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Mykolas Romeris University Faculty of Law Private Law Institute MYKOLAS ROMERIS UNIVERSITY FACULTY OF LAW PRIVATE LAW INSTITUTE VLADYSLAV RUCHKIN (EUROPEAN AND INTERNATIONAL BUSINESS LAW) NON-CONVENTIONAL TRADEMARKS IN THE EUROPEAN UNION AND THE UNITED STATES OF AMERICA. COMPARATIVE ANALYSIS OF THE APPROACHES TO THE REGISTRABILITY QUESTION Master thesis Supervisor – Associate professor Doctor of Laws Goda Ambrasaitė-Balynienė Vilnius, 2020 TABLE OF CONTENTS INTRODUCTION...................................................................................................................... 3 LIST OF ABBREVIATIONS.................................................................................................... 8 1. REGULATION OF NON-CONVENTIONAL TRADEMARKS IN THE USA AND THE EU ON INTERNATIONAL AND DOMESTIC LEVELS.............................................. 9 1.1. International Dimension................................................................................................. 9 1.1.1. Non-conventional Marks in the TRIPS. Interconnection of the Agreement with the Paris Convention...................................................................................................... 9 1.1.2. Non-conventional Trademarks Under the Madrid System. Current Changes Regarding Non-Conventional Marks............................................................................. 12 1.2. Domestic Dimension...................................................................................................... 14 1.2.1. Registration of Non-conventional Trademarks in the USA. The sky is the limit?.............................................................................................................................. 14 1.2.2. Registration of Non-conventional Trademarks in the EU. Overcoming Exorbitant Requirements................................................................................................ 21 2. PRACTICAL ASPECTS OF NON-CONVENTIONAL TRADEMARKS REGISTRATION IN THE EU AND THE US.......................................................................... 35 2.1. Registration of Non-conventional Marks in the USA in Practice.................................. 35 2.1.1. Registration of Visual Marks............................................................................... 35 2.1.2. Registration of Non-visible Marks....................................................................... 50 2.2. Registration of Non-conventional Marks in the EU in Practice..................................... 58 2.2.1. Registration of Visual Marks............................................................................... 59 2.2.2. Registration of Non-visible Marks....................................................................... 68 CONCLUSIONS........................................................................................................................ 75 RECOMMENDATIONS........................................................................................................... 78 LIST OF BIBLIOGRAPHY...................................................................................................... 79 ABSTRACT............................................................................................................................... 88 SUMMARY............................................................................................................................... 89 HONESTY DECLARATION.................................................................................................... 91 2 INTRODUCTION We are living in a time of a great variety of goods and services, which can be accessed instantly. At that time, price and quality are not the only decisive criterion for consumers. Purchasing certain products or using certain services may give them also some non-material value, e.g. contribution to their social status or improving their self-esteem. It can be so only when that goods and services are distinctive on the market and a few seconds spent in front of the shelf or a storefront are enough to tell the public about their origination. That is why businesses dedicate a significant part of their time to developing unique source indicators being able to establish an instant link between them and the potential consumers. The main source indicator used to single out a product or a service is a trademark. Usually, trademarks have been understood as words, figurative elements or combinations thereof, which are capable of distinguishing the relevant goods or services and signal the public about their origination. Since words or figures may be perceived only by sight, manufacturers` abilities to make their goods and services distinctive have been considerably limited. But technology does not stand still and frontiers of perceptible are being broadened rapidly. That is the reason of new types of signs emergence, which are capable to distinguish goods and services of a certain manufacturer or provider alongside words and devices. That new types of marks are called non-conventional trademarks since they have unique nature, which appeal to all five basic senses of a human: taste, touch, sight, hearing and smell. These marks have greatly favored businesses since now consumers may recognize their goods and services even without seeing them. Nevertheless, in order to monopolize usage of a certain mark and prevent competitors from unauthorized use of it, proprietors are required to obtain registration of the sign. The registration is conducted by a state body and has territorial nature, which means that a proprietor is granted with exclusive rights only within that state. Consequently, despite growing globalization and adoption of international treaties in the sphere trademark law, each state has its own approach as to registrable signs and the registration process, including the United States of America and Member States of the European Union. Among general registration requirements, representation of a mark in the application, distinctiveness and non-functionality requirements are considered as the main obstacles on the way of registration of non-conventional trademarks and directly influence registrability thereof. Content of these aspects differs not only from state to state, but also from one non-conventional mark to other. 3 Taking into account that the huge European Trademark Reform, which brought substantial changes to the whole European trademark system, took part in 2015 and the main provisions thereof are applying from 2017, it is relevant now to analyze the consequences thereof for registrability of non-conventional trademarks, in particular what may be registered and how. Moreover, the reform package made the EU trademark system somewhat similar to the one in the USA, especially, as regards the aforesaid three obstacles. Therefore, it is crucial to conduct a comparative analysis of both approaches to registrability of non-conventional marks so that to identify pros and cons of each of them and determine how registration of non-conventional trademarks may be made more efficient and accessible therein. Problem of research There are around 200 states in the world at the moment and probably most of them has trademark laws with its specifics. At the same time, some trademark law amendments and reforms may intentionally or not make one trademark system similar to the other. As one of the vivid examples is European trademark system after the European Trademark Reform and the existing US trademark system in the context of non-conventional trademarks registrability and registration process thereof. Still, it unclear to what extent the approaches of these systems are similar, what the differences are and what pros and cons each of the systems has. Having clarified that aspects, it is necessary to answer the following question: may the US and the EU approaches be improved so that to make registration of non-conventional marks more accessible and efficient? Relevance of the final thesis The EU Trademark Reform was an imminent step towards making the trademark legislation consistent with the needs of a modern business. Despite the fact that the main legal provisions are effective since 2017, there are still some shortcomings in both the regulation and its practical application. The thesis is particularly topical for identification such drawbacks and finding the ways of elimination thereof through comparison the EU system with the system operating in the US, which is now especially relevant in the context of non-conventional marks registrability and the registration process thereof. In addition, the thesis identifies drawbacks of the US system as well and proposes ways of elimination thereof. 4 Scientific novelty and overview of the research on the selected topic The topic of the research is a comprehensive work which investigates the approaches of the US and EU to registrability of non-conventional marks through lens of three most burdensome requirements therefor: representation of marks in the application, non-functionality and distinctiveness requirements. The thesis further proceeds to comparative analysis of how the requirements are applied in both systems in practice using 4 visual and 4 non-visible marks as a basis for research. In the course of the investigation the work identifies certain advantages and drawbacks of each system and proposes ways of improvement thereof as regards registrability of non-conventional marks and the registration process thereof. The topic is poorly investigated since there are scientific works which have analysed only certain fragments of the work, i.e.
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