional mediators or by a court of arbitration.
The majority of IP cases in Brazil are dealt with by the judiciary system.

iii Causes of action


Brazil has a ‘double identicality’ proviso52 based on which the clash between identical marks
for identical goods or services amounts to prima facie infringement, as the signs will evidently
lead to confusion. Despite this, the courts are still reticent about applying this rule, usually
relying on confusion-based tests to refuse or revoke the junior mark.

47 The federal courts are specialised in intellectual property matters, therefore including copyright. Civil state
courts in Rio de Janeiro hear copyright cases. However, specialised courts do not have jurisdiction to judge
copyright matters, only mixed matters, such as trademarks and copyright.
48 There are seven state courts in the city of Rio de Janeiro (Centre Court) and four federal ones in the Rio de
Janeiro judiciary section.
49 The Second Circuit hears appeals from the states of Rio de Janeiro and Espírito Santo. Each circuit
embraces two or more states. The BIPO’s principal office is located in the city of Rio de Janeiro, in the state
of Rio de Janeiro.
50 Code of Practice for pre-action conduct in intellectual property disputes in UK. Accessed on
4 October 2017 and available at https://www.reedsmith.com/en/perspectives/2007/04/code-of-practice-
for-preaction-conduct-in-intellec.
51 Practitioners say that matters costing more than 1 million reais are justified to be heard by a court of
arbitration.
52 Article 124, Paragraph XIX of the IP Law. The following are not registrable as marks: reproductions or
imitations, in whole or in part, even with additions, of a mark registered by a third party, to distinguish

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Although likelihood of confusion and dilution are the two main trademark-related
causes of action, there exist a number of additional causes under unfair competition rules as
foreseen in the IP Law, such as passing off, free ride or unfair advantage.
The statutory authority for trademark infringements based on confusion is Paragraphs V,
XIX and XXIII of Article 124 of the IP Law, which cover misuse of marks, company names,
trade names and domain names.
The most common cause of action would be someone using a mark, which is identical
or similar to a senior registered mark for similar goods. The same is applicable to a confusingly
identical or similar junior company name or trade name in respect of an earlier registered
mark for similar activities.
If the junior sign (mark or company, trade or domain name) is capable of creating
confusion, it would amount to an infringement of the senior registered mark. An earlier
registered company name53 can also serve as grounds for having a confusingly similar
trademark refused or invalidated. In NBA Properties v. NBA Gestão,54 the Federal Court of
Appeals of the Second Circuit invalidated the registration of the mark NBA based on NBA’s
company name,55 which is registered only in the United States.
There is no ‘official’ test used by the courts to assess trademark infringement. They
usually try to take into account as many as factual aspects as possible.
The IP Law requires investigation of the similarity of the signs and goods or services
to learn whether they are likely to create confusion for the general public and whether an
infringement has taken place.56 The STJ also uses this test,57 but the courts do not apply one
single ‘official’ test, despite the fact they are similar in many ways.
Commentators recommended in the 1980s the following multifactor test for likelihood
of confusion:
• analysing the whole marks and not their differences;
• consumer’s level of attention;
• the circumstances under which the goods are acquired;
• the nature of the goods; and
• the relevant market for the goods.58

But according to practitioners, this test does not cover post-sale confusion in other situations.
More tests were developed and the courts apply different ones, depending on the circumstances
of the case (e.g., the 360⁰ Test – see Section III.iii).

or certify a product or service that is identical, similar or akin, and which are likely to cause confusion or
association with the third party’s mark.
53 It is hard to find an earlier registered domain name invalidating a trademark or a domain name as first
the company is founded (the company name is registered) and then the domain name and mark are
applied for.
54 NBA Properties Inc. v. NBA Gestão Ltda. and the BIPO. Appeal No. 0537431-03.2004.4.02.5101
(TRF2 2004.51.01.537431-5), Judge André Fontes, 28 August 2007.
55 Applying Article 124, Paragraph V in conjunction with Article 8 bis of the Paris Convention.
56 Article 124, Paragraph XIX.
57 Similar marks and goods are likely to cause confusion. Three factors must be verified simultaneously:
similarity of the signs, similarity of the goods or services, and likelihood of confusion.
58 João da Gama Cerqueira, Luiz Gonzaga do Rio Verde and João Casimiro Costa Neto, ‘Tratado Da
Propriedade Industrial’ (1st Ed., Vol 2. Editora Revista dos Tribunais 1982), pp. 68 and 69.

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Unlike Germany59 or the United States, Brazil does not have a piece of legislation on
unfair competition practices. The IP Law also regulates this in Article 195, which has an
indicative list of 14 behaviours considered to be unfair trade acts.
Paragraphs I, II and III are the most-used causes of action in unfair competition cases.60
They aim to prohibit fraudulent behaviour to divert another’s clientele or to gain an unfair
advantage against another party.
As a member of the Paris Convention, any dishonest act considered can amount to an
unfair competition act.61 Free riding and passing off are also forbidden under the umbrella
of unfair practices. The same is applicable to consumer fraud and deceptive trade practices.
Courts have ordered defendants or the domain registry to take down infringing domain
names based on trademark infringement and free riding. Technically, unfair competition is
actionable among competitors, but any other non-competitor’s misconduct can be actionable
under free riding62 or unfair advantage.

iv Conduct of proceedings
Typically, the plaintiff will present allegations and claims in writing, supported by all the
documents it may have to prove the allegations, and the time to start doing this is at the
initial filing of the complaint.
If the parties do not settle at the conciliatory and mediation hearing,63 the defendant
will have 15 working days64 to lodge a response, contesting the plaintiff’s allegations, claims
and evidence, as well as to submit its own evidence to persuade the judge.
The plaintiff will then have a period of 15 working days to comment on the defendant’s
documents and arguments, which can lead to the dismissal of the case or raise any procedural
irregularity. At this point, both parties will accept some facts as true, but some will be
controverted. The disclosure here should focus only on controverted facts.
If any party wants to take a deposition or thinks that the opinion of a technical expert
is needed, the judge will analyse the requests and, if sustained, schedule a hearing for the
depositions and nominate a specialist to provide a technical opinion.
If the lawyers have powers to represent their clients, their clients do not have to attend
the hearing, unless they are to be heard in the depositions. Ordinarily, the depositions
are taken in a courtroom in front of the judge, who will also question those making the
depositions. However, the parties can agree to take the depositions in their own offices, as in
the United States.65

59 German Unfair Competition Act (UWG).


60 Article 195, Paragraph I – publishes, by any means, a false affirmation, in detriment to a competitor, with
a view to obtaining advantage; Paragraph II – provides or divulges, with respect to a competitor, false
information, with a view to obtaining advantage; Paragraph III – uses fraudulent means to divert, for his
own or a third party’s benefit, another’s clientele.
61 In a specific, relevant market in view of the standard behaviour.
62 Free ride is also a cause of action to avoid dilutive practices.
63 Presided by a professional mediator not the judge. What is mentioned during this hearing is not taken into
account by the judge, who will not know what was said by the parties during the hearing. The aim of this
hearing is to attempt to settle the case.
64 All the deadlines, according to the new system, are counted in working days, so that lawyers do not have to
work at weekends.
65 The Brazilian system makes use of technologies such as video conferencing. A good number of court files
are digital. The BIPO’s records are digital as well.

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Costs awards are granted to the winner of the litigation. These include reimbursement
of court fees and costs and attorney fees, which can be up to 20 per cent of the economic
value of the matter. The costs are awarded solely to the winner, and the attorney fees are to
remunerate the lawyer’s work during the litigation. As a general rule, the contractual fees paid
by the client to its lawyer are non-refundable by the loser.
It is difficult to estimate how long the disclosure can take. It depends considerably
on how efficient and specialised the court is and on the complexity of the matter and the
evidence produced.

v Remedies
Plaintiffs are awarded injunctions against further infringement or unfair practices.66
Injunctions can be issued when two main prerequisites are met: the plaintiff’s claims are
probably true and are indeed urgent.67, 68
Monetary relief may also be available to the plaintiff, including:
• the defendant’s profits;
• damages sustained by the plaintiff;69 and
• the amount by which the plaintiff should reasonably have profited if no infringement
had been committed.

Moral damages can also be awarded as a ‘punitive damage’, to discourage the defendant from
committing further infringements.

V OTHER ENFORCEMENT PROCEEDINGS


The customs authorities can seize imported goods, on the grounds that they may infringe
trademark rights as an anti-counterfeiting policy70 based on the IP Law71 and the TRIPS
Agreement.
Having seized the goods, the authorities will contact the Brazil attorney responsible
for the respective brand owner in Brazil,72 so that he or she can issue, on behalf of his or her
client, civil or criminal proceedings against the potential infringer, demanding an injunction
to be granted to retain the seized goods until a final judgment is made. The time limit for
this is 10 days. If this is not done, the goods can be released and distributed to the Brazilian
market.

66 An injunction is a preliminary decision issued at the beginning of legal proceedings in which, at the end,
in the case of a favourable outcome, the injunction would be confirmed and the plaintiff awarded damages.
Usually, there is a single case to seek the injunction and any other compatible claim.
67 The urgency has two independent approaches: to avoid the plaintiff suffering severe damage (which is
difficult to ascertain) or to ensure that the plaintiff will get the benefits of a final favourable decision
(avoiding harm thanks to the efficiency of the legal proceedings).
68 True claims are eligible for an injunction relief irrespective of urgency.
69 See Section IV.ii.
70 Federal Law No. 6,759 of 5 February 2009.
71 Article 198. The customs authorities, ex officio or at the request of an interested party, may seize, at the time
of checking, any products carrying falsified, altered or imitated marks or a false indication of source.
72 In Brazil, it is mandatory to have a local lawyer to represent a foreign trademark proprietor (Article 227 of
the IP Law).

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It can be argued that this procedure is transferring to the brand owner the onus and
costs for obtaining a court decision to block the goods and declare the importer a criminal
who has infringed trademark rights. The role of the customs authorities should ordinarily be
to find and seize potentially infringing goods, to avoid infringing goods entering the Brazilian
market.


VI RECENT AND PENDING CASES


The decisions from some recent cases relate to:
• the application of a multifactor test to establish likelihood of confusion;
• AdWords viewed as an act of trademark infringement and unfair competition; and
• court orders to suspend the WhatsApp service.

In Duvel v. Deuce,73 the State Appeals Court of Rio de Janeiro issued a judgment finding
trademark infringement and unfair competition in the clash between the two well-known
beer brands, after applying the 360⁰ Test.
The test was also applied by the STJ in Chester v. Chester Cheetah and the BIPO,74
highlighting that each of the following factors should be considered independently and
balanced with the others:
• degree of inherent distinctiveness of the marks;
• similarity of the marks;
• legitimacy and reputation of the junior user;
• duration of the coexistence of the marks;
• types of goods or services;
• sophistication of the targeted public; and
• dilution.

In Brazil, paying for AdWords services for internet searching engines such as Google and
Bing can amount to trademark infringement and unfair competition. In Twogo v. Togo,75
the State Appeals Court of São Paulo held that there had been trademark infringement and
unfair competition, prohibiting the defendant from using the terms ‘2gotur’, ‘2go turismo’
and ‘TWOGO’ associated with tourism services from Google’s AdWords, as ‘TWOGO’ is
the plaintiff’s registered mark and www.2gotur.com.br is its registered domain name. When a
search was done of these terms, the results led first to the defendant’s web page, as it had used
the AdWords tool. More judgments have been given using this approach.
On four occasions in the past two years, the WhatsApp messenger service has been
blocked by a court order, after access to messages related to criminal investigations was
denied. These orders came from first instance judges from different regions of Brazil; the
blocks were lifted some hours later by the STF, Brazil’s highest court.

73 Duvel Moortgat v. Cervio Comercio E Industria de Bebidas Ltda. Appeal No. 0254911-82.2014.8.19.0001.
11th Panel. Reporter Judge Luiz Henrique Marques. 20 September 2017.
74 BRF S/A v. Pepsico Incorporation and the BIPO. Internal Appeal in the Special Appeal No. 1,346,089.
Justice Moura Ribeiro. 2nd Panel. 15 December 2014.
75 Twogo Agencia de Viagens e Turismo Ltda Epp v. Togo Agencia de Viagens e Turismo Ltda. Appeal
No. 1085182-69.2016.8.26.0100. Judge Guilherme Santini Teodoro. 2nd Panel. 29 September 2017.

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WhatsApp argued that the messages are end-to-end encrypted, which was why it was
not possible to access users’ messages and provide the court with specific chat logs, despite
them being relevant to the investigation of serious crimes.
Questions are being raised in the United Kingdom, the United States, France and
Germany about the use of WhatsApp and similar applications for the planning of terrorist
attacks. There is concern that criminals are at liberty to communicate using messenger apps
as the chat logs are encrypted and cannot be accessed, not even with a court order.
The STF invited specialists from many different sectors to speak about this sensitive
topic at a public hearing, to assist the justices in making a final decision on this matter. This
public hearing took place a few months ago but the justices have yet to disclose their opinions
on the matter.

VII OUTLOOK
The decision by the STF about how it is going to approach WhatsApp cases is clearly a hot
topic, especially in view of the uncertainty about the outcome. India’s Supreme Court of
Justice is in a similar situation. On 7 September 2017, India’s highest court asked WhatsApp
and Facebook to advise whether they had shared any user details with third parties. A final
decision on this is also pending.
As regards trademark law in Brazil, there is a move towards the specialisation of courts
in IP, so that judges can render better and quicker decisions at different levels, and thus
reduce the judiciary backlog.
Another element of uncertainty is whether the Brazil will join the Madrid Protocol by
mid-2018. Despite hiring and training more examiners, the backlog of trademark cases is
substantial and needs to be reduced drastically so Brazil can make a decision on becoming a
signatory member of the international system soon.

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Chapter 5

DENMARK

Jakob Krag Nielsen and Søren Danelund Reipurth1

I OVERVIEW
The Danish trademark registration landscape is, for obvious reasons, centred around the
Danish Patent and Trademark Office (DKPTO), which is a competent, efficient and
consistent authority.
The Danish enforcement landscape, on the other hand, is much more complex, and as
this chapter explains, trademark rights may be enforced in a number of ways in Denmark.
Obviously, the Danish courts are the cornerstone of the Danish enforcement landscape, but
they do not work alone. For instance, practitioners consider the Danish Complaints Board
for Domain Names to be a great alternative to the courts, when trademark disputes involve
domain names.

II LEGAL FRAMEWORK
i Legislation
The principal Danish legislation related to trademarks consists of the Trademarks Act,2
which, inter alia, serves to incorporate the Trademarks Directive3 into Danish law. In
addition, the Registration Order4 sets out supplementary provisions pertaining primarily
to the application for and registration of trademarks in Denmark. Denmark has acceded
to the TRIPS Agreement.5 Also, Denmark has acceded to the WIPO Convention and is a
contracting party to numerous WIPO-administered treaties, including, by way of example,
the Madrid Protocol6 and the Paris Convention.7

1 Jakob Krag Nielsen is an attorney and partner and Søren Danelund Reipurth is an attorney and director at
Lundgrens law firm.
2 Consolidate Trademarks Act (Denmark), No. 223 of 26 February 2017 (the Trademarks Act).
3 Directive 2008/95/EC to approximate the laws of the Member States relating to trademarks, of the
European Parliament and of the Council of 22 October 2008 (the Trademarks Directive).
4 Order on Application and Registration, etc. of Trademarks and Collective Marks (Denmark) No. 364 of
21 May 2008 (the Registration Order).
5 Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement).
6 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, adopted
at Madrid on 27 June 1989, as amended on 3 October 2006 and on 12 November 2007 (the Madrid
Protocol).
7 The Paris Convention for the Protection of Industrial Property of 1983, of 20 March 1883, as amended on
28 September 1979 (the Paris Convention).

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ii Authorities
DKPTO
The DKPTO forms part of the Danish Ministry of Industry, Business and Financial Affairs.8
It works to help companies protect and exploit their ideas and inventions and thus aims to be
the Danish centre of intellectual property.9 One of the core tasks of the DKPTO encompasses
the activities undertaken in relation to trademarks, including trademark registration in
particular. The powers of the DKPTO are primarily set out in the Trademarks Act.

Danish Complaints Board for Domain Names


The Danish Complaints Board for Domain Names (the Complaints Board) hears cases
concerning the right to .dk domain names.10 The Complaints Board claims to be an easy,
faster and cheaper alternative to the courts in domain name disputes,11 and most practitioners
would probably agree with this claim. The Complaints Board may, inter alia, decide to
suspend, delete or transfer the .dk domain name that is subject to a complaint.12

DK Hostmaster
DK Hostmaster maintains the Danish internet infrastructure and administers the database of
all .dk domain names on behalf of the Danish government.13
Although DK Hostmaster does not hear domain name complaints, such complaints
may nevertheless, in certain special situations, be submitted to DK Hostmaster.14 These special
situations include, inter alia, situations where there is evidently a likelihood of confusion, and
where interests of safety or general public interests justify not waiting for a decision from the
Complaints Board or from the courts. Moreover, DK Hostmaster is competent in matters
concerning typosquatting or persistent infringements of good domain name practice. In such
cases, DK Hostmaster may suspend and, subsequently, block, delete or transfer a domain
name.15

The Danish Business Authority


The Danish Business Authority (the Authority) registers the names of companies, including
the names of limited companies and private limited companies. All company names must be
registered with the Authority.16 When a company name is registered, the Authority examines
whether an identical name is registered. However, the Authority does not examine whether
similar names are registered, let alone if identical or confusingly similar trademarks have been
registered.17 As such, the registration of a company name with the Authority does not entail

8 See: http://em.dk/nyheder/2017/08-08-ny-direktoer-for-pvs.
9 See: https://www.dkpto.dk/media/1736667/maal-og-resultater-2017.pdf.
10 Internet Domains Act, (Denmark) No. 164 of 26 February 2014 (the Domain Names Act), Section 28(1).
11 See: https://www.dk-hostmaster.dk/en/how-submit-complaint-about-right-domain-name.
12 The Domain Names Act, Section 28(4)(1).
13 Ibid., Sections (4);(12); https://www.dk-hostmaster.dk/en/dk-hostmaster.
14 DK Hostmaster’s General Conditions for the Assignment, Registration and Administration of .dk Domain
Names, version 08 of 31 January 2016, paragraph 8.3; https://www.dk-hostmaster.dk/en/how-submit
-complaint-about-right-domain-name.
15 Ibid., Nr. 13.
16 See: https://www.dkpto.dk/media/1107/beskyttelseafforretningskendetegn.pdf.
17 Ibid.

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any extinctive acquisition of rights.18 The Authority does not hear complaints pertaining to
the registration of business names. However, if a court of law has concluded that a company
name has been registered in violation of Section 2 of the Danish Companies Act,19 the
Authority will remove the name from the register.20

iii Substantive law


Registered trademarks
Registered trademarks are, inter alia, protected pursuant to the Danish Trademarks Act,
namely Section 4(1), which implements Article 5(1) of the Trademarks Directive, and which
entitles the proprietor of a trademark to the right to prohibit any person not having consent
from using any sign in the course of trade, if the sign is (1) identical to the trademark and
is used for identical goods and services, or (2) identical or similar to the trademark, and the
goods or services are identical or similar, if there exists a likelihood of confusion, including a
likelihood of association with the trademark.

Reputed trademarks
Reputed trademarks enjoy, inter alia, protection pursuant to Section 4(2) of the Trademarks
Act, which implements Article 5(2) of the Trademarks Directive, and which stipulates that,
regardless of the limitation in Section 4(1) to identical or similar goods and services, the
trademark proprietor may also prohibit use for goods or services which are not similar, if the
trademark has a reputation in Denmark, and if use would take unfair advantage of, or be
detrimental to, the distinctive character or the repute of the trademark.

Collective marks and certification marks


Collective marks and certification marks are protected by the Collective Marks Act.21 With the
exception of certain provisions, the Act refers to the provisions of the Danish Trademarks Act.

Unregistered trademarks
In Denmark, trademark rights may also be acquired through use in the course of trade. This
follows explicitly from Section 3(1)(2) of the Trademarks Act. Case law indicates that the
use requirement is interpreted leniently by the Danish courts. Even use within a group of
companies may qualify as use for the purposes of Section 3(1)(2) of the Trademarks Act.22
If trademark rights are acquired through use, the trademark is, by and large, entitled to the
same protection as registered trademarks outlined above.

Well-known trademarks
Well-known trademarks – within the meaning of Article 6(b) of the Paris Convention – are
protected pursuant to Sections 15(2)(4) and 15(3(2) of the Trademarks Act.

18 Companies Act, with comments, (Denmark), Nr. 322 of 4 November 2011, 2nd Ed. 2014, Comment No. 8.
19 Consolidated Companies Act, (Denmark), No. 1089 of 14 September 2015 (the ‘Danish Companies Act’).
20 See: https://www.dkpto.dk/media/1107/beskyttelseafforretningskendetegn.pdf.
21 The Consolidate Collective Markets Act, (Denmark), No. 103 of 24 January 2012 (the Collective Marks Act).
22 Trademarks Act with comments, (Denmark), No. 223 of 26 January 2017, Comment No. 12.

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The first provision, read in conjunction with Section 15(1), states that a mark
that is identical or confusingly similar to an earlier trademark that is ‘well-known in this
country in the meaning stipulated in Article 6(b) of the Paris Convention’ is not registrable.
Section 15(2)(4) essentially implements Article 4(2)(d) of the Trademarks Directive.
The latter provision states that a mark is also not registrable if it is identical or similar
to a well-known trademark within the meaning of Section 15(2)(4), even if it is applied
for different goods and services than those for which the mark is well-known, if the use of
the earlier mark would imply that there is a connection between the marks, and the use
would take unfair advantage of, or be detrimental to, the distinctive character or the repute
of the trademark. This provision is worded in accordance with Article 16(3) of the TRIPS
Agreement.23

Company names
Company names may be registered as trademarks in Denmark. Moreover, if use of a company
name qualifies as trademark use, trademark rights may also be acquired through use. Outside
the world of trademarks, company names are primarily protected pursuant to Section 2 of
the Danish Companies Act. Most importantly, Section 2(2) essentially states that company
names must differ from other company names registered in the Danish Business Authority’s
IT system and must not include a family name, company name, distinctive name for real
estate, trademark, trade name and the like, which is not the (intellectual) property of the
company, or which may cause confusion on the part of the public.

Trade names and business names


As with company names, trade names and business names may qualify for trademark
protection without trademark registration, if trademark rights may be said to have been
acquired through use. In addition, Section 22 of the new Danish Marketing Practices Act,24
which came into force on 1 July 2017, stipulates that no person carrying on a trade or
business shall make use of any trademark or other distinctive business mark to which that
person is not legally entitled or make use of his or her own distinctive business marks in a
manner likely to cause such marks to be confused with those of other traders.
The provision is intended to offer supplemental protection to Section 4 of the
Trademarks Act for marks – or use of marks – that, for whatever reason, do not qualify
for trademark protection. As such, the provision is often invoked in trademark disputes.
However, the provision appears to have been gradually ‘outmatched’ by the Trademarks Act,
the Domain Names Act, the Companies Act and other specific legislation.25 Section 22 is a
national Danish rule that does not implement or reflect EU legislation.26

Geographical indications
The Danish Trademarks Act protects geographical indications in various ways. Sections 5 and
13 stand out. Pursuant to Section 5(2), which implements Article 6(1)(b) of the Trademarks

23 Knud Wallberg, Varemærkeret, (Djøf Forlag, 5th edition 2017) p. 344.


24 Marketing Practices Act, (Denmark), No. 426 of 3 May 2017 (the Marketing Practices Act).
25 Proposal for the Marketing Practices Act as put forward on 12 October 2016 by the Minister for Economic
and Business Affairs (Troels Lund Poulsen), comments to Section 22.
26 Ibid.

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Directive, the proprietor of a trademark shall not be entitled to prohibit a third party from
using, in the course of trade, indications concerning geographical origin. Moreover, pursuant
to Section 13(2)(1), which implements Article 3(1)(c) of the Directive, a trademark lacks
distinctive character and therefore shall not be subject to registration, if it consists exclusively
of signs or indications that may serve, in trade, to designate the geographical origin.

Domain names
Like many of the intellectual property rights described above, domain names may qualify
for trademark protection. Moreover, a domain name may be equivalent to a company name,
or it may be protected pursuant to the Danish Marketing Practices Act as a trade name or
business name. It may also be a graphical indication. Additionally, the Domain Names Act
offers primary protection for domain names or, if domain names are protected by other
legislation, supplemental protection. Pursuant to Section 25 of the Domain Names Act,
domain name registrants must not register and use internet domain names contrary to good
domain name practice.27 Moreover, registrants must not register and maintain registrations of
internet domain names solely for the purpose of selling or renting such domain names to other
parties.28 Section 25 serves as a general clause within the area of domain names and, according
to the preparatory works, allows for decision-making out of consideration of fairness.29

III REGISTRATION OF MARKS


i Inherent registrability
In Denmark, trademark applications are filed with the DKPTO. Online application is
available, and an application may be filed in English.30 In the latter case, the application
should be accompanied by a Danish translation of the list of goods and services.31 There is no
requirement to appoint a representative in Denmark, but in certain cases, the DKPTO may
invite the applicant to appoint a representative.32
Once the application is filed, an application number is added to the application and
a receipt is issued.33 The application fee may be paid along with the application, or it may
be paid within a period of one month, in which case an invoice will be generated.34 The
application fee for an application that covers three classes is currently 2,350 kroner. For
every additional class, an additional fee of 600 kroner is payable. Additional fees, as of
1 March 2017, may be found on the DKPTO website.35
Once an application is lodged with the DKPTO and the fee has been paid, the office
examines whether the list of goods and services, including the classification, is correct and

27 The Domain Names Act, Section 25(1).


28 Ibid., Section 25(2).
29 Consolidated Domain Names Act with Comments, (Denmark) No. 164 of 26 January 2014,
Comment No. 49.
30 The Registration Order, Section 5(1); http://iprights.dkpto.org/trademark/how-to-file.aspx.
31 Ibid., Section 5(3).
32 Ibid., Section 35(1).
33 The Registration Order, section 7(1); http://iprights.dkpto.org/trademark/how-to-file.aspx.
34 Ibid., Section 2(4).
35 http://iprights.dkpto.org/trademark/prices-and-payment.aspx.

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accurate, and whether the formal requirements are satisfied. Also, and perhaps even more
interestingly, the DKPTO examines whether there are any absolute or relative grounds for
refusing the application.36
If any absolute grounds for refusal are identified, such as a lack of distinctive character,
the office will inform the applicant of its intention to reject the application. The applicant
may submit its observations, but if these are not sufficiently persuasive, the office will proceed
with rejecting the application.37
See Section III.ii, below, regarding grounds for refusal. If no absolute grounds are
identified, and all formal requirements are satisfied, the DKPTO proceeds to publish the
registration (not the application) in Dansk Varemærketidende (Danish Trademarks Gazette)
when a registration certificate is issued.38

ii Prior rights
The DKPTO examines for various prior rights.39 The DKPTO searches for confusingly
similar marks in its database, which contains current Danish applications and registrations as
well as EU and international trademarks, provided they have validity in Denmark.
The DKPTO also searches the Central Business Register, which is the Danish state’s
master register of information about business. The search focuses on company names, which
the trademark may infringe, including particularly names that are identical or almost identical
to the applied mark, provided that the company is active within the same area of commerce
as the goods or services covered by the application that is subject to examination. Finally,
the DKPTO searches for rare family names, which are protected against commercial use by
others pursuant to the Family Names Act.40
The results of the search conducted by the DKPTO are compiled in a search report,
which the DKPTO sends to the applicant with a deadline by which the applicant should
respond.41 The evaluation is only guidance, meaning that even if numerous, persuasive prior
rights are identified, the applicant is free to decide to proceed with the registration, provided
that no absolute grounds for refusal have been raised against the application.

iii Inter partes proceedings


Oppositions
Anyone may oppose a trademark registration on the basis of absolute grounds for refusal.42
No particular legal interest is required.43 On the other hand, oppositions claiming relative

36 The Registration Order, Sections 8 and 9; http://iprights.dkpto.org/trademark/our-examination-of-your-


application.aspx.
37 Ibid., Section 10.
38 Ibid., Section 11.
39 Ibid., Section 9.
40 Family Names Act, (Denmark), No. 1816 of 23 December 2015 (the Family Names Act).
41 The Registration Order, Section 10(4); http://iprights.dkpto.org/trademark/our-examination-of-your-
application.aspx.
42 The Registration Order, Section 13; The Trademarks Act, Section 23.
43 See: http://vmguidelines.dkpto.dk/aa/aaa/sagsbehandlingsprocedurer/behandling-af-indsigelser.aspx.

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grounds for refusal may only be submitted by the proprietor of the prior rights on which
the opposition is based.44 An opposition must be filed within two months of the date of
publication in the Danish Trademarks Gazette.45 This is an absolute deadline.46
Anonymous oppositions are not allowed. Moreover, an opposition must be reasoned,
although not much is required of the reasoning.47 The opposition fee (2,500 kroner) may be
paid in a number of ways.48

Invalidity actions
In Denmark, revocation and invalidation actions may be submitted to the DKPTO pursuant
to Section 30 of the Trademarks Act or, pursuant to Section 29 of the Danish Trademarks
Act, to the Danish courts. If an application for revocation or invalidation is lodged with the
DKPTO, it must satisfy certain conditions.49 The starting point is that anyone may apply
for revocation or invalidation. However, as is the case with regard to oppositions, it is not
possible to base an application on third party rights. Moreover, the application must be
reasoned, and the applicant must pay a fee of 2,500 kroner, which may be paid in a number
of ways.50 If an application is lodged with the Danish courts, the parties will be subject to the
rules pertaining to civil procedures.

iv Appeals
Any decision rendered by the DKPTO may be appealed to the Board of Appeals for Patents
and Trademarks within two months.51 Moreover, decisions rendered by the DKPTO and the
Board of Appeals for Patents and Trademarks may be submitted to the courts.52

IV CIVIL LITIGATION
i Forums
Trials concerning national trademarks may, at first instance, be submitted to the city courts
as well as the Maritime and Commercial High Court, although either party to such a dispute
may demand that the case be referred to the Maritime and Commercial High Court.53
Disputes concerning EU trademarks must, at first instance, be submitted to the
Maritime and Commercial High Court, which has exclusive jurisdiction in such matters.54

44 Ibid.
45 The Registration Order, Section 13; the Trademarks Act, Section 23.
46 See: http://vmguidelines.dkpto.dk/aa/aaa/sagsbehandlingsprocedurer/behandling-af-indsigelser/
minimumskrav-til-indsigelsen.aspx.
47 Ibid.
48 See: http://iprights.dkpto.org/trademark/prices-and-payment.aspx.
49 See: http://vmguidelines.dkpto.dk/aa/aaa/sagsbehandlingsprocedurer/behandling-af
-administrative-ophaevelser/minimumskrav-til-anmodningen-om-ophaevelse.aspx.
50 See: http://iprights.dkpto.org/trademark/prices-and-payment.aspx.
51 The Registration Order, Section 13(7); the Trademarks Act, Section 46.
52 Ibid.
53 Consolidated Administration of Justice Act, (Denmark), No. 1257 of 13 October 2016
(the Administration of Justice Act), Section 225(3).
54 Ibid., Section 225(1).

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Judgments in trademark disputes rendered by the city courts may be appealed to the
high courts.55 Certain monetary thresholds apply, but these thresholds are generally not
relevant to trademark disputes.
Judgments rendered by the Maritime and Commercial High Court in trademark
disputes may be appealed to the high courts.56 Also, such judgments may be appealed to the
Supreme Court if the matter is of principal relevance and is of general significance to the
administration of justice and the legal development or has a significant social scope; or if other
special reasons justify that the case be heard by the Supreme Court in the second instance.57
In addition to ordinary trials, trademark disputes may also be submitted to the courts
in the form of preliminary injunction actions.58 An action for preliminary measures in a
trademark dispute may submitted, even if a trial concerning the same dispute is current.
Pursuant to Section 43b of the Trademarks Act, such actions may be submitted to the city
courts or the Maritime and Commercial High Court, although either party to such a dispute
may demand that the case be referred to the Maritime and Commercial High Court.59
Section  43c of the Trademarks Act, on the other hand, stipulates that if the preliminary
measures are to have effect in all EU Member States, an action for preliminary measures must
be submitted to the Maritime and Commercial High Court.
Decisions on preliminary measures rendered by the city courts may be appealed to the
high courts, whereas decisions on such measures rendered by the Maritime and Commercial
High Court must be appealed to the high courts.60 Decisions on preliminary measures with
effect in all Member States rendered by the Maritime and Commercial High Court must,
however, be appealed to the Eastern High Court.61 If some sort of preliminary measure is
awarded, a trial on the merits must be submitted within 14 days.62

ii Pre-action conduct
Before civil litigation is commenced, the infringed trademark proprietor will often approach
the infringer, often in the form of a cease and desist letter or similar. Obviously, such a letter
serves the purpose of avoiding legal proceedings. However, under Danish law there are other
advantages to approaching the infringer in this way. Firstly, a cease and desists letter ensures
that the infringer may no longer be said to act in good faith.63 Secondly, if the trademark
proprietor does not approach the infringer, the proprietor risks not being awarded (full) costs,
even if the subsequent action for preliminary measures or trial is successful.
No specific legislation covers the sending of cease of desist letters. However, pursuant
to Section 126 of the Danish Administration of Justice Act, Danish lawyers must adhere to

55 Ibid., Section 368(1).


56 Ibid., Section 368(4).
57 Administration of Justice Act, Section 368(4).
58 Ibid., Chapter 40.
59 Ibid., Section 225(3)
60 Ibid., Section 427.
61 The Trademarks Act, Section 43c(2).
62 The Administration of Justice Act, Section 425.
63 Jens Jakob Bugge et al.: Dansk Immaterialret II, bind II, Sanktioner og Håndhævelse, (Gads Forlag, 1st Ed.
2015) p. 157.

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‘good lawyer conduct’. This means that a lawyer acting on behalf of a trademark proprietor
must disclose information essential to the infringer’s assessment of risk, including as part of
a cease and desist letter.64
Before civil litigation is commenced, a trademark proprietor may also apply for the
securing of evidence pursuant to Section 653 of the Administration of Justice Act. As opposed
to actions for preliminary measures, securing of evidence actions must be submitted to the
bailiff’s courts.
In Denmark, there are generally three alternatives to civil litigation in trademark
disputes, namely arbitration, mediation and court mediation. All share one common
characteristic, namely that they only come into play if the parties to a trademark dispute
agree to pursue a path that is different from civil litigation.

iii Conduct of proceedings


Discovery and disclosure as part of proceedings
Pursuant to Chapter 29a of the Danish Administration of Justice Act, a party to an intellectual
property infringement trial may ask the court to order the opposing party as well as a third
party to disclose certain infringement information under certain circumstances, provided that
it has already been fully established that an infringement has occurred. In addition, pursuant
to Sections 298 and 299, a party to an intellectual property infringement trial may ask the
court to order the opposing party as well as a third party to produce evidence, on which the
asking party intends to rely. If the opposing counsel fails to comply with such orders, the
court may assume that the factual circumstances are as the party asking for disclosure has
presented them to the court. If a third party fails to comply, the third party may face various
sanctions, including fines. Chapter 29a of the Danish Administration of Justice Act does not
apply to actions for preliminary measures.65

Submission of legal and factual evidence


In the context of actions for preliminary measures, there are very few restrictions on
submissions of legal and factual evidence. In most cases, the courts will allow examinations
of party representatives and witnesses, submissions of various documents, submissions of
products and other physical forms of evidence, expert opinions (including one-sided expert
opinions). However, the court may restrict evidence, which will prolong the injunction case
unreasonably.66
In the context of trials at first instance, various evidence restrictions apply. First of all,
evidence must be submitted within certain time frames that are normally fixed by the courts.
Generally, evidence will be allowed, even if has been obtained illegally.67
On the other hand, access to submit expert opinions is restricted in the context of trials.
Expert opinions obtained by one party before the trial may, in most cases, be produced as
evidence, whereas expert opinions obtained by one party, after the trial is initiated, may not
be submitted.

64 Judgment of the Maritime and Commercial High Court of 6 September 2017 in Case Nos. V-64-14 and
V-27-15.
65 Clement Salung Petersen, Immaterielrettigheder og foreløbige forbud, (DJØF Forlag, 1st Ed. 2008), p. 118.
66 Administration of Justice Act, Section 417(1).
67 U 2012 1893 V.

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Written and oral proceedings


In Denmark, the starting point is that cases are pleaded orally.68 Even so, cases may be
pleaded in writing, if the parties agree to it, and if special circumstances support that the trial
be pleaded in writing.69 Where the focal point of a trial is one of law and not one of evidence,
such a trial may be suitable for pleading in writing.

Legal representation
The starting point is that only lawyers may represent parties at trial.70 There are exceptions
to this starting point, but they are never relevant in the context of trademark disputes. That
said, any party may represent itself, himself or herself,71 although the courts may force such
clients to retain legal representation.72

Cost recovery
In terms of cost recovery, the starting point is that the losing party must cover the costs
inflicted by the trial on the winning party, unless the parties have agreed otherwise.73 This
wording might suggest that, in Denmark, trial costs are fully recovered. This is not the case.
Out-of-pocket expenses, such as those associated with obtaining an expert opinion before the
court, are normally fully covered. However, legal fees are only covered up to an ‘appropriate
amount’, which, in principle, is awarded arbitrarily by the courts.74 The presidents of the
Western and Eastern High Courts have issued a brief on costs in civil trials, which, among
other things, contains a table of costs corresponding to the value of the case, which is mostly
adhered to.75

Time frames
The Danish Administration of Justice Act does not set out any maximum time frames for
civil proceedings.

iv Remedies
Trial remedies
The Trademarks Act is quite clear about which remedies may be applied for in a regular
trial concerning trademark infringements. If a trademark infringement is established, the
trademark proprietor may, in accordance with Article 13 Enforcement Directive,76 claim

68 Administration of Justice Act, Section 365(2).


69 Ibid., Section 366(1).
70 Ibid., Section 131.
71 Ibid., Section 259(1).
72 Ibid., Section 259(2).
73 Ibid., Section 312(1).
74 Ibid., Section 316(1).
75 See: https://www.domstol.dk/VestreLandsret/Documents/Sagsomkostninger%20og%20salærer/
Inkassotakster,%20juni%202017.pdf.
76 Directive 2004/48/EC on the enforcement of intellectual property rights, of the European Parliament and
of the Council, of 29 April 2004 (the Enforcement Directive).

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reasonable remuneration and damages.77 The term ‘reasonable remuneration’ means a licence
fee. Reasonable remuneration may be awarded, even if no loss has been substantiated. On the
other hand, damages are only awarded if some sort of loss may be established.
In addition to reasonable remuneration and damages, a trademark proprietor may, inter
alia, claim that goods infringing a trademark right be:
a temporarily withdrawn from the trade;
b finally withdrawn from the trade;
c destroyed; or
d handed over to the trademark proprietor;

and that the infringing trademarks be removed.78

Preliminary remedies
If, in the context of an action for preliminary measures, a trademark infringement is rendered
likely (as opposed to demonstrated), the applicant may ask the court to order that the subject
of the action for preliminary measures is ordered to perform, abstain from or withstand
certain actions.79 Moreover, the applicant may ask the court to seize goods that are likely to
be used to violate an injunction or an order.80

V OTHER ENFORCEMENT PROCEEDINGS


Pursuant to Section 42(2) of the Trademarks Act, intentional trademark infringements in
aggravating circumstances may result in imprisonment of up to one year and six months, unless
a higher penalty is warranted under Section 299b of the Danish Criminal Code.81 Section 299b
of the Criminal Code states that trademark infringements of a particularly serious nature may
result in imprisonment for up to six years, if the purpose of the trademark infringement was to
obtain unjustified profits or if, regardless of the profits obtained, the circumstances are particularly
aggravating. This means that if a trademark proprietor is faced with particularly grave trademark
infringements, which fall under the scope of either Section 42(2) of the Trademarks Act or
Section 299b of the Criminal Code, the trademark proprietor may report such infringements
to the State Prosecutor for Serious Economic and International Crime (SØIK).82 If following
an investigation, SØIK decides to proceed with the charges, the trademark proprietor may, in
principle, file a claim for damages as part of the criminal proceedings.83 However, trademark
proprietors often find that the courts decide to carve out claims for damages, leaving it to the
trademark proprietors to initiate civil proceedings.84

77 Trademarks Act, Section 43(1).


78 Ibid., Section 44(1).
79 The Administration of Justice Act, Section 411(1).
80 Ibid., Section 423(1).
81 Consolidated Criminal Code Act, (Denmark), No. 977 of 9 August 2017 (the Criminal Code).
82 See: https://vidensbasen.anklagemyndigheden.dk/h/6dfa19d8-18cc-47d6-b4c4-3bd07bc15ec0/VB/
ba1b8f49-7b6d-445b-a0de-edf4668d448b
83 The Administration of Justice Act, Section 991.
84 Ibid., Section 991(4).

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VI RECENT AND PENDING CASES


Karnov Group Denmark A/S v. J H Schultz Information A/S
In July 2016, the Danish Eastern High Court ruled, at second instance, in an action
for preliminary measures submitted by Karnov Group Denmark A/S (Karnov) against
J H Schultz Information A/S (Schultz).85 This action and the decisions rendered as part of it
drew a great deal of attention in Denmark.
The focal point of the case was the question of whether Karnov, provider of the leading
case-law database in Denmark and the proprietor of, inter alia, the trademark UfR (word),
could prohibit Schultz from using UfR (word) as a metatag and identifier as part of Schultz’s
competing subscription-based online case-law database.
For the purpose of identifying decisions and judgments in its database, Karnov uses
a particular format known as the UfR-number, which contains the trademark UfR (word).
Karnov had learned that Schultz also used this UfR-number in its database. Inter alia, Schultz
allowed its users to search for judgments using the UfR-number. This led Karnov to submit
a request for a preliminary injunction against Schultz to the Maritime and Commercial
Court, claiming that this use of the UfR-number constituted a trademark infringement of
its unregistered rights to, inter alia, UfR (word) pursuant to Sections 4(1)(1) and 4(1)(2) of
the Danish Trademark Act. Schultz’s principal argument was that use of the UfR-number
in its database did not constitute trademark use, and that in any case use of UfR (word)
was allowed pursuant to Sections 5(2) and 5(3) of the Trademarks Act, which implements
Articles 6(1)(b) and 6(1)(c) of the Trademarks Directive.
The Maritime and Commercial Court granted the injunction.86 However, on appeal,
the Danish Eastern High Court ruled that Schultz had not used Karnov’s trademark, stating
explicitly that the function of the trademark had not been affected. The dispute is now
pending before the Maritime and Commercial High Court once more, this time in the form
of a trial on the merits. Not many Danish judgments have relied explicitly on the functions
of the trademark in question, making this judgment particularly interesting.

Benedikte Utzon v. Topbrands v/ Lasse Skaarup Jensen


The Danish Supreme Court ruled in the case of Benedikte Utzon v. Topbrands v/ Lasse Skaarup
Jensen in December 2016. Although fairly complex, the case essentially dealt with two
questions: (1) had the unregistered trademark BENEDIKTE UTZON been assigned from
Benedikte Utzon A/S (now liquidated following bankruptcy) to the Danish clothing company
Topbrands; and (2) did Benedikte Utzon’s continued use of BENEDIKTE UTZON amount
to a trademark infringement?
Danish fashion designer Benedikte Utzon had, as a sole trader, marketed and sold
clothing under the trademark BENEDIKTE UTZON since 1995. In 2009, she invested
in a limited liability company, Benedikte Utzon A/S. Instead of paying for shares with cash,
she essentially paid for the shares with her business and its assets, including the unregistered
trademark BENEDIKTE UTZON. Benedikte Utzon A/S declared bankruptcy in 2012.
Benedikte Utzon was granted the right to buy back the trademark rights, which she had
previously assigned, but turned down the offer. Instead, Topbrands purchased the trademark

85 Decision of the Eastern High Court of 7 July 2016 in Case No. B-267-16.
86 Decision of the Maritime and Commercial High Court of 18 December 2015 in Case No. A-24-15.

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rights of Benedikte Utzon A/S, including the unregistered trademark BENEDIKTE UTZON.
Nevertheless, Benedikte Utzon continued to use BENEDIKTE UTZON in various forms,
including for clothing.
Topbrands took legal action against Benedikte Utzon, claiming that its trademark
rights had been infringed. Benedikte Utzon, on the other hand, claimed that, regardless
of Topbrands’ trademark rights, she had a right to her own name and signature, relying on
(what is now) Article 12(1)(a) of the EUTMR (European Union Trade Mark Regulation) as
well as Section 5(1) of the Danish Trademarks Act, which implements Article 6(1)(a) of the
Trademarks Directive.
The Maritime and Commercial Court found that the trademark rights had been validly
assigned to Topbrands, and that Benedikte Utzon’s continued use of her name for goods and
services covered by Topbrands’ trademark rights was not in accordance with good marketing
practices and thus constituted a trademark infringement. This was confirmed by the Danish
Supreme Court. The judgment of the Supreme Court was in alignment with other recent
Danish court decisions and thus reiterated that, under Danish law, an assignment of a
trademark consisting of a personal name may easily lead to a situation where the person
holding the personal name in question may in fact not use that name as a trademark.

VII OUTLOOK
A new Trademarks Act is expected to come into force on 1 January 2019.87 The new act will
implement the New Trademarks Directive.88 Accordingly, the DKPTO has already sent out
invitations to user meetings and interviews throughout 2017.89 So far, the DKPTO has, inter
alia, focused on the principle of rights acquired through use, which informs Sections 3(1)(2)
and 15(4)(2) of the Trademarks Act as well as Sections 3 and 22 of the new Marketing Practices
Act.90 Denmark has a very different approach from most other Member States, which require
some sort of acquisition of distinctiveness, which in itself is a potential problem. Moreover,
rights acquired through use are difficult to uncover prior to use and registration. Against this
background, the DKPTO seems to lean towards amending the provisions on rights acquired
through use.91 Also, the DKPTO has asked questions pertaining to the interplay between
company names and trademarks as well as the protection of personal names.
More issues are likely to be raised as the implementation process unfolds, and for
obvious reasons trademark practitioners and trademark professionals are monitoring the
process closely.

87 See: https://www.dkpto.dk/information/lovstof/varemaerkelov-2019.
88 Directive (EU) 2015/2436, to approximate the laws of the EU Member States relating to trademarks, of
the European Parliament and of the Council of 16 December 2015 (the New Trademarks Directive).
89 See: https://www.dkpto.dk/information/lovstof/varemaerkelov-2019.
90 See: https://www.dkpto.dk/media/1736913/samlet-overordnet-introduktion.pdf.
91 Ibid.

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Chapter 6

EUROPEAN UNION OVERVIEW

Christos Chrissanthis, Xenia Chardalia and Antonia Vasilogamvrou1

I OVERVIEW
The European Union (EU) consists of 28 Member States. Three more countries – Norway,
Iceland and Liechtenstein – form part of the European Economic Area (EEA), which is a
European free trade association. These three countries apply most EU legislation. Switzerland
has not formally joined the EEA, but has bilateral agreements with the EU enabling it to
participate in the European Single Market. The Single Market is considered to be one of the
richest worldwide, and for most consumer products, prices in the EU are substantially higher
than elsewhere. The GDP for the 28 Member States of the EU in 2016 was €14.855 billion;
more than half of this was generated by Germany, the United Kingdom and France. The
average GDP per capita for 2016 in the 28 Member States was US$35,632.22 (€29,794.00).
The EU has detailed legislation on trademarks. On the one hand, there is EU legislation
approximating the national trademark laws of the Member States; hence the national laws
of the Member States on trademarks are very similar to one another. On the other hand, the
EU has created the European Union Trademark system (EUTM), which is an innovative
tool of European law and is a unitary trademark right, which is acquired by way of a single,
central filing with the European Union Intellectual Property Office (EUIPO) and applies
to all Member States. It is worth noting that, similarly, the EU has harmonised the national
laws of its Member States on industrial designs and has created a unitary design right (also
acquired by a single, central filing with EUIPO) and a unitary non-registered design right,
both of which extend to all Member States. The EU has also adopted legislation to facilitate
the enforcement of all intellectual property rights, including trademarks and designs. This
legislation facilitates the collection of evidence in cases of alleged infringement, as well as the
quantification of damages.
The EU has also set up a system whereby national customs authorities can inspect
and control the movement of counterfeit goods and arrest such goods passing through EU
customs. There is also EU legislation obliging Member States to use special courts for cases
relating to the EUTM. As a result, these courts usually have a greater level of expertise on
trademark issues. EUIPO has created a network of cooperation and communication with
national trademark offices in Member States, which promotes a uniform application of
trademark law by all national trademark offices, which have also adopted common guidelines
and policies on specific issues. Finally, the EU applies a legal regime that is favourable to

1 Christos Chrissanthis and Xenia Chardalia are partners and Antonia Vasilogamvrou is an associate at
Christos Chrissanthis & Partners Law Firm.

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trademark owners, preventing parallel imports from other countries into the EU. As a result,
owners of EU trademarks or national trademarks in Member States can effectively partition
the Single Market and apply higher prices in the EU than in other geographical markets.
There are some legal issues that are either unique to the EUTM or are not yet settled
by  the General Court of the European Union (GCEU) and the Court of Justice of the
European Union (CJEU); these include the following:
• Requirements regarding evidence to establish acquired distinctiveness are rather
demanding in the jurisprudence of the CJEU. One must prove that acquired
distinctiveness exists ‘through’ the EU. This means that, in order to establish acquired
distinctiveness, one has to produce evidence in relation to each and every one of the
28 Member States. Acquired distinctiveness in the majority of Member States, or even
in a substantial number of Member States, does not suffice.
• Requirements regarding evidence to establish reputation (fame) are rather demanding
too. EUIPO, the GCEU and the CJEU scrutinise very closely the evidence provided. It
is not sufficient to prove a large volume of sales or of advertising expenditure. It must
be proved that this has resulted in market penetration as well. Reputation does not
depend on the volume of the advertising investment of the trademark owner, but on
how efficiently a trademark has penetrated the market and become easily recognisable
to consumers.
• Case law struggles with cases involving conflicts regarding marks that contain
non-distinctive or descriptive elements, and court jurisprudence has not yet clarified
how such cases are dealt with. Some judgments hold that in comparing the respective
marks and in assessing the likelihood of confusion between them, elements that are
non-distinctive or descriptive are disregarded, and that the likelihood of confusion is
assessed on the basis of distinctive and unique elements only. Other judgments hold
the opposite view, on the grounds that consumers who come across the marks will
notice the non-distinctive or descriptive elements and may well be misled by them. A
significant number of cases that are subject to litigation relate to marks that contain
non-distinctive or descriptive elements.
• Case law also struggles on the issue of dilution. In 2008 and 2009, the CJEU described
dilution very broadly in cases such as L’Oréal v. Bellure,2 Intel 3 and TDK.4 Dilution
includes free riding, the lessening of distinctive value, as well as negative publicity or
negative implications. However, in the cases that followed, one can identify a clear
attempt to restrict the breadth of the dilution concept in way that is both practical and
easy to apply by courts. So, in cases such as Calvin Klein5 and Kinder,6 the CJEU held
that, unless the former and the latter marks are sufficiently similar, dilution cannot
be established. In addition, the CJEU reasoned that, in assessing such similarity, the
reputation of the earlier mark shall not be taken into account and that such reputation
is assessed only at a later stage, in order to consider whether there is a likelihood that

2 CJEU, C-487/07, 18 June 2009.


3 CJEU, C-252/07, 27 November 2008.
4 CJEU, C-197/07, 12 December 2008.
5 CJEU, C-254/09, 2 September 2010.
6 CJEU, C-552/09, 24 March 2011.

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consumers might make a link between the two marks; but this consideration as to a
possible link will not follow at all unless sufficient similarity is not established in the
first place.
• EU law has also developed a broad concept of ‘bad faith’ in applying for trademark
registration. Bad faith can be established when an application is filed without any
obvious commercial justification, particularly if the trademark registration can be used
to prevent free competition from other competitors.7

II LEGAL FRAMEWORK
i Legislation
The major EU legislation on trademarks and designs consists of the following:
• Directive 2008/95/EC, on the approximation of national laws of the Member States
on trademarks. This Directive has been replaced by Directive 2015/2436/EU, but the
latter has not yet been implemented in the national laws of the Member States – the
deadline for implementation is 14 January 2019;
• Regulation 207/2009/EC (as amended by Regulation 2015/2424/EU) regarding the
EUTM;
• Directive 1998/71/EC, on the approximation of national laws of the Member States on
industrial designs;
• Regulation 6/2002/EC on community design;
• Directive 2004/48/EC on the enforcement of intellectual property rights; and
• Regulation 608/2013/EU on customs enforcement of intellectual property rights.

Moreover, the EU is party to the following international conventions regarding intellectual


property matters:
• Paris Convention (1883) as amended on 28 September 1979;
• World Trade Organization (WTO) and the Protocol on Trade Related Aspects of
Intellectual Property Rights (TRIPS) Agreement (1994);
• Nice Classification, established by the Nice Agreement (1957) (as amended in 1979),
on the international classification of goods and services in trademark applications;
• Vienna Agreement (1973, as amended in 1985), on the classification of figurative
elements of trademarks;
• Protocol Relating to the Madrid Agreement concerning the International Registration
of Marks (1989) through WIPO (World Intellectual Property Organization);
• Trademark Law Treaty (1994);
• Singapore Treaty (2006), on the law of trademarks;

7 See: Chocoladefabriken Lindt & Sprüngli AG v. Franz Hauswirth GmbH (C-529/07, 11 June 2009)
(hereinafter Lindt & Sprüngli); Peeters Landbouwmachines BV v. Office for Harmonisation in the Internal
Market (Trade Marks and Designs) (OHIM ) (T-33/11, 14 February 2012) (hereinafter Bigab); SA.PAR. Srl
v. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM ) (T-321/10,
11 July 2013) (hereinafter Gruppo Salini; and Carrols Corp. v. Office for Harmonisation in the Internal
Market (Trade Marks and Designs) (OHIM ) (T-291/09, 1 February 2012) (hereinafter Pollo Tropical ).

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• Locarno Agreement (1968, as amended in 1979), on the international classification of


design rights; and
• Hague Agreement Concerning the International Registration of Industrial Designs,
known as the Hague System (Geneva Act 1999).

As a result of the accession of the EU to the above international conventions, the EUTM is
connected to both the Paris Convention and the Madrid Protocol. This means that an EUTM
application can enjoy international priority under the Paris Convention, and trademark
applications filed in other Paris Convention countries can enjoy international priority before
EUIPO, when an EUTM application is filed. Moreover, an EUTM application can be the
basis for an international registration with WIPO, designating other countries that have
acceded to the Madrid Protocol; in addition, a trademark application filed in any Madrid
Protocol country can be the basis for an international registration with WIPO, designating
the EU and, hence, resulting in an EUTM.

ii Authorities
Trademark registration process
EUIPO, which is based in Alicante, Spain, is the organisation administering the EUTM
registry; it receives and examines EUTM applications, oppositions, cancellations, etc.
EUTM applications are assessed by an Examiner on absolute grounds only (i.e., lack
of distinctiveness, or the mark being generic, descriptive, deceptive, commonplace, etc.).
Relative grounds, that is to say earlier rights, are not examined by EUIPO on an ex officio
basis. It is up to the owners of earlier rights to invoke them by way of formal opposition
proceedings. Should owners of earlier rights not initiate formal opposition proceedings,
an EUTM application shall be registered, even though it may be confusingly similar to an
earlier right.
EUIPO examines oppositions and cancellations in two stages. The first is an examination
of the opposition or cancellation by the Operations Department of EUIPO. The second
stage is carried out by the EUIPO Boards of Appeal, which examine appeals filed against
decisions of the Operations Department. The time limit to file an appeal is two months
from the notification of the contested decision. The Boards of Appeal review cases on both
matters of fact and matters of law. The procedure for oppositions, cancellations and appeals
is in writing; there is no oral hearing. The parties are given the opportunity to file written
submissions and evidence, as well as a rejoinder. The average time within which a decision is
issued is about 12 months from the filing of an opposition, cancellation or appeal.
The decisions of the EUIPO Boards of Appeal can be appealed before the General Court
of the EU (GCEU). Judgments of the GCEU can be appealed before the Court of Justice of
the European Union (CJEU). An appeal to the GCEU is referred to as an ‘application’. The
GCEU and the CJEU review cases on matters of law only and do not re-evaluate the evidence
and the facts.8 As a result, the parties are not allowed to produce new evidence, or to submit
new arguments before the GCEU or the CJEU for the first time.9

8 Article 65(2) of Regulation 207/2009/EC and Article 58 of the Statute of the CJEU; see also case law
such as GCEU, T-269/06, 19 November 2008, and T-407/08, 25 June 2010, as well as CJEU, C-182/16,
26 July 2017.
9 GCEU, T-576/12, 15 July 2014; T-258/16, 7 June 2017; T-789/14, 14 June 2016; and CJEU442/15,
22 September 2016.

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The time limit to file an appeal with the GCEU is two months from notification of the
contested decision. However, the rules of procedure of the GCEU provide that this time limit
is extended on account of distance by 10 more days. Moreover, in the event that notification
of the contested decision was effected by electronic means, it is deemed to have occurred five
days after it was placed in the inbox area of the interested party.10 This means that the time
limit to file an appeal is extended by five more days.
The time limit for an appeal before the CJEU against a judgment by the GCEU is,
again, two months from the notification of the contested judgment.
The procedure before the GCEU and the CJEU consists of a written part and an oral
part, which is optional. The appeal (application) is forwarded by the GCEU or the CJEU
to EUIPO, which is given two months to file a response. The written submissions of the
parties must comply with certain restrictions as to the number of pages (i.e., an average
of 15  pages); written submissions must also be accompanied by detailed annexes to any
documents or other evidence invoked by the parties. The Court will then forward the written
submissions to the other litigant party, but there are no rejoinders; so, in complicated cases,
an oral hearing is usually necessary to submit counter-arguments to the written submission
of the other party. After the written part of the proceedings has been closed, the Court invites
the parties to submit an application for an oral hearing and to explain the reasons why an
oral hearing is necessary. Unless one of the parties submits a request for an oral hearing, it is
highly improbable that the Court will fix one on its own initiative. In any case, it is up to the
court to decide whether the oral part is necessary.
In cases such as oppositions and cancellations, which are inter partes cases, an appeal
to the GCEU against a decision by the EUIPO Boards of Appeal is addressed only against
EUIPO and not against the other litigant party to the proceedings before EUIPO. As a result,
the defendant in appeal proceedings before the GCEU and the CJEU is always EUIPO. The
other litigant party to EUIPO proceedings is given the chance to intervene in the proceedings
before the GCEU by filing a written response to the appeal, within two months of notification
of the appeal. EUIPO is always a party to proceedings before the GCEU.

Trademark enforcement
Enforcement of EUTMs is achieved through the national courts of the Member States.
Article 95 of Regulation 207/2009/EC provides that Member States shall designate in their
territories a limited number of possible national courts and tribunals of first and second
instance, which shall have competence to deal with infringement of EUTMs. As a result,
the national courts in all Member States dealing with trademark infringement cases have
developed a relatively high level of expertise in trademark cases.

iii Substantive law


Infringement of registered EUTMs is established in the following cases: (1) unauthorised
use by a third party in the course of trade, resulting in the likelihood of confusion, or the
likelihood of association; (2) unauthorised use of a mark with reputation by a third party
in the course of trade, resulting in dilution; and (3) illegitimate parallel imports, where
trademark rights have not been exhausted.

10 Article 3(4) of EUIPO Executive Director Decision EX-17-4-16 August 2017.

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Likelihood of confusion and likelihood of association


Unlike US trademark law, likelihood of association is deemed to be part of likelihood of
confusion and not a separate type of infringement. All types of likelihood of confusion are
actionable, i.e., forward confusion, reverse confusion, post-sales confusion and initial interest
confusion. The test for likelihood of confusion is a multifactor one, taking into account
the level of similarity of the respective marks and goods or services, the level of consumers’
attention and awareness, distribution channels, the level of recognition of the earlier mark
(assessed on the basis of longevity of use, market shares, geographical expansion of use, volume
of advertisement expenditure, etc.), actual confusion, as well as intent of the unauthorised
user (if it can be established). Similarity of marks can be visual, aural or conceptual. Goods
are similar, if they are made of the same raw materials, or serve similar needs, or are addressed
to the same group of consumers. The level of similarity of the respective marks and goods
or services can be low, average or high. The comparison is based on the overall impression
created by the respective marks, and likelihood of confusion is appreciated globally. The
analysis of likelihood of confusion always starts with determining the level of attention and
awareness of consumers in connection to the goods or services concerned in each specific
case. Consumers’ attention is deemed to be higher in respect of pharmaceuticals, goods that
are of high purchase value,11 and goods or services addressed to professionals.
The rules that are more often applied in respect of likelihood of confusion are:
• likelihood of confusion is presumed in cases of identity of both the respective marks
and the respective goods or services;
• likelihood of confusion is established when the earlier mark is incorporated as such in
the latter;
• likelihood of confusion is assessed on the basis of dominant elements of the respective
marks, while descriptive or commonly used elements are not taken into account; it
should be noted, however, that this rule is not always consistently applied;
• the more distinctive the earlier mark is, the more probable likelihood of confusion
is; and
• likelihood of confusion is more probable when the earlier rights consist of a series of
similar marks (family of marks), which are all used in the course of trade in respect of
a family of similar products; in such cases, the likelihood of confusion may be that the
consumer may believe that the junior mark or product belongs to the same family.

Well-known marks – dilution and bad faith


Well-known marks, i.e., marks with reputation, enjoy additional protection, including
protection against the likelihood of dilution. Reputation is assessed on the basis of market
shares, volume of sales, volume of advertising investment, longevity of use, etc. (the test is
again a multifactor one).

11 CJEU, C-361/04, 12 January 2006.

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The prerequisites for establishing dilution are (1) similarity between the earlier and the
later marks; (2) likelihood of a link in consumers’ minds between the earlier and the later
marks; (3) unfair advantage in favour of the later mark from the reputation of the earlier
mark, or detriment to the reputation of the earlier mark; and (4) lack of any due cause
justifying such unfair advantage or detriment.
Dilution may consist of one or more of the following:
• free riding on the reputation of another, that is to say when the later mark becomes
recognisable to consumers more easily, faster and using less advertising expense;
• the later mark is affixed to products of inferior quality, or there is some other negative
publicity or negative connotations or implications against the earlier well-known
mark; or
• there is a lessening of the distinctive value of the earlier well-known mark.

Under Regulation 207/2009/EC, well-known marks are also protected, according to


Article  6  bis of the Paris Convention, against registration of later marks in bad faith. In
addition, any mark, even if not well known, may be revoked and cancelled, if it can be
established that it has been registered in bad faith. The concept of bad faith, in the context
of revocation, is broader than in the context of Article 6 bis of the Paris Convention. For the
purposes of revocation under Regulation 207/2009/EC, an application is filed in bad faith, if
there is no obvious commercial justification that could reasonably justify such an application,
and particularly if the trademark registration is used with the sole purpose of preventing other
competitors from using the same.12

Parallel imports and exhaustion of rights


The EU has developed a legal regime that is particularly favourable to trademark owners
against parallel imports from other non-EEA countries. As a result, trademark owners can
partition the EU from other markets and can apply higher prices within the EEA. This is
because under EU law, trademark rights are exhausted only if the trademark owner, or a party
acting with his or her consent, has put the specific goods (i.e., those that have been imported
in an EU Member State by a parallel importer) on the market in another EU or EEA country.
The consent of the trademark owner is not assumed, but must be established on the facts.
For example, the European Court of Justice (ECJ) has clarified that an authorised distributor
in a non-EEA country that exports goods in a EEA country is, in principle, not acting with
the consent of the trademark owner. The burden of proof is on the parallel importer. As a
result, parallel imports from non-EEA countries are in principle prohibited and amount
to trademark infringement, while parallel imports from EEA countries are in principle
allowed, provided that it can be established that the goods were first put on the market by the
trademark owner or with his or her consent. Good faith of the parallel importer is irrelevant.

12 See: Lindt & Sprüngli (C-529/07, 11 June 2009), Bigab (T-33/11, 14 February 2012), Gruppo Salini
(T-321/10, 11 July 2013) and Polo Tropical (T-291/09, 1 February 2012).

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III REGISTRATION OF MARKS


i Registrability
Types of marks
Any sign may be registered as an EUTM, if it can distinguish the goods or services of one
business enterprise from those of another,13 and if it can be represented graphically in a clear,
precise, self-contained, easily accessible, intelligible, durable, objective, unambiguous and
consistent way.14
An EUTM may indicatively consist of one or more of the following:
a words affixed to products or used in the course of providing services;
b letters, abbreviations, numbers, names (both first names and surnames);
c slogans and short phrases;
d colours and colour combinations; although case law suggests that registration of single
colours and simple colour combinations (i.e., consisting of two or three coloured
stripes) is possible only if acquired distinctiveness through use is established;15
e designs, including 3D designs, provided they are distinctive and not of a merely
decorative nature;
f the shape of the product, or of its packaging, product labels and product trade dress;
g company names and distinctive titles used to identify the premises where goods or
services are offered to consumers;
h surface designs, colour patterns and design patterns, provided they are distinctive; or
i collective marks and certification marks.

Non-traditional marks, such as sounds, tastes, smells, touch, position marks, 3D representation
of a state, holograms or movement marks, are in principle registrable, provided they are
distinctive and capable of being represented graphically. In practice, however, registration of
such marks may not always be possible, because it is not always possible to represent them
graphically in a clear, precise, self-contained, easily accessible, intelligible, durable, objective,
unambiguous and consistent way.16

Absolute grounds
Absolute grounds for rejecting an EUTM application include (1) lack of distinctiveness,
(2) the mark being generic or descriptive, (3) commonplace, (4) deceptive, (5) functional,
either technically or aesthetically, or (6) contrary to public policy, or morality. In addition,
marks are excluded from registration if they are similar to designations of origin, geographical
indications, traditional terms of wines, traditional specialities guaranteed, or plant varieties,
which are protected under EU law, or under international conventions to which the EU is
a party.

13 CJEU, C-321/03, 20 January 2007.


14 CJEU, C-273/00, 12 February 2002 and C-104/01, 6 May 2003.
15 CJEU, C-104/01, 6 May 2003 and C-49/02, 24 June 2004.
16 See GCEU, T-305/04, 27 October 2005 concluding that smells cannot be represented graphically.
However, sound marks can be represented graphically by way of musical notations (stave), showing a clef
and musical notes (CJEU, C-283/01, 27 November 2003) or by way of an MP3 file accompanied by
additional suitable graphical representation (EUIPO Decision EX-05-3, 10 October 2005).

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Absolute grounds are destined to strike a fair balance between trademark rights (which
are exclusive rights – legal monopolies) on the one hand, and free competition on the other
hand.17 Absolute grounds are assessed in view of the respective goods or services applied for
(i.e., a mark may be descriptive in respect of some goods, but not of others), as well as in view
of the perception of the public (i.e., whether the public perceives a mark as an indication of
origin or not).18 Although the same criteria are used for all types of marks, public perception
may differ for certain types of marks. Because of linguistic or cultural differences among the
Member States, a mark may be descriptive, or commonplace, or may lack distinctiveness in
some Member States, but not in all of them. Owing to the ‘unitary’ nature of the EUTM,
a mark qualifies for registration as an EUTM only if it is free of any objections based on
absolute grounds in all Member States. So, if a mark is descriptive in only one Member State,
it cannot be registered as an EUTM and the respective application will fail.
However, an application for an EUTM that fails because of problems in one or more
Member States may be converted into applications for national trademarks in those Member
States where the problems do not exist. National applications that result from this conversion
shall enjoy the same priority as the application for the EUTM that failed.
Acquired distinctiveness through use is taken into account to compensate for lack of
inherent distinctiveness, descriptiveness, or the fact that a mark is commonplace. However,
acquired distinctiveness must exist ‘throughout the EU’ and must be evidenced in respect
of every single Member State.19 It is not sufficient to establish that the mark enjoys acquired
distinctiveness in the majority of Member States or in a substantial part of the EU. Recently,
a mark consisting of the shape of Nestlé’s ‘Kit Kat’ wafer was cancelled because, on the
evidence, it enjoyed acquired distinctiveness in only 10 Member States (at a time when the
EU comprised of 14 Member States).20 Similarly, in another recent case before the EUIPO
Boards of Appeal, Adidas failed to prove acquired distinctiveness ‘throughout’ the EU for its
much disputed figurative mark consisting of ‘three parallel stripes’, since it submitted market
survey reports relating to only 10 of the 28 EU Member States; as a result Adidas’ ‘three
parallel stripes’ mark was cancelled, owing to lack of distinctiveness.21 On the other hand, a
mark may acquire distinctiveness through use, even though it was not used as such, but only
as a part of a larger mark. So, in another Nestlé’s ‘Kit Kat’ case, the slogan ‘Have a Break’ was
found to enjoy acquired distinctiveness, although it has been used only as part of the slogan
‘Have A Break . . . Have A Kit Kat’.22
The following are some other notable examples from case law on absolute grounds.
• The figurative and position mark of K-Swiss, consisting of ‘five parallel stripes’
appearing on athletic shoes, was refused registration for lack of distinctiveness, as being
of a merely decorative nature.23
• Adidas’ much disputed figurative mark consisting of ‘three black parallel stripes before a
white background’ was cancelled by the EUIPO Boards of Appeal for lack of (inherent,
or acquired) distinctiveness. Interestingly, the decision noted that it was unclear

17 See CJEU, C-191/01, 23 October 2003.


18 CJEU, C-265/09, 9 September 2010 and C-64/02, 21 October 2004.
19 CJEU, C-98/11, 24 May 2012; see also CJEU, C-215/14 16 September 2015.
20 GCEU, T-112/13, 15 December 2016.
21 EUIPO Boards of Appeal, 7 March 2017, R-1515/2016-2.
22 CJEU, C-353/03, 7 July 2005.
23 GCEU, T-3/15, 4 December 2015.

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whether the mark actually used in the market by Adidas was always ‘three parallel black
stripes before a white background’ or ‘two white (or other light colour) stripes before a
black (or other dark-coloured) background’.24
• Louis Vuitton’s fabric design consisting of a ‘chessboard with light and dark brown
squares’ was refused registration for lack of inherent distinctiveness, as being a decoration
only, while the owner failed to establish acquired distinctiveness ‘throughout’ the EU,
that is in all Member States.25
• Coca-Cola’s shape mark for its new plastic bottle was refused registration on the
grounds of lack of distinctiveness.26 The shape of the bottle was very similar to the
classic Coca-Cola bottle, but lacked the vertical fluting of the classic bottle. Although
Coca-Cola argued that the shape of its new bottle was an evolution of its classic bottle,
its argument was not upheld by the court.
• Rubik’s Cube and Lego bricks were found to be functional and not capable of being
registered as trademarks.27
• A mark consisting of rabbit-shaped chocolate with gold wrapping and a red ribbon was
found to be commonplace and devoid of any distinctiveness for the market concerned.28
• A registration consisting of the shape of ‘knife handles with dents’ (which was
represented as a surface with a pattern of black dots) was declared invalid, on the
ground that such a shape was merely of a functional nature. The CJEU, which reviewed
the case, confirmed the decision for its invalidation and clarified that a mark may be
functional, even if it has some ornamental or fanciful elements, if such elements do not
play an important role, and if all other essential characteristics of the mark are dictated
by the technical solution to which that mark gives effect.29
• The Voss shape mark for its ‘transparent cylinder bottle with non-transparent cap’ was
found to be non-distinctive and the respective registration was cancelled.30
• A mark consisting of a representation of the ‘yellow colour, including a pattern of
random white dots’ was refused registration for lack of distinctiveness. The GCEU
found that the white dots pattern was negligible and would be perceived by consumers
as decoration only, so the dominant element of the mark in question was the yellow
colour alone.31
• Word marks like ‘Biomild’ for foodstuffs such as yogurt and ‘Doublemint’ for chewing
gum were found to be descriptive (biological and mild/double mint) and were refused
registration. Combinations of descriptive terms in a single new word cannot escape the
absolute ground of descriptiveness, unless there is a perceivable difference among the
combination and its parts.32

24 EUIPO Boards of Appeal, 7 March 2017, R-1515/2016-2.


25 GCEU, T-359, 360/12, 21 April 2015.
26 GCEU, T-411/14, 16 February 2016.
27 CJEU, C-30/15, 10 November 2016 and GCEU, T-450/09, 25 November 2014 (Rubik’s Cube) and
C-48/09, 14 September 2010 (Lego bricks).
28 CJEU, C-98/11, 24 May 2012.
29 CJEU, C-421/15, 11 May 2017.
30 CJEU, C-445/13, 7 May 2015 and GCEU, T-178/11, 28 May 2013.
31 GCEU, T-143/14, 10 September 2015.
32 CJEU, C-265/00, 12 February 2004 (Biomild); C-191/01, 23 October 2003 and GCEU, T-193/99,
31 January 2001 (Doublemint).

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• The following word marks have been refused registration for lack of distinctiveness:
‘eco’ (denoting ‘ecological’),33 ‘medi’ (denoting ‘medical’),34 ‘universal’ (denoting ‘goods
fit for universal use’).35
• The mark ‘Revolution’ for financial consulting services in class 36 was found to lack
distinctiveness and was refused registration.36
• The mark ‘Restore’ for surgical and medical instruments was found to be descriptive;37
• The slogan ‘Innovation For The Real World’ for automotive and medical products in
classes 7, 9, 10 and 12 was refused registration due to lack of distinctiveness.38
• The slogan ‘Built To Resist’, applied for paper goods, leather, clothing and footwear was
found to be descriptive.39
• The slogans ‘So What Do I Do With My Money’ and ‘Investing For a New World’,
applied for financial and investment services, were found to be laudatory and
promotional and devoid of any distinctiveness.40
• The marks ‘MMF – Multi Market Fund’ and ‘NAI – Der Natur-Aktien-Index’ were
refused registration as being descriptive and non-distinctive. The addition of an
abbreviation before a descriptive phrase does not render the whole mark distinctive.41
• The mark ‘Caffè Nero’ for coffee products and cafeteria services was refused registration
on the ground that in Italian, ‘caffè nero’ means ‘black coffee’, i.e., ‘coffee without
sugar or milk’. So long as an EUTM is destined to apply to all Member States, lack of
distinctiveness or descriptiveness in only one Member State may be fatal.42
• The mark ‘Deluxe’ for several goods and services in classes 9, 35, 37, 39, 40, 41, 42, 45
was refused registration as merely laudatory, descriptive and non-distinctive; the CJEU
affirmed this decision.43

The filing and registration process


An application for an EUTM can be filed either electronically (online) or in writing, sent by
fax or mail. The application contains details of the applicant, its professional representative
acting on its behalf before EUIPO, as well as the mark applied for, and the respective
goods or services. The application is accompanied by a power of attorney appointing the
professional representative. The power of attorney and the application need no legalisation,
neither certification, nor the Hague Convention Apostille. If the mark includes colours, the
applicant is required to identify the colours by reference to a generally accepted colour index,
such as the Pantone Index. If the mark includes figurative elements, the applicant is required
to identify these figurative elements by reference to EUIPO’s Figurative Classification Manual
(version 3.0, 15 March 2013), which is based on the codes provided in the Vienna Convention
(1973) on the classification of figurative elements of marks (seventh edition, 2012).

33 GCEU, T-328/11, 24 February 2012.


34 GCEU, T-470/09, 12 July 2012.
35 GCEU, T-435/11, 2 May 2012.
36 GCEU, T-654/14, 2 June 2016.
37 CJEU, C-21/12, 17 January 2013.
38 GCEU, T-515/11, 6 June 2013.
39 GCEU, T-80/07, 16 September 2009.
40 GCEU, T-609/13, 29 January 2015 and T-59/14, 29 January 2015.
41 CJEU, C-90, 91/11, 15 March 2012.
42 GCEU, T-29/16, 27 October 2016.
43 CJEU, C-437/15, 17 May 2017.

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The goods or services applied for are identified by reference to the Nice Classification
Agreement (1957), currently consisting of 45 classes. Following the ruling of the CJEU in the
IP Translator case,44 EUIPO requires that the specification of the goods or services should be
sufficiently precise and clear; using the whole class heading will usually not satisfy EUIPO,
which is likely to insist of a more concrete and precise specification.
Applications are assessed by a single examiner. If the examiner finds the application
acceptable, it is published through the EUIPO website. Upon publication, the application
is open to opposition for a period of three months. If no opposition is filed, the mark is
registered. The whole process from the filing of the application until registration usually
requires a period of four months, if no obstacles arise. An examiner’s decision rejecting an
application can be appealed to the EUIPO Boards of Appeal within a period of two months
from its notification to the applicant.

ii Relative grounds – Prior rights


Prior rights include:
• earlier applications or registrations of EUTMs;
• earlier applications or registrations of national trademarks in the EU Member States;
• earlier applications or registrations of international trademarks filed with WIPO
designating the EU or a Member State;
• earlier well-known marks in the sense of Article 6 bis of the Paris Convention;
• earlier non-registered national signs used in the course of trade in one or more Member
States of the EU; and
• earlier designations of origin, geographical indications and applications thereof.

EUIPO does not carry an ex officio search for prior rights on its own initiative. As a result,
prior rights must be invoked by way of formal opposition proceedings, otherwise, an EUTM
application will succeed in being registered, even if it is confusingly similar to an earlier mark.
There follow some notable recent cases on likelihood of confusion.

Cases where likelihood of confusion was established


• The marks ‘Kompressor’ and ‘Compressor Technology & device’, both for household
appliances in classes 7 and 11, were found to be confusingly similar, although their
common element ‘compressor’ was a descriptive term. The argument of the court was
that, even when the common elements are descriptive, likelihood of confusion may
still exist, if the two marks are highly similar to one another. The court suggested that
the fact that the earlier trademark greatly consists of descriptive or non-distinctive
elements must be the subject-matter of separate cancellation proceedings, but cannot
be taken into account in the context of opposition proceedings.45 Similarly, the CJEU46
reaffirmed a judgment of the GCEU47 that the marks ‘Solidfloor, the professional’s
choice’ and ‘Solid floor and device’, both for building and flooring materials in class 19,
were confusingly similar.

44 CJEU, C-307/10, 19 June 2012.


45 CJEU, C-43/15, 8 November 2016. However, note the difference with the cases relating to the marks
‘Airtours’, ‘Magnext’, etc., which are discussed below.
46 CJEU, C-190/15, 19 November 2015.
47 GCEU, T-395/12, 11 February 2015.

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In another case, the marks ‘Micro & device’ and ‘Micro in coloured letters’, both
in class 9 for photographic equipment, were confusingly similar;48 in this case, the court
also reasoned that in opposition proceedings, an earlier national mark must be considered
to have at least a minimum of distinctiveness. The same argument, that is, that in
opposition proceedings an earlier national mark must be deemed to be distinctive, even
to a low degree, was followed by the GCEU in case T-10/09 (11 December 2014) were
the marks ‘F1’ (word mark) and ‘F1’ (figurative), owned by Formula One Licensing
BV, were found to be confusingly similar to the mark ‘F1-Live & device’ for print and
online media products in classes 16, 38 and 41. In case T-178/16 (6 April 2017), the
GCEU found that the mark ‘Policolor & device’ for paints, varnishes, lacquers and
similar goods in class 2 is confusingly similar to the mark ‘Proficolor & device’ for the
same goods. The fact that the common element ‘color’ is a merely descriptive term, and
that each mark was accompanied by a different figurative device, was not sufficient to
prevent likelihood of confusion.
• A figurative and position mark consisting of ‘two parallel stripes’ appearing on athletic
shoes was found to be confusingly similar to the Adidas earlier ‘three parallel stripes’
mark, although the stripes had a different orientation in each case.49
• The marks ‘Smith’ and ‘Anna Smith’, both for clothing and leather products in classes 18
and 25, were found to be confusingly similar, although the common element ‘Smith’
was a common surname.50
• In case T-450/13 (12 November 2015), the GCEU found that two marks consisting
of the labels of vodka bottles, which shared a representation of a bison animal and
a vertical diagonal line (although with a different orientation in each mark) were
confusingly similar, because the other word elements appearing on the respective labels
were rather descriptive.
• The marks ‘Aquaperfect’ and ‘Waterperfect’, both in class 7, were found to be
confusingly similar due to their conceptual similarity, as ‘aqua’ means ‘water’ in Latin
and is considered to be a Latin vocabulary term that European consumers clearly
understand.51 In another similar case, likelihood of confusion was established between
the marks ‘Vitaminwater’ and ‘Vitaminaqua’ in classes 30 and 32.52
• The mark ‘Colombiano House & device’ for restaurant and food services in class 43
was refused registration, because of an earlier protected geographical indication ‘Café
de Colombia’.53
• The mark ‘Beyond Retro’ for clothing in class 25 was found to be confusingly similar to
the mark ‘Beyond Vintage’ for clothing and accessories in classes 18 and 25; however,
there was no likelihood of confusion as to watches and jewellery in class 14, for which
an application for ‘Beyond Vintage’ was also made, as these goods were considered to
be sufficiently dissimilar to clothing in class 25.54

48 GCEU, T-149/12, 16 January 2014.


49 CJEU, C-396/15, 17 February 2016. Note, however, that the Adidas ‘three parallel stripes’ mark was found
to be non-distinctive and was cancelled by the EUIPO Boards of Appeal, as discussed above.
50 GCEU, T-295/15, 18 April 2016.
51 GCEU, T-123/14, 28 January 2015.
52 GCEU, T-410/12, 28 November 2013.
53 GCEU, T-387/13, 18 September 2015.
54 GCEU, T-170/12, 30 April 2014.

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• The marks ‘Pentasa’ and ‘Octasa’, both for pharmaceuticals in class 5, were found to be
sufficiently similar, although they differ as to their respective first part.55
• The marks ‘Ginraw’ and ‘Raw’, both for household and kitchen utensils and containers,
glassware and other goods in class 21, were found to be confusingly similar, as the
term ‘gin’ was likely to be associated with the alcoholic beverage and was hence rather
descriptive of the respective goods.56

Cases where likelihood of confusion was not established


• The marks ‘Easy Air-tours’ and ‘Airtours’, both for transport services in class 39, were not
found to be confusingly similar, because their common components were descriptive
terms.57 Similarly, the following pairs of marks were not found to be confusingly
similar, because the common elements they shared were merely descriptive: ‘Magnext’
and ‘Magnet 4’, both for toys in class 28;58 ‘Capital Markets & device’ and ‘Carbon
Capital Markets’, both for financial and similar services in class 36;59 ‘Premium &
device’ and ‘Premium & device’ both for foodstuffs in class 30.60
• The figurative mark ‘Stick Mini MINI Fratelli Beretta & device’, for foodstuffs in
class 29 was found to be dissimilar to the word mark ‘Mini Wini’ for similar goods in
the same class, as the element ‘Mini MINI’ was considered not to have an independent
distinctive role within the combined mark ‘Stick Mini MINI Fratelli Beretta & device’.61
• ‘Real estate services’ was found to be dissimilar to ‘financial and banking services’,
although ‘real estate appraisal services’ was found to be similar to ‘financial services’.62
In another case, ‘retail services’ was found to be dissimilar to ‘distribution services’;63
‘Watches and jewellery’ in class 14 was found to be dissimilar to ‘Clothing’ in class 25,
although both are usually traded through the same channels.64 ‘Compotes’ were found
to be dissimilar to ‘dairy products’.65 ‘Restaurant and bar services’ were found to be
similar to ‘foods and beverages’.66

Dilution cases
• The well-known mark of Calvin Klein ‘CK’ was found not to be diluted by the mark
‘CK Creaciones Kennya’ (both for clothing and leather goods in classes 18 and 25),
because the two marks were so dissimilar (although CK was incorporated as such in the
later mark), that a ‘link’ between them could not possibly be established.67 In a similar
case, the marks ‘Kinder’ (for food products in class 30) and ‘Ti Mi Kinder Joghurt’ (for
yogurt-based products in class 29) were so dissimilar that consumers could not possibly

55 GCEU, T-501, 502/12, 9 April 2014.


56 GCEU, T-258/16, 7 June 2017.
57 GCEU, T-608/13, 13 May 2015.
58 GCEU, T-604/11 and 292/12, 4 February 2014.
59 GCEU, T-563/08, 22 June 2010.
60 GCEU, T-60/11, 22 May 2012.
61 CJEU, C-182/16, 26 July 2017 confirming GCEU, T-247/14 4 February 2016.
62 GCEU, T-323/14, 17 September 2015.
63 CJEU, C-400/14, 16 July 2015 and T-372/11, 26 June 2014.
64 GCEU, T-170/12, 30 April 2014.
65 GCEU, T-21/15, 26 April 2016.
66 GCEU, T-711, 716/13, 18 February 2016.
67 CJEU, C-254/09, 2 September 2010.

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establish a link between the two, although ‘Kinder’ was incorporated as such in the later
mark.68 In these cases, the CJEU reasoned that, in assessing the level of similarity of
the respective marks, the reputation of the earlier mark shall not be taken into account
and that such reputation will be considered only at a later stage, in order to assess the
likelihood that consumers might make a link between the two marks; but this later
stage will not follow at all, unless sufficient similarity is not established in the first place.
• Dilution was not established between the mark ‘Grazia’ for consulting services in
class  35 and financial services in class 36 on the one hand, and an identical mark
‘Grazia’ for cosmetics, audio visual matter, printed publications, leather goods, clothing
and broadcasting in classes 3, 9, 16, 18, 25 and 38. The respective goods and services
were so dissimilar that consumers could not possibly establish any link between the
two marks.69
• The well-known word mark ‘Zytel’ of Du Pont, which was registered for plastics
in classes 1 and 7 was found not to be diluted by a later mark ‘Zytel & device’ for
various goods and services in classes 9, 12 and 37. The reasoning of the court was that
the Du  Pont mark was addressed to professionals only and, on this ground, it was
highly improbable that the later mark could possibly gain unfair advantage, or that
professionals could possibly make a link between the two marks.70
• The well-known ‘Volvo’ mark was found not to be diluted by the mark ‘Lovol’ in
classes  7 and 12 because the two marks were sufficiently dissimilar, although they
shared the letters ‘v’, ‘o’ and ‘l’, as well as the syllable ‘vol’.71
• The mark ‘MacCoffee’ for food and beverages in classes 29, 30, 32 was found to dilute
the marks ‘McDonald’s’, ‘McNuggets’, ‘McFlurry’, ‘McChicken’, etc.72
• The mark ‘Pret A Diner’, for food and restaurant services, was found to dilute the
reputation of the earlier mark ‘Pret A Manger’ and ‘Pret’ for similar goods and services.73
• The mark ‘Spa Wisdom’ applied for by the Body Shop company in respect of cosmetics
in class 3, was found to dilute the reputation of the earlier mark ‘Spa’ registered for
mineral water and non-alcoholic beverages in class 32. The court reasoned that,
although the term ‘spa’ was broadly used in respect of health and wellness services
based on hydrotherapy, such use was not common in respect of cosmetics. As a result,
the term ‘spa’ was not descriptive in respect of cosmetics.74

iii Inter partes proceedings


Inter partes proceedings before EUIPO include (1) oppositions to EUTM applications;
(2) applications for invalidity of registered EUTMs; and (3) applications for revocation of
registered EUTMs.

68 CJEU, C-552/09, 24 March 2011.


69 CJEU, C-548/14, 17 September 2015.
70 GCEU, T-288/12, 9 April 2014.
71 GCEU, T-524/11, 12 November 2014.
72 GCEU, T-518/13, 5 July 2016.
73 GCEU, T-2/16, 30 November 2016.
74 GCEU, T-201/14, 16 March 2016.

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Oppositions to EUTM applications


Since EUIPO does not take into account earlier rights on its own initiative, opposition
proceedings is the only means of invoking such earlier rights to prevent the registration of
an EUTM application. The time limit to file an opposition against an EUTM application is
three months from its publication.

Applications for invalidity of registered EUTMs


If an application for an EUTM has been registered, although there were absolute or relative
grounds that should have resulted in its rejection, then this registration is open to cancellation
(invalidity). There is no time limit restricting the filing of an application for invalidity. Such
an application can be filed either with EUIPO or with a national court of an EU Member
State by way of a counterclaim during infringement proceedings initiated by the owner of
the EUTM registration which is the subject matter of attack. The effects of invalidity are
retrospective and date back to the filing of the contested EUTM registration.

Applications for revocation


A registered EUTM can be revoked, if:
• the mark has not been used for a period of five consecutive years and there are no
proper reasons justifying non-use;
• due to acts or inactivity of the proprietor, the mark has become a common name in
trade for a product or service for which it is registered; or
• as a result of the use made of it by its proprietor, the mark has become misleading to
the public.

There is no time limit for filing an application for revocation.


The effects of revocation are retrospective, but date back to the date of filing of the
application for revocation, or to another date fixed by the decision that revokes the registration.
An application for revocation can be filed either with EUIPO or with a national court
of an EU Member State by way of a counterclaim during infringement proceedings initiated
by the owner of the EUTM registration which is contested.
In respect of the form of the proceedings for oppositions, applications for invalidity
and revocations, see Section II.ii.

Proof of use defence


EU trademark law adopts the ‘proof of use’ defence. The party who invokes earlier trademark
rights may be requested to prove that such rights have been used in the course of trade
during the past five years, or that there are reasonable reasons justifying non-use. This is so
in opposition, invalidity and revocation proceedings, as well as in infringement proceedings
before a civil court. The EUIPO Boards of Appeal has held that unauthorised use of the
earlier mark by an infringer and pending litigation with respect to it are reasonable grounds
justifying non-use.75 In addition, CJEU has held that the reasons justifying non-use are only
those that have a direct relationship with the respective trademark, make its use impossible or
unreasonable, and are independent of the will of its owner.76

75 EUIPO Boards of Appeal case R-2425/2013-4, 28 January 2015, Chronopost v. DHL.


76 CJEU, C-246/05, 14 June 2007, Armin Haeupl v. Lidl Stiftung & Co. KG.

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iv Appeals
Decisions of the EUIPO Operations Department on oppositions, applications for invalidity
or revocations, as well as decisions of the examiners on absolute grounds preventing trademark
registration can be appealed before the EUIPO Boards of Appeal, which can review cases on
matters of both fact and law. The decisions of the EUIPO Boards of Appeal can be appealed
before the GCEU on matters on law only. The judgments of the GCEU can be appealed
before the CJEU on matters of law only (see Section II.ii).

IV CIVIL LITIGATION
The European Union Trademark
Infringement cases relating to EUTMs are dealt with by national courts of the Member States
according to local rules of civil procedure. Article 95 of Regulation 207/2009/EC provides
that Member States shall designate in their territories as limited a number of possible national
courts and tribunals of First and Second Instance, which shall have competence to deal with
infringement of EUTMs.
A major aspect of such litigation before national courts is that the defendant in
infringement proceedings is entitled to file a counterclaim to request the national court to
cancel an EUTM, if there are legal grounds that render it invalid (i.e., if it was registered
although there were absolute or relative grounds that should have prevented its registration, if
it has been filed in bad faith, etc.) or make its revocation possible (i.e., in the case of non-use
for a period of five years). This means that national courts are entitled, on the application
of a defendant in infringement proceedings, to examine grounds of invalidity or revocation
of EUTMs and can cancel such EUTMs. If such a counterclaim has been filed seeking the
invalidity or revocation of an EUTM, the EUTM owner can invoke two defences: (1) that
the party seeking invalidity or revocation has acquiesced for a period of five consecutive years
in the use of the EUTM (see Article 54 of Regulation 207/2009/EC); or (2) a ‘proof of use’
defence under Article 57 of Regulation 207/2009/EC. In this case, the EUTM owner may
request the party filing a counterclaim with the purpose of cancelling the EUTM, to prove
that such party has used its own earlier EUTM during a period of five years preceding the
counterclaim.
Another important aspect of infringement proceedings relating to EUTMs is that the
defendant can invoke the ‘proof of use’ defence (see Section III.iii (Proof of use defence)).
Unless the claimant is able to prove that he or she has used the earlier EUTMs that are being
invoked, the legal action will be rejected.

Directive 2004/48/EC on enforcement of intellectual property rights


Directive 2004/48/EC establishes a legal regime that is favourable to trademark owners
regarding the collection of evidence relevant to trademark infringement and remedies. In
particular, trademark owners may request a court order, enabling them to inspect third
premises where infringing goods are likely to be found, or to make a list of allegedly infringing
goods and obtain samples of same, or even provisionally arresting allegedly infringing goods,
as well as any other measure that could make it possible to preserve evidence relating to
trademark infringement. Such measures can be ordered by a national court under either
ordinary or summary proceedings, and may be ordered by a national court without notifying
the defendant in advance, or hearing its arguments. Furthermore, the Directive provides

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practical criteria for the quantification of damages on the basis of (1) the amount of royalties
that would have been due if the infringer had requested a licence; (2) loss of profits suffered
by the trademark owner; or (3) the profits made by the infringer.

V OTHER ENFORCEMENT PROCEEDINGS


The EU has developed a particularly efficient system to trace and seize counterfeit goods within
customs authorities. The system functions at a European level. The system is established by
Regulation 608/2013/EC, and its main characteristics are the following:
• It covers goods infringing any intellectual property right based on EU law, such as
trademarks, patents, utility models, supplementary protection certificates, plant
varieties, semi-conductor topographies, copyright, industrial designs, as well as
protected geographical indications.
• There is an accelerated procedure to secure destruction of infringing goods without a
court order.
• There are provisions dealing with counterfeit products imported by post or courier in
small consignments.

The Regulation has reduced administrative costs and has ensured that more substantial
information is made available so that the customs authorities can be better prepared to take
proper action.
The terminology of the Regulation distinguishes three categories of goods: counterfeit
goods infringing trademarks; pirated goods infringing copyright; and goods suspected of
infringing any other intellectual property right. The Regulation applies only to ‘counterfeit’
and ‘pirated’ goods; it does not apply to parallel imports of genuine goods and overruns, i.e.,
goods produced by an authorised manufacturer in excess of the quantities ordered by the
trademark owner, since these are also genuine products and not counterfeit. Obviously, the
Regulation does not apply to goods that are only confusingly similar or diluting.
Seizure of goods means either suspension of the release of the goods or detention
of the same. In cases of suspected infringement, seizure can be initiated in two ways. The
right-holder may file an application for action (AFA) to any EU customs authority, or goods
may be suspected of infringing an IP right and seized without a prior AFA. In the latter
scenario, the customs authorities will ask for further information from the right-holder or
may ask for an AFA to be filed. An AFA may be filed on a national or European level; a
national application refers to a single Member State, whereas a European application will be
filed in a Member State, notifying other Member States whose customs authorities have to
take action.
The AFA has to identify the intellectual property rights for which protection is
requested. It also needs to provide certain information about the original goods and certain
clues that will be of assistance to the customs authorities to trace counterfeits. Whether the
AFA will be accepted depends on the customs departments. In cases of missing information,
the right-holder has 10 days in which to provide all relevant details, but no further extension
can be given. If no information is missing, the customs department has 30 days in which to
notify the applicant of the acceptance or rejection of their request. If the AFA is accepted,
it will remain in force no more than a year and it may be extended, if so requested, for one
more year.

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When customs authorities trace goods that are suspected of being counterfeit, they
notify the owner of the goods within one working day of suspension of release or detention of
goods. The right-holder has also to be informed of the decision of the customs authorities and
both parties have to be informed about the nature and quantity of the goods. The right-holder
is informed of the name and address of the owner of the goods. Both parties have a right
to inspect the goods, and the customs authorities may take samples and send them to the
right-holder, upon the latter’s request. If the right-holder cannot be identified or if no AFA is
filed, the customs authorities will stop detention of the goods.
As mentioned before, there is a compulsory accelerated procedure for the destruction
of any goods detained. This means that there is no need for judicial proceedings to determine
that there is an infringement, provided, though, that two prerequisites are satisfied: (1) the
right-holder must confirm in writing within 10 days (or three working days for perishable
goods) of notification of the suspension of the release or the detention of goods, that ‘in
his conviction’ an intellectual property right has been infringed and his agreement to the
destruction of goods; (2) the holder of the goods must confirm in writing within the same
period, i.e., 10 days (or three working days for perishable goods) of notification of the
suspension of the release or the detention of goods, that they also agree to the destruction of
the goods. Where the holder of the goods has not confirmed agreement to the destruction of
the goods nor notified his or her opposition, the customs authorities may deem the holder of
the goods to have confirmed agreement to the destruction of those goods. If these conditions
are not met, the goods will be released, unless legal proceedings have been initiated. In cases
where the holder of the goods has neither agreed to the destruction of goods nor is deemed
to have confirmed agreement to the destruction, the customs authorities shall immediately
notify the holder of the decision. The latter shall within 10 working days (or three working
days for perishable goods) of notification of the suspension of the release or the detention of
goods, initiate proceedings to determine whether an IP right has been infringed.
Many complexities were raised by counterfeit goods that were in transit through
the EU territory. The CJEU had issued a series of judgments that goods in transit cannot
establish trademark infringement, as transit does not qualify as use of a trademark in the
course of trade. Hence, since an infringement could not be established, goods in transit
could not be detained under the Regulation, even in cases where it was clear that such goods
were infringing imitations.77 In order to overcome this difficulty, Regulation 2015/2424/EU,
which amended Regulation 207/2009/EC, expressly provided that

the proprietor of that EU trade mark shall also be entitled to prevent all third parties from bringing
goods, in the course of trade, into the Union without being released for free circulation there, where
such goods, including packaging, come from third countries and bear without authorisation a trade
mark which is identical with the EU trade mark registered in respect of such goods, or which cannot
be distinguished in its essential aspects from that trade mark. (Article 9.4)

Hence, this provision, under the current regime, seems to be a solution of the ‘in transit’
issue in favour of trademark owners. However, this entitlement of the proprietor shall lapse if
evidence is provided by the holder of the goods that the proprietor of the EU trademark is not

77 CJEU, C-383/98, 6 April 2000, C-60/02, 7 January 2004, C-281/05, 9 November 2006, C-446, 495/09,
1 December 2011. See also CJEU, C-405/03, 18 October 2005 holding that goods supplied to a vessel in
the port area have not yet entered the EU territory.

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entitled to prohibit the placing of the goods on the market in the country of final destination.
Hence, this provision, under the current regime, seems to be a resolution of the ‘in transit’
issue in favour of trademark owners (Article 9.4).
According to EU statistics, in 2016, more than 63,000 detention cases were registered
by customs authorities; more than 41  million articles were detained and the value of the
equivalent genuine goods is estimated to be just over €672 million. Cigarettes remain at the
top of the list of detained articles (24 per cent), followed by toys (17 per cent), foodstuffs
(13 per cent) and packaging materials (12 per cent).

VI RECENT AND PENDING CASES


The Kerrygold and Kerrymaid case
The CJEU has clarified that the peaceful coexistence in two Member States of marks that
are confusingly similar (such as ‘Kerrygold’ and ‘Kerrymaid’) does not prevent likelihood
of confusion in other Member States. On the evidence, ‘Kerrygold’ and ‘Kerrymaid’ (both
for dairy products) coexisted peacefully for many years in Ireland and the United Kingdom.
It was argued that, because of the unitary nature of the EUTM, peaceful coexistence in
two Member States prevented likelihood of confusion in other Member States as well. The
CJEU turned down this argument, confirming that likelihood of confusion depends greatly
on the relevant public and that, hence, may be assessed differently in each Member State;
this is not in conflict with the unitary nature of the EUTM. It was further argued that
peaceful coexistence in two Member States establishes sufficient grounds to argue in favour
of limitation of trademark rights in other Member States, but the CJEU turned down this
argument as well. Finally, it was argued that in the context of dilution, peaceful coexistence
in two Member States establishes ‘due cause’ to use the same mark in other Member States as
well and that, hence, it prevented a dilution claim raised in other Member States where the
marks do not coexist; the CJEU also rejected this argument.78

The case of the cotton flower mark 79


Verein Bremer Baumwollbörse (the Bremen Cotton Exchange) (VBB) had registered an
EUTM consisting of the figurative representation of a ‘cotton flower’. The mark was filed
and registered as an individual mark, but it was actually used as a collective one. VBB was
not producing its own products, but was only licensing the mark to other manufacturers of
textiles, who promised to comply with good quality standards. There were certain concerns
as to whether VBB was exercising efficient quality control on the goods produced by its
licensees. VBB brought infringement proceedings against a manufacturer who was using the
mark without having obtained a licence. The CJEU, responding to a request for a preliminary
ruling submitted by the national court, clarified that ‘genuine use’ of an individual mark
exists only if this mark is used as an indication of origin, since this is the essential function
of trademarks. In the present case, the use was not one as an indication of origin, but one
as an indication of quality. Therefore, the mark was open to revocation for non-use. The
CJEU was also requested to consider whether the ‘cotton flower’ mark was deceptive and
hence open to invalidation, because, on the evidence, it seemed that VBB was not exercising

78 CJEU, C-93/16, 20 July 2017.


79 CJEU, C-689/15, 8 June 2017.

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sufficient quality control over its licensees. The CJEU responded that a mark is deemed to be
deceptive, if it is deceptive per se as from its filing; in this respect, the subsequent management
and behaviour of the trademark owner or its licensees is irrelevant. It is to be noted, however,
that a mark is open to revocation if it is likely to mislead the public, because of the use made
of it by its owner after its filing and registration. This issue, though, was not brought to the
attention of the CJEU. Finally, this case was decided under the provisions of Regulation
207/2009/EC, as those provisions were phrased before the amending Regulation 2015/2424/
EU. By that time, Regulation 207/2009/EC provided for individual marks and collective
marks. Regulation 2015/2424/EU supplemented provisions in respect of certification marks
as well, which became effective from 1 October 17. The ‘cotton flower’ mark was actually
used as a certification mark and it could be accommodated as such under the new provisions.

The AdWords and On Line Marketplaces cases


Use of trademarks on the internet raises many complicated and controversial issues. The CJEU
has delivered several preliminary rulings, which shed some light on how such complexities
can be overcome.

The Google France case 80


In the Google France case, three French companies alleged that Google had infringed their
trademarks by making it possible for other companies to use their trademarks as keywords
for internet advertising and promotion. In its preliminary ruling, the CJEU reasoned that a
‘keyword use’ of a sign identical to a trademark cannot establish infringement for an internet
referencing provider such as Google, on the ground that such use does not qualify as use of
the trademark as such; however, such a ‘keyword use’ could possibly establish infringement
on the part of the company that uses a third party’s trademark as a keyword to promote
its own goods or services. According to the CJEU, infringement is established when the
trademark functions, particularly the origin function, are frustrated. This mainly depends on
how the internet advertisement appears. If it appears in a way that an average internet user
can understand that it does not originate from the trademark owner, then there is no adverse
effect on trademark functions, and no infringement is established. On those grounds, the
CJEU concluded that, when the internet advertisement does not enable an average internet
user to ascertain whether the goods or services referred to in a website originate from the
trademark owner or from a third party, then trademark infringement is established.

The BergSpechte case 81


BergSpechte and Trekking at Reisen were both selling trekking and nature tours and, hence,
were direct competitors. Trekking at Reisen used two keywords for internet advertisement
purposes. The first was identical to one of BergSpechte’s trademarks, while the second was
only similar to an earlier trademark of its competitor. In its preliminary ruling, the CJEU
followed the reasoning of the Google France judgment and concluded that in cases of a
keyword that is identical to an earlier trademark, infringement is established if trademark
functions are frustrated, i.e., if the internet advertisement does not enable an average internet

80 CJEU, C-236, 237, 238/08, 23 March 2010.


81 CJEU, C-278/08, 25 March 2010.

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user to ascertain where the goods or services originate. On the other hand, when the keyword
use is only similar (but not identical) to an earlier trademark, then trademark infringement
depends on whether likelihood of confusion or likelihood of association can be established.

The L’Oréal v. eBay case 82


This case related to the sale through the eBay online marketplace of counterfeit goods as well
as of goods constituting parallel imports to the EU from non-EEA countries. L’Oréal alleged
that eBay was liable for trademark infringement in making such sales possible through its
online marketplace. In its preliminary ruling, the CJEU reasoned the following.
• Trademark rights are enforced only against traders, not against consumers; so, sales of
goods in online marketplaces can possibly infringe trademark rights, if committed by
entities acting on a commercial scale, but not if committed by consumers as a private
activity.
• Sales through online marketplaces are subject to the same rules on parallel imports
as traditional sales; so, sales originating from non-EEA countries destined for EU
countries are illegitimate parallel imports and can be prevented by trademark owners.
• Trademark owners can prohibit an online marketplace from advertising products
through Google AdWords by using a keyword that is identical to an earlier trademark,
when such advertising does not enable an average internet user to ascertain where such
goods originate.
• The mere fact of displaying goods for sale in an online marketplace does not by itself
amount to ‘use’ of the trademarks affixed on such goods. So, an online marketplace does
not commit an infringement only because it makes available to potential purchasers
goods bearing trademarks of third parties. This type of use is by the sellers of the goods,
but not by the marketplace itself.
• An online marketplace may not be able to avail itself of certain defences, which are
available to other information society service providers under EU law (Directive
2000/31/EC, Article 14), if it plays an active role in the promotion of the products
concerned and thus has knowledge and control over the goods and their status.
• Trademark owners must have available efficient injunctions, sufficient to prevent both
current and future infringements.

The Interflora case 83


Interflora was a US-based worldwide flower delivery service. Marks & Spencer, the well-known
English retailer, operated its own flower delivery service and used the Interflora trademark as a
keyword for internet promotion. In its preliminary ruling on possible trademark infringement,
the CJEU repeated the principles laid down in the Google France judgment. However, this
time the court went further, and examined the potential dilution of the Interflora trademark
through its use as an AdWord. The court observed that trademarks with reputation have an
additional function, which is called the ‘investment function’. It is possible that this function
may be adversely affected by the use of the trademark as a keyword by a third party. If this
is the case, trademark infringement in the form of dilution is established. However, this
requires something more than a mere necessity for the trademark owner to adapt its efforts to

82 CJEU, C-324/09, 9 December 2010.


83 CJEU, C-323/09, 22 September 2011.

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increased competition and to additional strain to preserve its reputation and retain the loyalty
of its clients. Dilution, in the form of free riding and detriment to the distinctive character of
the trademark concerned, is likely, when the goods displayed on the internet are imitations
of the goods of the trademark owner, but this is not necessarily the case, because the goods
displayed may not be imitating goods.

VII OUTLOOK
On 23 March 2016, Regulation 207/2009/EC (regarding the EUTM) was amended by
Regulation 2015/2424/EU. The major amendments can be summarised as follows.
• The prerequisite of graphical representation has been abolished. It is now possible to
register marks, even though they cannot be represented graphically. This is expected
to facilitate the registration of non-traditional types of marks, such as sound marks,
etc. However, the mark must still be identified in a clear, precise, self-contained, easily
accessible, intelligible, durable and objective way.
• The new Regulation implements the judgment of the CJEU in the IP Translator case;84
as a result all goods or services for which the mark is used, or will be used in the future,
must be clearly and precisely reflected in the trademark application. Although the use
of the whole class heading is not prohibited, still, in most cases, it will not meet this
standard.
• The new Regulation contains specific provisions for ‘certification marks’, which are
effective from 1 October 2017, while the old Regulation provided only for individual
and collective marks.
• Functionality, both technical and aesthetic, is expressly mentioned and strongly
emphasised as an absolute ground preventing registration.
• Designations of origin, geographical indications, traditional terms for wines, traditional
specialities guaranteed and plant varieties are expressly mentioned and emphasised as
absolute grounds preventing registration. Designations of origin and geographical
indications are also mentioned as express relative grounds preventing registration.
• Trademark infringement may be established even in cases of goods in transit through
the EU territory, although such goods are not intended to be put into circulation in the
Single Market. However, trademark infringement cannot be established if the owner of
such goods in transit can prove that the trademark owner is not entitled to prevent the
circulation of such goods on the market of their final destination.
• Trademark infringement can be established even in cases of acts that are only of a
preparatory nature, such as affixing a registered trademark on packaging, labels or other
materials.
• The ‘own name use’ defence is expressly limited to natural persons only. Hence, legal
entities are not allowed to invoke the ‘own name’ defence.

Similar amendments were introduced in connection to Directive 2008/95/EC (replaced


by Directive 2015/2434/EU) regarding the approximation of national laws of the Member
States on trademarks.

84 CJEU, C-307/10, 19 June 2012.

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Chapter 7

FRANCE

Catherine Mateu1

I OVERVIEW
Trademark ownership is acquired by registration at the National Institute of Intellectual
Property (INPI) for French trademarks, at the European Union Intellectual Property Office for
European Union trademarks (EUIPO) and at the World Intellectual Property Organization
(WIPO) for international trademarks, which may designate France or the European Union.
The registration lasts for a 10-year period, which is renewable indefinitely.
Registration is granted following proceedings before the relevant office, where
registrability of the trademark application is examined on absolute grounds and on relative
grounds if an opposition is filed by a third party.
In some cases, trademark ownership can be acquired by use.
A trademark is a sign that serves to distinguish the goods or services of a natural or
legal person. The trademark therefore has a function of identifying the origin of a product
or a service. Indeed, “this is a sign that allows a manufacturer or to a trader to distinguish his
goods or services [. . .] from those of his competitor”.2
A trademark may be constituted by denominations in all forms (such as words,
combinations of words, surnames and geographical names, pseudonyms, letters, numerals,
abbreviations), as well as audible signs such as sounds or musical phrases. Figurative signs
can also be registered as trademarks, such as devices, labels, seals, reliefs, holograms, logos,
synthesized images; shapes, particularly those of a product or its packaging, or those that
identify a service; arrangements, combinations or shades of colour. For instance, the Paris
Court of First Instance admitted the protection of a trademark consisting of the red sole of
Louboutin shoes.3
The ownership of a trademark is conferred for the goods and services designated for the
territory for which it is registered.
While civil trademark litigation is under the exclusive jurisdiction of nine specialised
courts, criminal trademark litigation cases can be held before general criminal law courts.
In both civil and criminal law cases, the jurisdiction will rule on the case and grant any
appropriate remedies, which often include damages, injunctions not to use and publications.
Also, the defendant may file any trademark invalidity or frivolous proceedings counterclaim
in the same proceedings. Interlocutory proceedings may be sought before or during trademark
proceedings on the merits.

1 Catherine Mateu is a partner at Armengaud-Guerlain.


2 Nicolas Binctin, Droit de la Propriété Intellectuelle: Droit d’auteur, brevet, droits voisins, marque, dessins et
modèles, 4e edition, LGDJ, 2016, p. 451.
3 Tribunale de Grande Instance de Paris, 3rd Chamber, 16 March 2017, RG 2015/11131.

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II LEGAL FRAMEWORK
i Legislation
Most legislation about French trademark law is compiled in Book VII of the Intellectual
Property Code (IPC), which includes the law of 4 January 1991 and the subsequent legal
changes, notably following EU harmonisation as well as international treaties. For trademarks
registered before 1991, the law of 31 January 1964 has to be applied.
EU trademark law is notably found in EU Regulations No. 2015/2424, No. 204/2009
and No. 2868/95 as well as Directive No. 2015/2436.
Also, France takes part in many international agreements related to trademarks, whose
provisions may be applied by French courts directly. The main ones are:
a Trade-Related Aspects of Intellectual Property Rights (TRIPS) 1994, binding members
of the World Trade Organization (WTO) to fixed minimum standards of protection;
b the Paris Convention of 1883, which has partially harmonised trademark law and set
the right of priority;
c the Madrid Agreement, concluded in 1891, and its Protocol of 1989, which has
established international trademarks, also called the Madrid System;
d the Nice Agreement of 1957, which institutes an international classification of goods
and services; and
e the Singapore Treaty of 2006, which harmonises administrative trademarks registration
procurements.

ii Authorities
The National Institute of Industrial Property (INPI) is the French government agency
responsible for industrial property, which notably delivers French trademarks and examines
oppositions to the registration of the trademarks.4 It is also in charge of ensuring public
information about French trademarks notably through its publication on BOPI as well as its
internet trademark database.5 The decisions of the INPI can be appealed before specialised
civil appeals courts.
The European Union Intellectual Property Office (EUIPO) is the agency responsible
for intellectual property, which notably delivers European trademarks and examines
oppositions to the registration of trademarks. It has an appeal board within its agency and
this board’s decisions can be appealed before the European Court of Justice. EUIPO also
delivers information about trademarks on its TMview database,6 and offers mediation services
regarding intellectual property disputes.7
The World Intellectual Property Organization (WIPO) is the agency in charge of
the administration of international trademarks, which are for each territorial designation
examined by the corresponding territorial agency. WIPO is in charge of a database of
international trademarks called ROMARIN.8

4 Article L. 712-4 IPC.


5 See: https://www.inpi.fr/fr/base-marques.
6 See: https://www.tmdn.org/tmview/welcome.html?lang=fr.
7 See: https://euipo.europa.eu/ohimportal/en/mediation.
8 Ibid.

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Company names are registered at the local commercial court where the company has
been incorporated. There is no specific examination proceeding regarding the company
name comparable to trademark registration proceedings. Research on company names can
be performed on the website owned by commercial courts registries – Infogreffe.9
Moreover, this is an organism that gives access to information supports relating to
trademarks. Recently, the importance of its activity related to anti-counterfeiting initiatives
increased.
The French Network Information Centre (AFNIC) is the private entity that manages
the registration of some domain name extensions, including .fr.10

iii Substantive law


Signs used in the course of business can be protected by French trademark law, specific
international rules available to unregistered but well-known trademarks, unfair competition
law (trade names, company names and domain names), geographical indications and specific
rules that protect public local entities.

Registered trademarks
Entities may file for French or EU trademarks either through direct application or through
the Madrid System, which has set international trademarks. EU and French provisions are
very similar since European trademark law has been harmonised extensively. For both EU
and French trademarks, absolute and relative conditions are required. Absolute conditions
are those relevant to distinctiveness, lack of deceptiveness and graphic representation, while
relative conditions are those relevant to third-party rights. Collective and certification
trademarks are subject to additional requirements.
Thus, to be registered as a trademark, a sign has to be distinctive and so be able to
identify the owner of the intellectual property right. According to the IPC, the following
signs are deprived of any distinctive character:
a signs or denominations which, in common or professional language, are exclusively the
necessary, generic or usual designation of the product or service;
b signs or names that may designate a characteristic of the product or service, including
the type, quality, quantity, destination, value, geographical origin, time of production
of the good or of the provision of the service; and
c signs constituted exclusively by the form imposed by the nature or the function of the
product, or conferring on the latter its substantial value.

Similar provisions are found in Article 7 of EU Regulation No. 204/2009.


However, a sign that would not be distinctive per se in regard of certain goods and services
can become distinctive through the use prior to the application. For instance, the trademark
‘vente-privée.com’, which can be translated as ‘private-sales.com’ or ‘exclusive-outlet.com’,
recently acquired distinctiveness through the proof of an intense use. The French Supreme
Court stated that a significant part of the general public could identify the products and
services as the ones of ‘vente-privée.com’.11

9 See: https://www.infogreffe.com/.
10 See: https://www.afnic.fr/en/.
11 Cour de cassation, Chambre commerciale (Cass.com.), 6 December 2016, No. 15-19.048.

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Also, the sign cannot be deceptive. Thus, a sign cannot be adopted as a trademark if ‘it
is of such a nature to deceive the public, especially regarding the nature, the quality or the
origin of the good or the service’, and if it is contrary to public policy and public morality. For
instance, the Paris Appeals Court confirmed INPI’s rejection of the trademark application
for Label Vert,12 since it refers to an environmental certification which would therefore be
misleading.13
Moreover, under French law, and under EU law until 1 October 2017, the sign must be
susceptible of a graphic representation as required by Article L. 711-1 of the French IPC and
Article 4 of EU Regulation No. 204/2009. This condition is the reason olfactory or gustatory
trademarks cannot be registered. Indeed, the requirement of the graphic representation is not
fulfilled by a chemical composition, a description or a sample.14
Finally, the trademark cannot harm third-party rights, notably on their prior trademarks,
name or geographical indications.
The validity of simple French collective trademarks is subject to filing regulations for
their use.15 For instance, in a case opposing The Ritz Hotel to a collective trademark owner,
the Paris Appeals Court has held as valid the collective trademark ‘Palace’ for tourist services
other than hotel services, taking into account that regulations of use were filed.16 A collective
trademark can only be filed by an entity that is not a manufacturer, importer or seller of the
goods of services.
French certification for collective trademarks requires a regulation that sets the
characteristics regarding the nature, properties or qualities required on the goods or services.
Furthermore, the assignment of such certification trademarks is regulated.
EU collective trademarks are also subject to the requirement of filing a regulation
specifying how the trademark can be used. Also, as an exception, EU Collective trademarks
may be valid even if the sign can be used to designate the geographical origin of goods or
services.
EU certification trademarks are available as from 1 October 2017.

Well-known unregistered trademarks – Paris Convention


Article 6 bis of the Union of Paris Convention offers a national protection to unregistered
trademarks that are well known.17 These trademarks have to be ‘known by a large portion of
the public’.

General civil liability protection of trade names, company names and domain names
Under the general rules of civil liability, trade names, company names and domain names can
be protected and opposed to subsequent users or to trademark applicants.
A company name can be protected as soon as the company is registered with the Trade
and Companies Register. The scope of protection is limited to the company’s activity.18

12 Green Label.
13 Pole 5, Chamber 1, 14 February 12017, Case No. 16/04876.
14 CJCE, 12 December 2002, C-273/00, Sieckmann.
15 Cass.com., 29 June 1999, Bull. 1999 IV, No. 145, p. 120.
16 Pole 5, Chamber 1, 13 January 2015, Case No. 2013/12820.
17 Cass.com., 20 March 2012, Case No. 2011/10514.
18 Cass.com., 24 February 2005, Case No. 2003/14668.

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Protection of trade names may be generated through a personal and public use to
identify a business. Protection is available even if the trade name has not been filed at the
Trade and Companies Register.
French law and practice ensures protection of domain names through the general rules
of civil liability.

Geographical indications
For a long time, geographical indications have been protected by French law, first nationally
and subsequently on an EU level. Initially, geographical indications aimed to protect
agricultural products. Manufactured goods are now also eligible for protection.

Name and image of local public entities


Since 2015, local public entities may oppose their rights to their image and name. Such
entities may also benefit from watch services from the INPI to facilitate filing oppositions to
trademark registrations.

III REGISTRATION OF MARKS


i Inherent registrability
A French trademark application may be filed by one or more legal or natural persons, by
a French person, or by a foreigner if he or she is a beneficiary of the CUP, or a national
of a WTO Member State, or domiciled in France. Similar requirements are found for
EU trademarks. The application can be made by the applicant himself or by a qualified
representative (which is mandatory when the trademark is registered on behalf of several
persons or when the applicant is neither established nor domiciled in France, not in a
Member State of the European Union nor in an EEA country). The applicant has to provide
a model of the trademark and must enumerate the goods and services covered by it. The
application provides a national number recorded on the receipt or notified to the applicant.
This publication allows third parties to make observations during a period of two months
following it and, if necessary, to file an opposition.
INPI and EUIPO examine only absolute grounds for refusal, performing an assessment
of the sign and the designated goods and services.
INPI does not search for previous potentially conflicting trademarks.
It is possible to modify or withdraw, totally or partially, the application until EUIPO
starts to make the technical arrangements for registration. Such requests must be in writing.
Before the European Trademark Office, the procedure is quite similar: the first step is a
verification of the formal compliance of the application with the Regulation, then the list of
goods and services is sent to the Translation Centre in Luxembourg. If it has been requested,
a research report can be drafted about potentially conflicting trademarks; such a request can
also cover national marks, in which case it is transmitted to the required national trademark
office. All reports are then sent to the applicant before the office considers absolute grounds
of refusal. Afterwards, the application is published in the European Bulletin. Oppositions can
be filed within three months of publication.
Once an application is filed, the owner receives a six-month priority right to make
other applications in Europe or abroad, while keeping the initial application date.
For both French and EU trademarks, registration takes effect from the date of filing of
the application for a period of 10 years, which is renewable indefinitely.

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The renewal of French trademarks must be made within a period of six months, expiring
on the last day of the month in which the period of protection ends. However, the declaration
can still be made within a further period of six months from the day following the last day of
the month in which the protection expires, but a supplemental fee has to be paid.
EU trademarks may be renewed six months before their expiry date, and also benefit
from a six-month grace deadline, subject to payment of a fee (an additional 25 per cent).
The charges for an application at INPI of up to three classes of goods or services are
€250 for a paper-based application, or €210 for an internet-based application. There is an
additional cost of €42 per class if the applicant chooses to apply for more than three classes.
Renewal fees are the same as filing fees.
Charges for an EU regular trademark application designating one class are €1,000 for
a paper application and €850 for an electronic application; an additional €50 is charged for
a second class and €150 for all subsequent classes. Renewal fees are the same as filing fees.

ii Prior rights
Article L. 711-4 of the French IPC establishes an open list of rights that may constitute a
prior right to trademark,19 which are the following: trademarks registered or well-known,
company names, trade names, geographical indications, copyrights, industrial designs,
personality right of a third party (especially his or family name, pseudonym or his or her
image), and the name, image and reputation of a local public entity.
The prior right assessment depends on the right invoked. For prior trademarks,
company names and trade names, it will be the likelihood of confusion between the signs at
stake; for famous or well-known signs, name, image and reputation of a local public entity,
it will be an assessment of the harm to the prior sign. Also, regarding personality rights and
domain names, it can be an assessment based on civil liability and therefore more generally
on the harm to the prior right.

iii Inter partes proceedings


Opposition proceedings
Third parties may file their opposition within two months of the publication. There is no
possible extension of this deadline. Opposition proceedings are available to:
a the owner of a trademark that has been registered or applied for earlier on;
b the owner of a well-known trademark;
c the owner of a trademark that has an earlier priority date;
d an exclusive licensee;
e the director of the agency in charge of the indications of origins and geographical
indication; and
f local public entities.

As of May 2016, all oppositions have to be filed online on INPI’s website. The opposition is
notified to the applicant. The applicant has at least two months to present counter-observations.
If the applicant fails to do so, the Office will make a decision on the matter. In the case of
proper compliance by the applicant, the Office shall issue the draft of a decision, which
will be communicated to both parties, who will both have the opportunity to present their

19 Appeals Court of Paris, Pole 5, Chamber 2, 23 November 2012, Case No. 2011/16558.

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observations. If the draft is not contested, it will be adopted as a decision. During opposition
proceedings, the applicant may request evidence of use of the prior trademark if it has
been registered for more than five years. The INPI fee for filing an opposition is €325. The
opposition may be filed by the right holder or by appointed counsel.
Opposition proceedings are also available against EU trademark applications and must
be filed within three months of the publication of the application. The opposition fee is
€320. After the opposition is declared admissible, there is a ‘cooling-off’ period during which
the parties are given the opportunity to terminate the proceedings. Afterwards, parties are
each given two months to communicate their arguments on the case; there can be several
exchanges of briefs. EUIPO will then make a decision about the opposition.
If an EU opposition succeeds, the applicant will have to pay the other party’s costs
(roughly €650); if it fails, the opponent will have to bear the costs (roughly €300). In the case
of only partial loss, the costs will be shared. There are no such provisions regarding French
trademarks.

Invalidity proceedings
Trademarks can be challenged by invalidity actions before a court specialised in trademark law
that has territorial jurisdiction on the case. If the trademark is not distinctive, if it is deceptive,
contrary to public policy and public morals, or if it cannot be represented graphically, any
interested party can request its invalidation. However, if the trademark infringes a prior right
(trade name, surname, copyright), only the holder of the prior right can initiate an action.
Infringement actions based on prior rights, whether copyright or trademark as well
as civil liability actions (i.e., rights on a corporate name), can also be brought against a
trademark before a specialised court and lead to its invalidation.

Trademark property claims


Trademark ownership may be claimed by a party who considers that the trademark has been
applied for fraudulently.
Judicial first instance proceedings usually last nine to 18 months. The court fees are a
few hundred euros.

iv Appeals
An appeal against a ruling from INPI rejecting a trademark may be lodged within one month
of the ruling before the specialised appeals court that has jurisdiction on the territory where
the claimant resides. The deadline is extended by a month if the appellant resides outside
Metropolitan France20 and by two months if the appellant resides outside France. These
proceedings usually last four to 12 months.

20 French territory included in Europe, that is to say continental France and Corsica as opposed to other
territories, such as the islands of New Caledonia, la Réunion or Martinique.

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IV CIVIL LITIGATION
i Forums
Civil actions and applications related to trademarks, including those with issue of unfair
competition, shall be brought exclusively before the specialised courts of first instance, which
currently are: Bordeaux, Lille, Lyon, Marseille, Nanterre, Nancy, Paris, Rennes, Strasbourg
and Fort-de-France.
Litigation based on unfair competition law shall be brought before commercial courts
only if both parties are merchants, and before civil courts if one of them is not a merchant.

ii Pre-action conduct
Since 2015, it has been mandatory to prove that an attempt has been made to reach an
amicable solution before beginning a proceeding, or to justify due cause for not fulfilling this
obligation.
Under French law and practice, several alternative dispute resolution methods are often
used. Many cases are settled before any legal action starts and such settlement may prohibit
subsequent legal proceedings. Mediation is another kind of alternative dispute resolution.
More and more courts nominate mediators during commercial law proceedings. Arbitration
proceedings are also regularly used, since Paris has several arbitration courts.
However, through these alternative ways it is not possible to obtain the revocation of
a trademark (or the nullity of any intellectual property right for that matter). The decisions
rendered are enforceable inter partes only, as opposed to judicial decisions that are enforceable
erga omnes. Nonetheless these procedures may ensure confidentiality as well as an outcome
that may be applicable around the world.
Should an amicable outcome not be possible, the party that wishes to initiate proceedings
needs to gather all evidence to show its rights and how they are harmed. To do so, the plaintiff
may seek to initiate seizure proceedings, which are available to a party after a judge issues a
court order specifying the date, place and type of seizure (either a mere description or the
judge can also allow the seizure of samples, devices involved in the infringing process, or
any documentation pertaining to the infringing activity). A bailiff conducts the seizure; he
or she can be assisted by experts (in software, a trademark and patent attorney, a locksmith,
etc.) who cannot, under any circumstances, dictate any part of the report at risk of seeing the
entire procedure cancelled (the courts are extremely strict on that point). Proceedings must
be initiated within 20 working days or 31 calendar days of the seizure.

iii Causes of action


Trademark infringement
Trademark infringement is the most common cause of action. It involves opposing trademark
rights to undertakings that use the protected sign for identical or similar goods or services.
It is required to establish likelihood of confusion when the signs, goods or services are not
identical.

Unfair competition law


Unfair competition regulated by civil liability provisions is often used either as an additional
claim or as a subsidiary claim. It can cover many types of conduct, notably disparagement,
which means spreading pejorative and malicious information about a person, a company,
or a competitor’s products. Unfair competition law also prohibits generating confusion in

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customers’ minds between companies or their products. This is the behaviour by which an
economic agent interferes in the activity of another in order to profit, without spending
anything, from its efforts, investments and know-how. Most case law in the digital arena,
notably on domain names and the look and feel of web pages, is based on these general civil
law rules.

Family or corporate names


Disputes related to conflict between trademarks and family names or surnames are common.
They can be based on trademark law to oppose the registration of trademarks that may harm
family or corporate names, as well as on civil liability or rights of personality. In practice,
many court cases involve contract law. In the famous Bordas case,21 the Supreme Court
ruled that inalienability and imprescriptibility of a patronymic name are not obstacles to the
conclusion of an agreement related to the use of the patronymic name as a trade name. The
Ducasse case gave additional details.22 The Supreme Court ruled that the consent given by a
partner, whose name is well known, to the insertion of his surname in the denomination of a
company that has an activity in the same area, would not, without his or her agreement and
in the absence of renunciation to his or her property rights, allow the company to register this
surname as a trademark in order to designate the same goods or services. More recently, the
Supreme Court held that an individual agreement to use a name was a contract performed
successively. Therefore, even if the agreement did not include any term, that term is not
qualified as a perpetual contract. Hence, it constitutes a contract of an undetermined period
that each party can terminate at any time, with fair notice.23

iv Conduct of proceedings
Communication of evidence can be requested to the judge before legal proceedings are
initiated, notably with seizure proceedings or, once they are pending, presenting a petition
to the judge in charge of the case management. It enables the right holder to take the full
measure of the extent of the infringement both in terms of network (producers, distributors,
and all parties involved in between) and quantity (of goods, benefits made, etc.). The time
frame of gathering such evidence varies from half a day to a couple of months. Moreover, the
owner of a trademark can request customs seizures, and follow up with civil or criminal law
proceedings.
Judicial proceedings start with the filing of a complaint that has been served to the
defendant and then filed at court. According to the Paris Bar and Paris Court agreement, for
proceedings on the merits, there should be a total of four briefs, including the complaint. An
argument or an element of fact not referred to in these writings cannot be taken into account
by the court. The defendant is the one who responds last. The case is heard at final oral
pleadings, by one to three professional judges, and the ruling is issued a couple of weeks later.
First instance disputes related to trademark proceedings, such as infringement, dilution,
invalidity or unfair competition claims, last nine to 12 months.

21 Cass.com., 12 March 1985, Case No. 84-17163.


22 Cass.com., 6 May 2003, Case No. 00-18192.
23 Cass.com., 8 February 2017, Case No. 14-28.232.

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An appeal can be lodged within the shortest of the following deadlines: one month after
the notification of the ruling for French residents (two months for persons located in France
but outside Metropolitan France and three months for foreign residents); or two years after
the date of the ruling.
Urgent proceedings and interlocutory proceedings may take a couple of days or weeks.
They start with a written complaint served to the defendant and then filed at court. Urgent
proceedings are by nature oral but parties often file briefs ahead of the oral pleadings to
support their final oral argument. The deadline to appeal against interlocutory proceedings is
either two years after the ruling or 15 days after notification of the ruling for French residents;
one month and 15 days for persons located in France but outside Metropolitan France; and
two months and 15 days for foreign residents.
Appellate proceedings take between one and two years.
The losing party can be ordered to pay the other party’s court fees and all other costs.
In any of these proceedings representation by a lawyer is mandatory; however,
proceedings before the commercial court (which may have jurisdiction in cases about
company names or trade names not involving trademark law) do not require representation
by a lawyer.

v Remedies
In civil proceedings, courts may order several remedies for infringement, often granted with
the benefit of immediate execution and therefore enforceable even if appellate proceedings
are filed. The most usual are financial compensation or a prohibition order. Courts may also
grant the confiscation or destruction of counterfeiting goods and their means of production,
the publication of the judgment, and more generally, the award of damages based on the
negative economic consequences of counterfeiting, including losses incurred and lost profits,
moral damage, and the profit made by the counterfeiter. However, the injured party can
request a lump sum as damages, which exceeds the amount of the royalties or fees that would
have been paid if the infringer had applied for authorisation to use the infringed right. This
lump sum is not exclusive of compensation for the moral damage caused to the injured
party.24

V OTHER ENFORCEMENT PROCEEDINGS


In practice, most cases are heard before civil courts. However, trademark infringement
proceedings may be initiated by the owner, the public prosecutor or the custom authorities
since trademark infringement is also a criminal law tort. In particular, the IPC provides
that trademark infringement shall be punished by a prison term ranging from three to five
years (depending on the type of conduct) and by fines ranging from €300,000 to €500,000.
A trademark infringement case is heard before the general criminal law court after an
investigation by customs, the police or a judge. These proceedings may be a very helpful
deterrent and enable the trademark owner to find infringement networks. However, the case
may last a couple of years longer and the allocated damages and legal fees may be considerably
lower.

24 Article L.716-14 of the IPC.

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Customs proceedings are also very commonly used. The EU regulation on the matter
(Regulation No. 608/2013 of the European Parliament of the Council of 12 June 2013
concerning customs enforcement of intellectual property rights and repealing Council
Regulation (EC) No. 1383/2003) and national law (Customs Code) allow – for both French
and EU trademarks – detention or seizure of counterfeit goods. The right holder and the
exclusive authorised licensees can submit those applications. Custom authorities can also
proceed spontaneously.
While the regulation is applied at the external borders of the EU, French legislation
is applicable to commerce between Member States. If such counterfeit goods are found by
customs authorities, and following the notice, the decision holder has 10 days to inform the
customs authorities that he or she is engaged in legal proceedings, otherwise the customs
authorities would have to release the goods.

VI RECENT AND PENDING CASES


The Appeals Court of Paris held an important ruling that should be kept in mind in any
settlement negotiations. In its ruling, the Court prohibited combining an infringement
action with an action in breach of a settlement agreement, due to the prohibition of liabilities
aggregation and the pre-eminence of contractual liability.25
On 8 June 2017, the Supreme Court ruled on trademark distinctiveness and notably
held that the appeals court should have taken into account whether the word trademark
‘Rent A Car’ had acquired distinctiveness, and that the lower court should have assessed
whether there was harm to the company name and trade name ‘Rent A Car’.26

VII OUTLOOK
The effect of Brexit on EU trademarks is a major concern for right owners who will probably
need to find yet reliable cost-effective ways to secure their rights in both the EU and the UK.
The implementation of the ‘trademark package’ also raises many questions about
trademark invalidity jurisdictions in the coming years and how such proceedings will be
handled in conjunction with infringement proceedings. Currently the decision is at a political
stage.
There is currently abundant case law on the statute of limitation to seek the invalidation
of trademark rights.
Finally, on a more international level, companies and practitioners will, in the coming
months, be carefully reading the WTO decision on plain packaging in the case Australia
– Tobacco Plain Packaging (Ukraine), in which Ukraine challenged Australia to determine
whether measures concerning trademarks and packaging requirements may infringe
international commercial law.27

25 Pole 5, Chamber 1, 28 March 2017, Case No. 2015/07837.


26 Cass.com., 18 June 2017, Case No. 15-22.792.
27 Case DS434: Australia – Certain Measures Concerning Trademarks and Other Plain Packaging Requirements
Applicable to Tobacco Products and Packaging. See: https://www.wto.org/english/tratop_e/dispu_e/cases_e/
ds434_e.htm.

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Chapter 8

GERMANY

Richard Dissmann1

I OVERVIEW
Germany is generally a very right-owner-friendly jurisdiction. This is true in particular in
the field of trademark law. The registration process as well as the enforcement regime are
generally very efficient and effective. The German Patent and Trademark Office (DPMA)
operates smoothly and in a predictable manner; the same applies to German courts, which
are experienced, reliable and quick. Therefore, overall, Germany is considered to be one of
the world’s leading jurisdictions when it comes to trademark protection.

II LEGAL FRAMEWORK
i Legislation
German national trademarks are governed by the German Trademark Act.2 All national
trademark applications and registrations are handled by the DPMA.
Germany is a member of the European Union and, thus, also a Member State of
the EU  trademark (EUTM) system. Consequently, EUTMs can be applied for and are
enforceable in Germany. EUTMs exist in parallel with German national marks and provide
additional protection.
There are, however, a couple of distinct differences in the mechanics of German national
trademarks as opposed to EUTMs, which have a number of important practical consequences.
For example, German national trademarks follow an ‘opposition after registration’ regime,
meaning that opposition proceedings are only possible after the trademark has already
been registered. This is an important difference from the EUTM system, which follows a
‘registration after opposition’ regime. This means that a German trademark can already be
enforced while opposition proceedings are still pending. Furthermore, a cancellation action
against a German national trademark does not have any effect on infringement proceedings
based on that trademark. This is another difference from the EUTM system, under which
a cancellation action against the trademark will normally result in subsequent infringement
proceedings based on that trademark having to be suspended until the final decision in the
cancellation proceedings (Article 104, EUTM regulations). Therefore, it is often advisable to
file for a German national trademark and an EUTM at the same time.

1 Dr Richard Dissmann is a partner at Bird & Bird LLP in Munich.


2 Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Markengesetz – MarkenG) 1994, as
revised in 2013.

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In addition to the above, Germany is a member of the Madrid System, which means
that international registrations can be applied for and extended to Germany.

ii Authorities
The DPMA is responsible for examining German national trademark applications. The
decisions made by the DPMA can be reviewed by the German Federal Patent Court (BPatG).
The decisions of the BPatG can be further reviewed by the German Federal Supreme Court
(BGH), but only if a further appeal is admitted by the BPatG. This happens only in a few
cases. Therefore, decisions made by the BPatG very often cannot be appealed any further and,
thus, stand as the final decision on various trademark law-related issues.
Company names in Germany follow a different regime. They are also protected by the
German Trademark Act, but are not handled by the DPMA. However, company names and
other trade names (such as company logos) come into effect by commencing their use in
commerce. No registration is required. An infringement of a company name can therefore be
asserted in the civil courts, which also review whether a company name right was acquired
in the first place.
Domain names are handled by the German registration agency for domain names
(DENIC), which is responsible for managing all domain names with the ‘.de’ top-level
domain.
Trademarks, company names and domain names are all enforced before the German civil
courts in civil litigation proceedings. There is no Uniform Domain-Name Dispute-Resolution
Policy regime for ‘.de’ domain names. In civil proceedings, the regional court is usually the
first instance body. The decisions made by the regional court can be reviewed in appeal
proceedings before the higher regional court. Decisions made by the higher regional court can
be reviewed in a further legal appeal (revision) by the BGH. However, revision proceedings
have to be admitted by the court of appeal (i.e., the higher regional court). If they are not
admitted by the court of appeal, the appellant has the option of filing a complaint against the
non-admission of revision proceedings. This is a major difference to office proceedings, where
this option is not available. In preliminary injunction proceedings, the court of appeal stage
is always the final stage and no further appeal to the BGH is possible.

iii Substantive law


The legal basis for the protection of trademarks, trade names and similar intellectual property
rights in Germany are the EUTM regulations and the German Trademark Act. For the
purposes of this article we will focus on the German national regime.
The German Trademark Act protects both registered and unregistered trademarks.
Registered trademarks can be obtained by filing trademark applications, and are registered
after examination by the DPMA. Unregistered trademark protection can be obtained by
using a sign in commerce if the trademark has acquired secondary meaning through extensive
use in commerce. Company names and other trade names are also protected by the Act, but
they do not require secondary meaning. They already come into existence with their first use
in commerce. However, protection may be limited to the scope of operation of the company
in terms of territory, time and field of business.
The Act also protects collective trademarks and geographic indications. At the time
of writing, there is no national German regime on certification marks. However, legislation
is in progress to implement a national regime, which is expected to come into force in
2018. Germany also awards special protection to well-known trademarks. However, there

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is no special registration available for well-known trademarks. The well-known quality of


a trademark must be asserted and proven in infringement proceedings and assessed by the
courts on a case-by-case basis.
Domain names are handled by the DENIC. They can be applied for by anyone if the
domain name is still available. The only formal requirement is that either the domain name
owner or the administrative contact must be based in Germany.

III REGISTRATION OF MARKS


i Inherent registrability
Trademarks can be registered in Germany if they are inherently distinctive of the goods
and services for which protection is sought. If a trademark is not distinctive, it can acquire
distinctiveness if more than 50 per cent of German consumers identify it as an indication of
origin.

ii Prior rights
The DPMA does not review the register for possible prior rights of third parties. It is entirely
the applicant’s obligation to make sure that no conflicting prior rights are registered. The
owners of prior rights often monitor their trademarks, for example with the help of watch
services, and may file an opposition or even assert an infringement claim if confusingly
similar later marks are filed.

iii Inter partes proceedings


Opposition proceedings can be filed by owners of prior rights up to three months after an
application has been made. Invalidity proceedings based on absolute grounds can be filed by
any third party up to 10 years after registration. Beyond this deadline, invalidity proceedings
can only be brought on a very limited number of grounds. Revocation proceedings based
on non-use can also be filed by any third party. These proceedings can be filed either at
the DPMA or at the civil court. There is no time limit for filing revocation proceedings. If
they are filed at the DPMA and the trademark owner opposes the trademark revocation,
the contentious revocation proceedings are in any event referred to the civil court. There is
legislation in progress to change that rule and to assign all revocation proceedings exclusively
to the DPMA. However, as of October 2017, this legislation has not yet been implemented,
though it may happen in 2018.

iv Appeals
All appeals against the decisions of the DPMA are handled by the BPatG. There are some
exceptions for smaller, formal appeals, whereby the DPMA can review its own decisions
before cases are handed over to the BPatG. As mentioned above, the BPatG is normally the
final instance in office proceedings unless a further appeal to the BGH is admitted, which
happens only in exceptional cases. There is a discussion as to whether this rule should be
changed and a regime similar to that in civil proceedings should be implemented. However,
it is too early to predict whether such legislative changes may happen.

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IV CIVIL LITIGATION
i Forums
Trademark matters in Germany are handled by the regional courts. There are specialised
trademark courts in the various states, which are exclusively competent in trademark matters.
Therefore, these trademark courts are highly specialised and generally very knowledgeable in
trademark law. However, there is no obligation to file trademark matters with these courts.

ii Pre-action conduct
There are no formal pretrial requirements. However, normally, a warning letter is sent by the
right owner to the alleged infringer before a civil action is filed. After the warning letter, the
parties in most cases discuss the option for an amicable settlement before the right owner
decides whether to file an infringement action. Having said that, not sending a warning letter
to the opponent does not make a court action inadmissible, although it may have an impact
on the costs of the proceedings, that is, if the opponent accepts the claims immediately, the
right owner has to bear the costs.

iii Causes of action


All claims based on trademarks, unfair competition, company names, domain names, etc.
are enforced in the same type of proceedings. The trademark courts are competent in all
these claims, which are often asserted next to each other. The proceedings are regular civil
proceedings, in which civil claims such as cease and desist claims, information and damage
claims are asserted. The opponent can then file a cancellation action as a counter-attack.

iv Conduct of proceedings
Germany is a civil law country and therefore litigation also follows a classic civil law standard.
There a no discovery or disclosure proceedings in Germany. Each party has to submit all
facts and evidence that are favourable to their position. If a circumstance is unknown to the
plaintiff (e.g., because it is a secret of the defendant), the plaintiff normally does not have
the option of forcing the defendant to reveal that secret in the litigation. The proceedings
are initiated by the plaintiff filing a written complaint to the competent court, which should
contain all facts and evidence as well as legal arguments to support the claim. The defendant
then has the opportunity to file a written statement of defence. After that, usually another
round of written submissions is exchanged before an oral hearing takes place. In that hearing,
the factual and legal arguments are discussed once again, and the court usually gives its
preliminary assessment. A couple of weeks after the hearing, the court issues a written
judgment. The first instance proceedings commonly take between nine and 12  months.
Generally, the losing party has to bear the costs of the proceedings, which, however, are
limited to the statutory fees. In most cases the statutory fees are lower than the actual costs of
the litigation. If the decision is split, so that both the plaintiff and the defendant win a part
of the action, the court will also order a corresponding split of the costs.

v Remedies
The most important claim in infringement proceedings is generally considered to be the cease
and desist claim. German courts can also order a variety of other remedies, including a claim
for damages, a claim for information, a claim for destruction of infringing products, a claim
for recall, etc.

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Claims for damages in trademark matters in Germany are not as attractive as in other
jurisdictions. This is mainly due to the fact that there is no regime on punitive damages in
Germany, so high awards of damages are the exception rather than the rule.
An important new development is that the BGH in some recent decisions has held
that the cease and desist claim also implies an obligation for the defendant to recall the
infringing products from the trade.3 This even applies in preliminary injunction proceedings.
The future will show whether this new case law will stand up to the scrutiny of, for example,
the European Court of Justice.

V OTHER ENFORCEMENT PROCEEDINGS


Trademark infringements in Germany are also criminal offences and, thus, can be actioned
with the help of the police and public prosecutors. However, since civil proceedings are
so effective in Germany, criminal enforcement is applied only in special cases. Criminal
enforcement options are attractive if the fact-finding and securing of evidence is very difficult
for the plaintiff, in particular in cases of counterfeit and organised crime. Germany also has
a very efficient customs seizure regime, with highly qualified and motivated specialists at
the customs authorities. The legal basis is predominantly the EU Product Piracy Regulation
(PPR), which governs the traffic of goods from outside the EU into the Union and vice versa.
There is also a national regime on customs seizures which covers the traffic of goods within
the EU. However, because there are no border controls within the EU under the Schengen
Treaty, the practical relevance of this national border seizure regime is limited.

VI RECENT AND PENDING CASES


Certainly the most controversial new development in German case law is on the question
of whether cease and desist claims also imply an obligation of the defendant to recall the
allegedly infringing products from the trade channels. In three recent decisions,4 the BGH
has held that a cease and desist claim does not only oblige the defendant to discontinue the
infringing behaviour, but includes the obligation for its customers to be asked to remove
the products from sale and return them to the defendant. This applies also to products over
which the defendant no longer has factual or legal control and where the defendant has no
legal claim to demand them back from its customers. According to the BGH, this rule shall
also apply in preliminary injunction proceedings, and in ex parte proceedings where the
defendant was not even heard before the court issued its injunction.
This new case law has received a lot of criticism in German legal literature and even
from lower courts, some of which have refused to apply the new regime. Several legal
arguments are being raised against this new case law, for example that it adds confusion to
independent legal claims (cease and desist and claim for recall), which each have their own
prerequisites and are governed by separate legal provisions. Another central challenge is that
a claim for recall is normally not ordered in preliminary injunction proceedings, so there
is a systematic inconsistency if a cease and desist claim granted in preliminary proceedings

3 BGH, decision of 19 November 2015, Docket No. I ZR 109/14 – Hot Sox; BGH, decision of
29 September 2016, Docket No. I ZB 34/15 – Rückruf von RESCUE-Produkten.; BGH, decision of
4 May 2017, Docket No. I ZR 208/15 – Luftentfeuchter.
4 Ibid.

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should automatically also include obligations to perform a recall. No further developments


in this case law are foreseen at this stage. In particular, it will be interesting to see whether the
European Court of Justice will support it. There is at the very least the question as to whether
a cease and desist claim based on an EUTM includes a (pan-European) obligation to recall
the product should the claim be referred to the European Court of Justice.

VII OUTLOOK
There is due to be a reform of the German Trademark Act in the near future, in which many
of the latest developments on a European level are very likely to be mirrored in the German
Trademark Act. This will probably include, for example, implementation of the rules on
certification marks in the German system. A further harmonisation of the German system
with the EUTM system is also expected, for example in relation to a switch of the German
system to a ‘registration after opposition’ regime, or by transferring the entire revocation
proceedings to the DPMA. Legislation is in process and is expected to be implemented at
some point in 2018. The aforementioned developments on the question of cease and desist
claims and claims for recall as they pertain to infringement proceedings will also be highly
interesting.
Another area of interest is online infringement. In recent years, trading of counterfeit
and other infringing goods on the internet has increased significantly. This is mainly due to
the fact that many trading platforms, such as Alibaba, have become more sophisticated and
easily accessible to small merchants and even private individuals. Therefore, we are seeing an
increasing number of offers of infringing products on internet platforms, such as eBay and
Amazon Market Place, which are posted directly by sellers from other countries. This poses
significant legal challenges, in particular because it can be very difficult to enforce the claim
directly against the seller. This often entails the question of whether the platform operators
can be held liable for the infringing offers.
Case law on the liability of platform operators is under constant development, both
on a German and European level. The platform operators naturally want to protect their
business model and seek to avoid any liability for what is happening on their platforms. The
right owners, on the other hand, want to avoid having to pursue every individual infringing
offer by way of notice and take-down mechanics, for example. Balancing these commercial
interests and the legal arguments of all involved parties will certainly be one of the main
challenges in the coming years for the courts and legislative bodies in Germany and the EU.
These questions are also highly relevant for operators of social media platforms. Social
media have transformed into commercial platforms in recent years, with brand owners
promoting and sometimes even distributing their products via social media. Therefore, social
media networks nowadays are facing essentially the same questions as operators of online
marketplaces. In addition, social media platforms usually have to deal with other legal issues
regarding data protection, defamation and freedom of speech, and some concerning privacy
and personality rights.
Independent of the substantive legal questions connected with these phenomena, there
is always the question of venue. German courts generally take the view that they can action
an infringement if it is (also) ‘targeted at the German market’. However, the question as to
whether a specific content on the internet is actually targeted at the German market is not
always clear and in most cases requires a pretty detailed analysis of the specific facts on a
case-by-case basis. This burdens the right owner with the risk that a court might ultimately

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find that it does not have jurisdiction over a special form of online infringement. This risk
does not only mean that the right owner might not succeed with the infringement action, but
also that the right owner may have to bear the cost of the entire proceedings, simply because
the court – after a sophisticated review of the facts of the case – came to the conclusion that
the infringement at stake was not, in its view, targeted at the German market. In fact, German
courts take a rather generous view on this question, but the remaining uncertainties are still
significant for the right owners, ultimately leading to many right owners being hesitant about
enforcing their rights in cases of online infringements.

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Chapter 9

GREECE

Christos Chrissanthis, Xenia Chardalia and Antonia Vasilogamvrou1

I OVERVIEW
i Impact of EU law
Greece is a member of the EU and has, hence, implemented EU law on trademarks. The
process for the registration of trademarks in Greece is almost identical to the process used by
the European Union Intellectual Property Office (EUIPO) for the registration of European
Union Trademark Applications (EUTMAs). The case law of the General Court (GCEU) and
the Court of Justice (CJEU) of the EU also has a great impact on national courts. Similarly,
the guidelines issued by the EUIPO regarding trademark cases are usually followed by the
Greek Trademark Office and the Greek courts.

ii Registered and non-registered marks


Greek law provides for the protection of both registered and non-registered marks. Registered
marks are called trademarks and are protected under trademark law, while non-registered
marks are usually called distinctive signs and are protected under specific provisions of the
law on unfair competition (Articles 13–15 of Law 146/1914).
The basic prerequisite for protection of both trademarks and non-registered distinctive
signs is that they must be distinctive, that is, capable of distinguishing the products or services
of one manufacturer from those of another.

iii Types of marks


The following types of marks are capable of being protected either as registered trademarks,
or as non-registered distinctive signs, provided they are distinctive:
a words affixed to products or used in the course of providing services;
b letters, numbers, names (both first names and surnames) and abbreviations;
c slogans and short phrases;
d colours and colour combinations;
e designs, including 3D designs;
f the shape of the product, or of its packaging, product labels and trade dress;
g company names and distinctive titles used to identify the premises where goods or
services are offered to consumers; and
h surface designs, colour patterns and design patterns.

1 Christos Chrissanthis and Xenia Chardalia are partners and Antonia Vasilogamvrou is an associate at
Christos Chrissanthis & Partners Law Firm.

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Non-traditional marks, such as sound, taste, smell and feel, are currently considered in
practice as not capable of being protected, because they cannot be described or identified in a
clear, precise, consistent and unambiguous manner, or at least there is currently no consensus
as to the method that would enable a clear, precise, consistent and unambiguous description
of such signs.
The Greek Trademark Office accepts applications for both product marks and service
marks, as well as collective marks.

iv National, European and international trademarks


There are four ways to obtain registered trademark protection in Greece:
a filing a national (Greek) trademark (both nationals and foreigners can apply for a
national trademark);
b filing a European Union Trademark (EUTM);
c filing an international trademark with the World Intellectual Property Organization
(WIPO), designating Greece, under the Madrid Protocol; and
d filing an international trademark with WIPO, designating the EU, which will result in
an EUTM.

An application for a national trademark, an EUTMA or an international trademark


application with WIPO may have international priority under the Paris Convention.

v Statistics on trademark applications


The table below shows the number of national trademarks applied for in the past five years,
and the number of international registrations that have been extended to Greece and applied
for protection in Greece:

National trademarks International registrations


2016 5,541 1,028
2015 5,688 1,371
2014 5,550 1,349
2013 5,078 1,648
2012 3,744 1,692

vi The Greek economy


Greece is a market with a population of about 10 million people. Gross domestic product
(GDP) in Greece averaged €91.25 billion from 1960 until 2014, reaching an all-time high of
€301.42 billion in 2008. Since 2008, Greece has been experiencing its most serious economic
crisis (mainly a public debt crisis) since the Second World War. The table below shows the
country’s GDP performance during the past five years:

National GDP (€bn) GDP per capita (€)


2016 165.0 15,215
2015 165.6 15,261
2014 200.9 18,394
2013 203.9 18,534
2012 208.9 18,846

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II LEGAL FRAMEWORK
i Legislation
The Greek law on trademarks consists of Law 4072/2012 (Articles 121–183), as amended
by Law 4155/2013.
The Greek law on non-registered distinctive signs consists of Articles 13–15 of Law
146/1914 on unfair competition.
Greece has implemented the following EU Directives, which affect its national law on
trademarks:
a Directive 2008/95/EC, regarding the approximation of the law on trademarks;
Directive 2015/2436/EU recasting Directive 2008/95 has not yet been implemented
into national law;
b Directive 2004/48/EC on the enforcement of intellectual property rights; and
c Regulation 608/2013/EU concerning customs enforcement of intellectual property
rights is directly applicable into Greece.

Regulation 207/2009/EC regarding the EUTM (as amended by Regulation 2015/2424/EU)


is also directly applicable in Greece and EUTMs are protected, according to the provisions of
the above-mentioned Regulation.
Greece has also implemented into national law the following international conventions:
a the Paris Convention 1883 (Stockholm 1967 version);
b the World Trade Organization TRIPS Agreement;
c the Hague Convention for international registration of industrial designs, known as the
Hague System (Geneva Convention 1999);
d the Locarno Agreement (1968), on the international classification of industrial designs;
e the Madrid Protocol (1989), regarding international registration of trademarks through
WIPO; and
f the Nice Classification Agreement (1957), now consisting of 45 classes of goods and
services for trademark registrations.

However, Greece has not implemented the following international conventions:


a the Madrid Agreement (1891) on international registration of trademarks;
b the Vienna (1973) Trademark Registration Treaty;
c the Vienna (1973) Agreement on the classification of figurative elements of marks; and
d the Geneva (1994) Trademark Law Treaty.

ii Authorities
Cases relating to trademark registration, revocation or cancellation are dealt with by the
Trademark Office, the Trademarks’ Committee and the administrative courts. Cases relating
to enforcement of registered trademarks and other distinctive signs (i.e., company names
and non-registered distinctive signs) are dealt with by the civil courts. Cases relating to the
registration or cancellation of domain names are dealt with by the National Authority for
Telecommunications and Post Services.

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Cases relating to the registration process


Trademark applications are dealt with by an examiner, who is a civil servant of the Trademark
Office. The Office is a department of the Ministry of Trade. The decisions of the examiner
can be appealed before the Trademarks’ Committee, within 60 days of notification.
The Trademarks’ Committee consists of three members and deals with oppositions
and cancellations as well as applications. Its decisions are appealed before the first instance
administrative courts, and then, if necessary, to the second instance administrative courts.
The administrative courts can review a case on both matters of fact and matters of law. The
decisions of the second instance administrative courts can be appealed to the Supreme –
Cassation Administrative Court (the Council of State), which reviews cases only on matters
of law. In all these cases, the time period for filing an appeal to a superior court is 60 days if
the appellant is residing in Greece and 90 days if the appellant is residing abroad.
The Trademarks’ Committee and the administrative courts review cases only under
ordinary proceedings and issue neither summary judgments nor provisional court orders.
The decisions of the examiners, the Trademarks’ Committee and the administrative
courts are sometimes controversial. So, supporting cases with precedents from the GCEU
and the CJEU and explaining the law by written memoranda is vital.

Cases relating to enforcement of registered trademarks and non-registered distinctive signs


Cases relating to the enforcement of trademark rights and non-registered distinctive signs are
dealt with by civil courts. There are civil courts of first and second instance (the latter being
appeal courts), which review cases both on matters of fact and law. The judgments issued
by second instance (appeal) courts can be further appealed before the Supreme – Cassation
Civil Court (the Supreme Court of Greece), which reviews cases only and strictly on matters
of law. The time frame to file an appeal, either to a second instance (appeal) court or to the
Supreme Court is only 30 days after notification of the judgment, or 60 days if the appellant
is residing abroad. Only judgments of a second instance court are enforceable. An appeal to
the Supreme Court does not affect the enforceability of the judgment reviewed, unless the
Court issues, upon the application of the appellant and under summary proceedings, an
order rendering the judgment unenforceable.
According to Article 95 of Regulation 207/2009/EC (relating to the EUTM),
Greece has designated the civil courts of Athens and Thessaloniki to deal with civil cases
relating to the enforcement of EUTMs. These two courts also deal with cases relating to
national trademarks and all other intellectual property cases. So, cases relating to trademark
infringement committed in any part of northern Greece are dealt with by the civil courts of
Thessaloniki, while cases relating to infringements in southern Greece are dealt with by the
civil courts of Athens. The Athens courts are manifestly friendlier to trademark owners, while
those of Thessaloniki have a stronger attitude in favour of free competition. However, it is
relatively easy to establish jurisdiction of the Athens courts, provided that it can be evidenced
that infringing goods are traded in the southern part of Greece.
There are both single-member and multi-member civil courts, at both first and
second instance level, which can deal with trademark cases. Single-member civil courts have
jurisdiction in connection to legal actions that are grounded on trademark law only. However,
usually, trademark cases are grounded on unfair competition law as well; in such cases, it is
only multi-member civil courts that can deal with the case.

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Multi-member courts consist of three judges and are considered to be more sophisticated
and more capable of dealing with complex litigations than single-member courts. Legal actions
relating to non-registered distinctive signs are grounded on the law of unfair competition and
are dealt with by multi-member courts only.
Greek trademark legislation provides that civil courts are not allowed to challenge the
validity of a registered trademark, even in cases where such a trademark has been registered
in bad faith, or in violation of the rules regarding trademark registration. So, if a trademark
has been filed, although there were absolute or relative grounds that should have prevented
registration, the only legal remedy is to apply to the Trademark Office for its cancellation.
In addition to ordinary proceedings, civil courts can issue provisional court orders
and summary judgments. Applications for provisional court orders, or summary judgments,
are filed with single-member first instance courts. A provisional court order may be issued
without a formal court hearing, or even without prior notice to the defendant, within about
10 days of the filing of the application. Provisional court orders are usually issued in order to
attach and preserve evidence, like an Anton Piller order. However, it is not unusual for a court
to issue a provisional cease and desist order, prohibiting a defendant from using a certain
mark. A summary judgment is issued after a court hearing under summary proceedings,
within a period of about six months from the filing of the application. A legal action under
ordinary proceedings must always follow, unless the case is settled out of court. A judgment
under ordinary proceedings from a first instance court is usually issued within 18 months of
the filing of the legal action, while a judgment from a second instance court is usually issued
within two years of the filing of an appeal.
There are no jury courts in civil and administrative procedures; all courts consist of
judges. Judges are appointed after graduating from the National School of Judges, which
they enter after examinations, usually shortly after graduating from a law school. Unlike
other jurisdictions, senior barristers do not become judges. Judges are promoted from the first
instance courts to the appeal courts and finally to the Supreme – Cassation Court. During
their career, they are usually transferred to serve with different courts around the country;
they do not serve their entire career with the same court, or in the same city. Moreover, Greek
judges serve before both civil and commercial and criminal departments of their court. So,
during their career, they deal with civil, commercial and criminal cases. Greek judges do have
a certain level of familiarity with trademark law and the jurisprudence of the GCEU and the
CJEU, but they are not familiar with issues that have the greatest effect on trademark cases,
such as marketing, advertising, accounting, consumer behaviour. Hence, supporting cases
with sufficient court precedents, persuasive expert evidence and well-structured memoranda
is decisive.

Domain names
The body responsible for the registration and cancellation of domain names is the National
Authority of Telecommunications and Post Services. See Section V.ii for procedures relating
to domain names.

iii Substantive law


Registered trademarks
Registered trademarks are infringed in case of unauthorised use by a third party leading to
(1) likelihood of confusion (including likelihood of association), or (2) dilution, as well as in

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case of (3) illegitimate parallel imports, where trademark rights have not been exhausted (see
Section VI.iii). In defining those concepts, Greek law follows Directive 2008/95/EC and case
law of the GCEU and the CJEU.
All types of likelihood of confusion are actionable, namely, forward confusion, reverse
confusion, post-sales confusion and initial interest confusion.
The test for establishing likelihood of confusion is a multifactor one, taking into
account the level of similarity of the respective marks and goods or services, the level of
consumers’ attention and awareness, distribution channels, the level of recognition of the
earlier mark (assessed on the basis of longevity of use, market shares, geographical expansion
of use, volume of advertisement expenditure, etc.), actual confusion, as well as intent of
the unauthorised user (if it can be established). Similarity of marks can be visual, aural or
conceptual. Similarity of goods or services is established if they are made of the same raw
materials, if they serve similar consumer needs, or if they are addressed to the same group of
consumers.
In complicated cases, the more persuasive means of establishing likelihood of confusion
are (1) facts evidencing actual confusion, such as consumer complaints, and (2) a comparison
of the volume of sales of the respective marks during the same period of time showing some
linear correlation between an increase in sales of the latter mark and a decrease in sales of
the earlier mark. Market survey reports are acceptable evidence in courts, but they are not
considered to be sufficiently persuasive.
The rules that are more often applied in connection to likelihood of confusion are the
following:
a likelihood of confusion is presumed in a case of identity of both the respective marks
and the respective goods or services;
b likelihood of confusion is assessed on the basis of dominant elements of the respective
marks, while descriptive or commonly used elements are not taken into account;
c consumers’ attention and awareness is higher in the case of pharmaceuticals, high-value
goods and goods addressed to professionals; and
d likelihood of confusion is established when the earlier mark is incorporated as such in
the latter.

Here are some notable examples from case law.


a Likelihood of confusion established:
• ‘Red Bull & device of two bulls’ and ‘Crazy Bull & device of one bull’, both for
non-alcoholic beverages in class 32;2
• ‘Lixidon’ and ‘Lixin’, both for soaps in class 3;3
• ‘Wonderbra’ for brassiere in class 25 and ‘Wonderbody’ for swimsuits in class 25;
• ‘Eva’, ‘Eva Cream’, ‘Eva Restore’, ‘Eva Lactic’ for cosmetics and pharmaceuticals
in classes 3 and 5, and ‘Eva/qu’ for constipation products in class 5;4 and
• ‘Fitmaxx’ and ‘Maxfit’, both for foodstuffs and beverages in classes 30 and 32.5

2 Supreme – Cassation Administrative Court (Council of State), No. 2944/2008.


3 Supreme – Cassation Administrative Court (Council of State), No. 620/1982.
4 Single Member First Instance Court of Athens (Summary Judgment), No. 6271/2015.
5 First Instance Administrative Court of Athens, No. 5112/2012.

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b Likelihood of confusion not established:


• ‘Catherinebijoux’ and ‘CSC Catherine Silver Corner & device’, both for jewellery
in class 14;6
• ‘Jet Oil & device’ and ‘Jet Gas’, both for fuels in class 4;7
• ‘Clear Guard’ and ‘On Guard’, both for locks in class 6;8
• ‘Coca-Cola’ and ‘Up Kola’, both for non-alcoholic beverages in class 32;9
• ‘Clusters’ and ‘Kellogg’s Crunchy Nuts Clusters’, both for cereals in class 30.10
• ‘Aire Alpino & device of a spruce fir tree’ and ‘a device mark representing a spruce
fir tree’, both for air fresheners in class 5;11
• ‘Pepsi’ as a well-known mark registered in many classes, and ‘Pepsiflat’ and ‘Pepsi
Soda’ in class 5 for pharmaceuticals and dietary products for digestive disorders,
because ‘pepsi’ is also a Greek word meaning ‘digestion’; a dilution claim was also
rejected on the ground of lack of unfair advantage;12 and
• ‘Coffee Time’ for cafeteria services in class 43, and the advertising slogan ‘It’s
coffee time. Loumidis’ for coffee products; because the term ‘coffee time’ is of
limited distinctiveness only, while Loumidis is a famous coffee brand in Greece.13

In addition to likelihood of confusion, marks with reputation are protected against dilution.

Well-known marks
Well-known marks, that is to say marks with a reputation, enjoy additional protection,
including protection against likelihood of dilution and bad faith.
With respect to dilution, reputation is assessed on the basis of market shares, volume of
sales, volume of advertising investment, longevity of use, etc. (the test is again a multifactor
one). The prerequisites for establishing dilution are:
a similarity between the earlier and the later mark;
b likelihood of a link in consumers’ minds between the earlier and the later mark;
c unfair advantage in favour of the later mark from the reputation of the earlier mark, or
detriment to the reputation of the earlier mark; and
d lack of any due cause justifying such unfair advantage or detriment.

Dilution may exist if:


a the later mark becomes recognisable by consumers faster and with less advertising
expenditure (free-riding);
b the later mark is affixed to products of inferior quality, or there is some other negative
publicity or negative implications against the earlier mark; or
c there is a lessening of the distinctive value of the earlier mark.

6 Second Instance Administrative Court of Appeal of Athens, No. 97/2013.


7 Supreme – Cassation Administrative Court (Council of State), No. 535/1981.
8 Supreme – Cassation Administrative Court (Council of State), No. 1964/1980.
9 Supreme – Cassation Administrative Court (Council of State), No. 189/1985.
10 Supreme – Cassation Administrative Court (Council of State), No. 1610/2017.
11 Supreme – Cassation Administrative Court (Council of State), No. 1710/2006.
12 Trademarks Committee Decisions No. 7361/2000 and No. 10/2015.
13 Single-Member First Instance Court of Athens (Summary Judgment), No. 5632/2004.

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Courts are rather reluctant to sustain dilution claims, but do sustain them when there is
sufficiently persuasive evidence. Again, the best type of evidence is some linear correlation
between respective volumes of sales of the marks concerned over the same period, as well as
any other evidence of actual dilution. The test, though, is one for likelihood of dilution and
actual dilution is not necessary. Market survey reports are again acceptable evidence, but they
are not considered to be sufficiently persuasive.
Here are some notable examples from case law.
• The mark of Adidas consisting of ‘three parallel stripes’ has been found to be a mark
with a reputation that is diluted by the use of a mark consisting of ‘four parallel stripes’
in athletic footwear.14
• The shape of a ‘cigar-like cylinder chocolate wafer’ traded under the word mark ‘Caprice’
was found to be a mark with a reputation. Dilution was established when a competitor
launched a chocolate wafer of an identical shape under the word mark ‘Happy Day’.15
• The mark ‘Element & device of a tree’ of the well-known leisure and casual clothing
company was found to be one with reputation and dilution was established when a
retailer traded clothes with similar marks from other manufacturers.16
• The mark ‘Champion’ of the well-known athletic clothing company was found to be
one with a reputation and dilution was established when a local manufacturer launched
athletic clothes under the same mark, although in different lettering.17
• Caterpillar’s mark consisting of its company name and black and yellow colours was
found to be one with a reputation and was granted legal protection, although the yellow
colour is widely used in machinery and heavy tools by many other competitors.18
• Lufthansa’s figurative mark, consisting of a bird (stork) in blue and yellow colours, was
not considered to be a famous one, but likelihood of confusion was established when
a local air carrier used a similar figurative mark accompanied by a different company
name.19

Marks that have been registered as trademarks in other countries and enjoy a reputation
abroad are also protected in Greece, according to Article  6  bis of the Paris Convention
(1883); this means that a later national application can be opposed and a later national
registration can be cancelled. National legislation has extended this type of protection even
to foreign trademarks that do not have a reputation, provided it can be established that the
later national application was made in bad faith.

14 Supreme – Cassation Court (Supreme Court of Greece), No. 1030/2008.


15 Multi-Member First Instance Court of Athens, No. 585/2010. This judgment is particularly interesting
because the court concluded that the shape of the product alone enjoyed reputation. The shape of the
product was registered as a trademark.
16 Athens Court of Appeals, No. 840/2012; from the judgment it seems that the level of similarity among the
respective marks was high enough to establish likelihood of confusion as well.
17 Multi-Member First Instance Court of Athens, No. 5610/2010.
18 Single Member First Instance Court of Athens (Summary Judgment), No. 9476/2012.
19 Athens Court of Appeal, No. 3945/2012.

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Non-registered distinctive signs and company names


Non-registered marks enjoy legal protection under Articles 13–15 of Law 146/1914 on
unfair competition. The prerequisites for obtaining protection for an earlier non-registered
distinctive mark are as follows:
• the mark must be distinctive (either inherently or through use), not descriptive and not
commonly used;
• use in the course of trade must be established on the evidence; in the case of marks
other than word marks, such as the shape of the product, colours and designs of the
packaging, etc., the level of use in the course of trade must be substantially high, that is
to say, almost to the level of reputation;
• priority of use against the later mark must be established on the evidence; and
• use of the later mark must cause likelihood of confusion, likelihood of association or
likelihood of dilution.

Non-registered marks do not enjoy protection in the whole country, but only in the
geographical area where they are used and have become recognisable by consumers;
The remedies are the same as in registered trademarks (see Section IV.v).

Unfair competition
Article 1 of Law 146/1914 prohibits any act that (1) is committed in the course of trade; (2) is
contrary to business ethics and morals; (3) is oriented towards some commercial advantage;
and (4) is objectively capable of granting some commercial advantage, which also means that
the plaintiff and the defendant must also be competitors. This Article establishes a tort of
unfair competition, in compliance to Article 10 bis of the Paris Convention (1883).

Geographical indications
Illegitimate use of protected appellations of origin, or protected geographical indications, as
well as any illegitimate use of any other geographical terms all qualify as unfair competition
infringements.

III REGISTRATION OF MARKS


i Formalities and process for trademark registration
Greek trademark law retains the prerequisite that a mark must be capable of being represented
graphically. However, this prerequisite will soon be abolished because of the forthcoming
implementation of Directive 2015/2436/EU, which has abandoned the prerequisite of
‘graphic representation’ of the mark to be applied for. However, the abolishment of the
‘graphic representation’ requirement is not expected to cause any material difference, because
the mark to be applied for will still need to be described in a clear, precise, consistent and
unambiguous way. This makes registration of non-traditional marks, such as sound, smell
and taste, problematic.
Foreign citizens (individuals and legal entities) who apply for trademark registration
in Greece are required to appoint a representative in Greece, as well as an agent to receive
service of process. Usually, the appointed representative is a qualified attorney-at-law. This
power of attorney does not need any legalisation, certification or Apostille, but, if opposition
proceedings follow, a notarised power of attorney, bearing the Hague Convention Apostille,

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will be required. Foreign applicants are not required to prove ‘reciprocity’, that is, they do not
need to submit evidence that their home country accepts trademark applications by Greek
citizens. In addition, foreign citizens are not required to have any establishment in Greece.
There is no ‘use’ or ‘intent to use’ requirement for filing a trademark application.
Trademark applications are submitted to the Trademark Office and are adjudicated
by a single examiner on both absolute grounds (i.e., lack of distinctiveness, or the mark
being descriptive, commonplace, functional, deceptive, etc.), and relative grounds, that is,
earlier rights. It is a peculiarity of the Greek trademark system that it provides for an ex
officio search for prior rights, which is, however, deduced only to prior national and EUTM
registrations and applications, as well as prior international trademark registrations with
WIPO designating Greece. With respect to earlier rights, it is worth noting that a trademark
application or registration (whether national, European Union or international) may enjoy
international priority under the Paris Convention or the Madrid Protocol.
Following the CJEU ruling in the IP Translator case,20 the Greek Trademark Office
requires the specification of the goods or services in the application to be precise and clear;
using the whole class heading will usually not satisfy this requirement and the Trademark
Office may request the applicant to submit a more precise specification of goods or services.
A trademark application may be filed in multiple classes. The state fees for filing a
trademark application are €110 for the first class, and a further €20 for each additional class.
Renewal fees are €90 for the first class, plus €20 for each additional class. The renewal period
is 10 years after the filing of the application.
The time frame for trademark registration can be as short as about five months after
the filing of the application, if the examiner raises no objections. This five-month period
includes the opposition period, which lasts three months, starting from publication of the
application on the website of the Trademark Office. If objections are raised by the examiner,
or if there is an opposition, the usual time frame for a decision by the Trademarks’ Committee
is about 12 months. If the decision of the Trademarks’ Committee is appealed before the
administrative courts, the judicial process is exorbitantly long, and it can take between seven
and 10 years to obtain a judgment from a first instance administrative court, and one more
year to obtain a judgment from a second instance administrative court.
An opposition may be filed on account of either ‘prior rights’ or relative grounds. The
time frame to file an opposition is three months after publication of the trademark application
on the website of the Trademark Office. The ‘prior rights’ on which an opposition may be
based can consist of prior trademark registrations or applications (national, European Union
or international designating Greece), or prior non-registered distinctive signs, including
company names.
With respect to registered trademarks, priority is determined on the basis of the date
of the filing of the application with the Trademark Office. With respect to non-registered
rights, priority is determined on the basis of actual use in the course of trade. Use in the
course of trade and the date when such use commenced are matters of fact to be established
by evidence.
Greek trademark law has adopted the ‘proof of use’ defence. This means that a party
filing an opposition and invoking earlier rights may be required by the trademark applicant to
prove actual and substantive use in the course of trade of the earlier marks invoked, otherwise
the opposition will fail. Such use must have taken place at any time during the five years

20 CJEU, C-307/10, 19 June 2012.

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preceding publication of the contested trademark application. Proof of use is established


by submitting past invoices, volumes of sales, market share statistics, advertisements, oral
testimony, etc. If the opponent is unable to establish such use, it can instead establish
reasonable grounds that justify absence of use on its part. Greek case law does not provide
any guidance as to what reasonable grounds justifying non-use may be, although the EUIPO
Board of Appeal has held that use of the mark invoked by an infringer and pending litigation
with respect to it are reasonable grounds for justifying non-use.21 In addition, CJEU has held
that the reasons justifying non-use are only those that have a direct relationship with the
respective trademark, make its use impossible or unreasonable, and are independent of the
will of its owner.22
Registration occurs when the decision of the examiner, or the Trademarks’ Committee
in the case of opposition proceedings, becomes final, that is, it cannot be appealed before the
second instance administrative court. An appeal with the Council of State does not prevent
registration, but, if the contested judgment is reversed, registration will fail retrospectively.

ii Absolute grounds
On absolute grounds, Greek law follows Article 3 of Directive 2008/95/EC, but the
examination of absolute grounds by the Greek Trademark Office is substantially relaxed in
comparison to the examination of same by the EUIPO. Absolute grounds for rejecting a
trademark application include:
a lack of distinctiveness;
b the mark being:
• descriptive;
• commonplace;
• functional (including aesthetic functionality);
• inherently deceptive;
• a protected appellation of origin; or
• a protected geographical indication;
c the mark consisting of the name of a state or of a national emblem; or
d the mark being filed in bad faith.

Distinctiveness and descriptiveness is assessed in view of the goods or services applied for.
Only directly descriptive marks are incapable of registration; directly descriptive marks are
those that describe the goods or services applied for by their literal (vocabulary) meaning.
Conversely, marks that are only indirectly descriptive (i.e., they are descriptive by referring
to some descriptive implication) are capable of obtaining trademark registration. Common
terms are registrable, if they are used in an uncommon way, that is, if the goods or services
to which they are to be applied are totally unconnected to such terms. For example, the
mark ‘Reflex’ for steam-generating apparatus in class 11 was found to be distinctive and not
commonplace in respect of the goods applied for.23 The mark ‘World Academy of Sports’,
filed in various classes, was rejected by the Trademarks Committee for lack of distinctiveness,

21 EUIPO Board of Appeal case R-2425/2013-4, 28 January 2015, Chronopost v. DHL.


22 CJEU, C-246/05, 14 June 2007, Armin Haeupl v. Lidl Stiftung & Co. KG.
23 Supreme – Cassation Administrative Court (Council of State), No. 3617/2006.

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and for being deceptive,24 because under Greek legislation, the term ‘academy’ can be used
only for certified educational institutions. However, the judgment was reversed by the first
instance administrative court and the mark was registered.25
Slogans are registrable, if they have some level of originality. For example, the slogan
‘With us you can do everything’ for hand tools and household apparatus in classes 8 and 21
was found to be distinctive and not commonplace.26
Laudatory terms are registrable, although this is a highly controversial issue.
The Trademark Office is very suspicious of marks consisting of geographical terms.
because they are likely to be either descriptive or deceptive. However, geographical terms are
registrable, if it is not reasonable to assert that they indicate the actual place of production of
the respective goods (i.e. terms such as ‘Everest’ or ‘Mont Blanc’ are registrable).
Neologisms, that is new words that are a combination of existing words, are, in principle,
not registrable, unless they create an impression that is significantly different from the words
of which they are composed. For example, the mark ‘Walkman’ filed by Sony for audio
devices in class 9 was found to be distinctive but neither descriptive nor commonplace.27
Acquired distinctiveness (i.e., a secondary meaning acquired through use in the
course of trade) can overcome the difficulty of lack of distinctiveness, descriptiveness or the
mark being commonplace. It is easier to establish acquired distinctiveness before the Greek
Trademark Office than through the EUIPO, although the factors for acquired distinctiveness
are the same under both Greek and EU law.
Single colours and simple colour combinations, i.e., consisting of up to three stripes,
are registrable only if acquired distinctiveness is established. For instance, a mark filed by
Colgate Palmolive for two curved coloured stripes (blue and red) for toothpastes, in class 3,
was found to lack inherent distinctiveness and acquired distinctiveness was not established.28
Similarly, a mark consisting of pink colour alone for insulating materials in class 17 was
found to be non-distinctive, in absence of acquired distinctiveness.29
Bad faith in filing a trademark application is established particularly in cases where
a distributor or commercial agent files a mark that is used with the consent of his or her
principal, or where one party files a mark that is owned by another party and there is some
pre-existing cooperation or at least communications between the two parties. Bad faith can
also be established when an applicant files in Greece a mark that has a reputation abroad.
Finally, bad faith can be established when a trademark is applied without actual intent to use
and with the sole purpose of restricting competition.

iii Prior rights


On prior rights, Greek law follows Article 4 of Directive 2008/95/EC. It is a peculiarity of the
Greek trademark system that the Trademark Office makes an ex officio search for prior rights
and can reject a trademark application on this ground, even if the owners of such prior rights
do not file an opposition. However, this ex officio search by the Trademark Office is deduced
only to prior national or EUTM applications or registrations, as well as prior international

24 Trademarks Committee Decision No. 2481/2008.


25 First Instance Administrative Court of Athens, No. 383/2016.
26 Supreme – Cassation Administrative Court (Council of State), No. 1240/2008.
27 Second Instance Administrative Court of Appeal in Athens, No. 2505/2008.
28 Supreme – Cassation Administrative Court (Council of State), No. 886/2009.
29 Second Instance Administrative Court of Appeal in Athens, No. 1346/2010.

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trademark registrations filed with WIPO under the Madrid Protocol that designate Greece.
The Trademark Office does not make an ex officio search for other prior rights, such as
company names, or other non-registered distinctive signs; these can prevent registration,
but need to be invoked by their owners by way of an opposition. Other prior rights that can
prevent registration include earlier industrial designs and copyright.
Prior rights prevent registration in case they cause likelihood of confusion, likelihood
of association or dilution (see Section II.iii).
Letters of consent by owners of earlier rights are accepted by the Trademark Office and
can overcome difficulties raised by earlier rights.
Filing an application for cancellation or revocation against an earlier trademark,
preventing registration of a pending application, may not be an efficient strategy, because
such revocation or cancellation shall be recorded with the registry and shall become operative
only after the respective judgment has become final (i.e., it cannot be appealed with the
second instance administrative court).

iv Inter partes proceedings


Inter partes proceedings may be oppositions, cancellations or revocations.

Opposition
See Section III.i.

Cancellation
On cancellation, Greek law follows Directive 2008/95/EC. An application for cancellation is
filed with the Trademarks’ Committee: there is no time limit for filing such an application.
The decision of the Trademarks’ Committee can be appealed before the administrative courts
(i.e., first instance, second instance and supreme): the time limit for appeal is 60 days after
notification of the judgment (90 days for foreign appellants). Cancellation occurs when the
judgment cancelling the registration becomes final, that is, it cannot be appealed before the
second instance administrative courts. The judgment cancelling the registration does not have
any retrospective effects. The decision of the Trademarks’ Committee is usually issued within
12 months of the filing of the cancellation, but, if it is appealed before the administrative
courts, the judicial process can be as long as 12 years.
Before the judgment cancelling the registration is recorded with the registry, civil
courts are bound by the registration and cannot challenge the validity of the trademark. This
makes a Greek trademark registration a very strong right and increases legal certainty. On
the other hand, it may also result in injustice, in cases where the grounds for cancellation are
obvious and exorbitant. Still, the position of the Greek law is strict and favours legal certainty,
sacrificing justice in some cases.
The legal ground for cancellation is that the trademark should have been rejected
because of absolute or relative grounds that were overlooked by the examiner.
If a party has filed an opposition that was rejected, they cannot file a cancellation on
the same grounds.
The owner of the contested registration may invoke the ‘proof-of-use defence’ against
the applicant who requests the cancellation on the grounds of earlier rights (see Section III.i).

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Revocation
On revocation, Greek law follows Directive 2008/95/EC. An application for revocation is
filed with the Trademarks’ Committee: there is no time limit for filing such an application.
The grounds justifying revocation are:
a non-use of the trademark during a five-year period from the date of its registration, or
non-use during a period of five consecutive years at any time, unless there are proper
grounds justifying non-use (see Section III.i); or
b the trademark has become either commonplace or deceptive.

The points made above regarding cancellation also apply to revocation.

v Appeals
The decisions of examiners can be appealed before the Trademarks’ Committee. The decisions
of the Trademarks’ Committee can be appealed before the administrative courts. It is only
final judgments, that is to say those that cannot be appealed further before the second instance
administrative court, that are recorded with the registry. For more details, see Sections II.ii
(Cases relating to the registration process) and III.iv.

IV CIVIL LITIGATION
i Forums
See Section II.ii.

ii Pre-action conduct
Mediation is not obligatory. Moreover, it is still rather unusual for parties to mediate,
particularly on intellectual property cases. There are no pretrial formalities and there is no
pretrial obligatory disclosure as in other jurisdictions. A party may apply to the court, either
before the initiation of judicial proceedings, or during legal proceedings, and request another
party or a public authority to disclose documents, or other evidence, which are in their
possession, although actually succeeding in such a request is rather difficult under Greek law.
Such evidence may include banking, financial or other commercial documents. This is also
provided under Article 6 of Directive 2004/48/EC (now Article 14 of Directive 2015/2436/
EU), which has been implemented into Greek law, but Greek courts apply this Article very
cautiously. What is easier to achieve is to obtain a provisional court order under summary
proceedings towards preservation of evidence, as per Article 7 of the above-mentioned
Directive. A provisional court order usually provides that the claimant may use the services
of a court bailiff to inspect premises, make a list of allegedly infringing goods, obtain samples
of allegedly infringing goods, or even seize the infringing goods. This type of court order may
be obtained even without any prior notification to the defendant.

iii Causes of action


Infringement of both registered trademarks and non-registered distinctive signs, including
company names, can be established on either likelihood of confusion (which includes
likelihood of association) or dilution (in case of marks with reputation only), or both. The

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concepts of likelihood of confusion, likelihood of association and dilution are those provided
under EU law (i.e., Directive 2008/95/EC as amended by Directive 2015/2436/EU) and EU
court jurisprudence.
Registered trademarks are also infringed in cases of illegitimate parallel imports (see
Section VI.iii).
Domain names are infringed if a domain name has been obtained in bad faith, causing
likelihood of confusion with an earlier domain name, an earlier registered trademark or an
earlier non-registered distinctive sign (see Section V.ii).

iv Conduct of proceedings
Legal actions (writs) under Greek law tend to be long and detailed, as they need to provide a
fully substantiated and detailed statement of facts. If reputation is invoked, the legal action
should provide specific and detailed information as to the volume of sales and advertising
expenditure, market share, and other factors from which reputation can be derived. The
plaintiff must serve the legal action to the defendant within 30 days of filing with the court.
If the defendant resides abroad, this period is extended to 60 days and the legal action must
be translated into the language of the defendant. The translation must be carried out by the
translation service of the Ministry of Foreign Affairs. The submission of evidence depends on
the initiative of the litigating parties and not on the court. So, a duty of disclosure does not
exist, as it does in the United States and the United Kingdom. There is only a general duty
of honesty, but in reality, the parties are allowed to decide what sort of documents they wish
to submit to the court. The parties are granted a 100-day period from the filing of the legal
action with the court (130 days for those residing abroad) to submit to the court written
arguments and evidence. An oral hearing usually does not take place.
Witnesses do not give oral evidence during a court hearing. Instead, they make a
written testimony under oath before a notary public, a county court or a Greek consular
officer (if the witness resides abroad). Such written testimonies take place before the trial
and are disclosed to the other party. Each litigant is allowed to submit up to five testimonies
to support their allegations, as well as up to three additional testimonies to challenge the
testimonies submitted by their counterparty. Courts have discretion to examine, during an
oral hearing, either the litigating parties themselves (in cases of legal entities and their legal
representatives), or one of the witnesses, who are selected and proposed by the litigants. Only
one witness for each litigant is allowed. However, courts exercise such discretion only in rare
occasions. Otherwise, courts do not have the power to examine, on their own initiative,
a witness who is not proposed by the parties. In practice, it is not possible for a party to
examine someone as a witness, unless the latter is willing to give evidence.
A first instance court judgment is usually issued within about 18 months of the filing of
the legal action, whereas a judgment by the appeal court is usually issued two years after the
filing of the appeal. Courts will award legal costs only if the legal action contains a claim for
damages; such costs may be about 3 or 4 per cent of the volume of the claim that has been
judicially upheld and awarded. If the legal action is for a cease and desist order only, courts
are not likely to award legal costs.

v Remedies
With respect to remedies in case of infringement, Greece has fully implemented Directive
2004/48/EC on the enforcement of intellectual property rights. In case of infringement of

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registered trademarks, or non-registered distinctive signs, the following remedies are available
under national law.
• A cease and desist court order. Establishing fault on the part of the defendant is
not required for such an order. Such an order can also be granted under summary
proceedings.
• Seizing or destroying infringing goods. The courts allow the claimant to seize and
destroy infringing goods, being in the possession of either the infringer or third parties
(who have not been parties to the legal proceedings), such as distributors or retailers.
A court order allowing the claimant to seize infringing goods can be obtained under
summary proceedings as well.
• Damages. Fault in the form of either negligence or intent must be established on the
evidence. As per Article 13(1)(a) and (b) of Directive 2004/48/EC, courts may quantify
damages on the basis of (1) the amount of royalties that would have been due if the
infringer had requested a licence; (2) loss of profits suffered by the plaintiff; or (3) the
profits made by the infringer. Plaintiffs usually prefer to request the amount of royalties
that would have been due, because it is easier to produce persuasive evidence on this
ground, such as similar license agreements.
• Psychological (moral) damages. These are determined at the discretion of the court.
Usually the court does not award psychological damages at all, and in cases of counterfeit
goods, which are considered to be the most serious type of infringement, the amount of
the award may be as low as €10,000, or even less.
• Legal interest. The rate is currently 7.25 per cent per annum and is estimated on the
amount of the court award. Interest accrues from the date the legal action is served to
the defendant.
• A court order obliging the defendant to disclose information regarding the names
and details of distributors, manufacturers, suppliers of infringing goods, as well as
information about the quantities of infringing goods that were manufactured, supplied
or obtained and the respective prices (see Article 8 of Directive 2004/48/EC).
• A public announcement about the judgment in the press at the expense of the defendant.
• A pecuniary penalty, which can amount to up to €10,000 if the defendant does not
fully comply with the court judgment, or a summary judgment.
• Imprisonment of the legal representatives of the defendant’s legal entity, if the latter
does not fully comply with the court judgment, or a summary judgment.
• Legal costs, ranging from 3 to 4 per cent, roughly, on the volume of the damages and
psychological damages award.

V OTHER ENFORCEMENT PROCEEDINGS


i Customs enforcement of intellectual property rights
Regulation 608/2013/EU regarding customs enforcement of intellectual property rights is
directly applicable into Greek law and has proved to be particularly efficient in practice. The
procedure established by the Regulation makes it possible to activate the customs service
to watch for counterfeit goods passing through the customs. A single application to the
Central Customs Office at Piraeus activates simultaneously all local customs authorities in
Greece. The application has to be accompanied by a notarised power of attorney appointing
an attorney-at-law, or any other representative in Greece, as well as an agent to receive service

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of process. An application may also be filed with a customs office of any other EU Member
State, designating Greece as well; in this case, the application is notified to Greek customs
authorities, which are thus alerted to look out for counterfeit goods.
If the customs authorities trace goods that are believed to be counterfeit, they notify
the local representative of the trademark owner, who is required to make a statement within
10 working days claiming whether such goods are indeed counterfeit; the statement must
be made within three days in the case of foodstuffs and some other categories of goods.
The representative is provided with a sample of the goods and if a statement that they are
counterfeit is filed, then the customs authorities seize the goods. The trademark owner who
caused the arrest is required to file a legal action under ordinary proceedings within a period
of 10 additional days. Usually, under such circumstances, the owner of the counterfeit goods
settles the case out of court, by agreeing to the destruction of the goods at their own expense.
Otherwise, destruction of the goods is ordered by a court judgment.
The trademark owner has to bear all the costs of the customs authorities relating to seizing
and preserving the goods; such costs may vary from €500 to €1,000 for a period of about six
months in ordinary cases, but costs really depend on the volume of the merchandise seized and
on the period of time involved. There have been exceptional cases of very large quantities of
counterfeit goods, where costs were as high as €20,000. The same procedure applies to goods
infringing either trademark rights or any other intellectual property rights, such as patents,
designs or even copyright. Greek customs authorities are likely to apply the same procedure in
connection to goods in transit, which they have done occasionally in the past.
The procedure established by the Regulation does not apply to illegitimate parallel
imports. This means that customs authorities will not agree to seize goods that have been
stated by the trademark owner to be genuine goods, even if intellectual property rights have
not been exhausted. However, should the trademark owner trace the infringing goods through
the customs procedure, they can apply for a provisional court order to seize the goods. So,
the customs procedure can be of assistance even against parallel imports of genuine goods.

ii Domain names infringing earlier trademarks


Domain names infringing earlier trademarks or distinctive signs can be deactivated and
deleted from the domain names registry through an administrative procedure initiated by
an application to the National Authority for Telecommunications and Post Services. The
applicant has to establish that the domain name was obtained in bad faith. Likelihood of
confusion alone does not suffice. However, bad faith is likely to be established in cases of a
domain name that is very similar to an earlier trademark or distinctive sign with reputation.
The process for deactivating and deleting a domain name obtained in bad faith is likely to
last about 12 months. A decision by the National Authority for Telecommunications and
Post Services can be appealed to the second instance administrative court, which will review
the case on matters of law only; however, a decision made by the National Authority for
Telecommunications and Post Services is enforceable and filing an appeal against it does not
affect its enforceability, unless the decision is reversed by the judgment of the court.

iii Criminal proceedings


Infringement of both registered trademarks and non-registered distinctive signs is a criminal
offence. However, criminal proceedings are very slow and the penalties are small and
redeemable. Moreover, criminal prosecution authorities usually do not have the means to
seize large quantities of infringing goods. Hence, criminal proceedings are usually inefficient.

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iv Personal liability in tort of the legal representatives of an infringing legal entity


The legal representatives of an infringing legal entity are jointly, severally and personally
liable in tort with the infringing legal entity. So, they can be ordered to pay damages or
psychological damages, or both, and, should the legal entity not comply with a court cease
and desist order, they can be imprisoned.

VI RECENT AND PENDING CASES


i Conflicts between trademarks and company or personal names
Conflicts between trademarks and company names are very common in Greek court
practice and have resulted in conflicting and sometimes controversial judgments. Certain
(controversial) judgments30 have held that, in assessing likelihood of confusion between
trademarks and conflicting company names, the goods or services in connection with which
such company names are used, are irrelevant and should not be taken into account. The
justification for this is that company names do not identify goods or services, but the legal
entity carrying on a business enterprise. As a result, it is easier to establish likelihood of
confusion. However, other judgments have held that the goods or services in connection
with which company names are used should be taken into account, and have, accordingly,
found no likelihood of confusion between identical or similar trademarks, on the one hand,
and company names, on the other, on account of the different goods or services identified.31
In some instances, the trademark and the company name that were in conflict have consisted
of personal names of individuals. In such cases, courts have applied the doctrine of limitation of
trademark rights (Article 6(1) of Directive 2008/95/EC, now Article 14 of Directive 2015/2436/
EU) to allow a company name to co-exist with an earlier registered trademark. In an attempt to
justify limitation of trademark rights, some judgments32 referred again to the different functions
of trademarks and company names; that is, that trademarks identify goods or services, while
company names identify the entity carrying on a business enterprise. The argument follows that,
as long as a company name has a different function, it is not used in the same way as a trademark,
and, hence, limitation of trademark rights is justified.33 The argument that a trademark and a
company name have different functions seems controversial. However, it is true that courts are
likely to apply the doctrine of limitation of trademark rights in a case relating to a conflict between
a registered trademark and a personal name. Under Article 6(1), limitation of trademark rights is
not automatic, but results only if strict prerequisites are in place.
One of the most notable and recent cases involving conflicts between trademarks and
personal names is the case of Mr Panayiotis Nikas. This case related to the use of personal
names as trademarks and limitation of trademark rights. Mr Panayiotis Nikas was the
founder and general manager of Nikas SA, a leading producer of sausages and cold meats.
After a successful career at Nikas SA, Mr Nikas sold his shares to the company and was
alienated from it. Ten years later, he started up another sausages and cold meats production
company, using other trademarks. However, the advertising slogan he used on the product

30 Supreme – Cassation Court (Supreme Court of Greece) No. 197/1989; Athens Court of Appeal
No. 4543/1997.
31 Supreme – Cassation Court (Supreme Court of Greece) No. 1445/1997.
32 Supreme – Cassation Court (Supreme Court of Greece) Nos. 1131/1995, 330/2007; Athens Court of
Appeal No. 866/2004.
33 Ibid.

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labels was: ‘With recipe and care by Panayiotis Nikas’. Nikas SA was the owner of a series of
trademarks comprising the NIKAS word mark and alleged trademark infringement on the
basis of likelihood of confusion and dilution. The First Instance Court of Athens34 found in
favour of Panayiotis Nikas and held that under the circumstances, limitation of trademark
rights was justified. Indeed, the court reasoned that Mr Nikas should not be prevented from
using his own name in the context of the slogan ‘With recipe and care by Panayiotis Nikas’,
so long as all other elements in the labels and the packaging of the respective products were
dissimilar.

ii ‘Look-alike’, product get-up and trade dress cases


‘Look-alike’ cases (also called ‘product get-up’ or trade dress cases) are among the most
difficult to argue in court. They relate to the protection of distinctive elements in a product’s
overall appearance (such as the colour combinations, the packaging designs, or even the shape
of the product or of its packaging) and are usually argued on the grounds of both trademark
law and unfair competition. The ideal ground for such actions is trademark law, but invoking
unfair competition is necessary if the overall appearance of the product, or some of its
distinctive elements, are not covered by trademark registrations (i.e., when the packaging
has not been registered as a trademark), or when the artistic elements of the packaging (i.e.,
colour combinations and designs) are not covered by copyright. The main legal difficulty
for the plaintiff in such cases is to establish that elements comprising the product packaging
and get-up (which are copied or imitated by the defendant) are distinctive, or that they have
become distinctive through use. This means that the claimant has to prove that such elements
are distinctive of their own products only (i.e., that they are not used by other competitors).
Indeed, figurative elements, such as colours and designs, can be regarded by consumers as
merely decorative or embellishments; in this case they are not perceived by consumers as
distinctive elements, that is elements that identify the particular product only. In many cases,
artistic elements, such as colour combinations, drawing or designs, are characteristic of a
whole class of products and not of specific products; for example, household appliances are
usually white, while whisky products are usually light brown.
Jurisprudence on the matter is vast and often controversial. Cases seem to be
contradictory and are difficult to reconcile with one another. There are, however, some basic
underlying considerations that courts almost always take into account, such as:
a whether figurative elements are indeed dominant (or at least of equal importance) in
the product packaging when compared to the word element;
b whether the figurative elements are indeed distinctive or not, either inherently, or
through use;
c whether figurative elements enjoy any reputation (fame) and what the volume of the
respective advertising investment is;
d whether the defendant (alleged infringer) is a newcomer or an already well-established
company that enjoys its own fame and reputation; and
e whether the products involved are luxury (high image) goods or not.

34 Multi-Member First Instance Court of Athens No. 5246/2014.

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Some notable cases that describe the approach of the courts on the matter, and that took
into accounts arguments on both likelihood of confusion and dilution, are described below.

The Petro gas liquid gas case


This case related to protection of a single colour, which was alleged to dominate the appearance
of a product. ‘Petro gas’, a liquid gas for domestic use, was sold in blue cylinders. A new
product, ‘Vitom gas’, used a closely similar shade of blue in its gas cylinders. The plaintiff’s
legal action was rejected in both the first instance and the appeal court. The Supreme Court
reasoned that the copying of colour should be assessed in the context of the doctrine of
‘overall impression’; in other words, the other figurative or word elements, as well as the
overall packaging and appearance, should also be taken into account, to determine whether
there is any likelihood of confusion or association, unfair resemblance or dilution. The court,
however, noted that, in principle, copying a single colour alone could suffice to establish
likelihood of confusion, if on the evidence it was found that this colour is the prevailing
element of the packaging and appearance of the product and if it could be proved that
copying this single colour alone could attract the attention of consumers.35

The sliced toast bread case


This case was about the colour combinations of the packaging of a product. The court found
that one of the main elements copied by the defendant was the basic overall colour of the
packaging, and that the basic overall colour was prevailing in the overall impression of the
packaging. However, in this case, the defendant had also copied the colour combination, as
well as other figurative and word elements used by the plaintiff, and this may reasonably have
had an effect on the final ruling of the court.36

The Camper Twins shoes case


In this case, the court granted trade dress protection under unfair competition law to the red
packaging and design of ‘Camper Twins’ shoes. The court emphasised that the red packaging
of the shoes was characteristic for ‘Camper Twins’ shoes and was therefore distinctive and
protected. Another important point in this judgment is that the court found that the red
Camper packaging had become distinctive as a result of intense advertisement, although it
circulated in the market for only a short period of time (two years). However, in this case,
again, the defendant had copied the design of the shoes as well, and this may reasonably have
had an effect on the court’s final judgment.37

The Toblerone case


This case related mainly to the shape of the product. Protection was granted to the pyramid
shape of Toblerone’s chocolate bar and packaging. Although the word marks and some other
figurative elements were different in the respective packages, the court found that likelihood
of confusion was established mainly because of the copying of the triangle (pyramid) shape of
the product, which was found to be characteristic for Toblerone chocolate.38

35 Supreme – Cassation Court (Supreme Court of Greece) No. AP 399/1989.


36 Single-Member First Instance Court of Athens No. 1265/2005.
37 Multi-Member First Instance Court of Athens No. 6778/2004.
38 Multi-Member First Instance Court of Athens No. 1478/2005.

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The Nescafé Classic case


Greek courts have granted legal protection to the ‘Nescafé Classic’ packaging, its designs
and colour combination, which were copied by a competitor with a different word element
(Golden Coffee).39

The Aspirin green packaging case


Bayer has failed to obtain protection for the green-and-white colour combination of its
'Aspirin' packaging against a competing painkiller called ‘Salospir’, which was also sold in
green-and-white packaging. The court found that the word marks (Aspirin and Salospir) as
well the company names of the manufacturers (Bayer and Uni-Pharma) rendered the respective
packages sufficiently dissimilar and prevented likelihood of confusion. Most importantly, the
court held that the green colour was not distinctive, as it was associated in the minds of
consumers with the idea of relief from pain. Indeed, the novelty of this judgment was that it
accepted the marketing doctrine that certain colours, when used in connection with certain
products, cause specific psychological emotions and mental associations for consumers. It
is a well-established principle in the sciences of both marketing and psychology that the
colour green is mentally and psychologically associated with calmness, relief from pain and
with healing diseases.40 In this case, the defendant, Uni-Pharma, was not a newcomer but
a leading local pharmaceutical company and ‘Salospir’ had been traded as a word mark for
about 40 years in the local market and enjoyed a high market share.

The cigar-like chocolate wafer case


Papadopoulos SA, a leading local manufacturer of biscuits, has repeatedly succeeded in
obtaining protection through the civil courts for the shape of its well-known cigar-like
chocolate wafer (which is cylindrical and dark brown in colour), and for the shape of the
packaging of the product, consisting of a cylindrical tin.41 Both have been registered as
trademarks: the shape of the wafer on the ground of inherent distinctiveness,42 and the shape
of the tin on the ground of acquired distinctiveness.43

iii Parallel imports and exhaustion of rights


Following EU law (Article 7 of Directive 2008/95/EC) and the jurisprudence of the CJEU
on the matter, Greek law and court practice is particularly supportive of trademark owners
on the issue of exhaustion of rights and parallel imports. Trademark rights are exhausted
only if the trademark owners themselves, or a party acting with their consent, have put the
specific goods (i.e., those that have been imported into Greece) on the market in an EU or
European Economic Area (EEA) country. Consent is not assumed, but must be established
on the facts.44 The burden of proof is on the parallel importer.45 As a result, parallel imports

39 Athens Court of Appeal No. 1687/2004.


40 Athens Court of Appeal No. 1702/2016; the same case was similarly decided before the EUIPO in the
context of opposition proceedings (Case R-2444/2015-4).
41 Athens Court of Appeal Nos. 6157/2012, 4481/2013, 4647/2013, 1796/2014, 2123/2014, 3885/2014.
42 First Instance Administrative Court of Athens No. 3681/1997.
43 Second Instance Administrative Court of Athens No. 4846/2001.
44 Athens Court of Appeal No. 6414/1996, 4530/2002, 4723/2010, 4304/2012; Thessaloniki Court of
Appeal No. 855/2012.
45 Multi-Member First Instance Court of Piraeus No. 1735/2012.

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from non-EEA countries are in principle prohibited and amount to trademark infringement,
while parallel imports from EEA countries are in principle allowed, provided that it can be
established that the goods were put on the market by the trademark owner or with their
consent. Good faith of the parallel importer is irrelevant.
The rulings of Greek courts have been more favourable to trademark owners, as they
have reasoned on certain occasions that trademark owners had legitimate reasons to oppose
the commercialisation in Greece of goods imported from other EU countries, that is, goods
of which the trademark rights should have been exhausted.46 The grounds justifying the
objection of the trademark owners for further commercialisation was that the goods destined
for Greece were manufactured under different quality standards than those traded in other
EU countries. For example, the court prevented further commercialisation in Greece of
Kodak negative photographic films, which were imported from other EU countries, on the
ground that, as far as the manufacturer was concerned, those films were not destined for
Greece, where light is more intense, and hence their use in Greece would not have acceptable
results.47 Another characteristic example is Nescafé’s instant coffee powder. Courts have
prevented parallel imports of genuine Nescafé tins from north European EU countries, on
the ground that Nescafé is made differently for Greece, so that it produces more foam and
can be prepared as a cold drink, whereas the product manufactured for countries in northern
Europe is made for consumption as a hot drink only.48
Favour is also shown to trademark owners in that Greek courts usually reason that even
in cases of legitimate parallel imports, a parallel importer is not allowed to use the trademark
for advertising purposes. Some cases have also argued that use of the trademark by the parallel
importer for advertising purposes creates the false impression that the parallel importer is part
of the trademark owner’s distribution network, that is to say, that he is an authorised dealer.49
These cases, however, greatly depend on the facts and the particular circumstances (i.e., on
the type of use made of the trademark by the parallel importer). In addition, these cases have
been heavily criticised in legal literature and may no longer represent a valid precedent.
The approach of the CJEU on this issue is that the type of advertising and the standards
of advertising set by the parallel importer should not impair the image of the trademark and
should be similar to those set by the trademark owners themselves.

VII OUTLOOK
The most notable future development in Greek trademark law is expected to be the
implementation of Directive 2015/2436/EU, which must be finalised by 14 January 2019.

46 See Article 7(2) of Directive 2008/95/EC.


47 Single-Member First Instance Court of Chania No. 2410/2003.
48 Single-Member First Instance Court of Thessaloniki No. 8031/2005 and Multi-Member First Instance
Court of Piraeus No. 1735/2012.
49 Athens Court of Appeal Nos. 6414/1996, 4723/2010. Piraeus Court of Appeal No. 172/1996.

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Chapter 10

ITALY

Julia Holden and Giacomo Desimio1

I OVERVIEW
This chapter contains a brief outline of the Italian legal framework on trademarks and
other distinctive signs used in the course of trade. There is a particular focus on the scope
of protection of trademarks and other distinctive signs, the conditions for protection, the
registration procedures and the actions before the judiciary authority.

II LEGAL FRAMEWORK
i Legislation
The Italian legislation concerning trademarks consists of:
• the Italian Code of Industrial Property (Legislative Decree No. 30 of 10 February 2005)
(the IP Code) and its implementing regulation (Decree of the Ministry for the
Economic Development No. 33 of 13 January 2010); and
• the Italian Civil Code (CC), Articles 2563/2574 CC.

Italy is a EU Member State, thus its legislation must comply with the relevant EU regulations
(e.g., EU Directive 2015/2436, to Approximate the Laws of the Member States relating
to Trademarks; and 2004/48/EC, on the Enforcement of Intellectual Property Rights). In
particular, with respect to geographical indications, the relevant provisions are those set out
by the EU.
Italy is also a signatory country of several international conventions for trademark law
(e.g., the Madrid Agreement instituting the International Trademark System operating from
15 July 1892 and the related Protocol, the Nice Agreement of 15 June 1957 on the International
Classification of Goods and Services, and the TRIPS Agreement of 15 April 1994).

ii Authorities
The Italian Patent and Trademark Office (PTO) is responsible for registration of trademarks
and for opposition to applications for registering Italian trademarks.
The Italian judicial authority has jurisdiction on claims related to trademark ownership,
infringement, invalidity and revocation.
Company names are registered in the Companies Register, which is held by chambers
of commerce.

1 Julia Holden is a partner and Giacomo Desimio is an associate at Trevisan & Cuonzo Avvocati. Work on
this chapter was assisted by researcher Pietro Gambaro.

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The Italian Register of Domain Names (Registro.it) is responsible for managing .it
domain names.

iii Substantive law


Registered trademarks (including collective or certification marks)
Article 7 IP CODE
Any sign capable of being graphically represented and apt to distinguish the goods or services
of a particular undertaking from those of other undertakings can be registered as a trademark.

Article 19 IP CODE
A trademark application may be filed before the PTO by anyone who uses or intends to use
a mark in the manufacture or sale of products or in the supply of services, within his or her
business or within a third-party business with his or her consent.

Article 11 IP CODE
Collective trademarks can be registered by entities whose function is to guarantee the origin,
the nature or the quality of certain products or services. Collective trademarks are thus used
to distinguish products and services that have that particular origin, nature or quality. Any
business whose products or services meet the conditions required can ask the owner of the
collective trademark for authorisation to use it.

Unregistered and well-known marks (Article 2 IP CODE )


Unregistered trademarks are protected upon the following two conditions:
a they shall consist of signs capable of being represented graphically and apt to distinguish
the goods or services of a particular undertaking from those of other undertakings; and
b they shall have acquired general notoriety among the public through use.

Unregistered trademarks cannot be used to oppose an application for registering a trademark.


However, an unregistered trademark having a high level of notoriety can ground an action for
invalidating a subsequent confusingly similar mark. Unregistered trademarks do not benefit
from presumption of validity, thus the owners will always need to prove their rights (both in
terms of validity and in terms of priority against a subsequent mark).
If an unregistered trademark has acquired only local notoriety, it cannot be used for
contesting a subsequently registered mark. However, the owner of the unregistered mark will
be entitled to keep using it within the same limits in terms of territory and quantity of the
prior use.

Company names (Article 2567 CC )


Company names consist of the respective names of the business entities. They are protected
against subsequent confusingly similar company names of other business entities.

Trade names (Article 2563 CC )


Trade names distinguish a certain business activity. A trade name must include at least the
surname or the initials of the entrepreneurs running that business activity. The transfer of a
trade name can occur only alongside the related business activity. Trade names are protected
against subsequent confusingly similar trade names.

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Geographical indications
Geographical indications (GIs) are regulated at EU level. They can be registered for agricultural
products, foodstuffs, wines and spirits, etc. The registration procedure starts at national level
and, if successful, ends at the EU stage. An application for registering a GI may only be
made by groups of producers or processors treating the same product within the territory as
specified in the application.
The scope of protection of GIs is wider than that provided for trademarks. In particular,
there is protection for:
• any direct or indirect commercial use of a GI in respect of products not covered by the
registration, where those products are comparable to the products registered under that
GI or where using the latter exploits the reputation of the same, including when those
products are used as an ingredient;
• any misuse, imitation or evocation, even if the true origin of the products or services
is indicated or if the protected GI is translated or accompanied by an expression such
as ‘style’, ‘type’, ‘method’, ‘as produced in’, ‘imitation’ or similar, including when those
products are used as an ingredient; and
• any other false or misleading indication as to the provenance, origin, nature or essential
qualities of the product that is used on the inner or outer packaging, advertising material
or documents relating to the product concerned, and the packing of the product is in a
container liable to convey a false impression as to its origin.

Domain names
A domain name is an identification string that identifies a certain web page. Under Italian
law, domain names are considered as distinctive signs and are protected as such. Article 12
IP  CODE prohibits the registration of a mark identical or confusingly similar to a prior
domain name, and Article 22 IP CODE prohibits the registration of a domain name that is
identical or confusingly similar to a prior trademark.

III REGISTRATION OF MARKS


i Inherent registrability
Article 7 IP CODE
Registration of a trademark may be obtained for any sign that can be represented graphically
and is capable of distinguishing goods or services of a particular undertaking from those of
other undertakings. In particular, it is possible to register signs consisting of words (including
personal names), designs, letters, numbers, sounds, shape or packaging of goods, and tones
of colour or combinations thereof.

Article 8 IP CODE
A trademark for a personal name or portrait may not be registered without prior consent of
the person involved. With regard to famous personal names, consent is also needed in the
case of homonymy.
The following may not be registered as trademarks:
a signs identical or confusingly similar to earlier trademarks or signs of a third party
(Article 12 IP CODE) – see Section III.ii;

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b signs devoid of any distinctive character, in particular signs that have become customary
in the current language or established practices of the trade (with the exception of those
signs that, prior to their registration as trademarks, have been extensively used so as to
acquire distinctive character) and those consisting in the generic names of products or
services or descriptive indications referring thereto (Article 13 IP CODE);
c signs consisting exclusively of the shape imposed by the nature of the goods, or if the
shape is necessary to obtain a technical result or gives substantial value to the goods
(Article 9 IP CODE);
d signs contrary to law, public policy, morality (Article 14.1 IP CODE) or capable of
misleading the public as to their origin or whose use would be contrary to a third-party
right (Article 14.2 IP CODE); and
e emblems and other signs containing symbols and emblems that are the object of public
interest, except where the relevant authority has authorised the registration (Article 10
IP CODE).

An application for registering a trademark may be filed in writing, either at the PTO in Rome
or at any local chamber of commerce. Applications can also be filed electronically via the
PTO website (https://servizionline.uibm.gov.it).
The application should include (1) the names of both the applicant and the agent;
(2) details of any priority on which the application is based; (3) the representation of the
trademark; and (4) a list of the products or services for which the trademark is being registered
(Article 156 IP CODE).
Applications must be in Italian, and any documents attached thereto that are in another
language must include a translation into Italian.
Trademarks are valid for 10 years from the date of the filing.
After the filing, applications are examined by the PTO and subsequently published
on the Italian Official Trademarks Bulletin.2 This process usually takes between 12 and
18 months. Following publication, the time limit for opposition to the application comes
into effect (see Section III.iii). If there is no opposition, or if the opposition is rejected, the
trademark proceeds to registration.
Registering a trademark with the Italian Trademarks Office costs €101 for one class and
€34 for each additional class.3

ii Prior rights (Article 12 IP CODE)


The registration of a trademark is precluded by earlier trademarks or signs of third parties. In
particular, a trademark lacks novelty if, on the date of the application:
a it is identical to an earlier mark covering identical goods or services;
b it is identical or similar to an earlier trademark and, owing to the identicalness or
similarity between the goods or services covered by the earlier trademark and the
application respectively, there exists a likelihood of confusion among the public; or
c it would take unfair advantage of, or be detrimental to, the distinctive character or the
reputation of an earlier trademark.

2 See: www.uibm.gov.it/uibm/dati/Bollettino.aspx.
3 The costs indicated were published on 7 November 2017 – source: www.uibm.gov.it/index.php/marchi/
registrare-un-marchio-in-italia/quando-registrare-un-marchio-2.

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Novelty of trademarks shall also exist with regard to earlier unregistered trademarks, trade
names, company names, signboards and domain names.

iii Inter partes proceedings


Oppositions
Article 177/184 IP CODE regulates oppositions to trademark applications.
The owner or exclusive licensee of earlier registered trademarks or of earlier trademark
applications, and in the case of applications for the registration of portraits or personal names,
the owners of the relevant right may file an opposition against a trademark application, for all
or part of the products or services covered by the application.
The opposition shall include:
• identification of the opponent and of the applicant;
• the number and filing date of the application;
• an indication of which products or services covered by the application have been
opposed;
• identification of the earlier trademarks and the relevant products or services relied
on for grounding the opposition or, if the latter is based on the rights set out under
Article 8 IP CODE, the indication of the relevant right; and
• the grounds for opposition.

Opposition to registration must be filed electronically at the PTO within three months of the
date of publication of the application on the Italian Official Trademarks Bulletin (in the case
of an Italian portion of an international trademark, the three-month period begins from the
first day of the month following publication of the international trademark on the WIPO
Gazette).

Cooling-off period
After filing the opposition and once the PTO has confirmed the admissibility of the
opposition, the PTO informs the applicant and the opponent about the possibility of settling
the matter within the following two months (this period can be extended for up to one year
upon joint request of the parties). If this period lapses without an agreement having been
reached between the parties, the opposition procedure continues.

Next steps and decision


Within two months of the end of the cooling-off period, the opponent may file a full defence
brief. The applicant may file a brief in reply within two months of the date of receipt of the
defence brief filed by the opponent. In the response brief, if the opposition is based on a
trademark that has been registered for more than five years, the applicant can request the
opponent to prove genuine use of the earlier trademark. Failing to provide proof of use will
result in rejection of the opposition.
The PTO then issues its decision, in which it can:
• grant the opposition in full, thus rejecting the application;
• grant the opposition in respect of only some of the products or services opposed; or
• reject the opposition.

Opposition proceedings usually last between 18 and 24 months.

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Appeal
Within 60 days of the PTO’s decision, the parties can file an appeal before the Board of
Appeal of the PTO. The president of the Board will provide the parties with the terms for the
brief and response. After the brief exchange, the Board will decide on any possible evidentiary
requests and will then schedule a hearing for discussion of the case. After the hearing, the
Board will issue its decision.
The decision of the Board is subject to appeal before the Supreme Court for points of
law only and not for reassessment of the facts. The time limit for filing an appeal is 60 days
after the Board has communicated its decision.

Cancellation actions
Invalidity action (Article 25 IP CODE )
A registered trademark can still be declared invalid if it lacks any of the requisites provided
by Article 7 IP CODE, if it cannot be registered under Articles 8, 9, 10, 12, 13 or 14.1
IP CODE, or if it has been registered in bad faith (Article 19 IP CODE).
The action for invalidity can be sought either as a principal claim or as a counterclaim,
and there is no time limit to commencing such an action. However, if the owner of an earlier
trademark has allowed the use of a subsequent registered trademark for five years or more,
it is no longer possible to bring an invalidity action. Consolidation does not apply if the
subsequent trademark was registered in bad faith (Article 28 IP CODE).
Invalidity may also apply only to part of the goods or services covered by the trademark
(Article 27 IP CODE).
Invalidity actions are commenced before the intellectual property courts and not before
the PTO (see Section IV.i).

Revocation action (Article 26 IP CODE )


A trademark may be revoked if:
• it has become the generic name in trade for identifying the goods or services marketed
under such trademark, or it has lost its distinctive character (known as vulgarisation);
• it has not been put into genuine use for five consecutive years after its registration (the
use shall be effective and aimed at maintaining a presence on the relevant market); or
• it has become unlawful or deceptive.

A trademark becomes unlawful or deceptive when:


• it is capable of misleading the public, particularly with regard to the kind, quality or
origin of the goods or services;
• it is contrary to the law, public policy or morality; or
• in the case of a collective trademark, the trademark owner omitted to carry out the
inspections set out in the regulatory provisions.

Revocation may also apply only to part of the goods or services covered by the trademark
(Article 27 IP CODE).
Such actions are commenced before the Italian intellectual property courts (see
Section IV.i).

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Claim actions
Apart from carrying out formality checks, the PTO does not verify whether the trademark
applicant is actually entitled to the object of the trademark application.
This entails the risk that a registered trademark may be granted to someone who is
not the actual owner of the sign. In order to counter this risk, the actual rights owner has
the means for claiming his or her rights against the applicant. This may be done either by
opposing the application (see Section III.iii) or by instigating an ordinary civil proceeding,
claiming ownership of the trademark (Article 118 IP CODE).
Through these actions, and after a judgment has been issued ascertaining the claimant’s
rights to the trademark being applied for, the claimant may obtain the transfer of the
trademark application or, if registration has already occurred, the transfer of the registered
trademark.

IV CIVIL LITIGATION
i Forums
In Italy, jurisdiction is established depending on the subject matter and territory of the
dispute at hand.
As per the subject matter, all disputes regarding intellectual property rights, including
registered and unregistered trademarks and other distinctive signs, come under the jurisdiction
of the intellectual property divisions (IP divisions) of the courts. There are 22 IP divisions
in the whole Italian territory. However, only 11 of them are competent for cases in which
foreign companies are involved.
The territorial jurisdiction of each IP division is established according to the following
criteria:
a the domicile elected for registration of the trademark involved;
b the IP division of the court where the defendant has residence or domicile, either
habitual or temporary;
c if the defendant has no residence or domicile in Italy, the IP division of the court where
the plaintiff is resident; and
d the IP division of the Court of Rome, if neither the defendant nor the plaintiff have
domicile, habitual or temporary residence in Italy.

With regard to infringement actions, an alternative forum is the IP division of the court
where the infringement has taken place.
In the case of counterclaims for invalidity or revocation raised within infringement
proceedings, Italian case law provides that the exclusive forum of the domicile elected for
registering the trademark may be derogated by the forum of the place where the infringement
occurred.

ii Pre-action conduct
With respect to intellectual property rights, there are no specific formalities and there is no
obligation to seek mediation before instigating legal proceedings. Hence, interested parties
are free to resort to mediation or arbitration or to bring the matter directly before courts.

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iii Causes of action


Trademark infringement
The owner of a trademark may take legal action to stop unlicensed third parties using, in the
course of trade:
• any sign that is identical to his or her trademark and is used for goods or services that
are identical to those covered by his or her trademark (Article 20.1(a) IP CODE);
• any sign that, because of its identicalness with, or similarity to, his or her trademark and
the identicalness or similarity of the goods or services covered by his or her trademark,
is likely to cause confusion among the public, including the likelihood of association
between the sign and the trademark (Article 20.1(b) IP CODE);
• any sign that is identical or similar to the trademark, where the trademark has a
reputation and the use of that sign without due cause takes unfair advantage of, or
is detrimental to, the distinctive character or repute of the trademark (Article 20.1(c)
IP CODE).

Presumption of validity
With regard to registered trademarks there is a presumption of validity, meaning that the
owner need only prove the infringement. If the alleged infringer claims the invalidity of the
trademark, he or she shall provide evidence of that claim. Unregistered trademarks do not
benefit from the same presumption of validity; thus the burden of proving the existence and
validity of the infringed trademark lies on the claimant, namely the owner of the trademark.

Unfair competition and passing off


Article 2598 CC states that unfair competition occurs when any party:
• uses names or distinctive signs confusingly similar to the names and distinctive signs of
its competitor, or blatantly imitates the products of a competitor, or in any way behaves
so as to create confusion with the products and activity of a competitor;
• spreads information about or an evaluation of the products or business of a competitor,
which is capable of discrediting the competitor; or takes the merits of the products or
business of a competitor; or
• uses directly or indirectly any other means contrary to honest commercial practices and
that are capable of jeopardising a competitor’s business.

Unfair competition can be exploited as an additional claim in alleged trademark infringement


cases as well as alleged infringement of unregistered trademarks, company or trade names,
domain names, packaging of products, etc.
In these actions the rights owner shall prove not only the unfair act, but also his or her
entitlement to the rights that have allegedly been infringed.

Company, trade and business names


The protection of company names and trade names may be sought with an action of unfair
competition. As indicated above (in Unfair competition and passing off ), the use of a company
name or trade name that is confusingly similar to a name previously adopted by a competitor,
amounts to an act of unfair competition under Article 2598 CC.

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Domain name disputes


Domain names are distinctive signs that may be protected against subsequent confusingly
similar distinctive signs (including other domain names or trademarks).
In the case of the registration of a confusingly similar domain name to top-level domain
.it, there is a specific procedure before the Italian Domain Name Authority. This procedure
allows for the cancellation or the transfer of the infringing domain name.
As an alternative, protection of a domain name against subsequent confusingly similar
domain names, trademarks, company names or trade names can be sought by means of
ordinary proceedings.
Ordinary proceedings are also used for the revocation or transfer of domain names
infringing earlier trademarks, company names, trade names and even previously registered
domain names.

iv Conduct of proceedings
In Italy, it is possible to file for two types of civil proceedings: interim proceedings and
ordinary proceedings.

Interim proceedings
These proceedings are decided by a single judge and are aimed at the immediate issue of a court
order granting a search at the counterparty premises in order to ascertain the infringement or
a seizure of the possible infringing goods.
In particular, a search is directed at obtaining and preserving evidence of the
infringement when the trademark owner has not managed to obtain such evidence otherwise
and there is the risk that the infringer alters or destroys the infringing goods, or that such
proof gets lost. The aim of a seizure of infringing goods is to provide the trademark owner
with evidence of the infringement, and this may be obtained in conjunction with the search.
In order to issue an interim order, the court has to be satisfied that two requirements are
met: prima facie case and irreparable harm or urgency. Prima facie implies that the claimant
shall provide strong evidence backing his or her claim. Irreparable harm or urgency means
that courts often evaluate whether the petitioner acted without delay or not, and often
conclude that any delay in seeking relief is evidence of a lack of urgency.
Interim proceedings start with a motion filed before the court. The court evaluates
the motion and schedules a hearing for discussing the case. In cases of particular urgency
or if there is the risk that the infringer and the infringing products might disappear, the
claimant can request the court to issue the order ex parte. If the order is granted ex parte, the
court schedules a hearing for confirming it. The motion and the order must be served by the
claimant on the defendant within eight days, although the judge has discretion to allow a
different period. The defendant can submit a defence brief until the day of the hearing. After
the scheduled hearing, the court issues a decision to uphold, amend or reject the motion.
That decision can be appealed before a panel of three new judges of the same court.
Interim appeal proceedings consist of one round of brief exchange and of a hearing for
discussion.
Interim proceedings are usually fast, taking between one and six months at most.

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Ordinary proceedings
These proceedings are decided by a panel of three judges and are aimed at achieving a full
review of the claims.
The claimant shall serve a writ of summons on the defendant, indicating the relevant
date of the first hearing (if the defendant is Italian, a term of not less than 90 days shall
intervene between the service of the writ and the first hearing; if the defendant is not Italian,
this term increases to a minimum of 150 days). The defendant shall file his or her own brief in
response, 20 days before the first hearing. The defendant is allowed to advance a counterclaim
(for example, a claim for violation of rights) against the claimant.
At the first hearing, the parties discuss the claim and the court usually grants terms for
exchanging three briefs for specifying claims and for filing evidentiary requests. A second
hearing is scheduled to discuss them.
The court decides on the evidential requests with an order, scheduling the relevant
hearings.
When the evidential stage is completed, the court schedules a hearing for the parties’
specification of the claims. After this hearing, the parties exchange their final two briefs and
each of them may ask the court to schedule a final hearing for discussing the case.
After the exchange of the final two briefs, or after the final hearing it this is held, the
judgment is issued.
Ordinary proceedings usually take between 18 and 30 months, depending on the
complexities of the case and on the evidential phase.

Appeals
With regard to judgments of the court of first instance, an appeal may be filed before the
Court of Appeal up to six months after communication of the judgment, unless the judgment
has been served on the opponent by the interested party, in which case the time limit for
filing an appeal is 30 days after the aforementioned communication.
Judgments of the Court of Appeal are subject to appeal before the Supreme Court for
points of law only, without the possibility of requesting further assessment of the facts. The
time limit for filing an appeal is 60 days after the communication of the judgment of the
Court of Appeal, if this has been served, otherwise the ordinary six-month time limit applies.

Evidence
Forms of evidence that both parties in trademark matters may request for submission to the
court during the proceedings include documentation such as correspondence between the
parties, invoices, advertising materials, packaging, catalogues, consumer surveys, etc., as well
as witness statements and questioning. If assessment of the evidence requires a particular
technical expertise, the court may appoint a technical expert.

Discovery orders
When a trademark owner has difficulties gathering evidence of an infringement discovery,
orders can be used. In particular, where the trademark owner has made reference to certain
documentation in order to ground its claims and can identify the documents, elements or
information confirming this and which are in the possession of the infringer, he or she may
obtain an order from the judge to exhibit such documents or request that the information be
given up by the alleged infringer.

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Legal representation
In the case of an opposition before the PTO, Italian entities or persons can represent
themselves; however, foreign persons or entities must be represented by an Italian lawyer or
by an Italian trademark attorney. A written power of attorney is also required.
In civil proceedings, a power of attorney to an Italian lawyer must be provided and be
filed together with the first submission to the court. If the party resides abroad, particular
formalities may be required. In this respect, Italy is a member of the Hague Apostille
Convention and it is a signatory of several bilateral agreements with other European countries
for the automatic recognition of notarised writs.

Recovery of costs
The costs of proceedings shall normally be borne by the losing party, unless the court provides
otherwise.

v Remedies
The following remedies are available in civil proceedings:
a preliminary search and seizure of infringing trademark goods;
b preliminary or final injunctions against the manufacture, import, export, marketing
and sales, or other use of goods bearing the infringing trademark;
c order for destruction of the infringing goods;
d order of transfer of the domain name infringing the trademark;
e declarations of nullity or invalidation (cancellation) of the trademark;
f publication of the court’s decision in the press; or
g damages.

V OTHER ENFORCEMENT PROCEEDINGS


Criminal proceedings
Registered trademarks are also protected under Articles 473, 474 and 517 of the Italian
Criminal Code. Criminal proceedings can be instigated by the public prosecutor at its own
instigation or after a complaint filed by any person having knowledge of the crime, including
the offended person (i.e., the trademark owner).
The trademark owner may join the proceedings to support the public prosecutor in
pursuing the crime.
The public prosecutor will press charges only if, once the necessary investigations
have been carried out, there are sufficient elements to pursue the crime. In particular, in
accordance with the provisions of the Italian Criminal Code trademark infringement occurs
when any person:
• being capable of having knowledge of the ownership of someone else’s national or
foreign trademark or other distinctive sign, infringes or alters the same, as well as any
person using the infringing or altered trademark;
• in order to gain profit, introduces in the Italian territory industrial products bearing
national or foreign, infringing or altered, trademarks or other distinctive signs;

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• holds for sale purposes, offers for sale or otherwise puts the above products into
circulation; or
• sells or puts into circulation intellectual property goods or industrial property products
bearing national or foreign names, trademarks or distinctive signs that are likely to
mislead consumers as to the origin or quality of the goods or products.

The remedies provided under criminal law consist of the seizure and destruction of the
infringing goods. A finding of infringement within criminal proceedings allows the
trademark owner to request compensation damages within the civil action, as the question
on the existence of the infringement is deemed resolved.

VI RECENT AND PENDING CASES


The Supreme Court’s decision No. 20189 of 18 August 2017 ruled on the relationship
between domain names and earlier registered trademarks. In particular, the Court ruled that
the fact that a domain name is identical, in its words, to an earlier registered trademarks does
not entitle the trademark owner to prevent per se use of such domain name if the domain
name is used in respect of goods that are not so similar as to create confusion among the
public. Indeed, identity between signs is not sufficient of itself to enable the trademark
owner to prevent use of the trademark as a domain name: thus, the similarity between the
goods or services involved must be carefully evaluated, taking into consideration all the usual
factors.

VII OUTLOOK
New EU Trademark Regulation
Regulation (EU) 2015/2424 of the European Parliament and of the Council amending the
Community trademark regulation (the Amending Regulation) was due to enter into full
force in October 2017. This will undoubtedly influence the Italian trademark scenario.

Damages
Italian law does not provide punitive damages. In the past, case law was consistent in excluding
the admissibility of punitive damages. However, a recent decision by the Supreme Court has
created a first opening in this respect, acknowledging the enforceability in Italy of a foreign
decision condemning a party to punitive damages. It remains to be seen whether this will
remain an isolated decision, or be a first step in overturning former case law.

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Chapter 11

MALTA

Luigi A Sansone1

I OVERVIEW
i Trademark registration
There are two types of trademark registration available in Malta:
a pursuant to an application for the registration of a Maltese trademark in terms of
applicable provisions contained in the Trademarks Act; and
b pursuant to an application for the registration of a European Union Trademark
(EUTM) in terms of applicable provisions contained in EU Regulation 2017/1001).
This also includes any case of an international registration designating the EU.

ii Trademark enforcement in Malta


Enforcement of trademark rights is possible by means of a lawsuit filed before the relevant
court of first instance, known as the First Hall of the Civil Court.
With regard to a national trademark, the lawsuit is filed in terms of applicable
provisions of law contained in the Trademarks Act, and remedies that can be requested
include permanent injunction and damages.
With regard to an EUTM, the lawsuit is also filed in terms of provisions of law
contained in the Trademarks Act (made applicable to EUTMs), and again, the remedies
available include permanent injunction and damages.
In each of the above scenarios:
a the Enforcement of Intellectual Property Rights (Regulation) Act allows the right
holder a set of pretrial and trial remedies pursuant to Directive 2004/48/EC on the
enforcement of intellectual property rights; and
b judgment of the court of first instance is subject to one appeal possibility, by means of
an application (to be filed within 20 days of the judgment date) before the Court of
Appeal in its civil jurisdiction.

1 Luigi A Sansone is the sole owner and CEO of SALOMONE SANSONE.

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II LEGAL FRAMEWORK
i Trademark legislation
The most significant domestic legislation related to trademarks is the Trademarks Act 2000,
which was enacted by Act XVI of 2000 and is supplemented by the following:
a Legal Notice 283 of 2000 – Trademarks (Provisions and Fees) Rules, 2000 (SL 416.01);
and
b Legal Notice 233 of 2003 – Community Trademark Rules, 2003 (SL 416.02).

In addition, the following national laws are of significant relevance to trademarks in Malta:
• the Enforcement of Intellectual Property Rights (Regulation) Act;
• the Commercial Code;
• the Intellectual Property Rights (Cross-Border Measures) Act; and
• the Criminal Code.

The most relevant treaties Malta has entered into regarding trademarks are as follows;
• the Paris Convention (Lisbon), 20 October 1967 (Stockholm: Articles 13–30,
12 December 1977), Trademark Law Treaty;
• the World Intellectual Property Organization (WIPO), 7 December 1977; and
• the World Trade Organization (WTO), 1 January 1995.

The most relevant international commitment Malta has entered into regarding trademarks
is the fact that as from 1 May 2004, Malta is a member of the European Union. This has
brought with it Malta’s access to the acquis communautaire, which includes most notably:
• the EU Trademarks Regulation, namely Council Regulation (EC) No. 207/2009 on
the Community Trademark, as amended by Council Regulation (EU) No. 2015/2424
and as is now replaced, as from 1 October 2017, by the consolidated text contained in
Council Regulation (EU) No. 2017/1001;
• the EU Directive on trademarks, namely Council Directive No. 89/104/EEC to
approximate the laws of the Member States relating to trademarks, as amended by
Directive 2008/95/EEC and Directive (EU) No. 2015/2436;
• Directive 2004/48/EC on the enforcement of intellectual property rights; and
• Regulation (EU) No. 608/2013 concerning customs enforcement of intellectual
property rights and repealing Council Regulation (EC) No. 2383/2003.

ii Other legislation
Authorities
• The office of the Comptroller of Industrial Property is responsible for the national
trademark regime.
• The office of the Registrar of Companies is responsible for national company names.
• The Malta Internet Foundation, also known as NIC(Malta), within the office of the
University of Malta, is responsible for the national .com.mt domain names.

Substantive law
The legal basis for the protection of Malta-registered trademarks is that contained in the
Trademarks Act. To qualify for registration, a trademark must be capable of being represented
graphically and of distinguishing the goods or services of one undertaking from those of other

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undertakings. A trademark may be disqualified from registration on the basis of absolute


grounds or on the basis of relative grounds. At the time of writing, there is no regulated
system for opposition of a trademark during the application stage and, in the event where
the office of the Comptroller of Industrial Property considers a trademark application as
qualifying under the absolute and relative grounds tests, a certificate of registration would
be issued and the registered trademark would be published in the Malta government gazette.
A third party may, within the time limits established by law, file a court action for one or
both of the following, depending on the circumstances: (1) invalidation of the trademark
registration (on the basis of absolute or relative grounds); or (2) revocation of the trademark
registration (e.g., on the basis of non-use of the registered mark for an uninterrupted period
of five years in circumstances in which there are no valid reasons for such non-use). It is
possible to register collective or certification marks.
The legal basis for the protection of unregistered trademarks, company names, trade
names, business names, geographical indications and domain names is contained in the
Commercial Code of Malta, where it deals with the limits of competition between traders.
Of particular relevance are Articles 32 and 37 of this law, which provide as follows:

Article 32
Traders shall not make use of any name, mark or distinctive device capable of creating confusion with
any other name, mark or distinctive device lawfully used by others, even though such other name,
mark or distinctive device be not registered in terms of the Trademarks Act, nor may they make use of
any firm name or fictitious name capable of misleading others as to the real importance of the firm.

Article 37
(1) Any trader who contravenes any of the prohibitions contained in Article 32 […] inclusively,
shall, at the choice of the injured trader, be liable either to an action for damages and interest or
to a penalty. The injured trader may, further, demand that everything done contrary to the said
prohibitions be destroyed, or that any other remedy be applied capable, according to circumstances,
of removing the act constituting the unlawful competition.
(2) Any action for damages and interest brought under this Article shall be governed by the rules of
the civil law.
(3) The penalty, however, shall be fixed by the Civil Court, First Hall, or by the Court of Magistrates
(Gozo) in its superior commercial jurisdiction at the suit of the injured trader, and shall not be
less than four hundred and sixty-five euro and eighty-seven cents (€465.87 ) nor more than four
thousand, six hundred and fifty-eight euro and seventy-five cents (€4,658.75 ), having regard
to the seriousness of the fact, to its continuance, to the malice of the offending party and to all
other particular circumstances of each case. Such penalty shall be paid to the injured trader in
settlement of all his claims for damages and interest.

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With regard to company names, of relevance is Article 70(4) of the Companies Act, which
provides as follows:

A company shall not be registered by a name which:


a is the same as a name of another commercial partnership or so nearly similar as in the opinion of
the Registrar it could create confusion; or
b is in the opinion of the Registrar offensive or otherwise undesirable; or
c has been reserved for registration for another commercial partnership by a notice in writing to the
Registrar given not more than three months before the date of the second request:

Provided that the Registrar shall notify any refusal under this sub-article without delay to the person
requesting the registration:
Provided further that in applying paragraph (b), the Registrar shall have regard, inter alia, to
the business or proposed business of the company, to the protection of the names of persons who are
not connected in any way with the company, and, in the case of a private company, to the names of
the members.

III REGISTRATION OF MARKS


i Inherent registrability
The Office of the Comptroller of Industrial Property (the Office) will examine a trademark
application with regard to inherent registrability of the same (absolute grounds). In this
regard for instance, if the trademark is considered exclusively descriptive in nature, it will be
refused on absolute grounds after the applicant would have been provided an opportunity to
file submissions in this regard, or to amend the trademark application with a different version
that would be considered registrable as limited to the distinctive manner of presentation (and
with a condition of registration attached thereto).

ii Prior rights
The Office will additionally examine a trademark application with regard to prior rights in
respect of the same (relative grounds). In this regard, in practice the Office will conduct a
check of earlier trademark registrations and applications found in the Register of Trademarks
of Malta and on the European Union Intellectual Property Office (EUIPO) trademark
database, and if the trademark is considered too close to any such earlier trademark
registration or application, the applicant would be informed and provided with a period of
time to obtain and present a letter of consent or alternatively to file submissions in relation
to the requirement for production of a letter of consent. If in the opinion of the Office the
applicant has failed to provide the letter of consent or has not provided acceptable reasons to
justify non-production of the letter of consent, the trademark application would be refused.

iii Inter partes proceedings


Inter partes proceedings at application stage are not currently regulated, as the trademark
application is under the exclusive scrutiny of the Office. This said, a practice has evolved
whereby an applicant who becomes aware of an infringing trademark application is permitted
to file submissions to the Office in an attempt to persuade the Office not to proceed with
acceptance for registration.

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In the event of registration of a trademark on the Register, it is possible for an interested


party to proceed judicially (within defined time periods) with a request for a declaration of
invalidation or revocation of the registered trademark on relative and or absolute grounds.
The lawsuit is filed before the competent court of first instance, namely the First Hall of
the Civil Court, and the registrant is allowed the right of reply. A contested lawsuit usually
extends over a period of between one and three years at first instance, and a further three to
four years before the Court of Appeal (in the event of an appeal being filed).

iv Appeals
Appeals are available:
a to the Court of Appeal (Inferior Jurisdiction), in relation to any appeal against a
decision of the Comptroller of Industrial Property (e.g., an appeal against a refusal to
register a trademark application); and
b to the Court of Appeal (Superior Jurisdiction), in relation to any appeal against a
judgment of the court of first instance in respect of trademark invalidation or trademark
revocation proceedings.

IV CIVIL LITIGATION
i Forums
A dispute between an applicant or an interested party and the Office concerning a decision it
has made, is referred to the Court of Appeal in its Inferior Jurisdiction.
The following forms of dispute are referred to the First Hall of the Civil Court as a court
of first instance (with a ‘once-only’ appeal to the Court of Appeal in its Superior Jurisdiction):
a a dispute between an interested party and a registered trademark proprietor;
b a dispute between an injured party and a trademark infringer.

ii Pre-action conduct
An interlocutory, pretrial injunction is available either under general law (a warrant of
prohibitory injunction) or under a specific law (Article 6 of the Enforcement of Intellectual
Property Rights (Regulation) Act).
Furthermore, the applicant may request measures aimed at preserving evidence.
In each case, an application is filed with the court and, if acceded to, it needs to be
followed by the filing of a lawsuit within a specific time period.
Pretrial discovery has been deemed not to be available – discovery is available once the
lawsuit is filed.

iii Causes of action


Causes of action may range from one to the other of the following:
a trademark invalidation (e.g., a lawsuit based on relative or absolute grounds, for
invalidation of a registered trademark;
b trademark revocation (e.g., a lawsuit based on revocation of a registered trademark, for
a declaration of non-use of a registered trademark as a ground for revocation);
c trademark infringement, for example, a lawsuit for damages and a permanent injunction
as well as destruction of the infringing goods, as a result of infringement of a registered
trademark; and

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d unfair competition, for example, a lawsuit for damages and a permanent injunction as
well as destruction of the infringing goods, as a result of an infringement of a registered
or unregistered trademark, company name, trade name, business name, geographical
indication or domain name.

iv Conduct of proceedings
Pretrial proceedings are initiated by means of an application filed before the First Hall of
the Civil Court, and at this stage an interlocutory injunction or a request for preservation
of evidence is typically requested. The adversarial party is given an opportunity of reply, and
the Court may or may not fix one or more hearings, following which it makes a decision
by decree. In the event that the Court accedes to a pretrial request, the applicant is obliged
to follow up matters through the filing of a lawsuit within a specified time period, during
which discovery may be requested and the trial proper takes place, with each party presenting
its own evidence and the Court issuing its judgment after the parties have filed written and
verbal observations. These proceedings may take between one and three years in all.
Following the judgment of the Court of First Instance, an appeal is possible by filing
an application before the Court of Appeal in its Superior Jurisdiction within 20 days of the
date of judgment. No new evidence may be produced before the Court of Appeal (save for
exceptional circumstances), and the parties appear on average between one and three times
before the Court of Appeal pronounces judgment. These proceedings may take between three
and five years in all.
The losing party is normally ordered by the Court to pay the winning party’s judicial
costs. The parties are each represented by locally qualified legal counsel. In the case of a
non-resident litigant, legal counsel normally acts as the mandatory official.

v Remedies
Typical remedies requested in a trademark infringement action or in an unfair competition
action are as follows:
• a declaration of infringement;
• an order for permanent prohibition of the infringing action;
• a declaration of damages caused;
• a request for quantification of damages caused;
• an order for payment of damages thus quantified; or
• a request for payment of all judicial costs.

In the case of an unfair competition action, the Court may be requested to impose a fine (of
between €465.87 and €4,658.70) in lieu of damages.

V OTHER ENFORCEMENT PROCEEDINGS


Anti-counterfeiting is often tackled through the intervention of Maltese Customs in terms
of applicable procedures available in terms of Regulation (EU) No. 608/2013 concerning
customs enforcement of intellectual property rights and repealing Council Regulation (EC)
No. 2383/2003, with Malta’s corresponding law, namely the Intellectual Property Rights
(Cross-Border Measures) Act.
In the event of suspect merchandise discovered in the course of checks on goods entering
a customs point in Malta (including a free zone), Maltese Customs informs the right holder

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of a suspicion that the goods may involve an infringing act. If the right holder is a ‘holder of
an IP right’, as recorded with Maltese Customs, and in circumstances in which the goods are
counterfeit, the right holder is given the opportunity (at the discretion of Maltese Customs)
of having the goods destroyed in terms of the so-called ‘simplified procedure’ (or ‘standard
procedure’) within 10 working days of the date of notification of detention. Alternatively
the right holder is required to file judicial proceedings within that same period of time,
extendable once only by a further period of 10 working days. In any such lawsuit (filed
before the First Hall of the Civil Court against the declarant or the holder of the goods), the
right holder typically requests a declaration of infringement, followed by a request for a court
order of destruction of the goods and disposal of waste generated thereby, at the defendant’s
expense, and an order for all relevant costs to be borne by the defendant. In any such court
case, a right of appeal to the Court of Appeal in its Superior Jurisdiction is available.

VI RECENT AND PENDING CASES


Malta has been at the forefront in the battle against counterfeit goods, and this has been
particularly relevant with regard to counterfeit goods in transit, that is to say goods sent from
a non-EU country, transiting Malta en route to another non-EU country.
In this regard for instance, reference is made to a recent case decided by the First Hall
of the Civil Court,2 the facts of which are as follows:
a The plaintiff company, well known in connection to ‘ARIEL’ laundry detergent and
washing powder products and owner of EUTM No. 000199976 ‘ARIEL’ in respect
of ‘bleaching preparations and other substances for laundry use, cleaning, polishing,
scouring and abrasive preparations, soaps’, duly protected as a ‘right holder’ for the
purposes of the relevant provisions contained in EU. Regulation 608/2013, was
officially notified that the Director General (Customs) of Malta suspended release
of the container MAGU5339202 containing a quantity of packing and packaging
material for laundry detergent and washing powder bearing ‘ARIEL’ signs as well as
laundry detergent and washing powder (inside sacks). These goods all arrived at the
Malta Customs Freeport Terminal during a transshipment procedure, sent by the first
defendant, Yiwu Deshi Imp. & Exp. Co., and in transit for eventual release in favour of
the second defendant Afaq Alhadatha Co. The Director General (Customs) informed
the plaintiff company about this discovery in suspect circumstances, for the carrying
out of opportune verifications regarding infringements of intellectual property rights.
b After having examined electronic photographs and samples of these goods, the plaintiff
company confirmed to the Director General (Customs) that these were counterfeit
goods. For his part, the Director General (Customs) passed on to the plaintiff company
a copy of relative commercial documentation wherein Yiwu Deshi Imp. & Exp. Co., a

2 Case Ref. 458/2016MCH of 23 November 2016, in the names Advocate Doctor Luigi A Sansone LLB
(Hons), LLD, as special mandatory of The Procter & Gamble Company, a foreign company incorporated in the
State of Ohio in the United States of America with entity number 20677 and with an address of One Procter
& Gamble Plaza, Cincinnati, Ohio, United States of America v. Dr Mark M Cutajar and PL Helen Valenzia
nominated as appointed curators to represent Yiwu Deshi Imp. & Exp. Co., Ltd, a foreign entity with an
unknown address, and Dr Joseph Ellis and PL Gillian Muscat nominated as appointed curators to represent Afaq
Alhadatha Co., a foreign entity with an unknown address.

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foreign entity that conducted business in China, was indicated in the box relative to the
shipper or consignor, whereas the consignee or importer was indicated as being Afaq
Alhadatha Co., a foreign entity that conducted business in Libya.
c Judicial action was filed in terms of Article 9.(4.) of EU Regulation 2017/1001 on the
European Union Trademark, which provides that: ‘the proprietor of that EU Trademark
shall also be entitled to prevent all third parties from bringing goods, in the course of
trade, into the Union without being released for free circulation there, where such
goods, including packaging, come from third countries and bear without authorisation
a trademark which is identical to the EU Trademark registered in respect of such goods,
or which cannot be distinguished in its essential aspects from that trademark’.
d In this respect the Court acceded to the plaintiff company’s requests and accordingly:
• it declared that the entry without release for free circulation in Malta, in the
course of trade between the defendants of the goods in question, infringed the
plaintiff company’s intellectual property rights;
• it declared the goods in question as counterfeit in nature;
• it ordered the Director General (Customs) to destroy the goods in question
within 90 days of the judgment, without any compensation to the defendants
and at their expense; and
• it ordered that the defendants pay all expenses, including those for the
identification and tallying of the said goods, for their transportation to the
storage facility location, for the storage itself, for transportation of the said
goods from the storage facility location to the destruction facility location, for
attendance during the destruction and for the disposal of waste generated by the
said destruction; and with costs against the defendants.

Various cases are pending before the First Hall of the Civil Court, particularly in relation to
‘goods in transit’.

VII OUTLOOK
As yet, Malta has not officially transposed the provisions of Directive (EU) No. 2015/2436
and in this regard compliance is required by 14 January 2019. It is therefore expected that
within the next few months a legislative effort will be made leading to a bill for presentation
and approval before the House of Representatives. Most notably, the new law should bring
about a reintroduction of the trademark opposition procedure at application stage. Also of
relevance is the fact that the new law should remove the requirement that a trademark must
be capable of being represented graphically.

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Chapter 12

NETHERLANDS

Steffen Hagen and Ischa Gobius du Sart1

I OVERVIEW
The Netherlands is generally considered one of the main jurisdictions in Europe for
protection of intellectual property, including trademarks. The Dutch courts rank among the
best in Europe, and this certainly also holds true for the handling of trademark cases. The
District Court of The Hague has exclusive jurisdiction in cases concerning European Union
trademarks (EUTMs). Litigation based on Benelux trademarks is also handled by a number
of other courts in the Netherlands, which all generally have extensive experience in this field.
Since the introduction of the former Benelux Trademark Act in 1971, Dutch judges
have dealt with numerous national and international trademark cases. Also, many principles
of the EUTM are based on the experiences of the Benelux countries. Apart from the judges,
the Netherlands also houses a substantial number of excellent trademark specialist lawyers
and very knowledgeable trademark attorneys (agents).
The Dutch procedural system provides for relatively quick and efficient enforcement
proceedings, which is another reason that makes the Netherlands a favoured venue for
trademark litigation. The Benelux Convention on Intellectual Property Rights (BCIP), which
entered into force on 1 September 2006, provides the basis for the enforcement of trademarks
in the Netherlands, Belgium and Luxembourg. For each of these jurisdictions, national
procedural rules determine the procedures and remedies available. For the Netherlands, these
are laid down in the Dutch Code of Civil Procedure. Although formally decisions of one
court do not serve as binding precedent for other courts, in practice courts do take account
of decisions in the other jurisdictions.
The Netherlands is also a favourable jurisdiction for intellectual property (IP) holding
companies and houses a number of regional, European and even global headquarters of
renowned international brand owners.

II LEGAL FRAMEWORK
i Legislation
Two types of registered trademarks are acknowledged in the Netherlands, namely Benelux
trademarks and European Union trademarks.

1 Steffen Hagen is counsel for IP, IT and commercial contracting, and Ischa Gobius du Sart is European and
Benelux trademark and design attorney, both at Baker McKenzie Amsterdam NV.

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Belgium, the Netherlands and Luxembourg, which form the Benelux region, have
had a uniform trademark protection law since 1971. On 1 September 2006, the Benelux
Trademarks Act and the Benelux Designs Act were merged into the BCIP. The BCIP will be
amended before 14 January 2019 to implement the Trademark Regulation (EU 2015/2424).
Further, because the Netherlands is a member of the Madrid Protocol, trademark
protection can also be obtained via international registrations designating Benelux.

ii Authorities
Benelux trademarks are registered at the Benelux Office for Intellectual Property (BOIP). An
EUTM is registered at the European Intellectual Property Office (EUIPO). International
registrations designating Benelux, registered at the World Intellectual Property Organization
(WIPO), are also valid in Benelux.
The Dutch Trade Name Act provides protection to trade names. Trade name rights are
established by the actual use of that name in the course of trade. Registration is not required
to obtain trade name rights. However, the majority of trade names are registered in the Trade
Register of the Dutch Chamber of Commerce.
The Dutch domain names authority is the Foundation for Internet Domain names
registration in the Netherlands (SIDN). Top-level domain names with the .nl extension are
applied for with, and granted by, the SIDN.

iii Substantive trademark law


To obtain trademark protection under the BCIP, a trademark must be registered with the
BOIP in The Hague. An EUTM must be applied for at the EUIPO, and an international
registration designating Benelux must be done through the WIPO. Any individual or legal
entity may apply for a trademark registration. Trademarks can be registered in the name of
more than one party.
A straightforward trademark registration procedure will take about three to four
months (from application to registration). After the application is filed, the BOIP will
examine the application on absolute and relative grounds. Once accepted, the application
will be published for opposition purposes. Relative grounds for refusals (such as irregularities
in the classification) may be remedied by the applicant. The BOIP usually provides a term
of one month for this, which may be extended. If, upon examination, there is an absolute
ground for refusal, the BOIP will provisionally refuse registration of the trademark. The
applicant will be given a three-month period to file a response to this decision. In Benelux,
it is also possible to register individual trademarks using the accelerated procedure enabling
a trademark registration to be obtained within 24 hours. This registration is immediately
granted and published, but still remains open for opposition by third parties or refusal
on absolute grounds by the BOIP for the applicable periods. The official fee for filing an
application in up to three classes is €248. The fee for each additional class above the third
is €39. The official fee for trademark registration using the accelerated procedure is €447.2
The Benelux trademark regime, like most of its surrounding jurisdictions, is a registration
system rather than a first-use system. Therefore, in principle, non-registered trademarks are
not protected in Benelux. This may only be different if the trademark is recognised as a
well-known trademark within the meaning of Article 6 bis of the Paris Convention.

2 All the amounts quoted in this chapter for official fees are effective as of 1 January 2018.

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iv Collective marks and certification


It is also possible to register collective trademarks in Benelux. As of 1 October 2017, it is also
possible to register a collective European trademark, referred to as a ‘certification mark’. These
trademarks distinguish certain collective characteristics of goods and services (e.g., seals of
approval or logos for the environment), rather than the goods and services themselves. Just
like the collective trademarks in Benelux, the EU certification mark relates to the guarantee
of specific characteristics of certain goods and services. It indicates that the goods and services
bearing the mark comply with a given standard set out in the regulations of use and controlled
under the responsibility of the certification mark owner, irrespective of the identity of the
undertaking that actually produces or provides the goods and services at issue and actually
uses the certification mark. Applicants for certification marks have to include a statement
in their applications to the effect that they are applying for an EU certification mark. A
certification mark cannot be owned by a person or company carrying out a business involving
the supply of goods and services of the kind certified. The owner of a certification mark is
precluded from using the mark for the certified goods or services covered. A certification
mark cannot be filed for the purpose of distinguishing goods or services certified in respect of
the geographical origin. The official fee for registering a collective mark is €385.

v Trade names, geographical indications, domain names


The Dutch Trade Name Act prohibits the use of names that are identical or similar to trade
names or trademarks already being used by another company if such use creates the risk of
confusion among the public, taking into account the nature and location of the businesses.
Trade names are usually registered with the trade register of the Dutch chamber of commerce.
However, this is not required nor is it sufficient to enjoy protection. Dutch trade name law
applies if a name is actually used in the course of trade, regardless of whether or not it is
registered. Trade names can be transferred, but only as part of the business it is associated with.
If a sign identifies a product as originating from a given place, it may be protected as
a geographical indication. For such protection it is essential that the qualities, characteristics
or reputation of the product relate directly to the indicated place of origin. A protected
geographical indication enables those who have the right to use the indication to prevent
its use by a third party if the product of this third party does not meet the requirements or
standards of the geographical indication. However, a protected geographical indication does
not give the holder the right to prevent someone from making a product using the same
techniques as those set out in the standards for that indication. Protection for a geographical
indication is usually obtained by acquiring a right over the sign that constitutes the indication.
As indicated, an .nl domain name can be obtained by applying for one not already
registered with the SIDN. When registering a domain name, the applicant will enter into an
agreement with a registrar, who will register the domain name with SIDN as intermediary on
behalf of the applicant. The domain name holder enters into a direct agreement with SIDN,
and the domain name is registered, for an indefinite period. The agreement and registration
may be terminated by SIDN in the event the registrant does not fulfil the obligations as set
forth in the agreement and fails to remedy this shortcoming within 30 days of being notified
to that end by SIDN. The obligations of the registrant towards SIDN are set out in the SIDN
general terms and conditions and include a proper use of the domain name.
SIDN provides for a dispute resolution for .nl domain names in accordance with
WIPO/ICANN policies. The dispute resolution provides for a quick and cost-efficient

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way for the owner of a trademark or trade name to order the transfer of a domain name
confusingly similar to such mark or name, where such domain name was registered in bad
faith. Disputes relating to domain names may be brought before a Dutch court.

III REGISTRATION OF MARKS


i Inherent registrability
Any sign that is capable of distinguishing goods or services as originating from a certain
company can be registered as a trademark, e.g., words, symbols, colours, three-dimensional
shapes (of a product or packaging) and sounds. The BOIP may refuse registration, in
particular if the sign:
• is descriptive;
• lacks distinctive character;
• is misleading or in violation of public policy;
• is an official emblem or flag of a state or international organisation; or
• has a shape that overlaps with any other intellectual property right, such as a patent or
design right.

A sign is descriptive if, for example, it describes or recommends the product or service for
which the trademark application is filed. A descriptive sign automatically lacks distinctive
character. A non-descriptive trademark can also be non-distinctive, for example where
it is a slogan or a single colour. These signs may be registerable as a trademark only after
having acquired distinctive character with the relevant sector of the general public through
intensive use.
Usually, the BOIP issues a provisional refusal of protection within two months of the
filing of the application. The applicant is granted a three-month period in which to file an
appeal with the BOIP against such a refusal, which may be extended once only up to a total
of six months.

ii Prior rights
The BOIP does not refuse the registration of a trademark based on the ground that it is
confusingly similar to earlier registrations. Holders of earlier registrations may, however,
initiate opposition proceedings to prevent the application from maturing into registration.
Holders of earlier trademark registrations or trade name rights may also start court proceedings
to stop the use of a confusingly similar trademark or order the cancellation of the registration.
As for prior rights of the applicant itself, convention priority, if invoked opportunely,
may be claimed at the time of filing of an application for registration.

iii Inter partes proceedings


The owner of a registered trademark that is valid in Benelux has the right to prohibit others
from using a younger sign if the sign is:
• identical, and used for identical products or services in commerce;
• identical or similar, and used for identical or similar products or services, if such use
may cause confusion;

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• identical or similar, and used for products or services different from those for which
the prior trademark is registered, if such trademark has a reputation in Benelux and the
use of that sign, without due cause, takes unfair advantage of, or is detrimental to, the
distinctive character or reputation of the trademark; or
• used for purposes other than to distinguish a product or service (i.e., no use as a
trademark) if this use, without due cause, takes unfair advantage of, or is detrimental
to, the distinctive character or the reputation of the trademark.

Under the BCIP, trademark owners may oppose an application for registration of a conflicting
sign before the BOIP. The aim of these administrative opposition proceedings is to establish
at an early stage whether the opposed application should be denied for reason of the sign
applied for being confusingly similar to the opposing party’s earlier trademark registration.
Furthermore, the opposition system is meant to encourage parties to reach an amicable
settlement. Oppositions may be lodged against new trademarks filed for goods and services
in any classes. Under Benelux trademark law the applicant or owner of a prior trademark can
file an opposition against the application for:
• an identical trademark filed for the same goods or services;
• an identical or similar trademark filed for the same or similar goods or services, where
there exists a likelihood of confusion among the public; or
• a trademark that can cause confusion with an existing trademark that is well-known
within the meaning of Article 6 bis of the Paris Convention.

Third parties have up to two months from the publication to file an opposition to the
registration. The opposition proceedings start (once found admissible by the BOIP) with
a two-month cooling-off period. This cooling-off period gives the parties an opportunity
to seek an amicable solution to the dispute. The cooling-off period may be extended upon
mutual request. Once the proceedings start, the opponent has a two-month period to file
the explanations of the grounds for the opposition, after which the applicant is given two
months to file its observations in response. Also, the applicant may request proof of use of
the opposing trademarks. The official fee for filing an opposition is €1,040. This fee includes
an opposition based on three trademarks.
Cancellation proceedings may be initiated by any interested party. This entails court
proceedings on the merits, based on absolute grounds, relative grounds or nullity. In this
respect, please note that upon implementing the Trademark Regulation, these proceedings
may also be instigated before the BOIP.
Invalidity or nullity proceedings are aimed to get the trademark against which this
action is directed, declared invalid or nullified. These are court proceedings, initiated by filing
a request with the competent Dutch court to declare a trademark invalid (null and void).
Following the implementation of the Trademark Regulation, these proceedings will also be
possible before the BOIP. A nullity action can be based on one of the following reasons:
• the trademark does not meet the requirements to be a trademark;
• it lacks distinctive character;
• it is too descriptive;
• it has become a common or generic term;
• the trademark was registered in bad faith; or
• in the case of non-use, that is to say, the mark has not been put to genuine use for a
period of five consecutive years.

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iv Appeals
A final refusal decision by the BOIP can be appealed at the courts of appeal of either The
Hague, Brussels or Luxembourg, depending on the address of the applicant, the agent or the
postal address provided at the time of filing. The appeal must be initiated within two months
of the final refusal.
Equally, an opposition decision by the BOIP concerning a Dutch applicant may also be
appealed before The Hague Court of Appeal. Court judgments in cancellation or invalidity
proceedings are subject to appeal with the competent Dutch court of appeal, depending on
which district court rendered the appealed judgment.

IV CIVIL LITIGATION
i Forums
In the Netherlands, there is no specialised court for trademark disputes as in Germany and
the United Kingdom, for example. However, most of the district courts and courts of appeal
have judges more or less specialised in IP matters, including trademark matters. In addition,
the District Court of The Hague has specialised judges due to the fact that this court has
exclusive jurisdiction in EUTM matters.

ii Pre-action conduct
In the Netherlands, although it is not required by law, usually a cease and desist letter is sent
prior to starting court proceedings (except if an ex parte injunction or seizure is requested). The
aim of this letter is to immediately end the infringement, or to seek a settlement out of court.
Furthermore, a response to the letter may provide insight of possible counterarguments of the
alleged infringer, which may help in assessing the strength of the case. Such counterarguments
must be included in the writ of summons served, if starting legal proceedings after all. Failure
to do so risks the claims being judged inadmissible.
For the purpose of settlement, the cease and desist letter usually contains demands
that are similar to or go beyond those that can be obtained in interim relief proceedings,
such as:
a immediately stopping the infringement;
b recognition of the rights holder’s rights and desisting from future infringements;
c provision of an accountant’s statement to calculate damages, such as the number of
products purchased and sold, turnover, costs and profit made;
d contact details of the supplier of the infringing goods; and
e an undertaking to pay damages and legal costs.

It may often also contain a penalty clause for each violation of the undertakings. In practice,
more often than not, a settlement is reached on the basis of the demands in the cease and
desist letter, which is usually a more cost-effective outcome for the parties than to resort to
court proceedings.

iii Causes of action


Court proceedings in trademark cases will usually be based on an alleged trademark
infringement of the types already discussed in Section III.iii. Mostly this will involve action
against the use of an identical or similar sign for identical or similar products or services,

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causing risk of confusion. Less often, an action will be brought based on use infringing
on a well-known trademark. As said, the owner of a prior trademark or trade name can
also initiate proceedings against the use of a confusingly similar trade name based on the
Dutch Trade Name Act. In the case of a domain name, proceedings can be based on either
trademark law or trade name law, depending on the infringed right concerned. Also, with
regard to other unlawful acts, such as misleading advertising or unlawful copying of trade
dress, an action can also be brought based on unfair trade practice, misleading advertising,
unfair competition or unlawful act (tort) in general.

iv Conduct of proceedings
The Dutch legal system does not have a concept of full discovery similar to the US or similar
jurisdictions. In any court case, the court will base its judgment only on the facts as presented
to it by the parties. In trademark infringement cases, a plaintiff may opt for either summary
proceedings or proceedings on the merits. Summary proceedings consist of a writ of summons
by the plaintiff, including the claims and their factual and legal grounds, followed by a court
hearing during which the case is pleaded by the legal representatives of the parties (or in the
case of the defendant, in summary proceedings – this may be the defendant itself ). Summary
proceedings may take approximately six to 10 weeks from serving the writ until the judgment
is rendered. A judgment obtained in summary proceedings based on trademark infringement
must be followed by proceedings on the merits within a reasonable period determined by the
court (in accordance with the TRIPS Treaty), usually six months, or (often) by the parties
reaching a settlement based on the summary judgment.
Main proceedings are more elaborate, and require at least one round of written
arguments, by both plaintiff and defendant, and possibly a second round, and in most cases
these end with oral pleadings before a judgment is rendered. Main proceedings may also
include incidents, in particular interim orders by the court regarding the provision of additional
evidence, such as witness hearings or expert reports. Typically, the main proceedings, subject
to incidents, may take between six and 12 months until judgment.

v Remedies
A trademark holder may bring several claims, the most obvious claim being an injunction,
that is to say, a court order to cease and refrain from any infringing acts. Other possible
claims include a recall of infringing products from the market and surrender or destruction
of infringing products. Also, the infringer may be summoned to provide information,
usually attested by an accountant’s statement, to enable the plaintiff to calculate the damage
sustained as a consequence of the infringement, such as the number and price of products
purchased and sold, the turnover, costs and profit made. In addition, it may be ordered to
provide contact details of the supplier of the infringing goods. To ensure that the court order
awarding any or all these claims is executed, the court usually determines that an incremental
penalty sum is forfeited if the infringer does not execute the court orders within a certain time
period, set by the court.
A rights holder may also claim compensation of damage, surrender of profit made
from the infringement or compensation of legal costs incurred. A rights holder will need
to substantiate the actual damage sustained (e.g., loss of profits) and demonstrate that this
is attributable to the infringer. It is not possible to claim or obtain punitive damages in the
Netherlands. Only the damage actually suffered may qualify for compensation.

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In the case of a trademark infringement, a rights holder may bring a separate claim
for surrender of profits made by the infringer from the sale of the infringing products. If the
infringement is made in bad faith, both damage compensation and surrender of profit may be
awarded cumulatively. A claim for damage compensation or a claim for surrender of profits
may be brought in proceedings on the merits.
In both summary and main proceedings, a claim may be brought for (partial)
compensation of legal costs incurred. Any party in legal proceedings concerning the
enforcement of an IP right may claim compensation of all reasonable and proportionate
legal costs and other expenses (such as expert reports, cost of accountants, etc.) actually
made. Dutch courts use guidelines for cost awards in IP proceedings (except patent cases)
which, depending on the complexity of the case, vary from €6,000 to €15,000 for summary
proceedings, to between €8,000 and €25,000 for main proceedings. If the parties have agreed
on the cost award, the court usually awards the agreed amount to the prevailing party.

V OTHER ENFORCEMENT PROCEEDINGS


Pursuant to the EU Anti-Piracy Regulation (608/2013), it is possible for trademark owners
to involve the customs authorities in the Netherlands to prevent counterfeit and other
infringing goods from being imported into or exported from the EU market. At the request
and instruction of a trademark owner, customs will monitor incoming shipments and involve
the rights holder if they come across a shipment that is suspected to be infringing on the right
holder’s trademark. Customs will provide photos and sometimes samples for the right holder
to assess whether this is indeed the case. If so, the counterfeit can be seized and destroyed.
Under Dutch law, trademark infringement is also a criminal offence and, as such, it can
also be actioned by the public prosecutor, rather than through a civil action by the trademark
holder. However, it is at the discretion of the prosecutor whether or not to act upon a
notification of infringement, and in practice it will often be that priorities are different and the
prosecutor does not opt to take action (except perhaps in cases of widespread infringements
involving a criminal organisation, or where public health is at real risk).

VI RECENT AND PENDING CASES


An interesting recent trademark case involves the well-known fashion designer Christian
Louboutin enforcing his trademark on red soles on high-heeled women’s shoes against Van
Haren, a Dutch company that sells budget shoes. Louboutin claimed that Van Haren infringed
his Benelux trademark by also selling high-heeled women’s shoes with a red sole. The District
Court of the Hague referred a prejudicial question to the Court of Justice of the EU. The
question was whether the definition of ‘shape’ within the meaning of Article 3(1)(e)(iii) of
the EU Trademark Directive (signs consisting exclusively of the shape that gives substantial
value to the goods) is limited to three-dimensional elements of a product or can also include
two-dimensional, not shape-related characteristics of the goods, such as colour (in this case,
a red shoe sole). In his opinion of 22 June 2017, the Advocate General took the view that
Louboutin’s red sole mark was neither a position mark nor a colour mark, but qualified as a
shape mark: ‘a mark consisting of the shape of the goods and seeking protection for a colour
in relation to that shape’.

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On 12 October 2017, the Court of Justice of the European Union (CJEU) unexpectedly
decided to reopen the case, six months after the Advocate General’s opinion. According to
the CJEU, the case raises issues of principle concerning EU trademark law and has now been
assigned to the Court’s Grand Chamber, with a new hearing scheduled for 14 November 2017.
Another relevant Dutch trademark case in the past year has been between the Dutch
companies Levola and Fanofinefood. The first is the producer of a spreadable cream cheese
dip known and sold as ‘Heksenkaas’ (witches’ cheese). The latter brought a similar cream
cheese dip to the market named ‘Witte Wievenkaas’ (white women’s cheese). Levola opposed
the latter’s trademark application. The Court of Appeal of The Hague agreed to deny the
application because of the conceptual similarities. According to the court of appeal, both
signs refer to ‘magical, female and malicious creatures’. In Dutch mythology, ‘witte wieven’
are mostly portrayed as white, female ghosts, who live alone and frighten people. Therefore,
the court argued that ‘witte wieven’ will be interpreted by a significant part of the public as
witches. Therefore, it considered the marks confusingly similar.

VII OUTLOOK
High hopes for high heels: looking ahead to next year, it will be interesting to see what
decision the Grand Chamber of the CJEU will render in the Louboutin case. This will no
doubt have a material impact in further defining the lines of trademark protection. And
looking a bit further ahead, the implementation of the revised Trademark Regulation into the
BCIP will come with significant changes from the beginning of 2019. The main point to note
is the introduction of the possibility of starting revocation proceedings before the BOIP, since
parties currently only have the option of filing for revocation in court proceedings. Again, a
period of interesting and material change in Dutch trademark law, this time redefining the
lines of trademark law procedurally, and broadening the options further for the trademark
holder.

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Chapter 13

RUSSIA

Alexander Nesterov, Sergey Medvedev and Ilya Goryachev1

I OVERVIEW
The Russian Civil Code defines a trademark as a sign that serves to individualise goods and
services of legal entities and entrepreneurs. In other words, a trademark is a sign that is capable
of distinguishing goods and services of one legal entity or entrepreneur from another legal
entity or entrepreneur. Russian legislature provides that any designations – including but
not limited to verbal, pictorial, combined, three-dimensional signs and other designations or
their combinations – may be registered as trademarks. A trademark may be registered in any
colour or colour combination, or just black-and-white. Sound and animation marks can also
be registered. There is no relevant legislation nor sufficient practice regarding olfactory marks.
Registration of marks that are lacking in distinctiveness is not allowed. Despite the
fact that the Civil Code indicates the designations that should be recognised as lacking in
distinctiveness, in some situations the criteria of distinctiveness are arguable and remain at
the discretion of the trademark office. Moreover, the Civil Code provides for the possibility
of registration of marks based on their acquired distinctiveness through intensive pre-filing
use in Russia.
Colour marks (either colours per se or colour combinations), sound marks, texture
marks, olfactory marks, position marks, hologram marks, motion marks, taste marks, etc.
may be registered in Russia but their inherent registrability depends on distinctiveness:
either distinctive features of the mark itself or acquired distinctiveness through intensive use
in Russia.
It should be noted that Russia is a first-to-file country. Legal entities or entrepreneurs
who first apply for registration of a trademark enjoy a priority right to obtain trademark
registration. According to Russian legislation, rights for a trademark appear from the moment
of state registration and no rights derive from the use of an unregistered trademark. Therefore,
it is essential to file trademark applications without delay even if the trademark owner does
not yet intend to use its trademark on the Russian market.
The examination of trademark applications consists of a formal examination and
thereafter a substantive examination allowing an examiner to determine whether the filed
designation is inherently registrable and whether it is confusingly similar to any pending
third-party applications or registered marks.

1 Alexander Nesterov is a partner and trademark attorney, Sergey Medvedev is a senior lawyer and trademark
and design attorney, and Ilya Goryachev is a senior lawyer at Gorodissky & Partners.

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A national trademark application has to be filed with the Federal Service of Intellectual
Property (hereinafter the PTO), also known in Russia as Rospatent, which is an administrative
body responsible for the examination of applications and issuance of decisions once the
results of such examinations are known.
Under Russian legislation, foreign applicants should be represented by Russian
trademark attorneys registered at the Russian PTO. Therefore, in order for an application to
be filed in the name of an entity residing outside Russia, this entity has to appoint its Russian
agent as its representative before the Russian PTO in all proceedings.

II LEGAL FRAMEWORK
i Legislation
Russian domestic trademark legislation includes:
• the Constitution of the Russian Federation, which names protection of intellectual
property in the provisions on rights and freedoms;
• the Russian Civil Code, in particular Part IV, which is a codified set of legal norms for
prosecution, enforcement and transactions for trademarks;
• the Federal Law of 26 July 2006 No. 135-FZ ‘On competition protection’, which has
provisions on unfair competition issues involving trademarks;
• the Federal Law of 13 March 2006 N 38-FZ ‘On advertising’, dealing with certain
aspects of using trademarks in advertising;
• the Resolution of the Government of Russia of 23 September 2017 No. 1151, which
provides for the amount of state duties paid during trademark prosecution;
• the Resolution of the Government of Russia of 24 December 2015 No. 1416, which
provides general rules for recording trademark-related transactions. Detailed procedural
issues relating to such records are approved in the Order of the Russian Ministry of
Economic Development 10 June 2016 No. 371; and
• the Orders of the Russian Ministry of Economic Development of 20 July 2015
Nos. 482 and 483, which regulate the detail of all trademark prosecution procedures.

The most relevant international treaties of Russia for trademark matters are:
• the Madrid Agreement concerning the International Registration of Marks 1891–1967;
• the Protocol relating to the Madrid Agreement concerning the International Registration
of Marks of 1989;
• the Nice Agreement concerning the International Classification of Goods and Services
for the Purposes of the Registration of Marks (Nice Union) 1957–1977;
• the Paris Convention for the Protection of Industrial Property;
• the World Trade Organization Agreement on Trade-Related Aspects of Intellectual
Property Rights 1994 (the TRIPS Agreement);
• the Nairobi Treaty on the Protection of the Olympic Symbol 1981;
• the Trademark Law Treaty 1994; and
• the Singapore Treaty on the Law of Trademarks 2006.

ii Authorities
Trademark prosecution is dealt with by the PTO, which also renders decisions on trademark
invalidation actions. The PTO comes under the jurisdiction of the Russian Ministry of
Economic Development.

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Decisions by the PTO on trademark matters are reviewed by the Intellectual Rights
Court, which also hears cassation appeals on trademark infringement cases, rendered by
lower commercial courts. Decisions by the Intellectual Rights Court may be further appealed
to the Russian Supreme Court.
The Federal Antimonopoly Service fights unfair competition and unfair advertising
cases that might also involve trademarks. In particular, a decision by the Service on unfair
competition relating to trademark registration and use is a ground for the PTO to invalidate
a trademark.
The Russian police and the Russian customs authorities are competent in various types
of trademark infringements.

iii Substantive law


The law provides for registration of collective marks. A collective mark is defined as a mark
of a union, business association, concern or other voluntary association of enterprises being
capable of distinguishing goods manufactured or commercialised by it having common
characteristics as to quality or otherwise. When filing an application for registration of a
collective mark, it is imperative to submit a by-law of the collective mark containing the rules
concerning use of the mark. These rules must indicate:
• the name of the association entitled to register the mark in its name;
• the list of enterprises entitled to use the mark;
• the purpose of registration of the mark;
• a list of goods and a description of their common characteristics (relating to quality or
otherwise);
• the conditions for use of the mark;
• the principles by which use of the mark will be controlled; and
• the sanctions for violation of the rules.

The names of the enterprises entitled to use the mark and an extract from the rules relating to
the common characteristics of the goods for which the mark is registered will be mentioned
in the publication of the registration of the collective mark in the official bulletin. The owner
of the registration must inform the PTO of any amendment to the rules.
Any interested person may apply to the Intellectual Property Court for the (total or
partial) cancellation of registration of the collective mark if it is used in relation to goods
not having common qualitative or other common characteristics. Collective marks cannot be
assigned or licensed to third parties.
Collective marks and applications for registration of collective marks may be
transformed respectively into trademarks or trademark applications.

Well-known marks
A trademark can enjoy protection as a well-known mark that may not necessarily be
a registered designation. Russian legislation foresees the procedure of recognition of a
well-known trademark.
As well as the usual trademark filing procedures through the PTO or registration via the
Madrid System, legal protection for a well-known trademark can also be obtained through a
special recognition procedure. In Russia, unlike in many other countries, a trademark is not

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granted well-known status as a result of court proceedings or litigation. According to Russian


trademark legislation, for a trademark to be recognised as well known, the appropriate request
should be filed with the PTO.
A well-known trademark shall be granted the same legal protection as is provided for
an ordinary trademark. Nonetheless, a well-known trademark provides its owner with certain
important advantages:
• the legal protection of a well-known trademark is not time-limited;
• protection extends to goods or services of a different kind from those for which it is
recognised as well known, if use of the mark by another person is likely to be associated
by consumers with the owner of the well-known trademark and may impair its lawful
interests;
• protection of a well-known mark may start at the period that predates the filing date of
the respective request to recognise the trademark as well known; and
• the commercial value of a well-known trademark is higher than that of an ordinary
trademark.

The well-known status should be evidenced by numerous documents and materials confirming
intensive use of the mark and its reputation among consumers in association with the goods
or services for which the request is being made for it to be recognised as well known, and
in association with the trademark owner. In seeking to have its trademark recognised as well
known, the applicant should indicate the goods or services for which the mark has become
well known, and the date from which the trademark became well known.
The following information may be submitted with the petition for the recognition of
a well-known trademark:
• the results of a consumer survey regarding the goods in question, revealing consumer
knowledge of the trademark and performed by a specialist organisation;
• examples of intensive use of the trademark, especially in Russia;
• a list of countries where the trademark has acquired a well-known reputation;
• examples of advertising costs incurred relating to the trademark and examples of
advertising;
• details of the value of the trademark;
• publications in Russian periodicals; and
• documents containing information about supplies of goods to Russia, etc.

It is not compulsory to submit all the above-listed evidence. Trademark legislation does not
contain a list of obligatory documents that must be submitted with the petition for the
recognition of a trademark as well known.
Practice shows that it is recommended that evidence of use of the trademark in Russia
be submitted in support of the petition. Special attention should be paid to the results of
the consumer survey. Such polls must be carried out in at least six of Russia’s largest cities,
including Moscow and St Petersburg. Other cities may be chosen by the applicant, depending
on the sphere of activity and the regions of trademark use.
Determining the date from when the trademark became well known is also crucial,
and a careful review of all available materials is required. The date from which the trademark
became well known should be indicated precisely.
The Russian PTO has a strict approach to petitions for the recognition of marks as
well known, and they are often denied. The main difficulty encountered during proceedings

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is demonstrating that consumers have a strong association between the trademark and the
goods or services for which the trademark is used, and with the trademark owner. Often
consumers recognise the trademark, but have little knowledge about its owner. Formally a
trademark may belong to an IP-rights holding company, the name of which is not known
to consumers. Furthermore, if the date from which the applicant would like to have its
trademark recognised as well known refers to a period in the past, the supporting evidence
should predate the date mentioned in the request.
As of November 2017, 190 well-known trademarks are published in Russia, including
Nike, Coca-Cola, Disney, Tiffany, Intel, Adidas, Gillette, Nikon, Elle, Heinz and Casio.

Certification marks
It is possible to have a certification mark registered in Russia. However, the registration
procedure is quite different from that used in relation to trademarks.
In particular, a legal entity that created its own voluntary system of certification is
entitled to get both the system and the certification mark identifying it registered. The
registration can be implemented by filing an application with the Russian Federal Service
for State Standardisation. According to the current rules, the certification mark has to be
distinctive and visually perceivable. The rules make it very clear that trademarks cannot be
used as certification marks. The registered certification marks are entered into a special state
register, which is separate from the Register of Trademarks.
Certification marks have nothing to do with intellectual property (IP) objects. However,
a certification mark can be registered as a trademark if it meets registrability requirements and
is not in conflict with third-party rights.

Geographical indication
A trademark that has a geographical indication as a part of its designation can be registered
in Russia subject to the disclaimer of the geographical indication, provided that such
registration will not mislead consumers in respect of the geographical origin of the goods or
the whereabouts of the manufacturer.

III REGISTRATION OF MARKS


i Inherent registrability
Approximate time frames for trademark registration procedure in Russia are as follows:
• the official filing receipt is issued within one month of the date of filing an application
or sooner;
• the official action is issued within 10 to 12 months of the date of filing the application
(an examiner’s objections, if any, may increase the term to between two and three years,
depending on the circumstances of the case, number of appeal stages, etc.); and
• where the trademark is successfully registered, the registration certificate is issued
within two months of the date of payment of the official fee for registration.

There are no specific additional documents that should be filed with the trademark application
except power of attorney. Filing power of attorney is optional but if it is absent from the
application materials, the examiner may request submission of this document and that
may have a negative impact on the registration terms. It should be issued by the applicant
and signed by the authorised person with an indication of that person’s name and position

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in the company. The date and place of the signature should be indicated as well. Neither
notarisation nor legalisation is required. The power of attorney can be submitted after filing
the application.
In cases of a priority claim under the Paris Convention, it is necessary to submit a certified
copy of the first (home) application. The filing particulars should correspond to those in the
home application. The home application can be submitted after filing an application under
the Convention, but within three months of the date of filing the Convention application
with the PTO. This term cannot be extended. Split priority is not foreseen in Russia.
Formal examination (in one class) is 2,450 roubles (about US$45) and 700 roubles
(about US$12) for each additional class over five. Substantive examination (in one class) is
8,050 roubles (about US$140) and 1,750 roubles (about US$30) for each additional class
after the first. In the case of non-electronic filing, the official fees increase by 30 per cent. The
official fee for registration is 11,200 roubles (about US$195) and 700 roubles (about US$12)
for each additional class over five, and the official fee for issuance of the certificate is 1,400
roubles (about US$25).
Examination in Russia consists of a formal and a substantive stage. A formal
examination of a trademark application is conducted within one month of the application
being filed. During the formal expert examination, the necessary application documents
and their compliance with established requirements are verified. The outcome of the formal
examination will be that either the application is accepted for consideration or a decision is
taken to refuse acceptance for consideration.
The aim of the substantive examination stage is to determine whether the filed
designation conforms to the registrability requirements. A trademark application may be
rejected on either absolute or relative grounds, or both.
Absolute grounds are those that relate to the substance of the mark itself and include:
lack of distinctiveness; risk of misleading and capability of confusing; similarity to or identity
with state symbols and marks; reproduction of full or abbreviated names of international or
intergovernmental organisations or their symbols; and reproduction of the official names or
images of the most valuable objects of Russia’s and worldwide cultural heritage.
Relative grounds for refusal include:
• identity or similarity to the extent of confusion with prior trademarks (both registrations
and applications) owned by third parties in relation to similar goods or services;
• identity with or similarity to the extent of confusion with well-known marks; and
• identity with or similarity to the extent of confusion with third parties’ industrial
designs, appellations of origin, company names or commercial designations.

A trademark may also be refused protection if it incorporates protected means of


individualisation of other persons (and confusingly similar signs) as well as copyrighted objects
owned by third parties, names, pseudonyms (or derivatives thereof ), pictures, facsimiles of
famous persons, or industrial designs owned by third parties as elements of the trademark.
Before making a decision about the results of the examination of an application,
notification of the results of the checks for compliance of the applied designation with the
requirements is sent to the applicant. The applicant may then submit arguments in response.
Those arguments shall be taken into account when a decision is made on the results of the
examination, provided they are submitted within six months of the notification being issued.

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The substantive examination is followed by the examiner’s decision, which may be in


the form of a registration decision in full, a registration decision for a part of the applied
goods or services (and, consequently, refusal for the rest of the goods) or a refusal decision
affecting all the goods or services.
Provided the applicant agrees with the decision, the registration fee should be paid
within the prescribed period of time.

ii Prior rights
Russia is a first-to-file jurisdiction. Legal entities or entrepreneurs who first apply for
registration of a trademark have a priority right to obtain trademark registration. Russian
trademark legislation does not recognise prior use rights (as a general rule, the exclusive right
to use a trademark in Russia arises as a result of state registration).

iii Inter partes proceedings


There is no opposition system with respect to pending applications; however, recent
amendments to the Civil Code provide that:
• the Russian PTO should publish information on filed trademark applications;
• third persons have the right to review all trademark documents on file and not only
those comprising the filing of original trademark applications; and
• third persons have the right to submit to the Russian PTO their observations against
pending trademark applications before official action is taken. Such written observations
may be taken into account by the examiner during the examination. Observation
letters may be used as the effective tool to make sure that prior rights are taken into
consideration by the examiners.

Russian legislation foresees another instrument for raising objections based on prior rights
against a trademark. Within five years of information on a registration being published
in the official bulletin of the Russian PTO (after a trademark is registered), the owners of
the prior trademark rights have an opportunity to file an invalidation action against the
trademark registration with the Chamber of Patent Disputes of the Russian PTO. In the
event of an invalidation action, the trademark owner is notified and both parties are invited
to a hearing for the matter to be discussed. The Russian PTO then makes a decision to reject
the invalidation action and leave the trademark in force, to invalidate the mark in full, or to
partially invalidate the mark.
An invalidation action or a cancellation action against a trademark registration on other
grounds already provided for by legislation may be filed during the entire term of validity of
the trademark.

iv Appeals
If a decision is not acceptable, the applicant may appeal to the Chamber of Patent Disputes
of the Russian PTO within four months of the date the decision is issued. The decision that
results from consideration of the appeal by the Chamber of Patent Disputes may be further
appealed to the Intellectual Rights Court.

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IV CIVIL LITIGATION
i Forums
Trademark infringement disputes are heard by commercial courts of first instance located
in constituent parts of Russia. Their decisions may be appealed to the appellate commercial
courts. Further appeals (on current cases) go through the Intellectual Rights Court and
the Russian Supreme Court. Finally, a supervision appeal may be filed with the Russian
Supreme Court.
In the case of a defendant not being a business entity or an individual entrepreneur, a
court of general jurisdiction may also establish competence.
Trademark non-use disputes come under the exclusive jurisdiction of the Intellectual
Rights Court, which hears such disputes on the merits in the first instance, and the Presidium
of the Court hears cassation appeals on current cases. A supervision appeal may be filed with
the Russian Supreme Court.

ii Pre-action conduct
Pre-action cease and desist letters are not required. The exception is for claims of damages or
compensation for IP infringement, where there may be a cause for action if there is a total or
partial refusal of payment, or in the case of no response within 30 days.
Cease and desist or demand letters are now mandatory to a certain extent. In other
words, it is not possible to sue an infringer in court by claiming damages or monetary
compensation, if the demand letter is not dispatched in advance of the civil action. In
accordance with the relevant law, the infringer has 30 days to respond to the cease and desist
letter. Failure to respond, or receipt of a negative reply, provides the trademark owner (or its
registered or exclusive licensee) with a legal standing to claim monetary relief. The easiest
and most effective out-of-court enforcement option is to send a demand letter to the alleged
infringer requesting a voluntary cessation of the trademark infringement.

iii Causes of action


The following causes of action are applied in terms of trademark enforcement:
• trademark infringement – use of the designation, similar to the trademark, to
individualise goods or services for which the trademark is registered, or for homogeneous
goods or services, if as result of such use likelihood of confusion arises; and
• trademark infringement that may be a matter of unfair competition, which is
prohibited in Russia. Unfair acquisition and use of trademark rights are not permitted.
Passing-off and imitation of trade dress are also treated as unfair behaviour, which may
be prosecuted. The Federal Antimonopoly Service (FAS) is empowered to consider
disputes related to unfair competition through a special quasi-judicial procedure. This
starts on the basis of a complaint to be filed by the injured party (e.g., a trademark
owner or local distributor). Should the action on unfair competition be successful, the
respondent (infringer) would be forced to cease the established illegal activities and
pay the administrative fine in favour of the state budget (which may be up to 0.15 per
cent of the corresponding infringer’s profits). This procedure usually lasts about six to
10 months, although it can take longer if the binding order from the FAS is appealed
in court.

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Company names are protected against unauthorised use for the same activity by the company
whose company name was included in the state company register later than the name of
the plaintiff.
As regards commercial designations, it is not permitted to use a designation that may
create confusion regarding ownership of the enterprise by a specific person, in particular a
designation that is confusingly similar to the company name, trademark or a commercial
designation owned by another person.
Domain names are not treated as an IP subject matter. However, good-faith senior
users of domain names may argue bad faith if a lawsuit is filed by persons who register their
designation as the trademark (in certain cases, a trademark invalidation action may be also
appropriate).

iv Conduct of proceedings
Proceedings are initiated when all procedural requirements are met (i.e., payment of state
duty, notification of the defendant, etc.). A representative needs to have a duly executed
power of attorney.
The court schedules a preliminary hearing during which it considers whether the case
is ready for a main hearing on the merits. The defendant is obliged to provide a response
(objections) to the lawsuit.
Each party is obliged to prove the asserted facts: the plaintiff must prove that the
defendant uses the trademark; and the defendant must prove whether there are legitimate
grounds for use, or the defendant is in breach.
Various types of evidence may be used during the proceedings – documents (e.g., bills
of lading and other sale confirmation documents), physical evidence (such as samples of
counterfeit products), expert opinions, social poll results, private detective reports, witness
statements, audio and video tapes. All evidence must meet the requirement of relevance to
the case and admissibility.
At the appeal stage, new evidence is submitted only as a means of explanation of why
the evidence was not submitted in the first instance.
Typically, proceedings in the first instance court last for three to six months, unless
there are notification issues. The decision enters into force upon expiration.
The winning party has the right to recover court expenses (including legal fees), the
amount of which is determined by the court, based on the submitted documents.

v Remedies
The remedies available for trademark infringement include:
• permanent injunction;
• damages or monetary compensation (in one of three determinations: (1)  between
10,000 and 5 million roubles; (2) twice the cost of the counterfeit products; or (3) twice
the cost of the licence);
• seizure and destruction of the counterfeit products; and
• publication of the court order.

The plaintiff may also claim a preliminary (temporary) injunction, such as the arrest of the
allegedly counterfeit goods pending adjudication.

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V OTHER ENFORCEMENT PROCEEDINGS


i Administrative proceedings
Unlawful use of a trademark shall incur an administrative fine, which has to be paid in favour
of the state budget, and confiscation of the counterfeit goods for the purpose of destruction.
Administrative proceedings usually begin with a complaint, which the trademark
owner has to file with the police or customs authority, so that the latter can take action. 
Administrative action may take about three to five months to complete, unless the decision
of the first instance court is appealed by the infringer. Practically, an administrative procedure
proves to be the most efficient enforcement option to cease trademark infringement at the
border in the context of importation of counterfeit goods into Russia. This measure is also
applicable when small shops offer for sale and sell counterfeit products on the domestic
market.

ii Criminal proceedings
Illegal use of a trademark may also lead to criminal, but only in the event of substantial
damages being caused to the trademark owner, or if the trademark infringement is repeated.
The typical statutory criminal sanctions are (1) a criminal fine; (2) forced labour; (3)
correctional work; or (4) imprisonment. In the course of criminal procedures, the trademark
owner is also entitled to file a civil lawsuit to recover damages. The total duration of criminal
proceedings is usually hard to predict, although the approximate timing is one to two years,
unless the decision of the first instance court is appealed by the infringer. In practice, criminal
procedures are applied against large-scale or gross infringers who are manufacturing and
distributing counterfeit goods in large quantities all over the country.

VI RECENT AND PENDING CASES


The Russian legal system does not include precedents as sources of law. However, courts take
into account legal positions in the decisions of the High Court (the Russian Supreme Court
and the previously effective Supreme Commercial Court).
In the Resolution of the Russian Supreme Court of 20 January 2016 on Case
No.  310-ЭС15-12683, А08-8801/2013, the High Court developed criteria under which
the trademark infringement lawsuit may be dismissed due to bad faith. In the Resolution of
21.03.2016 N 307-ЭС16-1414 on Case No. А56-61922/2014, the Russian Supreme Court
stressed the liability of the host-provider when not complying with the legitimate trademark
owner’s request to shut down the infringing website.
In terms of practice, attention should be paid to decisions by the Intellectual Rights
Court, which acts as the cassation court for current cases.
The Intellectual Rights Court has considered many notable cases in recent years,
including a trademark invalidation dispute filed by the heir of the first man in space, Yuri
Gagarin, against alleged use of the surname in a trademark (Case SIP-238/2016), and an
unfair competition case involving trademark registration of a popular soft drink (Case
SIP-744/2014).
One example of a significant award for trademark infringement is a case involving
the grey import of supplies of medical devices (Resolution of the Commercial Court of
Saint-Petersburg and Leningrad Region of 6 June 2016, Case No. 56-709/2016), where the
trademark owner was awarded 45 million roubles.

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VII OUTLOOK
The most recent development is the introduction of mandatory pretrial proceedings in
non-use cases – the plaintiff must forward an offer to the trademark owner requesting
assignment of the trademark or its abandonment.
Discussions are taking place with the aim of reconsidering the parallel import
prohibition within the Eurasian Economic Union. Currently, the regional principle of
trademark exhaustion is applied.
Trademark infringements on the internet have also been in the limelight during the
past few years. Amendments on information intermediary liability now enable host-providers
effectively to shut down infringing websites at the trademark owners’ request.

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Chapter 14

SPAIN

Marta Rodríguez and Patricia García1

I OVERVIEW
In 2017 there were no significant developments in relation to trademark law in Spain. This is
in contrast to events within the European Union system, where Regulation (EU) 2015/2424
on the European Union trademark, which came into force last year, has undergone very
substantial amendments.
In 2015 a EU trademark reform legislative package, comprising both the amendment
of the Regulation on the European Union trademark and a new directive for harmonisation
of the trademark laws of the Member States, was published. This is going to entail important
changes in Spanish trademark practice in the medium term (the time limit for transposition
into national law is 14 January 2019, except in the case of one article for which transposition
may be deferred until 14 January 2023).

II LEGAL FRAMEWORK
i Legislation
The most important legislation concerning trademarks in Spain is set out below:
• The Spanish Trademark Act (Law 17/2001 of 7 December 2001);
• Royal Decree No. 687/2002 of 12 July 2002, approving the Implementing Regulations
to the Trademark Act, Law 17/2001 of 7 December 2001;
• Article 274 of the Criminal Code of 23 November 1995, as amended under the Revised
Criminal Code (Organic Act No. 1/2015);
• Law No. 19/2006 of 5 June 2006, expanding the measures for enforcement of
intellectual and industrial property rights and establishing the rules of procedure to
enable application of several European Community (EC) regulations;
• Royal Decree No. 1431/2008 of 29 August 2008 amending certain regulatory provisions
relating to industrial property;
• Ministerial Order ITC/1542/2005 of 19 May 2005, approving the national internet
domain name plan for the country code of Spain (.es); and
• Instruction from the Director General of Red.es of 2 January 2010, establishing the
procedures applicable to assignment and other operations associated with the .es
domain name registry.2

1 Marta Rodriguez is a junior associate and Patricia García is a lawyer at Elzaburu.


2 See: https://www.europeregistry.com/ccTLDPolicies/ES/Domain%20Guidelines.pdf.

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ii Authorities
The Spanish Patent and Trademark Office (SPTO) is an autonomous body that forms
part of the Ministry of Industry, Energy and Tourism and provides legal protection to all
types of industrial property by awarding patents and utility models (inventions), industrial
designs, trademarks and trade names (distinctive signs), and rights protecting topographies
of semiconductor products. It also disseminates information on the various ways in which
industrial property can be protected.
The Central Mercantile Register is an official institution that provides access to
information about a company supplied by the regional mercantile registers and issues a
favourable certificate that indicates the name under which the company will be identified as
an individual subject of the law and obligee in all its legal relationships.
Dominios.es is responsible for managing the internet domain names registry for the
country code .es. The registry management tasks include processing applications and assigning
new domains. It is a part of the public business entity Red.es, which has been authorised to
register internet domain names under the first level country code for Spain (.es). This is being
carried out in accordance with guidelines set out by the Ministry of Industry, Energy and
Tourism and in compliance with ICANN (Internet Corporation for Assigned Names and
Numbers), as well as international market guidelines.

iii Substantive law


Registered trademarks and trade names
Once a trademark application is filed, the SPTO examines whether it meets the minimum
requirements for admission and publication for opposition purposes. However, if any formal
inadequacies are found, the applicant will be required to correct them.
If the application is found to be admissible, it is published in the official gazette. A
term then opens for the filing of third-party oppositions, given that earlier trademarks that
might pose an obstacle are not cited ex officio by the SPTO. Only on certain occasions will
the SPTO send notification of the existence of the new application to the holders of earlier
rights for information purposes.
If objections are raised on absolute grounds or oppositions are lodged, the SPTO issues
an official action against the application and invites submissions by the applicant in response
within a term of one month, following which the SPTO undertakes its own examination
regarding absolute grounds for refusal.
Once the examination is completed, if there are no objections or oppositions and the
trademark is granted, the corresponding certificate of registration is issued.
With regard to collective or certification marks, Spanish law permits a group of
individuals to designate goods as either emanating from them (collective mark) or being
approved by them (certification mark).
Collective marks are subject to rules of use that must undergo review by the SPTO.
The application for registration of collective marks needs to provide the regulations governing
use. In addition, any future modification of the said Regulation shall again be subjected to
the SPTO.
Certification marks certify that the goods and services to which the mark is applied
fulfil certain shared requirements, particularly with respect to quality, materials, geographical
origin, technical conditions, method of manufacturing, etc. The mark may not be used by the
owner but by third parties authorised by the owner, having checked that the goods or services

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of the third party fulfil the requirements certified by the mark. Certification marks may not
be registered by those who manufacture or market goods or services identical or similar to
those for which the mark has been filed.

Well-known marks
A well-known mark is understood to be a mark that as a result of (1) the volumes of sales;
(2) the duration, extent or geographic scope of use; (3) the value or prestige attained in the
marketplace; or (4) for any other reason, is broadly known to the pertinent sector of the
public for the goods or services in question.
If the well-known mark is not registered in Spain, the owner may file an opposition
against later filings that he or she deems to be confusingly similar and may even take legal
action against possible infringers. If the well-known mark is registered, the owner shall be
entitled to all the rights that the law confers on the owner of a trademark but he or she may
also prevent the registration of trademarks claiming protection for goods or services that are
not similar to those for which the earlier trademark is registered, and the greater the degree
of knowledge of the earlier trademark in the pertinent sector of the public community or in
other related sectors, the more dissimilar in nature the protected or claimed goods or services
may be.

Unregistered marks
Trademark rights are obtained through registration. However, the law confers a certain degree
of protection on the owner of an application to register a trademark and on the owner of an
unregistered trademark that is well-known in Spain, within the meaning of Article 6 bis of
the Paris Convention, as set out below.
a Trademark applications entitle applicants to oppose subsequent filings for trademarks
identical or similar to theirs for identical or related goods or services. On the other
hand, the right to take legal action against infringement is conferred only upon
publication of the notice of grant. However, after publication of the notice of filing
of the application, a right holder may lay claim to provisional protection in the form
of the right subsequently to claim damages for the period between publication of the
application and publication of grant.
b The owner of a non-registered well-known trademark is also entitled to oppose filings
for trademarks identical or similar to theirs for identical or related goods or services.

Company and business names


The founding of a company or an institution eligible for entry in the mercantile register
requires a prior acquisition from the Central Mercantile Register of a favourable certificate
that indicates the name under which the company will be identified as an individual subject
of the law and obligee in all its legal relationships.
The first paragraph of Section 413 of the Mercantile Register Regulations currently in
effect establishes that: ‘No deed of association may be authorised for any company or other
institution eligible for entry, or may its name be modified, unless the Notary is provided with
a certificate which establishes that the name selected does not already appear as registered.’
The name must coincide exactly with the one appearing in the negative certificate issued by
the Central Mercantile Register.

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The Register has a section on company names comprised of the following sections:
a names of companies and other registered institutions;
b names that are temporarily reserved;
c names of other organisations whose incorporation has been recorded in other public
registers, although they may not be eligible for entry in the mercantile register, when so
requested by their legitimate representatives; and
d guarantees of origin.3

Geographical indications
Regulation of geographical indications (GIs) is very scattered and complex. The basic
regulation applicable in Spain is contained in EU regulations for specific kinds of goods,
which are likewise applicable to all EU Member States.

Spirits
Regulation (EC) No. 110/2008 of the European Parliament and of the Council of
15 January 2008 on the definition, description, presentation, labelling and the protection
of geographical indications of spirit drinks and repealing Council Regulation (EEC)
No. 1576/89. This is the main regulation for spirit drinks. Its implementing regulation is
Commission Implementing Regulation (EU) No. 716/2013.

Agricultural products and foodstuffs


Regulation (EU) No. 1151/2012 of the European Parliament and of the Council of
21 November 2012 on quality schemes for agricultural products and foodstuffs and
Commission Implementing Regulation (EU) No. 668/2014.

Wines
Regulation (EU) No. 1308/2013 of the European Parliament and of the Council of
17 December 2013 establishing a common organisation of the markets in agricultural
products and repealing Council Regulations (EEC) No. 922/72, (EEC) No. 234/79,
(EC)  No.  1037/2001, and (EC) No. 1234/2007 and its implementing regulation
(Commission Regulation (EC) No. 607/2009).

Aromatised wines
Regulation (EU) No. 251/2014 of the European Parliament and of the Council of
26 February 2014 on the definition, description, presentation, labelling and the protection
of geographical indications of aromatised wine products and repealing Council Regulation
(EEC) No. 1601/91.

In addition to the above-mentioned, the most important provisions of law, at national level,
are to be found under the Protected Designations of Origin and Geographical Indications
Act; Act No. 6/2015 of 12 May 2015, which is national (supra-regional) in scope; and Royal
Decree No. 1335/2011, of 3 October 2011, which regulates the procedure for prosecution
of applications to register protected designations of origin and protected GIs in the EC
register and opposition thereto. These provisions basically regulate certain specific aspects

3 See: www.rmc.es/DenominacionesSociales.aspx?lang=en.

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of protection in Spain of protected GIs and designations of origin and aspects of the
national stage of the application and opposition procedures at the national level or before
the European Commission, depending on the case. The autonomous communities of Spain
have jurisdiction in this area and there is therefore an abundance of legislation at autonomous
community (regional) level that regulates aspects of the national stage of the registration
procedure in those cases where the autonomous communities have jurisdiction.
Finally, trademark regulations, mainly the Spanish Trade Mark Act No. 17/2001 and
Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017
on the European Union Trademark (text with EEA relevance) – which entered into force on
1 October 2017 – regulate certain aspects of the protection of GIs and designations of origin
against trademarks.
Article 275 of the Spanish Criminal Code provides for criminal protection with respect
to crimes against GIs and designations of origin.
Law No. 3/1991 on Unfair Competition also contains certain provisions applicable in
cases involving GIs and designations of origin.
There are also international agreements with certain countries to regulate reciprocal
protection of GIs.

Domain names
According to the relevant legislation, .es domains may only be allocated to natural persons or
entities with or without legal personality with interests in, or links to, Spain, be it as a result
of the place of establishment, ownership of the trademarks or the offering of goods or services
to the Spanish market.
An application can be filed directly with the Spanish register Red.es or through another
registrar. The allocation system works on a first-come, first-served basis. The procedures and
checks for the allocation may vary according to the different categories of domain name in
Spain: .es; .gob.es; .edu.es; .org.es; .com.es; .nom.es; and .org.es.
The allocation of a domain name only confers the right of use on its holder. Although
it has often been held that a domain name is a type of distinctive sign, this has not been
recognised by law or case law. In fact, the possibility of bringing an action claiming ownership
of a domain name within the context of legal proceedings based on trademark law is not even
provided, since the Spanish Trademark Act reserves that possibility for distinctive signs.

III REGISTRATION OF MARKS


i Inherent registrability
The Spanish Trademark Act stipulates that the following signs may constitute a trademark:
a words or combinations of words, including personal names;
b images, shapes, symbols and designs;
c letters, numerals and combinations thereof;
d three-dimensional shapes, including wrappers, packaging, product shapes and trade
dress;
e soundmarks; or
f any combination of the signs set out by way of example in points a to e.

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To file a trademark application in Spain, it is necessary to submit the following documentation:


a a trademark application form;
b the applicant’s particulars;
c in the case of a word mark, the sign making up the trademark;
d in the case of a figurative or composite mark, the design comprising the trademark;
e a list of the goods or services claimed by the trademark application;
f priority claim (if applicable); and
g colour needs to be specifically claimed.

Filings may subsequently be completed or supplemented, but the filing date will be the date
on which the above-mentioned items at least have been placed on file.
The official fee for registering a trademark in one class is €124.12. The fee is payable
upon filing and no further fee is payable upon registration. The official fee for registering a
trademark in second and subsequent classes is €80.41 per class. These amounts are solely the
official fees; the professional fees charged by the representative handling the application are
a separate matter.
Pursuant to the Spanish Trademark Act, the maximum permitted period of time for
the SPTO to issue its decision on a trademark application, provided the application has not
been opposed and no official action has been issued against the application, is two months.
Otherwise, the maximum time period is 20 months.
However, in practice, the SPTO ordinarily issues its decisions in a shorter time than
that allowed:
• if there are no objections or oppositions: four to six months; or
• if objections or oppositions do arise: eight to 12 months.

ii Prior rights
A trademark application may be refused registration if third parties lodge an opposition
citing an earlier trademark or trade name identical or similar to the trademark applied for,
and covering identical or similar goods or services, provided there is a likelihood of confusion.
‘Earlier trademarks’ are Spanish or European Union filings or registrations or
international marks having effect in Spain prior to the contested mark, as well as unregistered
trademarks which, on the date of filing or the priority date of the application under
examination, were well-known in Spain within the meaning of Article  6  bis of the Paris
Convention, as explained in Section II.iii (Unregistered marks).
There is also special protection for well-known marks, given that the following shall not
be registered as trademarks: those signs that are identical or similar to an earlier well-known
trademark or trade name, even when the goods or services are not identical or similar, where
by reason of the well-known or reputed nature of the earlier sign in Spain, the use of the
sign applied for without due cause may take unfair advantage of, or be detrimental to, the
distinctive character or well-known nature or repute of the earlier trademark or trade name.
Moreover, the personal name or likeness of a person other than the applicant, the name,
surname, pseudonym, or any other sign that, to the general public, identifies a person other
than the applicant, and signs that reproduce, imitate or adapt works protected by copyright
or another industrial property right (e.g., an industrial design) shall not be registrable, unless
proper consent has been obtained. This aspect is examined ex officio by the SPTO.
The Spanish Trademark Act also confers protection on trade names. These have a
registration procedure very similar to that of trademarks. Consequently, a trade name, a

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name or corporate name of a legal person, which before the filing or the priority date of the
trademark application, identified in trade a person other than the applicant, may also serve
as the basis for opposition and block the registration of a trademark if there is a likelihood of
confusion on the part of the public because it is identical or similar thereto and the scope of
coverage is also similar.
The opponent shall submit an official form, a brief setting out the grounds and a power
of attorney. Then, if the SPTO finds that the opposition is admissible, it issues an official
action on the trademark application. The applicant then has an opportunity to respond to
the opposition. After that, the SPTO issues its decision to grant or refuse the application.

iii Inter partes proceedings


Oppositions
As already explained, once the SPTO has determined that the trademark application meets
the minimum formal requirements for admission, the application is published in the official
gazette, opening a third-party opposition period of two months after the publication date
of the application. Registration of a trademark application may be opposed by third parties
based on the absolute or relative grounds set out in the Spanish Trademark Act.
There is an exception, where absolute prohibitions are cited, given that the opponent
must demonstrate a legitimate interest. However, such justification is not necessary where
relative prohibitions are cited against an application, given that in that case it is only necessary
to prove that the opponent is the owner of the registration cited as the basis for the opposition.
Moreover, public administrative bodies, associations and organisations whose purpose,
according to their by-laws, is consumer protection and whose territorial scope is national
or extends to an autonomous community, may submit to the SPTO written observations
explaining why a trademark should be refused registration ex officio pursuant to the absolute
prohibitions.

Invalidity actions
Invalidity actions must be filed with the mercantile courts, which are civil courts specialised
in intellectual property (IP) rights.
The invalidity of a trademark can be claimed on absolute and relative grounds. Another
ground for invalidity is if the applicant was acting in bad faith when filing the application
for the trademark.
The legal action follows ordinary procedure, which is essentially in three stages: (1) the
written stage (complaint and statement of defence, with the possibility of a counterclaim
and a reply thereto); (2) the preliminary hearing (a court hearing at which procedural issues
are discussed, the facts at issue are established and evidence is proposed); and (3) the trial, at
which the parties, witnesses and experts testify, where this had been proposed as evidence,
and closing statements are given.
However, the new EU Directive 2015/2436 of 16 December 2015, to approximate
the laws of the Member States relating to trademarks, states that an administrative invalidity
procedure must be established by the legislation of the EU Member States. Changes
concerning this type of action are therefore expected soon.

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Revocation actions
Besides revocation on the grounds of failure to use the trademark or its surrender, the Spanish
Trademark Act provides for three other grounds, namely revocation owing to a lack of genuine
use, revocation owing to ‘vulgarisation’, and revocation where, as a consequence of the use
made of the trademark by the owner or with his consent, it is liable to mislead the public.
In these three cases, as is the case with invalidity actions, revocation shall be declared by
the mercantile courts. The legal action follows what is known as ordinary procedure, which
is essentially in three stages: (1) the written stage (complaint and statement of defence, with
the possibility of a counterclaim and a reply thereto); (2) the preliminary hearing (a court
hearing at which procedural issues are discussed, the facts at issue are established and evidence
is proposed); and (3) the trial, at which the parties, witnesses and experts testify, where this
had been proposed as evidence, and closing statements are given.
However, the new EU Directive 2015/2436 of 16 December 2015, to approximate the
laws of the Member States relating to trademarks, states that an administrative revocation
procedure must be established by the legislation of the EU Member States. Changes
concerning this type of action are therefore expected soon.

iv Appeals
All SPTO decisions are appealable to the appeals section of the SPTO itself by means of an
administrative appeal. The term for appealing an opposition decision at first instance is one
month and the SPTO’s team of examining attorneys rules on the appeals.
The SPTO’s decision in an administrative appeal may, in turn, be challenged before the
contentious-administrative appeal court. A judgment issued by a contentious-administrative
appeal court is subject to appeal before the Contentious-Administrative Action chamber of
the Spanish Supreme Court, whose judgment is final and unappealable.

IV CIVIL LITIGATION
i Forums
A civil action for trademark infringement is handled by the mercantile courts, which have
been operating in Spain since 2004 and specialise in certain areas, including IP.
If the infringement action seeks to protect the exclusive rights conferred by a European
Union Trademark registration, jurisdiction over the case is held by the European Union
Trademark courts in Alicante.
However, by virtue of a recent decision by the General Council of the Spanish Judiciary
and the entry into force of the new Spanish Patent Act (which is applicable to distinctive signs
in procedural matters) jurisdiction to hear actions relating to national trademark registrations
is held exclusively by certain mercantile courts in Madrid, Barcelona and Valencia. There is
therefore a trend towards the hyper-specialisation of judges in IP-related matters.

ii Pre-action conduct
Civil trademark infringement proceedings follow ordinary procedure. This consists of three
stages: (1) an initial written stage, during which the complaint and statement of defence are
filed; (2) a second oral stage, consisting of a preliminary hearing, at which any procedural
issues that may prevent the proceedings from continuing are examined, the subject matter of

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the proceedings is determined and evidence is proposed and either allowed or disallowed; and
(3) the trial, during which the evidence is examined (which could include testimony by the
parties, the witnesses and the experts) and closing statements are delivered.
The law also provides for alternatives to court proceedings. In that regard, an attempt
has been made to promote out-of-court dispute resolution, for instance, by granting
enforceability to mediation agreements – executed in a public deed – and to arbitration
awards.

iii Causes of action


Under the Spanish Trademark Act, trademark holders may prohibit third parties not having
their consent from using in the course of trade any signs that are identical or similar to
the extent that they may be confused with, or prove capable of taking advantage of, the
well-known character of an earlier mark. Among other conducts, use of the sign in commercial
and advertising documents, on telematic communication networks and as a domain name,
or use of the sign on products and in the importing or exporting thereof may be prohibited.
As regards disputes arising from the use of signs as company names – the prohibition
of which is not expressly laid down in the Spanish Trademark Act, but is indicated in
Regulation (EU) No. 2017/1001 on the European Union Trademark (which came into force
on 1 October 2017, replacing Regulation (EC) No. 207/2009), as well as in the new EU
Directive 2015/2436 concerning trademarks, which has yet to be transposed into Spanish
domestic law – Spanish courts have ruled that such use may be prohibited if the company
name containing the sign is used in trade.
Additionally, unfair competition actions may be joined to trademark infringement
actions. Nevertheless, because of the overlap between both laws in some respects, case law
has established the principle of relative complementarity, which essentially consists of two
principal aspects: on the one hand, the fact that a conduct that clearly falls within the scope
of trademark law cannot be judicially examined from an unfair competition perspective; and
on the other hand, both laws may be applied in a complementary manner provided that they
are based on different facts, each of which may be included separately under one of the laws.
Basically, the Spanish courts have tried to prevent parties from having recourse to the Unfair
Competition Act in an effort to obtain new exclusive rights that are not expressly provided
for in trademark legislation.

iv Conduct of proceedings
In civil proceedings, the burden of proving the facts on which the infringement action is
based lies with the plaintiff. This rule is only reversed in revocation proceedings for non-use,
where it is the defendant who must prove that the trademark has been put to genuine use.
The parties may avail themselves of any kind of evidence to demonstrate perpetration
of the infringement or otherwise. In fact, expert opinions and other documents issued by
experts to attest to certain facts or to assess the amount of compensation for damages, are
often submitted.
The plaintiff and the defendant, who must be assisted by a lawyer and represented by a
procurator (or court agent) must put forward all the factual and legal grounds for their action
in the initial complaint or statement of defence. All documentary evidence must be filed with
those submissions.
What is, to a certain extent, equivalent to ‘disclosure’ in the common law system is the
defendant’s obligation to submit whatever documents it has in its possession that the plaintiff

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needs to support the action. This requirement may come prior to the filing of the complaint,
if the plaintiff applies for preliminary proceedings – some of which are expressly provided in
IP proceedings – or during the proceedings, at the evidential stage.
The duration of the proceedings depends on numerous factors, such as the specific
court to which the case has been allocated and its workload, the complexity of the case
and the position taken by the defendant. On average, first instance proceedings last roughly
between nine and 16 months.
As a rule of thumb, under Spanish law the party that loses the lawsuit pays costs to the
winning party, but only where all claims by the losing party have been dismissed. In such
cases, the winning party will recover part of the money that it has invested in legal counsel
and representation by a court procurator. However, it is the judge who fixes the amount of
the costs based on criteria provided by the professional associations for the services provided.

v Remedies
The remedies available against infringing conducts have been harmonised on a European level
by means of EU Directive 2004/48/EC on the enforcement of intellectual property rights.
Civil actions for trademark infringement enable the plaintiff to request the necessary
remedies in order to put an end to the infringing conduct. The law expressly provides, inter
alia, for cessation of use of the infringing sign, the removal of the infringing products from
trade, compensation for damages and publication of the judgment.
The compensation repairs material and moral damages. With respect to material
damages, the amount of the compensation comprises the loss suffered as well as ceasing gain.
In calculating the latter, the plaintiff may opt for one of the following criteria: (1) the profit
that the plaintiff ceased to obtain; (2) the profit obtained by the defendant; or (3) the price
of a hypothetical licence that the defendant should have requested from the plaintiff to carry
out the conduct in a lawful manner. In any event, the plaintiff must prove that damage has
indeed been sustained and assess the value of the damages. There are no punitive damages.
The Trademark Act establishes minimum objective damages, requiring no evidence, for
cases in which trademark infringement is held to have occurred. Those damages are equivalent
to 1 per cent of the business turnover made by the defendant under the infringing sign.

V OTHER ENFORCEMENT PROCEEDINGS


In Spain, actions for the protection of registered trademarks may be brought via civil or
criminal proceedings, given that the various exclusive rights infringement scenarios have been
defined in both jurisdictions.
Criminal proceedings in Spain differ entirely from civil proceedings. The former consist
of the pretrial investigation stage and the trial stage, which take place before two different
courts. Therefore, their duration cannot be estimated since it varies considerably. As regards
the remedies available in a case of trademark infringement, those described above in relation
to civil proceedings would also apply. Additionally, the Criminal Code punishes trademark
infringement offences with penalties of one to four years’ imprisonment and a fine (calculated
on the basis of a daily sum over a period of 12 to 24 months).
Specifically, the main differences between both jurisdictions are determined by certain
conditions that the case must fulfil in order to be examined in criminal proceedings. For
instance, there must be intent, the conduct must be for financial gain and the circumstances

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of the case must be of a criminal nature. In practice, criminal action in relation to trademark
law is only brought against acts of trademark counterfeiting. In view of the criminal law
principle of minimum intervention, only this kind of conduct is examined under this system.
Counterfeiting is pursued on two fronts. On the one hand, with respect to acts
originating outside Spain, border measures are put in place to block the entry of counterfeit
goods. On the other, the Spanish police actively work to seize counterfeit goods.
As regards border measures, Spain is part of the European Union, and so the customs
authorities comply with the rules laid down in EU Regulation No. 608/2013 concerning
customs enforcement of intellectual property rights.

VI RECENT AND PENDING CASES


In relation to civil cases, there has been some recent case law containing points of interest.
For instance, Judgment No. 151/2017 of 2 March 2017, by Chamber I of the Spanish
Supreme Court, has reiterated the fact that the holder of a trademark protected in Spain may
prohibit third parties from using identical or similar signs, even where those signs have been
registered, subsequently, without the need to bring action seeking a declaration of invalidity
beforehand. In line with the position held by the Court of Justice of the European Union, the
Supreme Court has put an end to the traditional application of the principle of ‘immunity
through registration’, which protected those who had registered a trademark against actions
for infringement of earlier trademark registrations.
The Supreme Court has also upheld – in Judgment No. 94/2017 of 15 February –
settled doctrine on relative complementarity between trademark infringement and unfair
competition actions, as referred to earlier. The defendant had contracted a package of
keywords, including the plaintiff’s ‘Orona’ trademark from the Google AdWords referencing
service. The court pointed out that once the acts concerned have passed the examination
based on the Trademark Act, those acts cannot be classed as unfair.

VII OUTLOOK
On a procedural level, Spain has just implemented the innovative regime established by the
new Spanish Patent Act, which came into force on 1 April 2017. According to the letter of
the law, its procedural regime applies to trademark and design infringement actions. The
new Act has brought in significant changes: for example, the establishment of a time limit –
exceptional in the whole of the Spanish legal system – of two months for filing a statement
of defence; assessment of damages at the judgment enforcement stage to simplify declaratory
proceedings; and regulation of the filing and processing of protective letters, which were, in
practice, being admitted by a number of judges. Over the coming months, we will be able
to see how the courts apply this new regulation in cases of infringement of distinctive signs.
On a substantive level, Spain is immersed in the approval of a draft bill to amend the
Trademark Act, which seeks to incorporate EU Directive 2436/2015 into Spanish law. The
greatest mystery regarding this legislative reform as far as procedure is concerned is how
trademark revocation and invalidity actions will finally be regulated. At present, such actions
can only be brought before the courts. However, under the amended Act, jurisdiction will be
attributed to the SPTO.

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Chapter 15

UNITED KINGDOM

Peter Houlihan1

I OVERVIEW
UK trademark law has been significantly harmonised with that of the other jurisdictions
of the EU during the past 20 years. In that model, strong rights are given to the first to
register a mark (though some rights remain for a prior user of an unregistered trademark in
the UK who has established business goodwill represented by the trademark). Further, the
trademark offices conduct limited examination of applications and instead place the onus on
the trademark proprietor to police the trademark register as well as the marketplace.
With the UK currently negotiating its exit from the EU, there is no suggestion of the
UK adopting anything other than the European model of trademark registration in the short
to medium term. In essence, if and when the UK leaves the EU, substantive trademark law
will remain closely similar to that found in the rest of the EU.
On the enforcement front, the UK courts frequently grapple with difficult cases caused
by the changing face of commerce in the internet age. Cases relating to Google AdWords
services, Google AdSense services or the liability of internet service providers, for example,
have all been heard and decided in recent years, although there is still potential for further
questions to be decided. There has also been continued emphasis on simplifying court
procedures, with the aim of lowering legal costs and using technology in the court system.
This will continue to be the direction of travel, with possible pilot schemes in the future in
which cases will be managed wholly online.

II LEGAL FRAMEWORK
i Legislation
Registered trademark protection in the UK is governed principally by:
• Trade Marks Act 1994 (as amended);
• Trade Mark Rules 2008 (as amended);
• EU Trade Mark Regulation – Council Regulation (EC) No. 207/2009 (as amended);
• EU Trade Mark Implementing Regulation – Commission Regulation 2868/95 (as
amended);
• Misleading and Comparative Advertising Directive (2006/114/EC);
• Paris Convention for the Protection of Industrial Property;
• Nice Agreement Concerning the International Classification of Goods and Services for
the Purposes of the Registration of Trade Marks;

1 Peter Houlihan is a partner at Cleveland Scott York.

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• TRIPS Agreement (Agreement on Trade-Related Aspects of Intellectual Property


Rights);
• Singapore Treaty on the Law of Trademarks; and
• Protocol Relating to the Madrid Agreement Concerning the International Registration
of Marks.

ii Authorities
The UK Intellectual Property Office (UKIPO), based in Newport, Wales, is responsible for
administration of the UK trademark register as well as policy issues relating to intellectual
property for Her Majesty’s Government. The UKIPO is an executive agency of the Department
for Business, Energy and Industrial Strategy. It collaborates with the EU Intellectual Property
Office (EUIPO), which is responsible for administration of the EU trademark register, and
the World Intellectual Property Organization (WIPO), which has similar responsibility for
the international trademark register.
Nominet is the UK’s domain name registry, which is responsible for the management
of country code top-level domains ending with .uk.
Companies House is responsible for the registration of companies in the UK.

iii Substantive law


Set out below are the key legal bases for the protection of trademarks and similar indicia of
corporate identity.

Registered trademarks (including collective or certification marks)


Registration is obtained by the methods outlined below, in Section III.

Unregistered and well-known marks


Unregistered trademarks are protected by the law of passing off, which is described in
Section  IV.iii (Causes of action). Well-known marks are protected by the Trade Marks
Act 1994. They are given a status equivalent to registered trademarks and that status would
be particularly useful in protecting marks that are known in the UK but have not been used
or have not generated goodwill in the UK. However, proving that a mark is well known is
onerous and there is relatively little case law.

Company names
Obtaining a company name gives no cause of action against later third parties. Nevertheless,
it is not permissible to register a company with a name that is identical or very closely similar
to that of an existing registered company. However, to prevent use of a later company name
more broadly, reliance must be placed on the law of registered trademarks or passing off,
assuming the requirements are met. (Note, however, that there is a limited facility to cancel
abusive company names using the Company Names Tribunal.)

Trade names and business names


Obtaining or using either a trade name or a business name gives no cause of action against
later third parties as such, unless the requirements of the law of passing off or registered
trademarks are met.

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Geographical indications
Broadly, these may be registered as collective or certification marks, or even as ordinary
trademarks. They may also be protectable under the law of passing off. There are provisions of
EU law (Regulation 2081/92 on the Protection of Geographical Indications and Designations
of Origin for Agricultural Products and Foodstuffs), which provide specific protection for
indications that have been granted the status of protected designation of origin (PDO) or
protected geographical indication (PGI). Applications in the UK should be made to the
Department of the Environment, Food and Rural Affairs.

Domain names
Obtaining a domain name gives no cause of action against later third parties. Nevertheless,
it is not possible to register a domain name that is precisely identical to an existing one. To
prevent use of a later domain name more broadly, reliance must be placed on the law of
registered trademarks or passing off, assuming the requirements are met. (Note, however,
that there is a limited facility to cancel or transfer abusive or bad faith domain names using
Nominet.)2

III REGISTRATION OF MARKS


Registered protection for a trademark in the United Kingdom may be obtained by one of
three routes:
a an application filed at the UKIPO to obtain a UK trademark registration;
b an application filed at the EUIPO to obtain an EU trademark registration; and
c an application filed at WIPO to obtain an international registration designating either
the UK or the EU.

The focus of this chapter is on procedure before the UKIPO.


The official fees for a UK trademark application are £170 (assuming the application is
filed online), and an additional £50 for each class of goods or services covered in addition to
the first.
The application should set out the mark applied for (in jpeg format if a logo element
is included), the goods and services specified, set out in class order, according to the Nice
Classification, and the name and address of the proprietor (including state of incorporation
for a company). An address for service in the European Economic Area must also be provided.
When an applicant claims priority under the Paris Convention, it should include basic
details of the priority applications, but it is not necessary to supply a certified copy of the
priority application unless requested to do so by the UKIPO.
If a logo mark is shown in black and white, the UKIPO will not consider these colours
to be a feature of the mark unless there is an express indication in the application to that
effect. Sound marks may be acceptable where there is, for instance, musical notation clearly
describing the mark. Moving image marks are acceptable and may be represented by a series
of images, clearly described.

2 See: https://www.nominet.uk/wp-content/uploads/2015/08/DRS-Policy.pdf.

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It is a particular feature of UK trademark law that the applicant must make a declaration
on the application form, at filing, that

the trade mark is being used, by the applicant or with the applicant’s consent, in relation to those
goods or services, or that there is a bona fide intention that it should be so used.3

This declaration applies to both UK trademark applications filed at the UKIPO and
international applications designating the UK filed at WIPO.
Although this declaration is not tested or examined by the UKIPO, any application or
registration may be opposed or sought to be declared invalid by a third party on the basis that
the application or registration was obtained in bad faith, where the applicant did not have
the requisite intention to use.
Once an application has been filed at the UKIPO, a filing receipt will be issued promptly
and the application will be examined within three to six weeks. If no objections are raised,
it will be published in the Trade Marks Journal. Publication opens a period of two months
(extendible by one month at a potential opponent’s request), during which third parties may
oppose registration. If no oppositions are filed, the application should proceed to registration
within approximately five months of filing the application.
The process and timeline is very similar for an international application designating
the UK.
It should also be noted that applications filed at the UKIPO (but not at the EUIPO
or WIPO) may also seek registration in respect of a series of marks, that is to say variations
of the mark (where those variations do not include differences in distinctive character). A
maximum of six marks may be included in a series (with additional official fees of £50 for
each of the third to sixth marks in the series). If the UKIPO holds that one of the marks does
not constitute a series (i.e., it differs in its distinctive features from the other marks) that mark
must be deleted in order that the others may proceed to registration.

i Inherent registrability
The UKIPO examines an application to assess whether the mark applied for is inherently
registrable. An objection will be raised if the mark is:
a devoid of any distinctive character;
b descriptive of any characteristic of the goods or services in respect of which the mark is
to be used (or worse, where it has become customary for the relevant goods or services);
c a shape resulting from the nature of the goods themselves, a shape necessary to obtain
a technical result, or a shape giving substantial value to the goods;
d contrary to public policy or principles of morality;
e deceptive;
f such that its use is prohibited by any rule of law;
g such that it is or contains, for example, the royal coat of arms, the royal flags, heraldic
arms, flags of the UK or national emblems of Paris Convention countries; or
h one where the application has been made in bad faith.

3 Section 32(3) of the Trade Marks Act 1994.

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Most objections will be raised in respect of categories a to c, above. The Manual of Trade
Marks Practice sets out the UKIPO’s approach to certain categories of marks but, in recent
years, emphasis has been placed more on assessing each mark on its merits and less on a
particular category of mark. For instance, it used to be the case that common surnames were
considered prima facie unregistrable and the number of examples of any given surname in a
UK telephone directory was considered a relevant rule of thumb in assessing registrability of a
surname. That type of approach is now out of favour. Nevertheless, the Manual still indicates
that names of famous people will require careful assessment. A famous name is more likely to
be held to be unregistrable, particularly for goods such as posters or other image carriers, but
each case will be assessed on the facts.
If an objection is raised under category a or b, above, the applicant will be given two
months to provide submissions or evidence in response. That period can be extended upon
request for good reason. It may be appropriate to seek to overcome the objection by providing
evidence of how the word is used in commerce, or technical explanations if either the word
or the relevant goods are technical.
Alternatively, an applicant may seek to argue that the mark has acquired distinctiveness
through its use. The applicant will need to provide evidence to support that argument. As
a rule of thumb, at least five years’ use of a mark, across the majority of the UK, would be
required to put forward a reasonable argument for acquired distinctiveness. A shorter period
may suffice if, for example, there has been high-profile advertising. If the word applied for is
particularly descriptive, evidence of the applicant’s use on its own may not be sufficient and it
may be helpful if third-party evidence is obtained as well, such as how the mark is used in the
media. In practical terms, the UKIPO requires evidence to be filed in the form of a statement
by a relevant witness, such as a director of the applicant, and exhibiting relevant documents.
An objection raised under categories c to h, above, (including objections relating to the
shape of the mark) may not in law be overcome by acquired distinctiveness.

ii Prior rights
The UKIPO will not of its own motion raise any objection to an application on the basis
of any conflict with an earlier trademark or other right (except, for example, emblems of
Paris Convention countries, etc., as described above). The UKIPO does, however, conduct
a search of the UK trademark register, the EU register and the international register (if the
UK or EU is designated). If any conflicting mark is revealed, it is forwarded to the applicant
for information. A period – typically two months – will be set for the applicant to confirm
whether it wishes to limit its application or withdraw it (in view of the prior right revealed),
seek consent from the prior rights owner, or seek to persuade the UKIPO that the conflicting
right has been incorrectly raised.
If the applicant makes no response, the UKIPO will, after that period, permit the
application to proceed to publication in the Trade Marks Journal, and that publication opens
a period of two months, during which third parties may oppose the application if they so
wish. At the same time, the UKIPO writes to the prior rights owner (if the prior right is a
UK trademark or a UK designation of an international trademark) alerting the owner to the
publication of the application (in case a possible conflict should be found at a later stage).
Under current practice, it is much less common for an applicant to seek express consent
from the proprietor of an earlier conflicting trademark or to seek to persuade the UKIPO that

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in fact no conflict exists, at the examination stage. It is more likely that this type of conflict
will be addressed in any later opposition proceedings, either in a decision by the UKIPO or
in settlement discussions alongside those proceedings.
It should be noted that whereas the UKIPO conducts a search of UK trademarks,
EU trademarks and international trademarks (designating the UK or EU), and while these
properties may form the basis of a third-party opposition, these are not the only rights that
may be relied upon in opposition proceedings. An opponent may also rely on any other
earlier right, including a copyright, design right or registered design with effect in the UK
or any rule of law. The most common rule of law relied upon is the law of passing off. An
opponent here may claim that it is the prior user of a mark, such that the opponent has
established a goodwill represented by the mark, before the filing of the application, and
that the use of the mark applied for (since it is, for example, confusingly similar, for similar
goods) would amount to a deceptive misrepresentation liable to damage the goodwill of the
opponent. Note that the opponent does not seek to pursue a claim for passing off as such
(which would need to be brought in the courts) but, instead, seeks to argue that registration
of the later mark should be refused because its use would amount to passing off.

iii Inter partes proceedings


Oppositions
Any party may oppose registration of a trademark on the grounds that it does not meet the
inherent registrability criteria. The proprietor of an earlier right may also oppose registration
on the grounds of its right. An opponent is required to file form TM7 and pay a fee of £200.
If the rights relied upon are registered or pending trademark rights, it may be sufficient to
outline the details of those rights and claim that the use of the applicant’s mark will result in
a likelihood of confusion or dilution.
If the earlier registered trademark rights are more than five years old, it is necessary to
state in respect of which goods or services the earlier trademark has been used. In practice,
it is possible to indicate that this information will follow and can instead be provided in
response to the UKIPO’s indication of deficiency in that information.
If other rights are relied upon, such as an earlier passing off right, more detail is likely
to be needed, such as when the mark was first put to use, in what geographical area, and in
respect of which goods or services.
The UKIPO will examine the form TM7 and notice of opposition and, if it is acceptable,
will set a period of two months for the application to file its counterstatement on form TM8.
The counterstatement will respond to the pleaded grounds of opposition, either accepting,
denying or putting the opponent to proof and, where relevant, pleading its alternative case.
Once the UKIPO has assessed that the applicant’s counterstatement fulfils formality
requirements, it sets the following timetable:
a a period of two months for the opponent to file any facts or submissions in support
of its opposition. Evidence of facts must be in the form of a witness statement signed
under a statement of truth;
b upon filing of the opponent’s evidence, a period of two months for the applicant to file
any evidence or submissions in support of its application; and
c upon filing of the applicant’s evidence, a further period of two months for the opponent
to file any evidence or in reply.

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Each of these evidence periods can be extended upon request and for good reason. Any
request must clearly specify what action has been taken to date to meet the deadline, why
further time is needed, i.e., what further action needs be undertaken and how long that will
take. In practice, in the absence of very good reasons, the UKIPO is unlikely to extend any
deadline by more than one month.
Once the evidence stages of the proceedings are closed, the parties may agree for a
decision to be made by a hearing officer from the papers on file; an opportunity for the parties
to provide written submissions will also be provided at this stage. Alternatively, either party
has a right to request a hearing. This may be held in person but may also be held by video link
with the hearing officer in the UKIPO’s Newport office.
A decision is likely to be issued within 12 months of the filing of the opposition refusing
the application, partially refusing the application or rejecting the opposition. The hearing
officer will also make an award of costs in the prevailing party’s favour. The level of the award
is taken from a limited set scale and is not intended to fully compensate the prevailing party
for the legal costs incurred. A typical award may be in the region of £1,500 to £2,000.
It should be noted that the initial deadline set for the applicant to file a counterstatement
can be met by the parties instead consenting to and filing a request to enter a cooling-off
period. This is for an initial nine months (which can be extended to 18 months) and postpones
the evidence stages of proceedings.

Post-registration application for declaration of invalidity or declaration for revocation


The same basic procedure is provided for a post-registration application for a declaration
for invalidity, which may be sought on any of the grounds that could have been pleaded in
opposition. A similar procedure applies to a post-registration revocation on the grounds that
a mark has not been put to genuine use within the five years since the mark was registered or
that the mark has become generic.
It should be noted that an application for a declaration of invalidity or an application
to revoke a registration may be brought in the courts as well as the UKIPO. The UKIPO
proceedings again have a limited cost award regime, so bringing a case in the courts is likely to
be more expensive, but with a greater opportunity to recover more of the legal costs incurred
during the proceedings.

iv Appeals
Decisions by the UKIPO may be appealed to the High Court of England and Wales, or to the
Court of Session in Scotland, or to the High Court in Northern Ireland. Of these, the High
Court of England and Wales (High Court) is used most frequently. Decisions by these courts
may also be appealed further to appellate courts.
Generally, none of the aforementioned courts will rehear a case, but will instead review
the UKIPO decision. That means that there is a high hurdle for any party to clear in filing
additional evidence at the appeal stage. Costs orders issued at the end of any appeal are not
taken from the UKIPO’s limited set scale but, instead, are issued in accordance with the Civil
Procedure Rules (CPR) and are intended to compensate the prevailing party to the extent
that its legal costs have been proportionately and reasonably incurred.
As an alternative to the court system, a party may appeal a UKIPO decision to an
‘appointed person’. This is a tribunal, established by statute, consisting of a small number of
leading trademark practitioners (typically barristers and academics) designated as appointed
persons, who sit individually to hear appeals. Although appointed persons have broadly the

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same powers as the High Court on appeal, the tribunal is intended to be a low-cost forum.
On that basis, costs orders that may be made in the prevailing party’s favour are again made
on a set limited scale. Decisions made by an appointed person are final and, accordingly, there
is a power for cases of general legal importance to be transferred to the courts.

IV CIVIL LITIGATION
i Forums
For cases of a value under £10,000, the small claims track of the Intellectual Property
Enterprise Court (IPEC) provides a useful venue. No costs awards may be made on this track
but injunctions and other similar remedies may be available to the successful claimant. This
track may not be suitable for cases of any complexity.
For cases of a value of up to £500,000, the multitrack of the IPEC is available. The
Court’s procedures are designed for small and medium-sized enterprises (SMEs), in that it
has powers to limit the scope of the disclosure process and the number of witnesses. It is
intended for cases that may be decided in a trial lasting typically two days. A particularly
attractive feature of the IPEC’s process is that, with rare exceptions, the maximum award in
costs that may be made after trial is £50,000. This gives a good degree of certainty to parties
as to what their liability may be in the event that a case is lost.
The IPEC is a specialist list in the Chancery Division of the High Court with procedures
updated in recent years to be attractive to SMEs.
The High Court, Chancery Division, is the traditional home for intellectual property
(IP) cases. There is no cap on the value of cases that may be brought in the High Court and it
has the greatest capacity for long trials, with significant disclosure exercises and witnesses. It is
the most appropriate venue for the most complex cases. There is no cost capping regime. The
parties must, however, provide a detailed budget for the case fairly early in the proceedings
but the budget itself can be expensive to prepare. It would not be unusual for legal costs in
bringing a trademark case to trial to incur costs of at least £400,000.
The High Court has recently piloted a Shorter and Flexible Trial Scheme. This scheme
is intended for cases with a trial of no more than four days. The Court exercises powers akin
to those in the IPEC, where disclosure or witness evidence may be controlled or limited.
There is no requirement for budgeting, nor is there a costs-capping regime. It is intended
that the limits and controls on procedure, and the expeditious processing of cases to trial, will
reduce costs overall.

ii Pre-action conduct
The Practice Direction on Pre-action Conduct is set out in the CPR.4 This specifies that,
in the absence of special circumstances, a claimant should approach the defendant and set
out the details of the complaint before any court claim is issued. If this requirement is not
complied with, the claimant may later be penalised by not being granted as high an award of
costs as it otherwise would (even where it is wholly successful in the substance of the claim).
In some areas, however, such as personal injury claims, there are additional protocols
that set out in fuller detail the precise steps that must be taken before a claim is issued. There
are no protocols in IP cases, mainly because the law of unjustified threats historically made it

4 See: www.justice.gov.uk/courts/procedure-rules/civil/rules/pd_pre-action_conduct.

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difficult to draft pre-action protocols mandating that a claim be set out in detail to an alleged
infringer when the law of unjustified threats made it potentially actionable for a complainant
to threaten to sue in respect of certain acts. The law of unjustified threats was reformed in
2017, so it may be that there will be a return to the question of whether it is possible to
specify detailed protocols for pre-action conduct in IP cases.
It should also be noted that Part 36 of the CPR5 provides a formal set of rules whereby
settlement offers, made in accordance with those rules, and that are not accepted, have an
impact on any costs award that may be made after trial. The rules are complex but broadly are
intended to penalise a party that refuses a settlement offer on terms that are more favourable
than the terms which that party ultimately obtains after trial. Part 36 offers for settlement
may be made prior to the issue of proceedings.

iii Causes of action


In the courts
A trademark owner may bring a complaint against third-party misuse of its trademark by
way of:
a trademark infringement (where it is the proprietor of a registered trademark in the UK,
whether UK trademark, EU trademark or international trademark designating the UK
or EU); or
b the common law tort of passing off (where it is the owner of a goodwill in a business in
the UK represented by its trademark).

These causes of action may be brought simultaneously. For example, if a registered trademark
has been used in the UK, it is frequently also the case that this use will have established
a basis for a passing-off claim. There is nothing to prevent the running of both causes of
action simultaneously and in many cases that may be a prudent course. There have been cases
where, for example, an EU trademark has ultimately been held to be invalid by a UK court
(which otherwise would have been infringed) and where the claimant was able to succeed in
preventing the defendant’s use of its mark in the UK on the basis of the claimant’s alternative
claim in passing off.
Either cause of action may be brought on a quia timet basis, that is to say on the basis
of infringing activity that has not yet taken place. Either action may be brought to prevent
third-party use of a trademark, trade name, company name, domain name, get-up or any
other indicia or sign used in the course of business in respect of a good or service.
An action in infringement will be successful if the claimant proves that the defendant’s
use of a relevant sign:
a is use of a sign sufficiently similar to the registered trademark, for sufficiently similar
goods or services, that there is a likelihood of confusion; or
b is sufficiently similar to the registered mark, in which there is a reputation, that the sign
will call to mind the registered mark and will:
• take unfair advantage of or free ride on the reputation;
• tarnish the reputation; or
• blur or erode the distinctive character of the registered mark.

5 See: www.justice.gov.uk/courts/procedure-rules/civil/rules/part36.

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An action in passing off will be successful if the claimant proves that:


a it is the owner in the UK of a goodwill in a business represented by a trademark or
other distinctive indicia (such as a packaging get-up);
b the use by the defendant of its sign amounts to, or would amount to, a deceptive
misrepresentation to a substantial proportion of the relevant consumers; and
c that such misrepresentation is liable to lead to damage to the claimant’s goodwill.

Alternative venues
Companies House administers the registration of companies in the UK. Rules provide that
a new company may not adopt a name that is identical to the name of an existing registered
company or one that is very similar (according to specific narrow rules).
Despite the general rules, it is possible to register a company name that (in trademark
terms) would be considered similar to an existing name. It may be possible to prevent the
use and registration of such a name under actions for passing off or trademark infringement
through the courts.
An alternative venue, however, is the Company Names Tribunal. This has a narrow
remit, adjudicating on cases that might broadly be described as abusive names. It provides a
useful and cheap facility to remove from the companies register any names that are obviously
attempting to take unfair advantage of more famous existing companies or trademarks. A
significant limitation, however, is that a complaint may be made only in respect of a company
that has not yet traded under its name.
Abusive .uk domain names may also be addressed through the dispute resolution service
provided by Nominet. The rules of procedure are similar to the ICANN6 rules applicable to
.com domain name disputes, but there are some differences.

iv Conduct of proceedings
The process of a claim in the IPEC follows the following broad outline. There are variations
in other courts.
a Issue of a claim form. This step consists of a claimant forwarding a completed claim
form (a brief summary of the claim) to the IPEC and paying to the Court the issue fee.
This fee may vary between £1,000 and £10,000, depending on the level of damages
sought in the claim. The Court then seals (i.e., officially stamps) the claim form and
returns it to the claimant.
b If the defendant is in the UK, the claimant now has four months to serve the claim form
(along with full details of the claim, called the ‘particulars of claim’) on the defendant.
For a defendant UK company, good service of the claim form and particulars may be
achieved by posting the documents to the company’s registered address.
c Once the defendant has been served with the claim form and particulars of the
claim, it has 14 days to file an acknowledgement of service at court. (Later deadlines
are determined by the particular court in which the claim is brought.) Typically, a
defendant in the IPEC will have a period of 42 days from service of the claim to file its
full defence. Shorter periods apply in the High Court.

6 Internet Corporation for Assigned Names and Numbers.

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d Once a defence has been filed, the claimant may take steps to bring the matter to a case
management conference (CMC) and, where applicable in the High Court, this will
include preparation of legal costs budgets for the case. The CMC may be fixed some
time after the defence has been received.
e At the CMC, the Court will make findings as to the issues to be decided in the case and
specify what disclosure and inspection of documents will be provided by the parties,
what witness evidence, including expert evidence, may be filed and served by the parties
and, in the IPEC, when the trial and issue of judgment shall take place.
f A typical period to provide initial disclosure may be one month but the parties have
some latitude to agree amendments to the timetable. In the IPEC, it is more typical for
the Court to order specific disclosure (i.e., disclosure of documents relating to particular
issues) rather than standard disclosure (i.e., all relevant documents, both supportive
and adverse to a party’s case). From the point where litigation is contemplated, the
parties remain under a duty to preserve documents that may need to be disclosed.
g After the disclosure process, evidence may then be prepared and filed in the form of
witness statements, which do not have the formality of other jurisdictions, that is to
say they do not need to be notarised. However, the particular format of the statement
requires a ‘statement of truth’, and a false statement may be punishable as contempt
of court. It should be borne in mind that all witnesses who give evidence may be
cross-examined at trial.
h Trial: skeleton arguments (i.e., short summaries of the facts and legal arguments) should
be filed shortly before trial along with authorities (i.e., relevant cases and legislation). At
trial in the IPEC, typically one day may be taken up by cross-examination of witnesses
and a second day with legal submissions and argument.
i Judgment is likely to be pencilled in to be issued around six weeks after trial.
j The overall process may take 18 months on average, but there is a wide variation since
the parties to some extent influence how quickly the proceedings move to a decision.

v Remedies
The courts have a wide inherent jurisdiction in granting remedies to a claimant who is
successful in an action for trademark infringement or passing off. The following are some of
the more usual remedies sought.
a An injunction preventing use of the trademark or sign complained of. In trademark
infringement cases the injunction may be granted in broad terms (i.e., ‘the defendant
shall not infringe UK trademark number . . .’). In passing-off cases, the order may be
more limited, enabling a defendant to continue use of its mark if it takes sufficient steps
to ensure that no misrepresentation is caused. Breach of an order, in whatever form, by
the defendant may amount to contempt of court, punishable by a fine and ultimately
imprisonment.
b Similar orders compelling the defendant to change its company name or transfer its
domain name.
c An order to deliver up all infringing goods or articles in the claimant’s possession,
custody or control.
d An enquiry as to damages or at the claimant’s election an account of profits.
e An order to pay the claimant’s legal costs. The claimant, where successful, is in principle
entitled to compensatory payment from the defendant for legal costs, provided they are
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and may take into account the parties’ behaviour before and during proceedings, as
having an effect on any costs order that is made. A rough rule of thumb is that a court
is likely to make an award of cost amounting to around 70 per cent of the actual costs
incurred.
f An order for publication of judgment. In certain circumstances, the courts may order
that a defendant should publicise the judgment (on its website, for example), if it is
thought that this may assist in dispelling the confusion that has been caused by the
previously infringing use.

The courts may also grant interim remedies before trial (particularly interim injunctions).
The test for whether an interim injunction should be granted includes a number of factors
but a critical one is the speed at which the claimant seeks the remedy. If the defendant has
been on the market for several months, with the claimant’s knowledge, that will reduce the
likelihood that the claimant will be able to obtain an interim injunction.

V OTHER ENFORCEMENT PROCEEDINGS


i Criminal proceedings
It is a criminal offence (under Section 92 of the Trade Marks Act 1994) to apply to goods
or their packaging a sign identical to, or likely to be mistaken for, a registered trademark or
to sell, or offer to sell, such goods. No equivalent provisions apply to misuse of a trademark
in respect of services. Penalties upon conviction include fines and potentially substantial
prison sentences. In principle, many acts of trademark infringement could be pursued under
criminal law as much as under civil law. In practice, the criminal provisions are rarely relied
upon between, or against, legitimately trading businesses.
There is a statutory duty on public authorities (namely trading standards offices of local
government) to prevent unauthorised use of registered trademarks. In practice, funding of
these offices may vary across the country and they may not necessarily have the manpower to
pursue criminal trademark cases except in the most serious matters.
It is also possible for trademark proprietors to bring a private prosecution, that is to say
to initiate criminal proceedings themselves rather than relying on a trading standards office.
This is often an unattractive option, since the evidentiary burden is high (the case will need
to be proved to the criminal standard ‘beyond reasonable doubt’ rather than the civil standard
‘on the balance of probabilities’). Further, there will be no automatic award of legal costs,
although forfeiture proceedings may be separately pursued.
The Police Intellectual Property Crime Unit7 (PIPCU), part of the City of London
Police, has recently been established, with funding from the UKIPO, to address IP crime
with a particular focus on counterfeits provided online. The website provides a form enabling
reports or allegations of IP crime to be submitted.8

7 See: https://www.cityoflondon.police.uk/advice-and-support/fraud-and-economic-crime/pipcu/Pages/
default.aspx.
8 See: https://www.cityoflondon.police.uk/advice-and-support/fraud-and-economic-crime/pipcu/Pages/
Make-a-referral.aspx.

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ii Customs procedures
Regulation (EU) 608/2013 (the Regulation) provides a comprehensive procedure for customs
action to prevent import into the UK or EU of goods infringing an IP right. This applies also
to goods that infringe registered trademarks but not to grey goods.
HMRC and the UK Border Force work together in implementing these provisions.
A trademark proprietor may make an application to HMRC for action under the
Regulation to specify, for example, the registered trademarks that it would like HMRC
particularly to monitor. This may apply to the UK only or, in an EU application, to several
customs authorities within the EU. An application will need to include information such as
the trademark right, with evidence of registration, a description of the relevant goods to be
monitored along with any technical data permitting recognition of authentic goods, and the
name and contact details of any legal representatives. The trademark proprietor will also need
to indemnify the customs authorities for their costs, expenses and liabilities. There are no
official fees in making the application.
Where any goods are seized under the application for action, HMRC will notify the
registered trademark proprietor, or its representative, and grant a period of 10 days (or three
days in the case of perishable goods), during which the trademark proprietor may indicate
that the goods, in its view, infringe its right, and either consent to or request destruction of
the goods. The proprietor may obtain samples for assessment. If the importer of the goods
provides no objection to destruction within the same 10-day period, or provides no response,
the goods may proceed to destruction. If the importer objects to destruction, the goods
shall be released, unless the trademark proprietor promptly issues a claim for trademark
infringement in the courts. The goods shall be detained pending resolution of the court
action.
HMRC may also notify a trademark proprietor ex officio if it detains goods that it
suspects infringe a registered trademark right, even if no application for action is in force. A
similar procedure shall apply but the first step will be for the trademark proprietor to make
an application for action.

VI RECENT AND PENDING CASES


Set out below are some noteworthy recent decisions.

Argos Ltd v. Argos Systems Inc 9


Argos Limited is a well-known high street retailer in the UK. The US company, Argos Systems
Inc (ASI) is a wholly unrelated business operating a website at argos.com (a domain name it
legitimately owned). ASI used the Google AdSense service on its site, which automatically
provided advertisements to visitors to the site. UK consumers looking for Argos Limited’s
site sometimes found the argos.com site. Although they often quickly moved off the site,
they were able to view adverts on the argos.com site produced by the Google AdSense
service. Those adverts were sometimes for Argos Limited and sometimes for Argos Limited’s
competitors. Argos Limited complained that this use amounted to trademark infringement.
The High Court held, however, that Argos Limited itself had consented to the use of ARGOS
on ASI’s website, in adverts, since Argos Limited had itself signed up to the Google AdSense

9 [2017] EWHC 231 (Ch) (15 February 2017).

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service, and consent had been granted in the terms of that service. Second, the appearance
of competitor websites in the adverts on ASI’s site was a result of the activities of Argos’
representatives (such as viewing competitor websites and returning to the ASI website).
Finally, the Court held that the ASI site was not directed to the UK consumer at all, such
that in essence there was no use of any trademark by ASI in the UK jurisdiction. It will be
appreciated that the Court here was drawing some fine distinctions and a slightly different set
of facts may have a different result.

Société des Produits Nestlé SA v. Cadbury UK Ltd 10


The Court of Appeal held (agreeing with the High Court and the UKIPO) that the shape
of a four-fingered chocolate bar was not registrable as a trademark in respect of chocolate
products. Nestlé had applied for registration of the shape of its very well-known Kit Kat
chocolate bar. It provided survey evidence, which showed that UK consumers, when
presented with the shape, were able unprompted to provide comments such as ‘It’s a Kit Kat’.
Nevertheless, in Nestlé’s marketing of the product, the shape was always under a foil wrapper
bearing the words Kit Kat (without any picture of the shape), and the chocolate bar itself,
in the four-fingered shape, always carried the words Kit Kat embossed in the bar. In essence,
the Court held that although the shape was recognised by consumers, it was not a trademark
relied upon by the consumer in the purchasing process and hence the mark had not acquired
distinctiveness. This was a long-fought litigation, including a reference to the Court of Justice
of the European Union, and the result is suggestive that parties will find it more difficult
in the future to register shapes of products as trademarks. Proprietors seeking to achieve
registration should actively advertise the shape in their marketing and seek to educate the
consumer into perceiving the shape as an indication of brand origin.

R v. M & Ors 11
The UK Supreme Court held that the criminal provisions of the Trade Marks Act 1994
apply not just to unauthorised use of registered trademarks on counterfeit goods (i.e., where
the mark is applied to goods that have never been authorised by the trademark proprietor)
but also to unauthorised use in respect of grey goods (i.e., here the mark is applied to goods
that have at some point been authorised by the trademark proprietor, such as overrun goods
produced by a contract manufacturer).

VII OUTLOOK
The following areas are examples of where there is likely to be future activity relevant to
trademark proprietors.

Intellectual Property (Unjustified Threats) Act 2017


This Act came into force in October 2017. It reforms and liberalises the law in the UK
relating to unjustified threats to bring proceedings for trademark infringement. (In the
UK, a claimant’s threat of proceedings is itself, in certain circumstances, actionable.) The
liberalisation is intended to make it easier for a registered trademark proprietor to legitimately

10 [2017] EWCA Civ 358 (17 May 2017).


11 [2017] UKSC 58 (3 August 2017).

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make threats of proceedings, without the risk of being counter-sued, while at the same
time protecting traders from bullying or illegitimate threats from unscrupulous trademark
proprietors. Notably, it removes liability from regulated legal representatives, who were
previously permitted to be sued and joined to proceedings when acting on client instructions.
There are nevertheless certain conditions that must be complied with in order for legal
representatives to obtain that protection. The Act also provides for a regime where it should be
easier for registered trademark proprietors and their representatives to approach, for example,
retailers of allegedly infringing goods to obtain information about the primary infringer. One
note of caution for overseas lawyers: the reform has made it actionable to threaten to bring
trademark proceedings (not necessarily in the UK) in respect of acts or threatened acts in the
UK. A complaint relating to pan-European activity may in certain circumstances now be
actionable in the UK even where there was no threat to bring trademark proceedings in the
UK. The new legislation is likely to be an area for further litigation.

Directive (EU) 2015/2436 of the European Parliament and of the Council


This EU Directive will be implemented into UK trademark law by January 2019. There is
a range of changes, of which some are more significant than others. One example is that
the defence to infringement by use of one’s own name will in future apply only to natural
persons (at the moment the defence applies also to legal persons). A more substantial change
will be made to the circumstances in which a registered trade proprietor will be able to apply
to invalidate the registration of (and prevent the use of ) a later trademark. Currently, it is
possible for a registered trademark proprietor to invalidate a later third-party registration
even though the proprietor’s registration was itself revocable (for lack of use) at the date the
later third-party registration was applied for (assuming the registered proprietor later puts its
own trademark back to use). This will change, so that the registered proprietor will be able to
invalidate a later registration only when its earlier registration was not open to revocation at
the date of filing of the later third-party registration. This may well create complicated factual
questions to be decided by the courts.

UK exit from the EU


When the UK leaves the EU, European Union Trade Marks (EUTMs) (in the absence
of agreement otherwise) will cease to have effect in the UK. Proprietors of EUTMs will
nevertheless have legitimate expectations that their trademarks will continue to be protected
in the UK by some method. It is anticipated that, upon exit from the EU (or by the end
of any transitional period), the UK will automatically enter all existing EUTMs (pending
or registered) onto the UK trademark register, as new UK applications or registrations,
and that these new UK trademarks will retain any filing data, such as filing dates, that is
identical to the equivalent EUTMs. By this mechanism, existing EUTMs proprietors would
have continued protection in the UK, after exit, by virtue of being proprietors of new UK
registrations as well. Nevertheless, the precise details of this transfer mechanism, or any
alternative mechanism ultimately adopted (and the other transitional provisions of trademark
law that will be required), have not been finalised and are still the subject of negotiation
between the UK and EU. Clearly, this is an area of focus for the years ahead.

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Chapter 16

UNITED STATES

Roberta Jacobs-Meadway1

I OVERVIEW
The US trademark system provides for both federal and state protection of trademarks.
Whether under federal or state law, registration is not a prerequisite for enforceable rights.
What is required is use of the mark in the ordinary course of business and not merely
to reserve rights in the mark.
Also required is a term, device or dress of goods that functions as a mark to indicate
source or origin. That is, what is asserted as a mark must not be functional, ornamental,
generic for the goods or services, merely descriptive without acquired distinctiveness or
merely informational.
The benefits that accrue to federal registration, however, are substantial enough that
federal registration is generally sought by trademark owners, where possible.
Typical instances in which federal protection by registration is not sought include
where the use of the mark is expected to be short-lived, the use is in the nature of a descriptive
or highly suggestive tag line, or there is a prior user or holder of an incontestable trademark
registration operating in a remote geographic area in a manner such that there is no foreseeable
overlap in the marketplaces in which likelihood of confusion might arise.

II LEGAL FRAMEWORK
i Legislation
The principal statute dealing with trademark and unfair competition law in the United States
is the Lanham Act, 15 U.S.C. Sections 1051 et seq. The Act has been amended numerous
times since its effective date more than 70 years ago. The amendments have, among other
things, made dilution of famous trademarks a federal offence and provided statutory damages
as a remedy against sellers of goods bearing counterfeit marks, and permitted the filing of
applications for registration based on an intent to use.
The federal statute is supplemented by state trademark statutes. The state statutes
provide for a registration system similar to the federal scheme. Persons may secure state
registrations, particularly where the business is primarily a local one, or where there may be
issues that impede securing a federal registration. There are also statutes in a number of states
that are directed to unfair trade practices and provide a cause of action for competitors (other

1 Roberta Jacobs-Meadway is a member of Eckert Seamans Cherin & Mellott, LLC.

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such statutes only provide for actions by customers or states’ attorneys general). There are also
state statutes directed to rights of privacy and publicity that overlap only to some extent with
the unfair competition provision of the Lanham Act.2
The USA has adhered to the Madrid Protocol (enacted as Madrid Protocol Implemental
Act of 2002, 15 U.S.C. Section 1141), and international registration filings have become
increasingly popular as a means of extending protection to other jurisdictions in a more
economic manner than securing individual national registrations.

ii Authorities
Because there are protections for trademarks under both federal and state law in the USA,
registrations may be secured through the United States Patent and Trademark Office
(USPTO) or the trademark offices in each of the states and territories.
The USPTO’s Trademark Trial and Appeal Board (TTAB) hears appeals from refusals
of registration by examiners at the USPTO. Appeals on matters of registrability may be taken
to the Court of Appeals for the Federal Circuit or to a United States district court.
The TTAB can only determine questions of registrability. It cannot enjoin use of a
trademark or award either attorneys’ fees or monetary damages.
The district courts also have authority under the Lanham Act to rule on issues of
registrability that are raised in civil litigation directed to trademarks under the Lanham Act,
15 U.S.C. Section 1120. The district courts, unlike the TTAB, have the authority to enter
mandatory and prohibitory injunctions and grant awards of fees and costs and damages,
pursuant to 15 U.S.C. Section 1117.
The state courts have parallel jurisdiction to hear questions of trademark infringement
under state and common law. The state courts generally follow the federal precedential
decisions and, except where there is some difference between the laws (such as the dilution
provisions where the state statutes do not require the same degree or level of fame as the
Lanham Act), the state and federal laws are considered to be essentially the same. The
geographic scope of injunctive relief may be more limited.

iii Substantive law


Trademarks may be registered both under federal and under state law. The state statutes
generally track the federal statute on matters of registrability.
Marks can be protected whether or not registration has been secured. Unregistered
marks are entitled to protection based on use in the geographic areas within which the mark
has been used and otherwise made known, such that there is a reputation and goodwill
entitled to be protected in the interest of avoiding likelihood of confusion of the relevant
public and trade as to the source or sponsorship of the goods or as to an affiliation between
the providers of the goods or services.
Marks that are well known, whether or not they are registered for particular goods or
services, may be entitled to a broader scope of protection based on the likelihood that there
will be a misperception of source, sponsorship or affiliation, even on goods not closely related
to the core business for which the mark is well known.

2 Section 43(a); 15 U.S.C. Section 1125(a).

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The scope of protection that a mark (or name) is accorded depends not only on the
inherent strength of the mark or name (for example, if it is highly suggestive of the nature
of the goods or an aspect of the services, or is fanciful, that is to say a coined term having no
meaning) but also on the commercial strength acquired through commercial success.
Trade names and the names under which businesses are known can be and are protected
from infringement both under federal and state law in the same manner as unregistered
trademarks. Protection is predicated on the fact that such names function to identify the
source (i.e., the business offering the goods or rendering the service) to the relevant public
and trade.
Corporate names and fictitious names are registered on a state-by-state basis. Such
registrations provide no basis for action against entities using the same or similar names and,
more importantly, such registrations provide no defence to claims by a prior user that the
fictitious name or other name infringes its rights where there is likelihood of confusion. The
likelihood of confusion must be a tangible one and not simply hypothetical based on the
filing and registration.
Trade names and business names are protected under both federal and state law.
Such names cannot be registered as trademarks except to the extent that they are used as
trademarks, but the laws with respect to unfair competition preclude use of marks or names
that are likely to cause confusion with existing names (see Section 43(a) of the Lanham Act).
Note also that Section 2(d) of the Lanham Act permits oppositions to registration of a mark
and petitions to cancel a registration of a mark based on prior use of a trade name. The extent
of protection granted to such names is limited to the area within which the name is known
and associated with a single source of origin with respect to that particular business, in much
the same manner as protection for unregistered trademarks.
Geographical indications are protected under US law through a combination of
statutory provisions. Certification marks identify products that conform to a specified
standard which may include geographic origin (e.g., Idaho potatoes). The Lanham Act
prohibition against false designations of geographic origin (Section 43(a)) precludes use of
deceptive statements of origin (referring to a sparkling wine from California as ‘Champagne’,
for example). Section 2(e) of the Act precludes registration of deceptively misdescriptive
geographic terms. It is doubtful whether a producer of cream cheese products in Philadelphia
could truthfully label a product as ‘made in PHILADELPHIA’ or ‘PHILADELPHIA made’
in light of prior registration for the city name for the product in question.
Domain names are website addresses. The domain name is a unique identifier of a web
address and nothing more. There is a provision under Section 43(d) of the Lanham Act that
addresses cybersquatting. There is an in rem action that can be brought against domain names
that consist essentially of counterfeits of marks. The issue with domain names is complicated
by the fact that the registration of the name may be, and often is, divorced from any specific
content that would create a likelihood of confusion as to source or sponsorship for any
discrete visitor to the site. To the extent that a domain name is also used as a trademark or
trade name, the name can be protected as a mark or name.
One question that is the subject of dispute in the United States is whether a generic
or merely descriptive term with a suffix such as ‘.com’ is anything other than a generic or
merely descriptive term, and whether the addition of ‘.com’ provides some basis for finding
the domain name to have source-indicating significance. The Court of Appeals for the Fifth

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Circuit recently determined that ‘booking.com’ was not protectable for some services in
the hospitality industry, but was protectable for other services in that industry, overruling a
TTAB determination that a mark is generic.3

III REGISTRATION OF MARKS


Applications for registration can be filed on the basis of use or intent to use. No registration
will issue until a declaration of use and proof of use are filed. The exception is for registrations
based on a non-US registration under international conventions. Noteworthy in this
connection is that while a non-US entity does not need use in the United States to secure the
registration, the registration is subject to cancellation if the registrant cannot file proof of use
in the United States between the fifth and sixth years after the issue date of the registration.
If an application is filed on the basis of use, and there are no objections raised to the
application as filed, and there are no extensions of time to oppose, or if no oppositions are
lodged against the application, registration should issue between nine and 11 months of the
filing date. According to the USPTO, it takes three months for the trademark application to
be reviewed by an examiner, and, on average, approximately 10.7 months for the application
to reach registration.
Any USPTO actions raising issues with respect to the application, whether with respect
to prior registrations or the identification of goods or the sufficiency of the specimens of
use, will delay publication for the purposes of opposition. If the application is filed on the
basis of intent to use, and the declaration of use is not accepted before the mark is approved
for publication, a notice of allowance will issue after the close of the opposition period.
The applicant then has six months to file a declaration of proof of use, or a request for an
extension of time to make such filing. The applicant may secure up to five extensions of six
months each to file the proof of use.
The fees associated with these filings are US$375 per class per application for filings by
paper, US$325 for electronic filing using the regular Trademark Electronic Application System
(TEAS) form, and US$275 for electronic filing using the TEAS PLUS form. According to
the USPTO, more than 97 per cent of trademark applications are filed electronically.

i Inherent registrability
There is a wide range of words, phrases, designs, symbols and package configurations that are
inherently registrable.
There are some marked exclusions within that listing of items potentially inherently
registrable. That is to say, an applied-for ‘mark’ may be found not to be inherently registrable
if, in relation to the goods or services identified in the application, it is merely descriptive,
primarily a surname, primarily geographically descriptive, or if it fails to function as a mark
by virtue of being ornamental or an informational logo, or if it is functional in the context
in which it is used.

3 Booking.com B.V. v. Joseph Matal, 2017 U.S. Dist. LEXIS 126320 (E.D. Va., 9 August 2017).

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ii Prior rights
Prior rights may provide a basis for precluding registration or cancelling a registration.
Prior use in even a limited geographic market provides grounds for defeating a
registration if the senior use is of a confusingly similar mark used in connection with the
same or related goods or services.
Prior rights, however, may be extinguished and so become unavailable as grounds to
challenge the registration of a junior user’s mark. These prior rights may be extinguished in
a number of ways, the most common of which are (1) abandonment, with non-use for three
years giving rise to a presumption of abandonment; (2) marked licensing so that the mark
no longer functions to identify the senior user as the source of the goods or services; and
(3) assignment in gross, where the mark is separated from the goodwill associated with it.
With respect to abandonment, it is worth noting that a change in the form of the mark, from
that in which it is was registered, may leave the registration subject to cancellation, which
may affect the respective rights of the parties even where the use of at least some component
of the mark as originally registered remains in use.

iii Inter partes proceedings


The inter partes proceedings are governed by the Federal Rules of Civil Procedure and the
Federal Rules of Evidence, except where the TTAB has established an exception of the Federal
Rules. Recent rule changes have been made to make the proceedings more efficient and less
costly, permitting testimony to be made of record by declaration so long as the declarant is
subject to cross-examination, and limiting the extent of enquiries and demands for production
of documents that may be made in discovery. Under consideration is a rule change to simplify
and expedite cancellation proceedings brought on the basis of abandonment of the mark of
the registration.
Concurrent use proceedings are available in limited circumstances.4 The difficulty in
securing a concurrent use registration is the requirement that each or all of the parties operate
in a distinct geographic market, such that there is no likelihood of confusion arising from the
concurrent use and registration. This creates obvious difficulties with online sales of goods
and is best adapted to local food service operations, medical practices, community banks and
credit unions, and other service industry segments where the customer base is largely local.

iv Appeals
Appeals from decisions of the TTAB may be taken to either the Court of Appeals for the
Federal Circuit or to a US district court. There are marked differences between these courts
for appeals.
An appeal to the Federal Circuit is decided on the basis of the record before the TTAB.
No new evidence and no new claims will be considered.
If the appeal is taken to a district court, there is an opportunity to raise new claims,
and to introduce additional evidence. By way of example, if the issue is whether secondary
meaning in a mark has been achieved, and the record below was not persuasive, a survey
or other expert evidence might be introduced. In the context of an appeal in an inter partes
proceeding, a claim for infringement may be brought. Alternatively, a claim for a declaratory
judgment of non-infringement may be introduced into this proceeding.

4 See Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052.

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IV CIVIL LITIGATION
i Forums
Civil actions for trademark infringement and unfair competition in the nature of trademark
infringement (akin to passing off) may be brought either in state courts or in federal
district courts.
The advantages of filing in the federal courts include the ability to secure nationwide
relief, access to broad subpoena power to secure testimony, and a substantial body of
precedent. The advantages of filing in the state courts include (1) greater familiarity with
state statutes that may provide an ancillary basis for recovery (state unfair trade practice acts
may provide a competitor with a cause of action); (2) state dilution statutes will not require
the same degree of fame as is required for a plaintiff to prevail on a federal dilution claim
under the Lanham Act 15 U.S.C. Section 1125(c); and (3) greater familiarity with the local
market and other conditions, which might make confusion more likely or might result in a
particular understanding of a term in issue.

ii Pre-action conduct
Prior to commencement of an action for trademark infringement, there are a number of
steps the potential claimant may take. Diligence is always advisable, to confirm priority and
to ascertain the strength of the claim, potential weaknesses and counterclaims. Where there
is some doubt as to the strength of the claim, a pre-litigation survey may be undertaken to
ascertain whether it may be advisable to pursue a course other than litigation.
Once the decision has been made to proceed, it is usual, but not mandatory, for a cease
and desist letter to be sent to the appropriate party on the other side. The cease and desist
letter should be drafted with care and sent only when the client is committed to litigate if an
amicable resolution cannot be achieved. One benefit of a cease and desist letter is that it can
open up a dialogue. It can also bring out issues and facts not previously ascertained that affect
the determination of how best to proceed.
Before litigation begins, the parties can agree to take steps to resolve a dispute, including
the informal exchange of information and documents that otherwise would not be available
until the formal discovery process has begun. The parties may agree to a settlement conference
or even mediation. Such discussions have the possible outcome of a business resolution that
addresses the needs of both parties.

iii Causes of action


In civil litigation, the actions typically brought in federal court are for trademark infringement
under the Lanham Act 15 U.S.C. Section 1114 if the mark is registered and under 15 U.S.C.
Section 1125(a) whether or not the mark is registered. Section 1125(a) of the Act provides a
federal cause of action for unfair competition in the nature of trademark infringement. The
unfair competition claim is essentially a claim for passing off. While only the owner of the
registration can bring a claim for infringement based on registration, an exclusive licensee can
bring a claim under Section 1125(a) for violation of rights.
The test for violation of the statute is essentially the same, whichever provision is
invoked: Is there a likelihood (that is, a probability and not a mere possibility) of confusion
as to source or sponsorship or affiliation? The determination of infringement or passing off
is based on consideration of various factors, most particularly the degree of relationship
between the goods and services and the degree of similarity between the marks. Also of

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importance are any evidence of actual confusion where such confusion might be expected
to have come to the parties’ attention, the conditions in which purchase decisions are made,
overlap in trade channels and classes of customers, the strength of the senior user’s mark, and
the intent of the junior user.
The benefit of being able to invoke a registration on the Principal Register5 are the
evidentiary presumptions of ownership and the exclusive right to use of the mark for the
goods or services identified in the certificate of registration. Those presumptions are rebuttable
for only the first five years after the date of issue of the registration.6 If the plaintiff’s mark has
nationwide fame, a claim for dilution may also be brought under Section 1125(c).
Disputes as to trade or business names may be resolved in federal court under the same
provision of the statute as protects unregistered marks.
Trademark and trade or business name disputes may also be resolved in state courts on
essentially the same basis.
Claims for cybersquatting may be brought in appropriate cases in federal court under
Section 1125(d) of the Lanham Act, as well as under the various dispute resolution procedures
established under ICANN.7
Disputes that relate to use of company names that do not involve trademark or trade
name-type use are resolved at the state level, and the procedures vary from state to state.

iv Conduct of proceedings
In civil actions, the proceeding is commenced by the filing and service of a complaint for
trademark infringement in accord with 15 U.S.C. Sections 1114 and 1121. The plaintiff may
or may not ask for preliminary injunctive relief.
The defendant may respond by filing a motion to dismiss on a number of grounds,
including lack of jurisdiction and failure to state a claim on which relief may be granted.
The defendant may answer and file and serve counterclaims for a declaratory judgment of
non-infringement, or for infringement if the defendant believes it can establish priority, or
for cancellation of the plaintiff’s registration on any of the grounds on which a cancellation
petition might be filed in the Trademark Office.
Once the issue is joined, the district court will schedule a conference with the parties to
set the timetable and particular rules for the proceeding.
Prior to beginning discovery, the parties will make initial disclosures to each other,
identifying those persons believed to have knowledge of the matters at issue and the location
of the documents relevant to those issues.
Discovery will typically include written interrogatories, requests for production of
documents and requests for admissions. The grounds for objection to discovery directed to
matters at issue in the proceeding are limited; but recently the courts have been more willing
to limit the extent of discovery when the burden and expense of production is not warranted
by the value of the case.
After fact discovery concludes, there is generally a period for expert discovery. Typical
expert testimony comes from industry experts who can opine about what is standard or

5 The primary register of trademarks maintained by the United States Patent and Trademark Office. It is
governed by Subchapter I of the Lanham Act.
6 15 U.S.C. Section 1115(b).
7 Uniform Domain Name Dispute Resolution Policy, October 24, 1999. See: https://www.icann.org/
resources/pages/policy-2012-02-25-en.

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customary or not in the industry, technical experts who can address whether or not a product
configuration or package design is functional, survey experts who can testify to consumer or
purchaser perception based on research they have done, and damages experts. Other types of
experts called upon may testify as to the genesis or meaning of terms, as linguists.
At the close of discovery, and assuming the matter is not resolved on the basis of a
summary judgment motion where the court determines that there is no material issue of fact,
a trial on the merits is not required, and the outcome can be determined as a matter of law,
there is a trial that may be conducted with or without a jury, depending on the nature of the
relief sought (where only injunctive relief is sought, there is no entitlement to trial by jury)
and whether or not a jury demand has been timely made.
At trial, the parties have the opportunity to introduce evidence and present argument.
Appeals from jury verdicts are limited.8 In an appeal from a decision made by the court,
the findings of fact are upheld if supported by substantial evidence.9 The conclusions of law
are not accorded such deference. Whether the determination of likelihood of confusion is a
finding of fact or of law, or a mixed question of law and fact, will depend on the circuit in
which the trial has been held.10
Proceedings before the TTAB follow a similar pattern, and the same evidentiary and
procedural rules generally apply, but there are some notable variations. There is no live
testimony in a TTAB proceeding; however, either party in an inter partes proceeding can
request oral argument. There is also a restriction in the evidence and the resolution to the
issue of registrability of the mark as shown in the application or registration at issue and
to the goods and services as set out in the identification of goods and services. That is, the
real-world marketplace context may not be considered if the subject mark is presented in
block letter ‘standard format’ rather than in the logo form actually used, and the precise
channels of trade may also not be considered if the application or registration contains no
restriction on trade channels and the goods and services are such as move through other or
broader channels of trade.

v Remedies
There is a broad range of remedies that may be granted by the courts once infringement
is found.
The statutes provide for injunctive relief. Injunctions may be mandatory as well as
prohibitory. That is a court can order a recall of goods bearing the infringing marks. A court
may order that corrective advertising be undertaken or disclaimers of affiliation be added to
materials to be published or otherwise made available.

8 See Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).


9 Fed. R. Civ. P. 52. Also see: Bose Corp. v. Consumers Union of U.S., Inc., 466 U.S. 485 (1984).
10 Compare Progressive Distrib. Servs. v. UPS, Inc., 856 F.3d 416, 427 (6th Cir. 2016) (‘This Court considers
the question of whether there is a likelihood of confusion to be a mixed question of fact and law’), with:
(1) Dorpan, S.L. v. Hotel Meliá, Inc., 728 F.3d 55, 64 (1st Cir. 2013) (‘Likelihood of confusion is a question
of fact’); (2) Gruma Corp. v. Mexican Rests., Inc., 497 Fed. Appx. 392, 395 (5th Cir. 2012) (‘The issue of
likelihood of confusion is generally a fact question’); and (3) 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d
1229, 1243 (10th Cir. 2013) (‘Likelihood of confusion is ordinarily a question of fact for the jury’).

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More commonly, injunctive relief is prohibitory. The defendant is ordered to stop the
conduct that is the basis of the complaint. There may or may not be a period of time within
which the defendant must comply, such as 30 days from the effective date of the order. The
prohibited conduct may be described in more or less detail.
The statutes also provide for monetary relief.11 The recovery can take the form of
disgorgement of the profits the plaintiff would have made but for the infringement, particularly
when the market is comprised only of the two parties. The recovery can take the form of the
profits the defendant accrued that were attributable to the infringement. Recovery can also
take the form of whatever other damages the plaintiff can establish with some specificity,
such as the amount spent on corrective advertising to remedy the misunderstanding and
confusion.
While the statutes provide for monetary relief and attorneys’ fees, such remedies are
granted in ‘exceptional circumstances’ and are subject to the principles of equity, not as
penalties. Such relief is typically granted when the parties are competitors, the defendant has
benefited from the infringement, and its conduct has been deliberate, or the infringer has
through the course of the litigation demonstrated bad faith, raised frivolous arguments, or
otherwise engaged in misconduct offensive to the court.
The exception to a court’s reluctance to impose other than injunctive relief is in the
instance of the use of counterfeit marks on the same goods as are identified with the senior
user or plaintiff’s federal trademark registration. Section 15 U.S.C. Section 1117(b) of the
Lanham Act provides for statutory damages and fees to be awarded to the successful plaintiff
in an action for use of a counterfeit of a mark that is the subject of a federal trademark
registration issued on the Principal Register.

V OTHER ENFORCEMENT PROCEEDINGS


There are a number of other venues and measures for approaching violations of trademark
rights.
While the Lanham Act provides for enhanced damages and statutory damages for use of
counterfeits of registered marks on and in connection with the goods and services identified
in the certificate of registration (15 U.S.C. Section 1117(b)), use of counterfeit marks is also
a criminal offence (18 U.S.C. Sections 470 et seq.).
US Customs and Border Control also have a role in blocking importation of infringing
goods.12 One of the benefits of federal registration on the Principal Register is the right
to record the registration with customs, and customs may prohibit entry into the US of
infringing goods, and order the recall of infringing goods inadvertently allowed into the
country.13 As with criminal measures, the more information that the rights holder can provide
to the enforcement authorities, the more likely it is that effective action may be taken.
Note that the rights holder receives no monetary recovery from the criminal procedure
or from a seizure of goods by customs, but the rights holder likewise incurs no direct expense
of the prosecution.

11 See: the Lanham Act 15 U.S.C. Section 1117(a).


12 15 U.S.C. Section 1124; 19 C.F.R. Sections 133.1 et seq., Sections 162 et seq.
13 See: https://iprr.cbp.gov; 19 C.F.R. Sections 133.1 et. seq.

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VI RECENT AND PENDING CASES


There are a number of recent cases that have the potential to result in significant changes in
the practice of trademark law and that reflect current concerns.
Belmora, LLC v. Bayer Consumer Care AG 14 tests the territoriality principle in US
trademark law that rights in marks based on use outside the United States create no rights
within the United States.15 Belmora provides for rights to be enforced in the United States
based on activity outside the United States when the reputation of the mark, and the goodwill
associated with it, are known to the relevant purchasing public in the United States. The aim
of trademark law (i.e., to protect purchasers from confusion and to safeguard the reputation
of the senior user) would appear to be better served by acknowledging such rights.16
Christian Faith Fellowship Church v. Adidas AG 17 tests the principle that token use
of a mark is insufficient to establish rights in a mark. Intrastate use that has an impact on
interstate commerce has been well accepted as a basis to claim federal rights.18 Until the
Adidas case, it was not at all clear that sporadic, isolated uses might also qualify as a basis for
rights. Here, the priority right rested on the interstate sale of two hats.19
Where Adidas becomes problematic is in the area of enforcement of rights, and the
basis for the court’s decision conflicts with precedent that restricts relief in a civil action to
matters where there is a real likelihood (that is, probability) of confusion. Where there are
no sales by the senior user, there can be no reasonable likelihood of confusion. Accordingly,
courts require some significant degree of market penetration by a party in the position of
plaintiff before they will enjoin a junior user from selling into that territory. What constitutes
significant market penetration then becomes an important consideration for a person seeking
to enforce trademark rights. It appears – based on a recent Third Circuit decision – that
the amount of business must be much greater than ‘two hats’, and much greater than use
previously accepted as investing a party with enforceable trademark rights.20
Also of note, the Supreme Court decision on 19 June 2017 in Matal v. Tam, 582
U.S. (2017) held that the section of the Lanham Act that barred registration of disparaging
trademarks was unconstitutional under the First Amendment free speech provision as based on
viewpoint discrimination. The decision specifically allowed registration of THE SLANTS as
a mark for entertainment services although the term was deemed to be disparaging of persons
of Asian ancestry. The decision ended the decades-long effort to cancel the registrations for
the REDSKINS mark and brought into question the related provision of the Act prohibiting
registration of immoral or scandalous terms. The consensus is that this latter prohibition
will similarly be overturned. The open question remaining is whether dilution provisions
can withstand challenge to the extent that they are predicated on tarnishment rather than
blurring as the basis for the dilution claim, since tarnishment is akin to disparagement.

14 819 F.3d 697 (4th Cir. 2016), cert. denied 2017 WL 737826 (U.S. 27 February 2017).
15 See: Person’s Co. Ltd v. Christman, 900 F.2d 1565 (Fed. Cir. 1990).
16 But see: Jung v. Magic Snow, LLC, U.S. Opp. No. 91/226,056 (TTAB 20 September 2017).
17 841 F.3d 986 (Fed. Cir. 2016) (Adidas).
18 See: Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991).
19 841 F.3d 990 (Fed. Cir. 2016).
20 See Parks, LLC v. Tyson Foods, Inc., 863 F.3d 220 (3d Cir. 2017).

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VII OUTLOOK
In the coming year, it may be anticipated that there will be decisions that clarify or confuse
with respect to the extent of use in US commerce required to establish enforceable rights
in a trademark, and that address the nature and extent of evidence that may be required to
establish that a term is or is not generic for a particular good or service. It may be expected
that the jurisprudence will continue to evolve on what constitutes persuasive expert evidence
on apportionment of damages and surveys directed to secondary meaning as well as genericity
and dilution.
There are no major legislative initiatives planned with respect to trademark law, but
there are likely to be changes in the rules of practice before the TTAB, particularly with
respect to an abbreviated procedure for securing cancellation of registrations on the basis of
abandonment.

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Appendix 1

ABOUT THE AUTHORS

AGUSTIN CASTRO
O’Conor & Power
Agustin is an associate at O’Conor & Power as an attorney and patent and trademark agent.
His main focus is intellectual property litigation and domain name disputes.
Agustin is fluent in English and Spanish.

XENIA CHARDALIA
Christos Chrissanthis & Partners
Xenia Chardalia LLB (University of Leicester), LLM (University of Bristol), LLM (University
of London) is a member of the Athens Bar, as well as a patent and trademark agent. She
administers large patent and trademark portfolios on behalf of multinational firms. Her
practice also specialises in patent and trademark litigation before both the Greek courts and
the European Union Intellectual Property Office. She focuses on famous marks and luxury
goods, food and beverage branding, ‘lookalike’ and trade dress cases, parallel trade, licensing
and pharmaceuticals. She has also studied accounting and negotiation strategies and, in
addition to Greek law, she is also very familiar with English law.

CHRISTOS CHRISSANTHIS
Christos Chrissanthis & Partners
Christos Chrissanthis LLM (University of London), PhD (University of Athens) is a professor
of commercial law at the University of Athens, Faculty of Law, and a fully practising attorney-at-
law specialising in IP matters and complex commercial litigation. He has published extensively
on Greek trademark law. In addition to law, he has also studied accounting and negotiation
strategies. His professional practice covers fields such as pharmaceutical patents, trademark
litigation, parallel trade, anti-counterfeiting measures and unfair competition before the
Greek courts, as well as trademark litigation before the European Union Intellectual Property
Office and the General Court of the EU. He has successfully led some of the more important
IP litigation cases before the Greek courts and has greatly contributed to some of the most
notable recent court precedents in Greece regarding IP matters, such as parallel trade, famous
marks and trade dress litigation.

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JONATHAN CLEGG
Cleveland Scott York
Jonathan Clegg is a partner of Cleveland Scott York and has practised as a chartered trademark
attorney for more than 25 years. His main areas of expertise are in the development and
management of international trademark portfolios, including creating and implementing
opposition strategies, maintaining commercially relevant and up-to-date protection, and
handling contentious inter partes actions and appeals across many jurisdictions. He acts
before the UK IP Office, the EU IP Office and WIPO across a full range of trademark issues,
and is particularly experienced in UK and EU opposition and other contentious matters, in
negotiating on behalf of his clients, and in handling international applications and related
issues under the Madrid Protocol.
Jonathan is heavily involved in the International Trademark Association (INTA) and as
well as currently chairing its leadership development committee, he has been a regular speaker
for INTA for many years. He has also participated many times for WIPO as a speaker at its
seminars on the Madrid System, and he has spoken for the organisation at Madrid-focused
events in a number of countries. He is also a contributing author for Wolters Kluwer’s Concise
European Trade Mark and Design Law. He is ranked in Chambers UK 2018 as a UK-wide
top-tier trademark attorney.

MAURICIO MALECK COUTINHO


Veirano Advogados
For almost seven years, Mauricio headed the intellectual property disputes team in the Rio
de Janeiro offices. Having spent two and a half years in London (2013–2015) gaining further
academic and work experience, he now heads the intellectual property disputes team in the
São Paulo offices. He is also recognised for his expertise in trademark prosecution. Mauricio
manages administrative litigation matters, primarily handling trademark and patent cases,
consulting on copyrights, advertising, unfair competition, entertainment, e-commerce,
internet law, information technology, licensing, enforcement, among several others. Clients
value Mauricio’s counsel on very highly complex intellectual property disputes.

GIACOMO DESIMIO
Trevisan & Cuonzo Avvocati
Giacomo, a qualified attorney and associate, joined Trevisan & Cuonzo Avvocati in 2008. He
has solid experience in intellectual property (IP) and commercial law and is recognised for
his work in the protection of IP rights, in particular trademarks, designs, patents and domain
name protection. He is also versed in international private law, assisting Italian and foreign
companies in the framework of pan-European litigation.

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RICHARD DISSMANN
Bird & Bird LLP
Richard Dissmann has been practising trademark law as a private practice lawyer since 2000.
In all these years, he has been doing ‘Soft IP’ work exclusively. He started his career at an
international law firm in Cologne, and then moved to Bird & Bird in 2004, where he became
a partner in 2007. He wrote his doctoral thesis on the ‘Protection of well-known trademarks’
at the University of Cologne. He is ranked as a leading lawyer in the trademark field in
all relevant directories. His main focus in the area of trademarks is contentious work, i.e.,
litigation and other enforcement matters. However, he also advises his clients on strategic
issues, and oversees the operations of a portfolio team.

FRANCES DRUMMOND
Norton Rose Fulbright
Frances is an intellectual property lawyer based in Sydney.
She practises across all aspects of trademark law, including portfolio management,
enforcement and exploitation. Frances advises clients from a range of industries on intellectual
property strategies, including in pharmaceuticals, technology, retail and brands, transport,
energy, infrastructure, mining and financial institutions.
Frances has over 25 years’ experience practising in intellectual property law and joined
Norton Rose Fulbright after more than 10 years in another top-tier Australian law firm.
Prior to that Frances worked in Hong Kong and London. She has also worked extensively in
Asia-Pacific IP matters.

PATRICIA GARCÍA
Elzaburu
Patricia García is a lawyer specialising in litigation, and has been a member of Elzaburu’s legal
department since 2015. After completing her degrees in law and business administration and
management at the Complutense University, she completed a master’s degree in intellectual
and industrial property and new technologies at the Madrid Autonomous University. She has
been a member of the Madrid Bar Association since 2014.
Within the firm, she is responsible for providing out-of-court counsel and for assisting
clients in legal proceedings concerning trademarks, industrial designs and unfair competition.

ISCHA GOBIUS DU SART


Baker McKenzie
Ischa is a trademark and design attorney as well as legal adviser at Baker McKenzie
Amsterdam. Within the Amsterdam IP, IT and commercial contracting practice group, Ischa
heads the trademark prosecution team. As both a Benelux and European trademark and
design attorney and a legal adviser, he is engaged in the field of trademark and design law.
Ischa has wide experience in the worldwide protection of trademarks and designs, as well as
in providing strategic advice on trademarks and designs, handling of opposition procedures
and infringement of IP rights and portfolio management relating to intellectual property. He
is also involved in legal cases concerning the infringement of trademark and design rights.

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ILYA GORYACHEV
Gorodissky & Partners
Ilya joined Gorodissky & Partners in 2013. He is a senior lawyer and focuses on providing
legal support on intellectual property and general commercial matters, including unfair
competition; domain disputes, licensing, assignments; franchising and other IP-related
transactions; advertising and marketing regulations; IP issues in M&A transactions; IP due
diligence; personal data protection; and industry-related regulatory affairs, including advising
life science companies. He also assists with IP enforcement and anti-piracy, and handles all
types of IP infringement cases before the courts and administrative bodies.

STEFFEN HAGEN
Baker McKenzie
Steffen Hagen is a counsel in the firm’s IP, IT and commercial contracting practice group in
Amsterdam. Steffen has been practising commercial intellectual property law for more than
15 years, particularly in the fields of trademarks, designs, copyrights, database rights, domain
names and patents. He is very experienced in litigation, advice and strategy, commercial
contracting and licensing, IP restructuring, franchising and distribution, customs seizures
and anti-counterfeiting, and corporate transactions.
Steffen is knowledgeable in IP litigation and disputes, particularly in trademark and
copyright infringement matters and brand enforcement strategy. He is also regularly involved
on IP aspects in transactions and contracts. Steffen has particular interest in customs seizures
as well as ambush marketing and IP-related sports law. His clients include various A-rated
brands and multinationals, particularly in the FMCG, online, media, healthcare, and fashion
and sports industry sectors.

ALEXANDER HEIRWEGH
PETILLION
Alexander Heirwegh is an associate specialising in intellectual property, information
technology, data protection, internet, e-commerce and telecommunications.
Alexander obtained a master’s degree in law at Ghent University, magna cum laude. He
also obtained an LLM in intellectual property and ICT law at Leuven University, magna cum
laude. During his studies, Alexander focused on European and IT law at Charles University
in Prague, Czech Republic, while taking part in the Erasmus exchange programme.
Alexander has a particular expertise in online brand and copyright protection, and
domain names. He has participated in various online trademark and copyright infringement
cases and domain name disputes.
He has written a master’s thesis on privacy and trademark enforcement issues in
cybersquatting cases, which will be published by early 2018..

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JULIA HOLDEN
Trevisan & Cuonzo Avvocati
Julia Holden is a senior partner and is qualified as both an English solicitor and an Italian
attorney. She has been practising with Trevisan & Cuonzo since its establishment in 1993.
Julia has worked with Anglo-American companies and multinational corporations for many
years, providing advice on all aspects of intellectual property and in particular trademark
protection and enforcement, including litigation, anti-counterfeiting, unfair competition
and customs monitoring in diverse industries. Julia has worked with a broad range of clients.
More recently, she has advised Harley Davidson, Superdry, Beiersdorf AG, Jaguar Land
Rover, Alitica and Marion Parke.

PETER HOULIHAN
Cleveland Scott York
Peter is a chartered trademark attorney and has over 20 years’ experience in the clearance,
registration and enforcement of trademarks. In the past five years, his work has focused
particularly on enforcement of trademark rights in the Intellectual Property Enterprise Court.

ROBERTA JACOBS-MEADWAY
Eckert Seamans Cherin & Mellott, LLC
Roberta Jacobs-Meadway focuses her practice on trademark, copyright and unfair competition
law, as well as related licensing and litigation in the federal courts and before the Trademark
Trial and Appeal Board. An established expert in the field of intellectual property law and
ethics, she has received many recognitions and awards, including an AV Preeminent rating
from Martindale-Hubbell, the Anne X Alpern Award by the Pennsylvania Bar Association
Commission on Women in the Profession, and listing by Chambers USA: America’s Leading
Lawyers for Business for Intellectual Property as one of the leaders in the field of intellectual
property law.
Jacobs-Meadway has championed the role of women in the legal profession throughout
her career and has served on the Pennsylvania Bar Association Commission on Women in the
Profession since 2008. She earned her law degree from Rutgers University School of Law and
her undergraduate degree from Bryn Mawr College.

JAN JANSSEN
PETILLION
Jan Janssen is a senior dispute resolution lawyer with a keen interest in complex regulatory
matters and technology. He specialises in commercial and international arbitration with a
focus on intellectual property, information technology and the liberalisation of sectors.
Jan’s practice primarily involves complex civil litigation and commercial arbitration
in a variety of industries, including fashion, media, postal services, technology and
telecommunications.
Jan also provides contractual advice and assists clients in protecting, managing and
enforcing their intellectual property rights both in an online and offline environment. He
assists and represents clients in transactional matters, such as distribution, agency, licensing,
technology transfer, software development, outsourcing and service level agreements.

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SOPHIE LEES
Norton Rose Fulbright
Sophie is an intellectual property lawyer based in Sydney.
She focuses on intellectual property transactions and strategic commercial contracts
(particularly those involving technology). Sophie regularly advises on the intellectual
property aspects of corporate and financing transactions, commercial arrangements
involving intellectual property (including sponsorship, franchises, licensing arrangements
and technology development agreements) and complex commercial contracts. Sophie advises
across all sectors, with a particular interest in consumer markets, technology and financial
institutions.

CATHERINE MATEU
Armengaud-Guerlain
Catherine Mateu, a partner at Armengaud-Guerlain, has more than 15 years of experience
in French and European intellectual property law, serving clients that range from inventors,
designers, non-profit groups and local start-ups to multinational corporations. Her practice
focuses on finding timely and cost-effective solutions to a wide array of patent, copyright,
trademark, design infringement, licensing matters and strategic advisory.
Catherine Mateu holds a postgraduate degree in domestic and European business law
from the Université de Nancy II, an LLM in common law from the University of East Anglia
in Britain, a DESS in industrial property from the Université de Paris II, and a DEA in private
international law from the Université de Paris I. She has a been a lawyer at the Paris Bar since
1999, and has received intellectual property certification from the French Bar Association.
She is bilingual in French and Spanish, and fluent in English and Basque.

SERGEY MEDVEDEV
Gorodissky & Partners
Sergey joined Gorodissky & Partners in 2007. He advises clients on various matters related
to legal protection, ownership, acquisition, exploitation, licensing, securitisation, litigation
and enforcement of IP and IT rights in Russia and CIS. He litigates and actively enforces IP/
IT rights in Russia. He combats unlawful and unauthorised use of IP/IT and illegal content
on the internet, represses unfair competition and false advertising, tackles parallel imports
and grey market goods, and fights against counterfeiting and piracy. Sergey represents the
interests of clients in court and with law enforcement agencies.

ALEXANDER NESTEROV
Gorodissky & Partners
Alexander joined Gorodissky & Partners in 2001 and was promoted to partner at the firm
in 2012. His experience includes counselling clients on protection and enforcement of
trademarks and service marks, and appellations of origin and other trademark issues. He
represents clients before the Russian PTO, commercial courts, and the Russian IP Court.
Alexander also focuses on registration proceeding strategy and on infringement cases, and
advises clients on transactional, opposition and cancellation work.

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JAKOB KRAG NIELSEN


Lundgrens
Jakob Krag Nielsen has particular expertise and experience in contentious as well as
non-contentious work in the area of patents, trademarks and other intellectual property
rights. Jakob represents Danish and international clients from all industries, but in particular
technology-intensive industries within e.g., life sciences and healthcare. Jakob’s approach is
straightforward, always appreciating that any value-creating advice needs to be based on a
profound understanding of the client’s commercial targets and needs.

DIÉGO NOESEN
PETILLION
Diégo Noesen is a member of the intellectual property, information technology and media
team. He is a senior dispute resolution lawyer focusing on European and domestic litigation
with an emphasis on intellectual property. Diégo’s practice involves complex civil litigation in
a variety of industries and sectors, including media and entertainment, fashion, automotive,
technology and telecommunications.
Diégo also provides transactional advice and assists clients in protecting, managing
and enforcing their intellectual property rights. He has a particular expertise in brand and
copyright protection, and domain names.

SANTIAGO R O’CONOR
O’Conor & Power
Santiago O’Conor is managing partner at O’Conor & Power Abogados, Propiedad Industrial
in Buenos Aires.
With more than 35 years of experience in all areas of intellectual property, during his
extensive career as an attorney and patent and trademark agent, Santiago was a partner and
head of the international department of the largest intellectual property (IP) practice law firm
in Argentina for more than 20 years, and when he first graduated as an attorney, an associate
of one of the biggest law firms in the world.
O’Conor & Power handles IP matters for middle-sized and large companies, particularly
the handling of trademark portfolios in Argentina and Latin America.
Santiago is fluent in English and Spanish.

FLIP PETILLION
PETILLION
Flip Petillion is a leading domestic and international litigator and arbitrator.
Flip has been handling court litigations and arbitrations for nearly 30 years. Matters
were related to different industries. He has built an outstanding reputation through his special
focus on intellectual property rights, information, communication, technology and media.
He represents multinationals and first-class individual portfolio holders.
Flip created PETILLION. It is a boutique firm focusing on dispute resolution. The
firm acts in Belgian courts and before the European Court of Justice and the European
General Court.

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SØREN DANELUND REIPURTH


Lundgrens
Søren Danelund Reipurth specialises in intellectual property. He has wide experience in
the field, but particularly specialises in trademarks, designs and domain names as well as
marketing law. He advises on the establishment and enforcement of trademark and design
rights. In addition, he has litigated several court cases before the Maritime and Commercial
High Court and the High Courts concerning, inter alia, trademarks and product imitations
as well as marketing infringements.
Søren advises Danish and international companies in most industries, but particularly
has experience within the fashion and design industry, technology intensive industries and the
entertainment industry in general. Søren has been awarded an LLM in intellectual property
law by the University of Melbourne and is a recipient of The Frank Pinkerton Scholarship for
Competition Law and Intellectual Property.

MARTA RODRÍGUEZ
Elzaburu
Marta Rodríguez is a junior associate of the trademarks department. She has a master’s degree
in European Union law (Madrid Autonomous University) and in industrial and intellectual
property and new technologies (University of Alicante). She is a lawyer with four years of
professional experience in intellectual property (IP). Marta has been a Spanish IP agent and
a European trademark agent since 2013.
She is in charge of the management and defence of the trademark portfolios of
multinational companies operating in a varied range of sectors. This entails acting for those
clients in proceedings before the Spanish Patent and Trademark Office and the EUIPO.
She regularly acts as authorised representative before the EUIPO. She is a member of
the Famous and Well-Known Marks Committee of the International Trademark Association.

LUIGI A SANSONE
SALOMONE SANSONE
Born in 1969, Luigi read law at the University of Buckingham in the United Kingdom
and graduated with an LLB with honours in 1990. He graduated with an LLD from the
University of Malta in 1995. He has been a practising advocate since 1996 and heads the
firm. He is a European Patent Attorney and a Malta Council Member of the European Patent
Institute (EPI) and the European Communities Trademark Association (ECTA). Luigi is
also an overseas member of the Institute of Trade Mark Attorneys  (ITMA) in the United
Kingdom, and a member of MARQUES, AIPPI, the International Trade Mark Association
(INTA) and the Pharmaceutical Trade Marks Group (PTMG). He speaks English, Maltese,
Italian and French.

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About the Authors

ANTONIA VASILOGAMVROU
Christos Chrissanthis & Partners
Antonia Vasilogamvrou LLB, MSc is an attorney at law and a patent and trademark agent.
She focuses on patent and trademark filing and court litigation, with emphasis mainly on
aspects relating to sectors such as pharmaceuticals, and food and beverages. In addition to
law, she has studied economics and management. She handles cases before both the Greek
courts and the European Union Intellectual Property Office.

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Appendix 2

CONTRIBUTING LAW FIRMS’


CONTACT DETAILS

ARMENGAUD-GUERLAIN CHRISTOS CHRISSANTHIS


12 avenue Victor Hugo & PARTNERS
75116 Paris 12 Solonos Street
France Athens 10673
Tel: +33 1 47 54 01 48 Greece
Fax: +33 1 40 54 78 57 Tel: +30 210 3620051
c.mateu@armengaud-guerlain.com Fax: +30 210 3620086
www.armengaud-guerlain.com chrissan@otenet.gr
chardalia.xenia@chrissan.gr
vasilogamvrou.antonia@chrissan.gr
BAKER MCKENZIE www.chrissan.gr
Claude Debussylaan 54
1082 MD Amsterdam
The Netherlands CLEVELAND SCOTT YORK
Tel: +31 20 551 7579 / 7555 10 Fetter Lane
Fax: +31 20 626 7949 London
steffen.hagen@bakermckenzie.com EC4A 1BR
ischa.gobiusdusart@bakermckenzie.com United Kingdom
www.bakermckenzie.com Tel: +44 20 3077 3499
Fax: +44 20 7583 9575
j.clegg@csy-ip.com
BIRD & BIRD LLP p.houlihan@csy-ip.com
Maximiliansplatz 22 www.csy-ip.com
80333 Munich
Germany
Tel: +49 89 3581 6000
Fax: +49 89 3581 6011
richard.dissmann@twobirds.com
www.twobirds.com

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Contributing Law Firms’ Contact Details

ECKERT SEAMANS CHERIN & NORTON ROSE FULBRIGHT


MELLOTT, LLC Level 18, 225 George Street
Two Liberty Place, 50 South 16th Street Sydney NSW 2000
22nd Floor Australia
Philadelphia, PA 19102 Tel: +61 2 9330 8000
United States Fax: +61 2 9330 8111
Tel: +1 215 851 8400 (main) frances.drummond@
+1 215 851 8522 (direct) nortonrosefulbright.com
Fax: +1 215 851 8383 sophie.lees@nortonrosefulbright.com
rjacobsmeadway@eckertseamans.com www.nortonrosefulbright.com
www.eckertseamans.com

O’CONOR & POWER


ELZABURU San Martin 663, 9th floor
Calle Miguel Angel, 21 Buenos Aires
28010 Madrid Argentina
Spain Tel: +54 11 4311 2740
Tel: +34 91 700 9400 +54 11 5368 7192/3
Fax: +34 91 319 3810 Fax: +54 11 4311 5368
mrd@elzaburu.es ocp@oconorpower.com.ar
gsp@elzaburu.es www.oconorpower.com.ar
www.elzaburu.es

PETILLION
GORODISSKY & PARTNERS Oudenakenstraat 19
B.Spasskaya Str., 25, bldg. 3 B-1600 Sint-Pieters-Leeuw
129090 Moscow Belgium
Russia Tel: +32 2 306 18 60
Tel: +7 495 937 6116 fpetillion@petillion.law
Fax: +7 495 937 6104 jjanssen@petillion.law
pat@gorodissky.ru dnoesen@petillion.law
www.gorodissky.com aheirwegh@petillion.law
www.petillion.law

LUNDGRENS
Tuborg Havnevej 19 SALOMONE SANSONE
2990 Hellerup 84-85 Melita Street
Copenhagen Valletta VLT1120
Denmark Malta
Tel: +45 3525 2535 Tel: +356 2123 7685/4588
jkn@lundgrens.dk +356 2122 7781
sdr@lundgrens.dk Fax: +356 21237684
lundgrens.dk info@salomonesansone.com
www.salomonesansone.com

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Contributing Law Firms’ Contact Details

TREVISAN & CUONZO AVVOCATI VEIRANO ADVOGADOS


Via Brera 6 Av. Brigadeiro Faria Lima, 3477
Milan, 20121 16th floor
Italy São Paulo 04538 –133
Tel: +39 02 86 46 33 13 SP – Brazil
Fax: +39 02 86 46 38 92 Tel: +55 11 2313 5700
jholden@trevisancuonzo.com Fax: +55 11 2313 5990
gdesimio@trevisancuonzo.com mauricio.maleck@veirano.com.br
www.trevisancuonzo.com www.veirano.com.br

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