Welcome back to this lecture.

By now I hope that you have

managed to find some cases in
the Court of Justice Database and
that you have learned more about
limitations, and some about infringements.
Now we will continue this lecture by
developing the paths of the life span of
the trademark.
So far, we have learned that
a registered trademark is a strong, but
not absolute right, that may be perpetual.
However, a strong perpetual
right is pointless if it
doesn't provide
the proprietor with benefits.
Consequently, it is relevant to
investigate how a proprietor can
exercise a trademark in a useful way.
The exercise of a trademark right means
that the proprietor's using the right
to prevent a third-party from using
an identical or confusingly similar sign.
Another way to express such
exercise is that a trademark may be
used to prevent infringement.
This right that is conferred by trademark
is expressed in Trademark Directive,
Article 5, and
this provision separates three types of
infringing acts that a proprietor
is entitled to prevent.
Firstly, the use of identical sites for
identical products,
the double identity rule.
Secondly, the use of similar signs for
similar products, the rule
regarding likelihood of confusion.
And thirdly,
use that exploits the goodwill of,
of famous trademarks,
which is the rule on extended protection.
The Double Identity rule provides the
proprietor with the rights to prevent any
sign which is identical with the trademark
in relation to goods or services.
Which are identical with those for
which the trademark is registered,
article 5(1)a.
This provision aims at preventing
obvious situations of counterfeiting,
and such actions are usually
rather easy to judge.
The second and
more problematic rule is article 5(1)b
regarding likelihood of confusion.
This will state that a proprietor
may prevent any sign where there
exists a likelihood of confusion on
the part of the public, and this

includes the likelihood of association

between the sign and the trademark.
By the wording of the provision,
it may be evident that there can
be severe problems in application.
Several problematic situations arise
in the assessment of when likelihood of
confusion occurs.
And it is to be regarded as
a principal rule that a proprietor and
the potentially infringing user have
dissenting opinions as to the assessment.
There are plenty of cases from the junior
courts regarding this rule and
how it is to be interpreted.
Some key points in the interpretation is
that it matters if it is a strong and
well known trademark.
These marks will gain a broader
protection, and thus,
the ability to prevent not-so similar use,
whereas others less
famous trademarks will have to stake
with a more narrow scope of protection.
It is also important to note that
there is a close relationship between
similarity of signs and
similarity of products and or services.
If both signs are used in relation
to identical products services,
there is a need for
a more extensive difference as to
the sign in order not to create
likelihood of confusion.
On the other hand,
if the product and/or service are not so
similar it may be possible
to use similar or
even identical signs without
risking likelihood of confusion.
Finally, there is this third rule
extending the protection for
well-known trademarks.
The rule is to be found in article five,
subsection two.
And it is a rule that is tailored for
notoriously well known trademarks.
Or, to put it differently,
trademarks with a reputation.
This rule has no prerequisites
as to likelihood of confusion.
Thus it provides a stronger protection for
the trademark that is covered by through.
However, there is a per
requisite that the use in
question without due course
takes unfair advantage of or
is the instrumental to a distinctive
character or the repute of the trademark.
One could state that

this is the only rule in

trademark law that really
protects reputation and goodwill.
But this favorable output is
only afforded to famous marks.
For not so famous marks, a protection for
good will is mainly to be
found in other fields of law.
And one example would be
the marketing regulations.
In order to exercise
the trademark right effectively,
there is a need to be able to
impose effective sanctions.
In other words, the proprietor needs
to be able to enforce the right.
As indicated during
the introductory lecture,
this is an area that we
will only address briefly.
However, I would like to draw your
attention to the fact that up
until recently enforcement of rights
is not part of EU harmonisation.
But in 2004, a directive regarding
enforcement was signed and
with severe delays in many
member states implemented.
For instance in Sweden first of April,
2009.
And this enforcement directive provides
detailed rules regarding sanctions and
other means to effectuate enforcement.
And the fact that
enforcement rights are now
within the real of harmonized EU law
will bring forward a development in
case law from the union courts that
will be necessary to take into account.
When enforcement of intellectual
property rights are at stake.
As has been indicated before the trademark
protection may be perpetual, but
it is to be remembered that a right
that is registered needs to be
renewed every tenth year.
If you forget to renew the registration,
your trademark will cease to exist.
In other words, despite this
perpetual nature of a trademark,
there are situation in which
protection may be revoked.
Besides renewal of registration,
other reasons to end protection would be
that the trademark is not being used.
Which is stated in trademark
directive article 12, subsection 1.
Partly due to this generous time limit for
protection the endless right.
There is a requirement that

the right has to be used.

If there is no use, there is a ground for
revocation of protection.
The used requirement in the trademark
directive states that the trademark shall
be liable to reallocation if,
within a continuous period of 5 years,
it has not been put to genuine
use in the member state.
In connection with the goods or services
on respect of which it is registered, and
there are no proper reasons for non use.
Another ground for revocation is to be
found in Article 12, subsection (2)a.
This rule states that
a trademark shall be liable for
revocation if in consequence of acts or
inactivity of the proprietor.
It has become the common name in
the trade for a product or service.
In respect of which it is registered.
Another way to put this would be to say
that a trademark has degenerated and
the ineration in a simplified
explanation is a process that
usually means that
a trademark becomes a verb.
One topical example may be the fact that
people, in general, are not searching for
information on the internet.
They are googling.
This ought to be an alarm bell for
the proprietor that this trademark may
be on the verge of being the degenerate.
The ignoration is usually a threat only
to a notoriously well-known trademark,
but it may also be an issue when a new
product is introduced on the market.
This was the case with windsurfing, and
similarly, almost happened
with Rollerblades.
That, during the first years after
the introduction of inlines.
Which is the actual name of the product,
among many users became
the common name for the product.
The important lesson for
a proprietor to avoid degeneration,
is to be careful and
observant as to how a trademark is used.
Both in spoken and written language.
Also important to note is the fact that
when a new product is introduced on
the market, it is equally
important to invent a name for
the product,
to which the trademark can be related.
If that do not happen, it is likely that
a trademark will become the generic,
common name of the product.

And it will no longer be possible

to protect the name as a trademark.
As is hopefully evident from
the lectures on trademark law,
there are several aspects that needs to be
taken into account when a proprietor is
building a proper trademark strategy.
A trademark has an enormous potential and
it may become a company's
most important asset.
And more, more often, that is actually
the situation in modern companies.
And due to the fact that trademarks
are perpetual if we use them,
we may regard them as old friends.
Crucial for our existence and
necessary to foster.
And if you learn to take good care of
your trademarks they will likely show you
loyalty forever.