Protection of trademarks
Дипломная работа - Маркетинг
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BA, held that: "The respondent has shown no reason tenable at law to pick up an invented word of a foreign firm enjoying both inside and outside the country a reputation for electrical goods of various descriptions. It is registered in this country as such. Against this background, the adoption of the same trademark phonetically in respect of electric fans is bound to create a likelihood of confusion and deception to the consumers of such goods. Hence, it is against the public interest to register such a trademark." In another landmark judgment of the Sindh High Court in National Detergents Ltd v Nirma Chemicals Works, in which the foreign companys trademark NIRMA was not being used in Pakistan, it was held that: "The appellants have not alleged that the first respondents had abandoned any intention to use their foreign trademark in Pakistan for the goods and such inference cannot also be drawn in this case as the respondents have themselves filed an application for registration of their mark and have expressed their intention to use it in Pakistan. The use of the word Nirma is clearly not bona fide. No appreciable reason has been shown by the appellants or their counsel except with the intention to cause confusion. The conduct of the appellants in appropriating the trademark of foreign owners is not proper." In Mars Incorporated v Pakistan Mineral Water Bottling Plant (Private) Limitedthe defendants launched their beverages under the trademark MARS, which is famous worldwide for confectionery. The Sindh High Court at Karachi granted an interim injunction in favor of Mars even though the plaintiffs goods (confectionery products) were different from the defendants goods, and recognized MARS as a well known intern
Chapter 4. Protection of Well-Known Marks in Uzbekistan
Since 1991, when Uzbekistan had to jump from socialist to market economy, there has been a great amount of work done in the field of legislative reforms in all of the branches of law, including intellectual property. As a member of the Paris Union and WIPO, and a country willing to become a member of World Trade Organization (WTO), Uzbekistan nowadays needs to build a mechanism for efficient protection of intellectual property, including the protection of well-known marks.national legislation concerning protection of well-known marks in Uzbekistan at the moment consists only of three documents. They are:
1)Law of the Republic of Uzbekistan "On Trademarks, Service Marks and Appellations of Origin", 2001 (hereinafter "The Law");
2)Rules of filing and examination of appeals and applications in the Board of Appeal of the State Patent Office of the Republic of Uzbekistan, reg.# 1889 of 24.01.2009 (hereinafter "The Rules");
)Recommendations on the conduction of surveys among consumers on the issue of recognition of a trademark to be well-known in Uzbekistan (hereinafter "The Recommendations").
The Law
The current edition of the Law of the Republic of Uzbekistan "On Trademarks, Service Marks and Appellations of Origin" was adopted in 2001 and was amended twice since that time: in 2002 and 2007. The last time it was amended there were added two articles, the significance of which for the purpose of this chapter is enormous. Those two articles, namely 321 ("A Well-Known Trade Mark") and 322 ("Legal Protection of a Well-Known Trade Mark"), in strive of implementing of the Art. 6bis of the Paris Convention, directly deal with the issues of recognition of well-known marks in Uzbekistan.321 of the Law stipulates the following:
"A trademark protected in the territory of the Republic of Uzbekistan on the basis of its registration, a trademark, protected in the territory of the Republic of Uzbekistan without registration in accordance with the international treaty of the Republic of Uzbekistan, as well as a sign used as a trademark, but having no legal protection in the Republic of Uzbekistan, may be recognized as well-known in the Republic of Uzbekistan on the basis of the application of a legal or a natural person, if such trademarks or signs have on the date specified in the application become widely known among relevant consumers in respect of the goods of that person, as a result of their [trademarks and signs] intensive use.known trademark is granted the same legal protection as provided by this Act for a trademark".we can see, the article provides us with basic concept of a Well-Known Mark in Uzbekistan, namely it establishes the following requirements:
1)The mark claimed to be well-known must be one of the following 3 types of marks are eligible for protection:
a)registered trademarks;
b)unregistered trademarks protected under international treaties;)unregistered signs used as trademarks.
2)The mark is widely known among relevant consumers in respect of the goods of the claimant.
3)There must be intensive use of the mark.procedure of recognition can be started only upon the request (application) of an interested person, and not ex officio.
Article 322 of the Law deals with the bases of procedure for granting protection to well-known marks: designation of a "Competent Authority", inclusion of recognized well-known mark into the special List, publication and issuance of a certificate. According to this article, legal protection of a well-known trademark once granted is valid indefinitely.to the issue of protection from dilution the following must be stated. According to the Art. 10 of the, Law existence of a well-known trademark is an absolute ground for refusal of registration of another identical of confusingly similar trademark in respect of any types of goods [or services]. This looks like an attempt to comply with the requirements of the Art. 16.3 of the TRIPS Agreement, although rather awkward and vague, because it does not say that the well-known mark must be registered first, as well as that the requirements i) of a threat of "connection" or association with the well-known mark owner, and ii) possible damage to the interests of the latter, must be met. Therefore, this provision may, and certainly will, give birth to a lot of complications in practice.
The Rules
The document is compulsory to be followed by all legal and physical persons in Uzbekistan. The part relating to the procedure of recognition of a mark as well-known in Uzbekistan mainly deals with the following issues:
1)requirements to application on recognition of a well-known mark, and materials complementary to it;
2)procedural issues: registration of applications, duration of proceedings, rules of proceedings, and issuance of a decision by the BoA.core part of the Rules (for the purpose of this paper) is the requirements to application on recognition of a well-known mark, as it describes what type of information and supporting documents to be presented to the BoA for consideration. Article 7 of the Rules reads:
"Application [тАж], and the accompanying materials must contain the actual data confirming that the trademark is well-known. These materials may be documents containing:about intensive use of the trademark on the territory of the Republic of Uzbekistan;of geographic locations where the goods (in respect of which the trademark is used) have been sold;about the amount of sales of these goods;about the way of use of the trademark, including advertising and presentation at fairs or exhibitions of products and/or services for which the mark is applied;about annual average number of consumers of the goods;about the countries in which the trademark has become well-known;surveys of consumers of goods, provided by specialized independent organization, in accordance with the recommendations set out by the Patent Office.duration, continuity, intensity and volume of use of a trademark may be demonstrated by presenting of: conclusions of product quality control bodies, trade organizations, and societies for the protection of consumer rights; declarations, quality certificates, and other documents.application must indicate the date from which the use of the trademark has begun, and the date from which the claimant considers his trademark as well-known in the territory of the Republic of Uzbekistan".is an obvious attempt to implement WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, but with its specific features. Although optional (as well as the Joint Recommendation itself), the list above focuses more on the criterion of intensive use of the trademark in Uzbekistan, as implying that use is a decisive factor (and it actually is according to the Article 321 of the Law) in recognition of a well-known mark, which is inconsistent with the Art.2(3) of the Joint Recommendation. In fact the Rules (as well as the Law) do not contain any "non-criteria", i.e. criteria which cannot be demanded by the BoA to be met by the claimant, which leaves a room for abuse by the BoA of its powers to grant protection to a well-known mark.
The Recommendations
The Recommendations are not obligatory provisions to be taken into account when conducting a survey on whether the mark is well-known or not in Uzbekistan. According to the Rules mentioned above, surveys or polls are not compulsory to be presented to the Board of Appeal for the latter to decide on the issue of recognition of a mark to be well-known in Uzbekistan. But it is encouraged to present them anyway (although they can turn out to be very costly) because they give a clear picture of the issue, i.e. the actual numbers and fi