The Protection of Unregistered

25th Annual Ius Commune Conference (online)

Friday 27 November 2020

George-Mihai Irimescu

PhD Candidate at the Maastricht University & Nicolae Titulescu University of Bucharest and Design Attorney at PETOSEVIC Research question:

• Should unregistered trademarks be protected, or at least regulated, at European Union level? Steps to reaching the response: 1. THE NECESSITY OF GRANTING PROTECTION TO UNREGISTERED TRADEMARKS AND ACQUIRING TRADEMARK RIGHTS • 1.1. GENERAL CONSIDERATIONS ON THE LEGAL PROTECTION OF TRADEMARKS

▫ The consumer, goods/services and manufacturer/supplier triangle • Trademarks’ definition, roles and functions

▫ What does a trademark represent? Different types of trademarks and their roles • The characteristics and definition of trademarks and non-traditional trademarks

▫ Trademarks and business • The value and economic function of trademarks

▫ Brief insight into the history of trademarks (with special attention to Romania) • Historical aspects regarding trademark protection worldwide and Romania Steps to reaching the response: 1. THE NECESSITY OF GRANTING PROTECTION TO UNREGISTERED TRADEMARKS AND ACQUIRING TRADEMARK RIGHTS

• 1.2. ACQUIRING TRADEMARK RIGHTS AND TRADEMARK OWNER’S RIGHTS

▫ Ways of acquiring trademark protection: generalization of the registration priority system; is the system really attributive by law or is it declarative? • The delarative and attributive system: means of protection, advantages and disadvantages • ▫ National and supranational trademark Offices • Legal nature and different types • ▫ Trademark rights and their legal regime • Tackles the legal regime of trademark protection, the concept of use and unfair competition Steps to reaching the response: 2. UNREGISTERED TRADEMARKS IN INTERNATIONAL LAW AND EUROPEAN LAW

• 2.1. UNREGISTERED TRADEMARKS IN CONVENTIONAL LAW

• Effects of well-known unregistered trademarks • The Paris Convention, The Madrid Agreement and Protocol, The Singapore Treaty on the Law of Trademarks and the TRIPS Agreement

• 2.2. UNREGISTERED TRADEMARKS AT EU LEVEL

• European legal provisions and case-law

• 2.3. PROTECTION OF UNREGISTERED TRADEMARKS IN EUROPEAN JURISDICTIONS

• Unregistered trademarks and survival thereof – why have they survived (Possible explanations deriving from the Paris Convention) • Well-known trademarks • Admissibility of an opposition based on an unregistered trademark; • Compared law regarding the protection of unregistered trademarks: the Netherlands, Bulgaria, Denmark, Romania, Italy and the UK Partial conclusions: what are trademarks and which is their primary role? The consumer, goods/services and manufacturer/supplier triangle

• Trademark protection and its role is traditionally defined by reference to consumers

• The primary role of trademarks has been identified as the consumers’ protection against any confusion on the market

• Over time, however, the advertising function of trademarks has become increasingly important

• Justice Jacob defined the sign as "anything which can convey information" (Decision of the Court in the matter Philips Electronic NV v Remington Consumer Products[1998] R.P.C. 283) Partial conclusions: what are trademarks and which is their primary role? The consumer, goods/services and manufacturer/supplier triangle

• Modern have a much more complex meaning than that, and their role must be sought in the product branding process

• Accepting the advertising function of trademarks by case-law, has probably been inevitable Partial conclusions: what are trademarks and which is their primary role? The consumer, goods/services and manufacturer/supplier triangle

• The problem of transferring from the primary function of a trademark - the protection of the consumer public - to a more enhanced protection for the owner of the trademark, per se, arose

• The infringement of trademark rights shifted from the concept of “confusion” to that of “dilution”

• The object of trademark protection tends to become intangible and "nebulous". Partial conclusions: trademarks from an economic perspective • Trademarks and business

• Economic importance – brands are a reputational asset.

• The degree of trademark awareness and, we might add, the attachment to it, makes it easier for a consumer to purchase the goods or services of an enterprise, thus reducing the costs associated with creating this connection

• From a multitude of goods with the same characteristics, some of them can be more expensive due to their trademarks, and not because of their intrinsic value and trademarks can bring value in the ways mentioned above

• The value of a trademark, is its relation to the expectations of consumers

• The creation, maintenance and protection of a trademark portfolio has turned from a predominantly legal problem into an economic strategy of the holder Partial conclusions: trademarks from an economic perspective

• Trademarks and business

• A possible model of assessing the value of a trademark portfolio (Bradley J. Van Pelt and Luke S. Curran, IP Management: Creating, Maintaining and Advancing Your Portfolio to Increase Your Company’s Bottom Line):

• 1st rank: trademarks that are used on several markets, in relation to the whole spectrum of products or services offered by that proprietor.

• 2nd rank: “smaller trademarks” used for specific products or in a limited number of jurisdictions.

• 3rd rank: trademarks with even more limited spread, such as, for example, regional brands.

• 4th rank: non-traditional trademarks, slogans, protected unregistered marks or seasonal marks, used for a limited period of time. Partial conclusions: trademarks from a historical perspective

• In the last century the number of jurisdictions that condition the protection of first-use trademarks has diminished considerably

• One of the reasons why today, most of the national systems for the protection of intellectual are very similar, is the natural result of a very close international cooperation in this field, and a special merit is being attributed to the Paris Convention

• This constitutes the first step in the generalization of the protection system through registration, which in time will outweigh the importance of the protection system through use Partial conclusions: the two main trademark protection system

• First-to-use systems: ▫ Use of trademark is sufficient to gain protection ▫ Use should be done animo domini (with the intent to appropriate such trademark)

• First-to-file systems: ▫ Protection is gained through trademark registration ▫ There is an examination procedure conducted before the trademark office ▫ Registered trademarks are listed into a trademarks registry

Could we consider the attributive system as a particular way of manifesting the declarative system? Partial conclusions: important elements of the attributive system

• The trademark offices

• They are the institutional result of the territoriality of the trademark right • The Convention awards national offices is to publish an official bulletin intended for the publication of registered trademarks

• The registration certificate

• It is the strongest proof of the rights of a trademark holder

• The Nice International Classification of goods and services

• A system of classification of goods and services which would be used by as many national offices as possible, with an aim to keep the consistency of the classification of goods or services designated in trademark registration procedures • Recent case-law tries to diminish the shortcomings of the first-to-file system through use of the Nice Classification Partial conclusions: important elements of the attributive system

▫ Trademark rights and their legal regime

▫ The infringement action – use of the prior mark became relevant;

▫ The concept of unfair competition – usually seen as a means of protection for unregistered trademarks; however, who is protected?

▫ The concept of use in trademarks’ law: acquiring distinctiveness, role in opposability and consequences of non-use. What next?

• Research how (and if) unregistered trademarks are regulated in international conventions, with a special focus on protection of well-known trademarks

• Research how unregistered trademarks are regulated at EU level, with a special focus on the provisions of art. 8(4) of the Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark

• Research the case-law and the benefits of protecting unregistered trademarks for jurisdictions where they are still protected:

• Denmark: The legal protection of unregistered trademarks is equal to the protection of registered trademarks.

Further, owners of unregistered trademarks may oppose the registration of trademarks that are identical or confusingly similar, provided that the unregistered mark is used in the course of trade in Denmark before the application for registration of the later mark is filed. Other particular exeptions:

• Bulgaria: Unregistered trade mark could be claimed only in the context of opposition or cancellation proceedings. Signs used in the course of trade could be protected by the Law on Protection of the Competition, but the Bulgarian trade mark law does not protect them against infringement, unless they are registered.

• Italy: In order for the prior unregistered trademark or commercial sign to serve as the basis for a novelty objection against a subsequent application, its use must be ‘qualified’ (i.e., it must be known widely and not just locally). Otherwise, the owner of the prior sign must tolerate registration of the subsequent mark and can keep on using its sign only locally.

• The UK: The common law of ‘’ offers protection to those who have an unregistered trade mark with a reputation and goodwill in the marketplace that is being used by someone else in the same or similar market without permission. A possible answer based on the research made so far?

• Would say YES, mainly because:

- Although not the dominant system today, the declarative system was the primordial trademark protection system in Europe;

- There are EU jurisdictions where unregistered trademarks still enjoy protection;

- Protection of unregistered trademarks may come close to the trademarks’ initial role and scope of protection;

- The protection of trademarks through use offer the mirroring image of those trademarks that are actively used on the market;

- Protection of unregistered trademarks consistent with today’s fast economical dynamics; A possible answer based on the research made so far?

• Allowing the use for those trademarks that were put on the market before the registration of a similar trademark?

• Allowing the opposition based on unregistered trademarks, as long as the “EU standard” is proven? Contact me at: Email: [email protected]; Phone: +4 0722 759 965