The sweeping changes brought about in 2017 to practice and procedures in European Union trade mark law have precipitated a new edition of this much relied-upon guide to the field. This is the first book to provide comprehensive guidance to the new EU Trade Mark Regulation, including full details on all aspects of substance and procedure, as well as to the new Trade Mark Directive. This new and significantly expanded edition, which builds on the two previous editions of the Concise European Trade Mark and Design Law, includes the full texts of the new Implementing and Delegated Acts – available in no other book – as well as a collection of other texts that are needed in daily practice, such as excerpts from the Rules of Procedure of the General Court, the Paris Convention, the Madrid Protocol and the Nice Agreement, the Nice Classification, the TRIPS Agreement and the Directive on Enforcement of IP Rights. Providing a complete commentary and a full set of the legal provisions that must be dealt with on a daily basis, obviating recourse to other sources, this new edition will be welcomed by anyone with an interest in the law and practice of trade marks in the European Union.

When a mark acquires a reputation, it becomes a means of attracting consumers by communicating to them various messages going beyond the indication of commercial origin of goods or services. Thus, trade marks familiar to the general public enjoy a special legal protection regime above and beyond that afforded trade marks in general, allowing them to benefit from enhanced protection against reproduction or imitation detrimental to, or taking unfair advantage of, the distinctive character of the mark or its repute. This richly researched book, the first comprehensive guide to current European Union (EU) law and practice concerned with reputed trade marks, conducts an in-depth analysis of this extended protection provided by Regulation 2017/1001 on EU trade marks and Directive 2015/2436 under which it is mandatory across all Member States. Using a practical approach, focused on identifying and analysing the criteria for infringement of trade marks with a reputation in proceedings before civil courts and in administrative proceedings before the European Union Intellectual Property Office (EUIPO) or national trade mark offices, the author addresses such elements of the special protection regime as the following: prerequisites for infringement of the right to a reputed mark common to all recognised forms of infringement; how to demonstrate each type of infringement of the right to the trade mark with a reputation (blurring, tarnishment and unfair advantage); proof of reputation; distinguishing the concept of well-known trade mark; legitimate versus questionable justifications of the ‘due cause’ exception within the meaning of EU law provisions; use of a disputed sign falling under freedom of expression; identifying the role of likelihood of confusion under the special regime; and how to prove the existence of a link between the signs in dispute. The author pays detailed attention to the case law of the Court of Justice and General Court of the EU, as well as cases before the EUIPO and national courts. He takes into account research from a number of Member States (plus Switzerland), thus widening prior work in the field from its predominant English-language context. With this book practitioners will confidently approach cases before courts, the EUIPO and national EU trade mark offices involving enhanced protection of trade marks with a reputation. In addition, the book will help judges and trade mark offices examiners to interpret the EU provisions and assess claims regarding such reinforced protection. For scholars and students of intellectual property law, this book will prove a cornerstone volume in the field.

European Trade Mark Law provides a coherent and authoritative commentary on both the substantive and procedural aspects of European trade mark law. It presents an integrated picture of the two major trade mark law provisions at EU level: the Community Trade Mark Regulation (CMTR), which provides for the registration and protection of a Europe-wide mark; and the Trade Mark Directive (TMD), which aims to harmonise national trade mark laws. The book's core focus is the Community texts and case law, and it offers a detailed analysis of the CMTD and TMD, as well as practical discussion of the procedure for registering, maintaining, and challenging a trade mark through the European Trade Mark Office and at the national level. It considers how national laws have been successfully harmonised by the TMD, and where they differ significantly from others in their implementation of the Directive. Written by one of the leading trade mark lawyers in Europe, this is an invaluable reference for both academics and practitioners in this complex and rapidly developing area of law.

Preface --Authors --About the Editors --Introduction --Practical Notes from the Editors --Council Regulation (EC) No 207/2009 as amended by Regulation (EU) 2015/2424 (EU Trade Mark Regulation) --General Provisions (Arts. 1-3) --The Law Relating to Trade Marks --Application for EU Trade Marks --Registration Procedure --Duration, Renewal, Alternation and Division of EU Trade Marks (Arts. 46-49) --Surrender, Revocation and Invalidity --Appeals (Arts. 58-65a) --Specific Provisions on European Union Collective Marks and Certification Marks --Procedure --Jurisdiction and Procedure in Legal Actions Relating to EU Trade Marks --Effects on the Laws of the Member States --The Office --International Registration of Marks --Final Provisions (Arts. 163-167) --EUTMR, Annex I (Fees) --Preamble to Regulation (EU) 2015/2424 --to Regulation (EU) 2015/2424 (Correlation Table CTMIR) --to Proposal for Codified EU Trade Mark Regulation (Correlation Table EUTMR) --Directive (EU) 2015/2436 of the European Parliament and of the Council (Trade Mark Directive) --General Provisions (Arts. 1, 2) --Substantive Law on Trade Marks --Procedures --Administrative Cooperation (Arts. 51, 52) --Final Provisions (Arts. 53-57) --Council Regulation (EC) No. 6/2002 (Community Design Regulation) --The Law Relating to Designs --Community Designs as Objects of Property (Arts. 27-34) --Application for a Registered Community Design --Registration Procedure (Arts. 45-50) --Surrender and Invalidity of The Registered Community Design (Arts. 51-54) --Appeals (Arts. 55-61) --Procedure before the Office --Jurisdiction and Procedure in Legal Actions Relating to Community DesignsTitle IX. Jurisdiction and Procedure in Legal Actions Relating to Community Designs --Effects on the Laws of the Member States (Arts. 95, 96) --Supplementary Provisions Concerning the Office --International Registration of Designs --Final Provisions (Arts. 107-111) --Directive 98/71/EC of the European Parliament and of the Council (Design Directive) --List of Abbreviations --List of Treaties, Legislation and other Documents --List of Cases.

This book is the first study to examine the issue of the legality of parallel imports of trademarked goods under the most important legal systems on an international level, namely under GATT/WTO law, EU law and the laws of the ten major trading partners of the European Union. Part I consists of a general approach to the phenomenon of parallel importation and of a presentation of the theories that have been suggested to resolve the above-mentioned issue. The rule of exhaustion of rights, of which there are three types (rule of national, regional and international exhaustion of rights), is proposed as the most effective instrument to deal with the issue in question. Part II examines the question of exhaustion of trademark rights in light of the provisions of GATT/WTO Law. Part III analyzes the elements of the EU provisions on exhaustion of trademark rights (Articles 7 of Directive 2008/95/EC and 13 of Regulation (EC) 207/2009) and some specific issues relating to the application of these provisions. Part IV presents the regimes of exhaustion of trademark rights recognized in the European Union’s current ten most significant trading partners. The book is the first legal study to welcome, in light of economic analysis, the approach adopted by GATT/WTO law and EU law to the question of the geographical scope of the exhaustion of the trademark rights rule. It includes all the case law developed on an international level on the issue of the legality of parallel imports of trademarked goods and a comprehensive overview of the scientific literature concerning the phenomenon of parallel imports in general and the legality of parallel imports of trademarked goods. All the views expressed in the book are based on the European Court of Justice’s most recent case law and that of the courts of the most important trading partners of the European Union.

The introduction in Europe in 1996 of the Community trade mark (CTM) brought into being a new and independent trade mark system with its own sources of law, its own procedures, and its own administrative and judicial bodies, notably the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM), the agency designated to process applications for the registration of CTMs. In 2011, OHIM for the first time received 100,000 applications in one and the same year – which was also the year in which the one millionth application was filed. Case law of the European Court of Justice (ECJ) and the European General Court (EGC) on the interpretation of the Trade Mark Regulation and the Trade Mark Directive is – together with decisions of OHIM and its Boards of Appeals – absolutely central to the understanding of Community trade mark law, including the trade mark laws of Member States. This book offers an in-depth scrutiny, categorization, and analysis of this extensive body of case law. Focusing on issues of practical relevance for practitioners, the chapters cover such aspects of Community trade mark law as the following: • OHIM's procedure for registration; • the appeals system (OHIM's Boards of Appeals, the EGC, and the ECJ); • trade mark strategies; • absolute and relative grounds for refusal; • three-dimensional trade marks; • non-registered national trade marks and registration in bad faith; • trade marks with a reputation; • acquired distinctiveness; • trade mark functions and use as a trade mark; • limitations of exclusivity; • nature and extent of genuine use; • grounds for revocation and invalidity; • transfer of trade marks and licensing; • national trade mark courts. Also covered are the pending and proposed amendments to the Trade Mark Regulation and the Trade Mark Directive. This book covers in depth the practical applications of this important and much-used body of law. It will be of enormous value and benefit to company lawyers, attorneys, trade mark attorneys, and anyone else dealing with trade mark law, whether on a Community level or nationally.

This book consists of contributions exploring from different perspectives the 'images' of the consumer in EU law. The images of the consumer form the foundation for various EU policies, more or less directly oriented towards the goal of consumer protection. The purpose of the volume is to establish what visions of the consumer there are in different contexts of EU law, whether they are consistent, and whether EU law's engagement with consumer-related considerations is sincere or merely instrumental to the achievement of other goals. The chapters discuss how consumers should be protected in EU contract, competition, free movement and trade mark law. They reflect on the limits of the consumer empowerment rationale as the basis for EU consumer policy. The chapters look also at the variety of concerns consumers might have, including the cost of goods and services, access to credit, ethical questions of consumption, the challenges of excessive choice and the possibility to influence the content of regulatory measures, and explore the significance of these issues for the EU's legislative and judicial process.