EU-China Workshop on Trademark Law

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EU-China Workshop on Trademark Law 13 May 2011 - Diqing (Yunnan Province) Marc L.

1 EU-China Workshop on Trademark Law 13 May Diqing (Yunnan Province) Marc L. Holtorf / 郝韬福 Topic I - Trademark use and intention to use as requirement for trademark registration

2 Overview Principles Consequences of a bad faith application Intention to use and bad faith Intermediate conclusions Consequences and examples Conclusions Appendix 13/14 May

3 Principles Neither German nor European trademark laws require the prior use of a trademark as requirement for a trademark application or registration. Neither German nor European trademark laws explicitly stipulate an intention to use requirement as prerequisite for a trademark application or registration. 13/14 May

4 Principles (2) This is by no means self-explanatory For example, with regard to the former German Trademark Law (Warenzeichengesetz, expired 31 December 1994), the German Federal Court of Justice ruled that a party applying for trademark registration has to have a general intention to use the trademark in a genuine way. The existence of such intention was assumed by way of a rebuttable assumption. See also: US trademark law (Sec. 1 (a) and (b) Lanham (Trademark) Act (15 U.S.C.)). 13/14 May

5 Principles (3) The German and European approach seems to make sense given that a grace period of five years for a genuine use exists. For so-called Community trademarks the grace periods starts with the registration. For German trademarks the grace periods starts with the registration or, in case of an opposition, with the end of the opposition proceeding. In either case the grace period can be extended if proper reasons for the non-use exist. 13/14 May

6 Principles (4) Generally, the necessity of an intention to use is acknowledged in both Germany and the European Union. However, the means by which both Germany and the European Union balance the public and the individual interests are different compared to, e.g., the US approach; and generally speaking, the importance of the intention to use is different than, e.g., in the US. 13/14 May

7 Principles (5) The intention to use requirement is (indirectly) taken into account in the provisions against bad faith applications. 13/14 May

8 Consequences of a bad faith application In Germany - to give a few examples - Since 2004 a trademark application filed in bad faith constitutes an absolute ground for refusal and, hence, the application can be rejected by the German Patent and Trademark Office, provided the bad faith is apparent. Under certain circumstances a trademark registration based on a bad faith application can be declared invalid ex-officio. The rights resulting from a trademark registered in bad faith are otherwise limited as well. 13/14 May

9 Consequences of a bad faith application (2) With regard to Community trademarks - to give a few examples - A trademark application filed in bad faith does not constitute an absolute ground for refusal; However, a Community trademark shall be declared invalid on application to the Community Trademark Office or on the basis of a counterclaim in infringement proceedings where the applicant was acting in bad faith when he filed the application for the trademark. 13/14 May

10 Intention to use and bad faith Definition of bad faith A definition of the term bad faith can neither be found in the European Union s nor in the German trademark laws. In order to determine whether an applicant is acting in bad faith one must take into consideration all the relevant factors specific to the particular case which pertained at the time of filing the application for registration of the sign, 13/14 May

11 Intention to use and bad faith (2) Definition of bad faith (2) in particular the fact that the applicant knows or must know that a third party is using [, in at least one Member State,] an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought; the applicant s intention to prevent that third party from continuing to use such a sign; that is in particular the case when it becomes apparent [, subsequently,] that the applicant applied for registration of a sign as a trademark without intending to use it, his sole objective being to prevent a third party from entering the market. 13/14 May

12 Intention to use and bad faith (3) Definition of bad faith (3) in particular and the degree of legal protection enjoyed by the third party s sign and by the sign for which registration is sought. 13/14 May

13 Intermediate conclusions The lack of an intention to use must exist at the time of filing the trademark application. The lack of an intention to use as such is not sufficient in order to create a bad faith application. An application evidently filed in bad faith is an absolute ground for refusal in Germany. 13/14 May

14 Consequences and examples Speculative trademarks Lack of intention to use; and Intention to encumber at least as a major motive. Determination of such intention might not be easy, however, requirements should not be to overstretched. Intention to encumber can be determined by relying on the general experience of live. 13/14 May

15 Consequences and examples (2) Speculative trademarks (2) Indications might be Applications for registration of a name or image of a famous living or dead person by an unauthorized applicant. Unjustified applications for registration of well-known designations, e.g., systematic applications for registration in cases in which registered trademarks of competitors can be deleted due to an insufficient use. Systematic application for registration of works for which the copyright protection expired. 13/14 May

16 Consequences and examples (3) Trademark application for inappropriate purposes Lack of intention to use; and Inappropriate purposes at least as major motive, namely if the major purpose of the application is not to promote own economic interests but to damage the business of a competitor. An indication might be Applications for registration of a designation to be registered by a competitor in order to block the competitor s registration. 13/14 May

17 Consequences and examples (4) Defensive trademarks Lack of intention to use; and Extension of scope of protection for main trademark An indication might be Applications for registration and/or registration of a number of trademarks similar to the main trademark without any evidence for a legitimate intention to use the defensive trademark(s) for other purposes than extending the scope of protection for main trademark. 13/14 May

18 Conclusions The prior use of a trademark is neither required for filing a trademark application nor for its registration. According to both German and European trademark law, the lack of an intention to use is only relevant if the lack of such intention - together with other prerequisites - constitutes a bad faith trademark application. 13/14 May

19 Marc L. Holtorf / 郝韬福 Fachanwalt für Gewerblichen Rechtsschutz (expert lawyer for intellectual property law) Top 60 German IT lawyers Marc Holtorf is partner in the Düsseldorf office of Clifford Chance. He is the global head of the Trademark & Unfair Competition Law Group, an integral part of the firm's worldwide Healthcare, LifeSciences & Chemicals industry group. He is also a leading member of the firms global intellectual property and anticounterfeiting units. Marc advises and represents national and international clients from a number of different business sectors in and out of court - with a focus on advertising/promotion, trademark, design, know-how protection and licensing matters. Marc L. Holtorf Königsallee Düsseldorf Germany Tel: Cell phone: Fax: marc.holtorf@ cliffordchance.com Often recommended lawyer Further, Marc is heavily active in the area of IT law, including IT outsourcing and data protection compliance projects. Marc is lecturer at the University of Düsseldorf. He is a sought speaker, has published various articles and is co-author of various legal books in his areas of expertise. In addition, he is assistant chairman of the committee for the appointment of expert lawyers in the field of intellectual property (a protected title in Germany) in the circuit of the Düsseldorf Court of Appeal. For many years, the Juve Handbook on German Commercial Law Firms, has named Marc as an often recommended lawyer. Recently, Marc has also been named in the Top 60 list for IT law published by Germany s most important commercial newspaper Handelsblatt. Languages: German and English. 13/14 May

32 offices in 22 countries New York São Paulo Washington DC Amsterdam Barcelona Brussels Bucharest Düsseldorf Frankfurt Istanbul Kyiv London Luxembourg Madrid Milan Moscow Munich Paris Prague Rome

20 32 offices in 22 countries New York São Paulo Washington DC Amsterdam Barcelona Brussels Bucharest Düsseldorf Frankfurt Istanbul Kyiv London Luxembourg Madrid Milan Moscow Munich Paris Prague Rome Warsaw Abu Dhabi Dubai Riyadh* Bangkok Beijing Hong Kong Perth Shanghai Singapore Sydney Tokyo *Clifford Chance has a co-operation agreement with Al-Jadaan & Partners Law Firm in Riyadh. 13/14 May

EU-China Workshop on Trademark Law www.cliffordchance.

21 EU-China Workshop on Trademark Law Clifford Chance, Königsallee 59, Düsseldorf, Germany Clifford Chance 2011 Clifford Chance Partnerschaftsgesellschaft von Rechtsanwälten, Wirtschaftsprüfern, Steuerberatern und Solicitors Sitz: Frankfurt am Main AG Frankfurt am Main PR 1000 GERMANY v1

Article 2.4.f. BCIP describes, by way of example, two bad faith situations :

Article 2.4.f. BCIP describes, by way of example, two bad faith situations : AIPPI 2017 Study Question - Bad faith trademarks Part I. Current law and practice, Repeat filings Q1) Does your Group's current law provide for an action against the application or registration for a trademark