Does it exist the European trademark? No. There exists the European Union trademark.
Difference between European Trademark and European Union Trademark
The difference is relevant, because it is necessary to bear in mind that the European Union Trademark Registration is effective not in all Europe, but only in the Member States of the European Union, which are: Austria, Belgium, Bulgaria, Cyprus, Croatia, Denmark, Estonia, Finland, France, Germany, Greece, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Holland, Poland, Portugal, Czech Republic, Romania, Slovenia, Slovakia, Spain, Sweden, Hungary. The United Kingdom, following Brexit, is going to leave the European Union and, unless changes during the negotiation, will become definitively a third State from 30 March 2019.
Article 1, 2) of the EU Trademark Regulation provides that:
“ An EU trademark shall have a unitary character. It shall have equal effect throughout the Union: it shall not be registered, transferred or surrendered or be the subject of a decision revoking the rights of the proprietor or declaring it invalid, nor shall its use be prohibited, save in respect of the whole Union. This principle shall apply unless otherwise provided for in this Regulation”.
The European Union Trademark, therefore, is not effective in all those States that, although European, are not part of the European Union. This means that the European Union trademark does not give any protection in States such as Switzerland, Norway, Albania, Macedonia, Ukraine, Russia, just to name some of them.
How to obtain trademark protection in the European States which are not member of the European Union
There are several options for protection, which must be assessed case by case after having considered many relevant factors, related to the needs of the company which wants to obtain protection.
In the abstract, we can state that it is always possible to register a national trademark. This means, for example, that if I want my trademark to be protected in Switzerland, I will have the possibility to file a Swiss trademark.
Another possibility, if all the assumptions are met, is to protect oneself through the international registration. In this case, however, since many condition must be assessed – not least the economic convenience of the filing – we suggest to evaluate which is the best option of protection with the help of a consultant.
Eva Troiani’s law firm has the skills to offer you full assistance in this matter. Thanks to the network of agents in all Europe, the firm can handle the registration of your trademark both in the EU member States than in the European States which are not members of the EU.
- Tel. / fax: +39 06 58233422
The first section of the Italian Court of Cassation, by order n. 28818 of 30 November 2017, rules once again on a distinction which is often examined by the Italian case law, namely the difference between Weak trademark and strong trademark.
It is said “weak” the trademark with a low distinctive capacity, while it is said “strong” its opposite, namely the very distinctive trademark, usually because made up of fancy words (or other signs) or words that, despite being of common use, have not a conceptual link with the product and/or the service distinguished by the trademark.
In Italian case law it is a consolidated principle that “while for the strong trademark all modifications, even if relevant and original, but which leave unchanged the substantial identity or the expressive ideological nucleus constituting the fundamental idea on which the trademark is base are not allowed, for the weak trademark also slight modifications or additions are sufficient to exclude the confusion”. (Cass., Section I, 06/24/2016 n. 13170; 25/01/2016 n. 1267; 26/06/2007 n. 14787)
In this matter, the Court of Cassation has had the opportunity to specify that – in the comparison between two weak trademarks – even the presence of a purely descriptive expression as a constituent component of one of the two brands can have a decisive importance in distinguishing the later mark from the earlier mark.
In the present case, the later mark was composed of the combination of two terms, which, although both descriptive, gave rise to a combination which was considered as a whole sufficiently different from the earlier mark, a weak mark, in relation to which the danger of confusion has been excluded.
IT IS FORBIDDEN TO EXPLOIT MICHELANGELO’S DAVID’S NAME AND IMAGE WITHOUT AUTHORIZATION OF THE GALLERY OF THE ACADEMY OF FLORENCE
The Court of Florence, by order dated October 26, 2017 (RG.N. 13758/2017), stated, with reference to a travel agency which used the name and image of Michelangelo’s David for publicizing its business, the ban of use and reproduce on all the Italian and European territory of said image on flyers, sites and souvenirs, in the lack of authorization from the Galleria dell’Accademia of Florence.
In this case, a travel agency used the image of Michelangelo’s David for commercial purposes without ever trying to obtain the concession from the authority that has the property in hand, undoubtedly identifiable in the Gallery of the Academy in Florence.
The rule to be taken into consideration is the article 108 of Legislative Decree 42/2004 (Code of the Cultural Heritage) which makes subject to concession the reproduction of cultural assets for profit purposes. In fact, reproduction is free only if it is carried out without profit.
In the order the Court of Florence also ordered “the immediate withdrawal from trade and the destruction of all advertising material reproducing the image of Michelangelo’s David or parts of it, as well as all the tools used to produce and/or commercialize such products, everything with reference both to the company and to third parties which hold and/or have, however, the availability of such goods”.
Article 19 (2) of the Italian Industrial Property Code states that: “Who filed a trademark application in bad faith cannot obtain the registration”.
In detail, how is it possible to identify a case of bad faith?
The Court of Appeal of Milan (judgment of 9 December 2013, in r.g. 263/2011) states in that regard that “it is established that the filing in bad faith is only that of those who know that they (can) violate the right of another subject, while it is different the filing made by someone who knows the existence of a former trademark, but does not think to violate it for a reasonable reason”.
The awareness of being able to violate the right of others is, therefore, a presupposition and an integral part of the hypothesis of bad faith; this concept has been repeatedly emphasized by the case law. You can see, just of example, the Court of Rome (judgment of 17 February 2016, in r.g. 64105 of 2013), according to which: “It is known that the bad faith in the article 19 of the Italian Industrial Property Code makes reference to the registration in prevarication made by subjects already aware of the content and object of the trademark through manifestly fraudulent ways”.
With regard to the EUTM, bad faith is am absolute ground of invalidity of a trademark. Article 59, 1) lett. b) of the Regulation (EU) 2017/1001 of the European Parliament and of the Council states that: “An EU trademark shall be declared invalid on application to the 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 trademark”
The same rule was in the Article 51, 1) lett.b) of the previous EU Regulation 40/94, which was interpreted by the Court of Justice in its judgment of 11 June 2009 in Case C-529/07 which clarified that, whether the applicant is acting in bad faith, it is necessary to take into account all the factors relevant in the moment of the filing of the application, particularly:
- “the fact that the applicant knows or must know that a third party is using, in at least one Member State, and identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought→ the presumption of knowledge, by the applicant, of the use by a third party of an identical or similar sign for which registration is sought…may arise, inter alia, from a general knowledge in the economic sector concerns of such use, and that knowledge can be inferred, inter alia, from the duration of such use: In fact, the more that use is long-standing, the more probable it is that the applicant will, when filing the application for registration, have knowledge of it. However that presumption is not sufficient, in itself, to permit the conclusion that the applicant was acting in bad faith
- The applicant’s intention to prevent that third party from continuing to use such a sign→the intention to prevent a third party from marketing a product may, in certain circumstances, be n element of bad faith on the part of the applicant; that is in particular the case when it becomes apparent, subsequently, that the applicant applied for registration of a sign as a EUTM without intending to use it, with the sole objective being to prevent a third party from entering the market
- The degree of legal protection enjoyed by the third party’s sign and by the sign for which the registration is sought”
According to the Lebanese law, marks can be names, symbols, letters, drawings and figures and any sign of any kind intended to bring benefit by distinguishing between things and showing the identity, source, origin of goods or the products.
One application can cover more classes of goods and/or services.
After the filing, the Examining Attorney makes a complete review of the mark, including a search for earlier conflicting marks.
In Lebanon it is not possible to file an opposition against a trademark application and the trademark is registered upon payment of the registration fees.
The term of duration of a mark shall be fifteen years from the registration and can be renewed indefinitely, each time for fifteen years.
According to the article 74 of the Lebanese trademark law, if a trademark legally filed does not cause objection within the five years period following the filing, it shall not be possible to object afterwards to the first depositor concerning the right of ownership of this trademark due to the precedence of its use, unless it is proved in written deeds that the depositor was not ignorant or unaware at the time of effecting the filing that the trademark belonged to the person who used it first.
The Court of First Instance of Milan (judgment n.6559/2017) examined the case of a single-brand shop which, as a franchisee of confectionary products, commercialized, alongside products with original brand, also products with no brand or bearing a counterfeit trademark.
The Court of First Instance has seen in the behavior of the single-brand shop the violation of the other party’s (from now on called “franchisor”) industrial property rights, because responsible for selling, in addition to the original products, also products coming from other companies, sometimes putting on such products the trademark of the franchisor, sometimes selling products with no logo.
The behavior of the single-brand shop has also included a series of contractual breaches of the franchising contract. Among the obligations of the contract there was also the article “to resell in the shop only the original products and not to sell any products in concurrence with those of the franchisor”.
In addition, the Court of First Instance upheld the arguments of the franchisor, stating that: “The single-brand store, with a policy of progressive “appropriation” of the goodwill related to the franchisor, gradually replaced the only legitimate supplier with other suppliers and has (illicitly) separated its business from that of the franchisor. So we can share what the franchisor says about the fact that a new confectionary shop should would take not less than two years in order to starting and progressively consolidate a competitive position”.
Lastly, the Court of First Instance recognized and quantified the existence of a damage to the image caused by the behavior of the single-brand store which put in place a variety of behaviors that led to the erosion of the value of the brand and of the brand image of the franchisor, among which offering for sale “a whole range of non-branded products, some totally not existing in the catalogues and belonging to different and completely extraneous categories (like liqueur), damaging the high position and the level of excellence of the brand and the products distinguished by the same”.
From 1 October 2017 some changes will occur in the field of the protection of the European Union trademark. In brief, three macro areas can be identified: changes in the rules concerning the graphical representation of the mark; introduction of the EU certification mark, some procedural changes.
Graphical representation: from 1 October 2017 EUIPO specifies that the signs can be represented “in any appropriate form using generally available technology, as long as the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective”. In this way, some categories of trademarks become acceptable, particularly those trademarks which are not susceptible to graphic representation like, for example multimedia trademarks.
EU certification marks: According to the article 74a, 1) of the EU Regulation n.2015/2424 “an EU certification mark. .is capable of distinguishing goods or services which are certified by the proprietor of the mark in respect of material, mode od manufacture of goods or performance of services, quality, accuracy or other characteristics, with the exception of geographical origin, from goods and services which are not so certified”.
According to the article 74a, 2) “any natural or legal person…may apply for EU certification marks provided that such person does not carry on a business involving the supply of goods or services of the kind certified”.
An applicant for an EU certification mark shall submit regulations governing the use of the certification mark within two months of the date of filing.
Procedural changes: Among the others (the following is not an exhaustive list) there are changes in the following areas: priority, acquired distinctiveness, opposition and cancellation proceedings, languages and translations, communication with the Office, Boards of Appeal.
What happen after having obtained the so much desired registration of the trademark ?
First of all, you can start using the famous ® symbol, which demonstrates that the mark has been registered.
Two recommendations: the first is not to use the ® before the mark has been registered, because this behavior can be a crime in some States. The second is that it is advisable to use the ® after the registration of the mark because such use makes third parties aware that your mark is a registered mark.
The ® can only be used as long as the trademark registration is kept alive; as a result, the symbol will no longer be affixed if the mark has expired and has not been renewed.
Always speaking of the use of ®, you have to be careful to the territory in which your mark is registered because in some States the use of that symbol is practically mandatory.
For example, in Hong Kong it is advisable to affix the ® symbol to give notice to third parties that the mark is registered; failure to doing so may result in being not possible to claim damages in case of the mark being infringed by third parties.
After the registration, moreover, it is necessary to be very careful about the use of the mark.
There is the possibility of cancellation in the absence of actual use of the trademark.
For example, according to the EU trademark regulation, an EU trademark must be put to genuine use in the European Union in the five years following its registration. Moreover, use must not be interrupted for over five years.
In the United States it is mandatory to file a declaration of use (or excusable nonuse) between the fifth and sixth years after the registration date; if the declaration is not filed the US Trademark Office will cancel the registration. Registrations cancelled due to the failure to file the declaration of use cannot be “revived”, therefore it is necessary to file a new application in order to obtain a new registration.
In order to avoid problems, we suggest you to always check the trademark law of the State in which you have obtained the registration of the mark.
What is the difference between a filed trademark and registered trademark ?
First of all, we have to understand that we are talking about two different moments of the mark’s life.
The first step corresponds to the submission (technically said “filing”) of a trademark application to the competent authority.
For example, if we want to protect our brand in the Italian territory, we will prepare and file an application in order to obtain its registration in Italy to the competent Italian office.
At this stage the mark is filed but not yet registered.
This means that there exists an application, filed to the competent authority with the goal to obtain the registration of the mark.
The competent authority shall examine the formal regularity of the application, as well as the existence of some requirements of the mark, which are variable depending on the State which examines the application (for example, some countries examine the existence of conflicting earlier marks, other do not do it).
After the examination phase has ended and the possible deadline for opposition (if any) elapsed, the mark (which is still an application, namely “filed trademark”) is finally granted by the competent authority and the certificate is issued. The certificate of registration demonstrates its registration and acceptance by the authority.
The certificate of registration concludes the phase started with the application and certifies the acceptance of the mark by the competent authority.
Only at the end of this phase we can say that the mark is registered.
The period between the two phases – filing and registration – varies according to the State in which the application has been filed.
First of all, because not all the States recognize a legal value for a simple use of a trademark which is not accompanied by the registration of the same.
Secondly, because often the protection given only by the use is not as extensive as the one obtainable though the registration.
Furthermore, it is important to focus where to register the mark.
In principle, the trademark should be registered where it has to be used. The minimum protection is the registration in the State of production and on the outlet markets of the goods. The best solution would be to register the mark even in high-intensity of counterfeiting countries in relation to the goods being produces.
It is not uncommon from someone with whom you have been in contact for work reasons (for example, your distributors or agents) to take advantage of the relationship with you and to file in their countries a trademark application identical to your mark before you can file your trademark there. The same can be seen in many other hypotheses: let’s think of the competitor who has seen your product at a trade fair and files in its country a trademark identical to yours before you can file your trademark there.
If you had a trademark already registered, there would not be particular problems, because you could oppose to the registration of the “impostor trademark” by showing the title of the registration.