A new approach to TM infringement?
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

A new approach to TM infringement?

Is the infringement test under Article 5 of the EU Trade Mark Directive so complex that an alternative approach would be better?

That question, posed by Roland Mallinson of Taylor Wessing, sparked considerable debate at the 26th annual MARQUES conference, held in Athens last week.

Speaking in a panel on “Exceptional Signs”, Mallinson discussed referential use of trade marks, in particular where the same mark and same goods/services are concerned.

Citing cases such as Adam Opel, Interflora and Bellure, he suggested that the infringement test established by the Court of Justice of the EU (CJEU) has become too complex. A better approach might be to make the infringement test clearer and then clarify the defences available.

This would be in line with suggestions made in the Max Planck report, said Mallinson.

That report is now being considered by the European Commission as it prepares recommendations for changes to the Trade Mark Directive and Trade Mark Regulation. However, the proposals have been delayed and now may not be public until next year.

The MARQUES conference attracted over 600 attendees and the theme of the educational sessions was “Sign of the Times”.

Other panels addressed the challenges posed by technological developments such as augmented reality-based advertising and Google Goggles; non-traditional marks; enforcement, particularly online; domain name developments; and recent CJEU case law.

There were also presentations from WIPO and OHIM and workshops on topics including traditional knowledge and plain packaging, as well as excursions and receptions featuring Greek food and culture.

Detailed reports from the conference are available on the MARQUES Class 46 blog.

more from across site and ros bottom lb

More from across our site

External counsel for automotive companies explain how trends such as AI and vehicle connectivity are affecting their practices and reveal what their clients are prioritising
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Miguel Hernandez explains how he secured victory for baby care company Naterra in his first oral argument before the Federal Circuit
The UPC judges are wrong – restricting access to court documents, and making parties appoint a lawyer only to have a chance of seeing them, is madness
The group, which includes the Volkswagen, Seat and Audi brands, is now licensed to use SEPs owned by more than 60 patent owners
Gift this article