How to demonstrate genuine use of an EU trademark

How to demonstrate genuine use of an EU trademark
In the matter of EU opposition it can be very important to demonstrate genuine use of the trade-mark. Let’s see some judgments in this regard.
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Secondary meaning and distinctive character in a trademark

secondary meaning in a trademark
The principle of secondary meaning concerns trademarks devoid of distinctive character, acquiring the same through the use and renown. In these cases it is said obtaining a secondary meaning which occurs when a word (or a design, or a shape or other types of mark), originally devoid of distinctive character, has with time a further meaning in the eyes of consumers and thereby it is able to identify that products come from a specific undertaking.
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Trademark Licence agreements: which kind of agreements

Trademark License Agreement
When a trademark is licensed, there are several options: exclusive, non-exclusive and territorially limited. Let’s see them in details!
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Trademark coexistence agreements

Trademark coexistence agreements are particular type of contracts, frequently used to settle the relationships between the holders of identical or similar trademarks. Article 20 of the Italian Industrial property Code forbids third parties the use of “signs which are identical or similar to a registered trademark for identical or similar goods or ser-vices” and forbids the use of “identical or similar signs for goods or services which are not similar whether the registered trademark enjoys in the State of renown” unless there is the consent of the owner of the registered trademark. The proprietor of the mark, therefore, may allow the coexistence on the market of trademarks which are potentially confusable with its own, provided that there is not a risk of misleading the pub-lic: an insurmountable limit must be seen in the ban of deceiving public, as stated in the Article 21, paragraph 2 of the Italian Industrial Property Code, according to which: “it is not permitted to use the trademark in a manner contrary to law or, in particular, so as to create a likelihood of confusion in the market with other signs ... or to induce, however, mislead the public”. Examples of trademark coexistence agreements Co-existence agreements are characterized by a large variety of content, but they are intended to govern the relationships between the owners of trademarks and to avoid the risk of deception to the public. Some examples of provisions you can find in a co-existence agreement are the fol-lowing: • Clauses of limitation regarding the use and registration of trademarks in some classes or with re-gard to some products / services. It is generally the proprietor of the later mark to undertake not to use/register its trademark for some goods and/or services, but there may be cases of undertaking by both parties of the contract. One of the most famous cases of trademark coexistence agreement was the agreement between Apple Crops and Apple Inc. The first owned by the Beatles, the famous British musical band, the second owned by Steve Jobs, owner of one of the most famous companies in the world of com-puters and more. The agreement provided that Apple Corps would have tolerated the presence of Apple incorporation’s brand on condition that this latter will never enter in the music industry. But then Itunes and Ipod were born. In this article you can find the whole story: http://tg24.sky.it/economia/2010/11/16/apple_vs_apple.html • Clause of limitation on the territory: for example, the owner of the mark
Trademark coexistence agreements are used to regulate the relationship between the owners of identical or similar trademarks in order to avoid the risk of the deception of the public. Let’s see the most common types of agreements.
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Limitations of the Right on the Trademark

limitations of the right on the trademark
When you own a registered trademark you will certainly have more rights (in term of protection) but you must also take into account some limits imposed by the law. Find out which.
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Copyright protection: counterfeit goods on the stalls

Copyright protection: counterfeit goods on the stalls
All CDs or DVDs found on the stalls not having original covers or lacking of SIAE symbol are con-sidered counterfeit goods
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Trademark in bad faith for violation of the principles of honesty and fairness

Trademark in bad faith for violation of the principles of honesty and fairness
Can professional misconduct determine the registration of a trademark in bad faith? Let’s see what EU General Court ruled about it
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Similarity between trademarks with Arabic words

Similarity between trademarks with Arabic words
In the case of similarity between trademarks composed of Arabic words, the EU Court of Justice took into account the relevant public in order to assess how confusing the marks in question could be.
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Opposition to the EU trademark application

Opposiztion EU trademark application
Who can file an opposition to an European Union trademark? And what is the deadline? And what are the grounds of the opposition?An what happens once the opposition starts? You find out in this article!
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Counterfeiting in Europe: where it comes from and which products it envolves

Counterfeiting in Europe
In 2015 the Office for Harmonization in the Internal Market published a report on the phenomenon of counterfeiting in Europe. The fight against counterfeit products, especially those that endanger the health and safety of consumers, has become a priority in the policies of the Member States of the European Union. Where counterfeit products come from
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