This work aims to provide an easily readable and occasionally entertaining overall presentation of trademark law. The book is designed so that it can be started at any point. It answers the detailed questions that are important in practice. Checklists at the end make it easier for beginners to get started in practice.
The case law of the CJEU, GC and BGH since the harmonization of trademark law in the 1990s has been fully taken into account.
The work always starts from European trademark law. However, German trademark law has also been fully incorporated.
I would like to thank my wife Tanja and my five children, Meta, Mila, Noel, Elise and Oliver, for keeping me from getting bored and keeping the text lively. And – far from trademark law – I would like to thank Johann Sebastian Bach for the Goldberg Variations and Frédéric Chopin for his ballads, without which some of the sentences in this book would sound much bumpier.
Hildebrandt. on Trade Marks
by Prof. Dr. Ulrich Hildebrandt, Lawyer in Berlin and Professor at Heinrich Heine University Düsseldorf
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Table of Contents
- 1: Overview of trademark and other designation rights
- 1.1: The concept of trade mark and designation law
- 1.2: The importance of trade marks and designation rights
- 1.3: Types of designation rights
- 1.4: Principles of priority and territoriality
- 1.5: Legal sources
- 1.6: Offices and courts
- 1.7: Impact of the CJEU
- 1.8: Sovereignty of the trade mark systems and legal effect
- 1.9: Literature and electronic resources
- 2: Capacity to be a trade mark and different types of trade marks
- 3: Ownership
- 4: Absolute grounds for refusal
- 4.1: Overview of the absolute grounds for refusal
- 4.2: Difference to relative grounds for refusal
- 4.3: Common principles of absolute grounds for refusal
- 4.3.1: Product context of trade mark law
- 4.3.2: Perception of the public in trade mark law
- 4.3.3: Dimensions of perception of the public
- 4.3.4: Overall impression and trade mark as such as the starting point for the assessment
- 4.3.5: Relevant date to be taken into account for the examination
- 4.3.6: Public interest as the basis for absolute grounds for refusal
- 4.3.7: Scope and standard of examination in the registration procedure
- 4.4: Distinctive character, descriptive indications, customary designations
- 4.4.1: Descriptive indications
- 4.4.1.1: Legal basis and public interest
- 4.4.1.2: Necessary degree of deviation from the usual, in particular abbreviations
- 4.4.1.3: Requirement of a certain directness of description
- 4.4.1.4: Ambiguous and vague signs
- 4.4.1.5: Significance of future possible uses
- 4.4.1.6: Insignificance of the consumer relevance of the described feature
- 4.4.1.7: Insignificance of synonyms and the absence of competitors
- 4.4.1.8: Special rules for geographical indications and other information on production or distribution sites
- 4.4.1.9: (No) special features for three-dimensional trade marks or figurative marks
- 4.4.2: Customary designations
- 4.4.3: Lack of distinctive character in other respects
- 4.4.3.1: Legal basis
- 4.4.3.2: Function of origin
- 4.4.3.3: Public interest
- 4.4.3.4: Relationship to abstract distinctiveness in the context of general trademark capacity
- 4.4.3.5: Significance of the actual use of the trademark and the trademark context
- 4.4.3.6: Degree of deviation from the standard in the sector required for distinctiveness
- 4.4.3.7: Indirect differentiation of the individual categories of trademarks due to different consumer perceptions
- 4.4.3.8: Word marks
- 4.4.3.9: Slogans, advertising slogans and other word sequences
- 4.4.3.10: Personal names
- 4.4.3.11: Word/figurative marks and figurative marks
- 4.4.3.12: Abstract color marks
- 4.4.3.13: Three-dimensional marks
- 4.4.3.14: Position marks
- 4.4.3.15: Sound marks
- 4.4.4: Obtaining a distinctive character through use
- 4.4.1: Descriptive indications
- 4.5: Shape of the goods or other characteristic feature
- 4.6: Trade mark application in bad faith
- 4.7: Other grounds for refusal
- 4.8: Telle-quelle protection pursuant to Art. 6quinquies Paris Convention
- 5: List of goods and services
- 6: Trademark protection without registration
- 7: Priority and seniority
- 8: Obligation to use
- 9: Duration of protection and renewal
- 10: The basics of trademark infringement
- 11: Identity of trade mark and product
- 12: Likelihood of confusion
- 13: Protection of the well-known trade mark
- 14: Statute of limitations, acquiescence, coexistence
- 15: Limitation of the effects of the trade mark
- 16: Exhaustion
- 17: Establishment and expiry of the right to the company designation
- 18: Scope of protection of company designations
- 19: Establishment and extinction of the right to a title to a work
- 20: Scope of protection of the right to a title to a work
- 21: Name rights
- 22: Internet domains
- 23: Geographical indications
- 24: Trade marks in legal transactions
- 25: Other business names in legal transactions
- 26: Supplementary claims under competition law and claims in tort
- 27: Legal consequences of trademark infringement
- 28: Proceedings at EUIPO
- 29: Proceedings at DPMA (German Patent and Trade Mark Office)
- 30: Procedure for international registration at WIPO
- 31: Court proceedings
- 32: Brand conception, strategy and evaluation
- 33: Checklist: trademark practice
- 34: Checklist: likelihood of confusion
- 35: Checklist: interim injunction proceedings
- 36: Checklist: border seizure