"CASE-LAW IN THE AREA OF INDUSTRIAL PROPERTY, AS WELL AS TRADEMARK AND SERVICE MARK, PROTECTION" DR KATARZYNA ANDRZEJCZAK POZNAN UNIVERSITY OF ECONOMI...
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"CASE-LAW IN THE AREA OF INDUSTRIAL PROPERTY, AS WELL AS TRADEMARK AND SERVICE MARK, PROTECTION" DR KATARZYNA ANDRZEJCZAK POZNAN UNIVERSITY OF ECONOMICS
DISPUTES: INFINGEMENT & DILUTION
RIGHTS OF PROPRIETOR entitled to prevent all third parties not having his consent from: using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trademark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
TRADEMARK DISPUTES Infringement Who was first Is it likely that consumers will be confused?
Dilution – of FAMOUS marks Is the mark really famous Is it likely to be diluted – hermed reputation of quality, or strenght
Cybersquatting Senior user Junior user
INFRINGMENT CONFUSION the source of the goods or services which product or service is being purchased physical or perceptive similarity between the two marks and an overlapping of marketing territories or channels SALLY LEE
COUNTERFITS RULE If goods are classified as counterfeit - look alike goods with fake trademarks—there is no need to conduct a factor-byfactor analysis of likelihood of confusion
http://www.jewellermagazine.com/ViewDBImage.aspx?i=4191
NO CONFUSION junior user is permitted to use a similar mark on dissimilar goods
Dunhill cigarettes and Dunhill shoes
BRIDGING THE GAP Protection of what consumers would reasonably expect that the senior user would expand its product line.
…?
TERRITORY MATTERS? Territorial character of IP no likelihood of customer confusion Changing internet and globalized environment Important role of business character Local pharmacy On-line shop
?
DELIMITATION: a business of a type can reasonably expect to attract its customers
GOOD AND BAD FAITH Did junior user know about existance of a trade mark?
THE USE OF TRADEMARK affixing the sign to the goods or to the packaging thereof; offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services there under; importing or exporting the goods under the sign; using the sign on business papers and in advertising Constructive use
HOW TO DEFEND FROM INFRINGEMENTS The mark is descriptive. A junior user can defend its use if a senior user’s mark is weak and lacks secondary meaning – squares, Levi’s v Ambercrombie
Abandonment. A junior user can defend its use if the senior user has abandoned its mark
Genericness. A junior user can defend its use if the senior user’s mark has become the generic term for the goods or services
Trademark misuse. A senior user may be prohibited from recovering damages for infringement if it has violated antitrust laws or used fraud to obtain a registration
HOW TO DEFEND FROM INFRINGEMENTS Fair use. when the term is used to describe products or services the U.S. Supreme Court ruled that the fair-use defense can be made even when the use results in consumer confusion
Free speech and parody. Video game, “Grand Theft Auto: San Andreas” were permitted to parody an East Los Angeles strip club, “The Play Pen” (referred to as the “Pig Pen” in the game). The court permitted the parody:artistic use of a mark is permitted when: (1) the use has artistic relevance to the work at issue (the video game), and (2) it doesn’t explicitly mislead consumers as to the source of the mark or the work. Star Wars theme in political campaign E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095 (9th Cir. 2008)
DILUTION The lessening of the capacity of a famous mark to identify and distinguish goods or services Famous trademark lose its distinctive character and legal strength consumers would necessarily expect the business owning the famous mark to be associated in some way with the second user
GENERAL CONDITIONS
The senior mark is famous. The senior mark is distinctive. The junior use is commercial in nature. The junior use began after the senior mark became famous. The junior use lessens the senior mark’s capacity to identify and distinguish goods and services.
AM I FAMOUS? the duration, extent, and geographic reach of advertising and publicity of the mark the amount, volume, and geographic extent of sales of goods or services offered under the mark the extent of actual recognition of the mark whether the mark was registered on the Register niche marks
REPUTED MARK Malaika and Starion campanies sell perfume made by Bellure company using compaision in adverisement with L'Oréal Tresor.
http://www.managingip.com/images/588/67402/loreal_bellure.jpg
DOMAINS & CYBERSQUATING
DOMAIN CHARACTERISTICS An address (whitehouse.gov) Trademark (amazon.com) Expression of free speech (governmentsucks.com).
Unlike a trademark, a domain name is awarded to the first person to pay for it. Most companies want domain names that are the same as or similar to their business or product names, for example, fedex.com, pbs.org, or staples.com.
FIGHT FOR YOUR.. DOMAIN Research suggest 90% of Eng. Words domained over 252 million worldwide TLD top-level domains: .com .net
TLD: 21% just one-page sites 15% registered but don’t point to a working site at all.
http://techcrunch.com/2013/04/08/internet-passes-250m-registeredtop-level-domain-names/
TLD gTLD generic TLD .com – commercial (od 1985)
.edu – education (od 1985) .gov – government (od 1985) .mil – military (od 1985) .net – internet (od 1985) .org – organization(od 1985) .int – international (od 1988) .biz – business (od 2001) .info – information (od 2001) .name – individual name (od 2001) .pro – professional (od 2001)
ccTLD .pl .de .uk
.aero .cat .coop .jobs .mobi .museum .travel
LEADING TLD
Largest TLDs in order by zone size were .com, .de (Germany), .net, .tk (Tokelau), .uk (United Kingdom), .org, .cn (China), .info, .nl (Netherlands) and .ru (Russian Federation).
DOT TK AFFAIR .TK favourite of spammers and scammers Rated one of the worst in the world for sheltering a high percentage of criminal domains 2533 attacks originating from Tokelau, all but about 100 were launched from legitimate .tk domains, remaining attacks launched from hacked .tk websites
Users and criminals have flocked to the free .tk domain Tokelau, which has 1500 residents, is home to more than 4 million registered domains. Tokelau's .tk, and the generic .com and .net TLDs together held 78 per cent of the world's malicious domain registrations, according to the research http://www.zdnet.com/pacific-atoll-a-phishing-haven-1339313909/
REGISTARTION Register free domain
WHY A RELEVANT NAME? AdSense – launched 2003 by Google - a service that allows any website to generate revenue through placement of targeted ads adjacent to website content. Is domain available?
TRADEMARK AND DOMAIN Many companies may use same word in trademark or as trademark One company may register relevant domain SIMILARITY OF SERVICES PRIORITY OF USE FAMOUS TRADEMARKS Bob registers the domain name ahab.com to sell artwork depicting whales. Jim has a catalog company, Ahab, that has been selling oceanthemed artwork and merchandise since 2000. Jim has registered the Ahab trademark and can stop Bob’s use of the domain name ahab.com. If Bob had registered the domain name with the intention of selling fishing gear, his use of ahab.com would not infringe Jim’s trademark.
ARRANGING THE DOMAIN AND SITE Establish a Web hosting arrangement with an ISP (Internet service provider Construct and upload a website Coordinate the reassignment of the domain name from the domain name registrar (the company that sold the domain name) to the ISP.
LOSS OF DOMAIN RIGHT
Failure to pay Infringment – consumer confusion Dillution of famous trademarks Cybersquatting
BUY DOMAIN? Cybersquatting Law suit against– 1000-3000$ It is possible to buy from him legally as well Greatdomains.com - Auctions for domains – much more expensive than normally
ICANN Internet Corporation for Assigned Names and Numbers (ICANN) coordinates the Internet Assigned Numbers Authority (IANA) functions, which are key technical services critical to the continued operations of the Internet's underlying address book, the Domain Name System (DNS).
CYBERSQUATING
SQUATING THEMES A herb company from Lodz, Poland Microsoft.pl Selling to rightfulll owner Advertisments Impersonatation eminemmobile.com
TYPOsquatting Nasza-klasa.pl nasz-klasa.pl
2.0 version FB, Twitter – removed by administrator Image damages in teh mean time
.xxx squating
CYBERSQUATTING BAD FAITH 2000 – Olympic Comittee filed law suits and shut down 1800 websites containing words Olympic, Olympics, Olympiad Brad Pitt sued bradpitt.net, bradpitt.com GOOD FAITH Ford Financial Services sued by Ford Motor Company – they were offering financial related services with registered trademark, and using it in domains My name is Kate Ford, can I register FORD Candies?
TO BE PROTECTABLE AS A TRADEMARK, YOUR DOMAIN NAME MUST Be distinctive Achieve distinction through customer awareness Be the first to use the name in connection with your type of services or products
TRADEMARK VS DOMAIN Xon.com Risk suit from EXONN avoiding the use of any other company’s trademarks in your programming code because it can be easily uncovered, and many well-known trademark owners regularly troll the Internet searching for such violations By providing links to other sites, [name of your website] does not guarantee, approve, or endorse the information or products available at those sites, nor does a link indicate any association with or endorsement by the linked site to [name of your website].
COMMENTS AND CRITICS Freedom of speech: Citiscs Comments
The software offered by Microsoft has been proved to …
HOWEVER: Website is offering goods and services as part of its criticism Website is likely to confuse users as to its sponsorship
KEYWORDS STORY search engines - two types of listings: relevant and sponsored search engine algorithm domain name, material in its header (the headline that appears in the bar on top of browser), information in its metatags (information buried in the website code), the number of sites that are linked to it confusion was unlikely and indicated that Internet users have become sophisticated enough to understand the difference between search results and listings found under headings such as “Sponsored Links.”
DILLUTION OF TM By blurring: YES: selling rabbit head jewlery and saying it is Plaaboy origin (Palyboy wins 2004) YES: FOMOCO By turnishment to improperly and illegally benefit yahooloans.com attempted from [plaintiff’s] known intellectual property
FORD MOTOR CO. V. CROSS Defendants sold restoration parts for Ford automobiles using Ford's trademark FoMoCo in the domain name “fomoco.com” and the business name “FoMoCo Obsolete.” Plaintiff sued for: cybersquatting, defendant had no legitimate rights in the domain name and that defendant had a bad-faith intent to profit from plaintiff’s mark
trademark dilution, trademark infringement, false designation of origin, false advertising.
Think about the name WHERE do they come from? It took the name of the coca leaves and kola nuts used as flavoring. Coca-Cola maker John S. Pemberton altered the ‘K’ of kola to ‘C’ to make the name resonant and consonant.
The name was derived from an Adobe Creek River that ran behind the house of co-founder John Warnock
Sometimes a sentiment The name of the founder Adolf (Adi) Dassler.
The name taken after Emil Jellineks’ daughter?
Sometimes a strategy The two fabricated words meant to look Scandinavian to the American eye. It was a part of a branding strategy known as foreign branding – watch it! The idea was that Denmark was famous for its dairy products and had a positive image in the U.S. “… – the Greek goddess of victory”. No wonder a ‘swoosh’ was happily accepted by Nike, as it accurately signals a sign of victory. “…” (三星) is “tristar” or “three stars”, three representing something big, numerous and powerful and the stars representing eternity.
THANK YOU
https://lh4.googleusercontent.com/-FfeNR9Q1Q8/T60gc6jnVrI/AAAAAAABpik/ZSzrXzJy-DY/s1152d/cats%252520animals%252520sweets%2525201600x1200%252520wallpaper_ww w.wallfox_net_40.jpg
http://img.gmw.cn/images/attachement/jpg/site2/20140328/eca86ba05530149 f5a9c1b.jpg
