Enlargement of European Union and shrinking of trademark rights: case of Slovenia

International Journal of Management and Enterprise Development

Volumn 2, Issue 1, 2005, Pages 65-92

  Ženko, Zdenka ^a   Marn, Jure ^a  

^a UNIVERSITY OF MARIBOR   (Slovenia)

Author keywords

community trademark; industrial property; innovation management

Indexed keywords

EID: 33645157524     PISSN: 14684330     EISSN: 17418127     Source Type: Journal    
DOI: 10.1504/IJMED.2005.006030     Document Type: Article

References (71)

1. Bosworth, D., Masini, S. and Nakayama, M. (2002) ‘The role of innovation and quality change in Japanese economic growth’, J. of Evolutionary Economics, Springer Inc., Vol. 12, No. 1-2, pp.135–162.
2. Dana, L.P. and Dana, T. (2003) ‘Management and enterprise development in post-communist economies’, International Journal of Management and Enterprise Development, Inderscience, Vol. 1, pp.45–54.
3. Egoles, d.d., Škofja Loka (2003) web-site, http://www.egoles.si.
4. Gastwirth, J.L. (2003) ‘Issues arising in using samples as evidence in trademark cases’, J. Econometrics, Elsevier, Vol. 113, No. 1, pp.69–82.
5. Hania, E. (2000) ‘Industrial forum on enlargement (IFE)’, European Commission, DG3, http://europa.eu.int/comm/enterprise/enlargement/ife_proceedings/wg5_resp_com.pdf.
6. Li, L. and Qian, G. (2003) ‘Internalisation or externalisation: the option for small and medium-sized technology-based enterprises in overseas markets’, International Journal of Management and Enterprise Development, Inderscience, Vol. 1, pp.55–70.
7. Lipowczyk, S. and Roos, A. (2002) ‘Sie sind ne marke - die bedeutung der markeninformation für kleine und mittelständische unternehmen (trademark information - a must for SMEs)’, NFD Information-Wissenschaft und Praxis, Deutschen Gesellschaft Dokumentation E.V., Frankfurt Am Main, Vol. 53, No. 1, pp.9–14.
8. Ljubljanska stock exchange (2003) April 25, http://www.ljse.si
9. Marn, J. and Ženko, Z. (2003) ‘Evropska znamka kot instrument virtualnega kolonializma’, Preživeti in Uspeti v Evropski Uniji: Proceedings, pp.33–47, Ljubljana, Slovenia, Časnik Finance, Slovenian.
10. Maschek, M. (2002) ‘Informationsquellen über schutzrechte - recherchemöglichkeiten: zeitverschwendung oder entscheidungshilfe? (information sources on patents and trademarks - search possibilities: waste of time or decision-making aid?)’, CHIMIA, Vol. 56, No. 10. New Swiss Chemical Society, Basel.
11. McConaghie, A. (2002) ‘Parallel trade: is pharma fighting a losing battle?’, Pharmafocus, http://www.pharmafile.com/Pharmafocus/Features/feature.asp?fID=295.
12. Mulej, M. and Ženko, Z. (2002) Dialectical System Theory for Innovation Management, University of Maribor, in print.
13. Office for Harmonization in Internal Markets (OHIM) (2003) ‘Bad faith case study’, HOM 02/08, http://oami.eu.int/en/enlargement/pdf/badfaithCS3101.pdf
14. Office for Harmonization in Internal Markets (OHIM) (2003) Online Database, Allicante, Spain.
15. Slovenian Intellectual Property Office (SIPO) (2003) PS Database, Ljubljana, Slovenia.
16. Unitas, d.d., Ljubljana (2003) web- site, http://www.unitas.si/.
17. World Intellectual Property Organization (2003) Madrid-Express Database, Geneva, Switzerland.
18. Ženko, Z., Mulej, M. and Marn, J. (2004) ‘Innovation before entry int the EU: the case of slovenia’, Post-Communist Economies, Carfax Publishing, Vol. 16, No. 2, pp.169–189.
19. Marn is also representing some of the companies included in this research as a patent and trademark attorney. All data presented are public.
20. Office for Harmonisation in Internal Markets (OHIM) in their ‘Bad faith study’ defines ‘cybersquatting’ as registering, trafficking in or using a domain name with bad faith intent to profit from the goodwill of a trade mark belonging to someone else or name of a person.
21. It refers to the practice of registering or buying up domain names reflecting the names of existing businesses including trademarks when they put up their websites.
22. The statistical data shown in Table 1 do not reflect services obtained by third parties directly through SIPO databases - only those information services provided by SIPO as information provider.
23. OHIM in already mentioned ‘Bad faith case study’ concludes: ‘In view of this, the option is to base bad faith on the basis of actual knowledge, with a more or less flexible approach for presumptions or negligence. The accessibility to trade mark databases online (both CTMs and national trade marks), the implementation of the Unified Trade Mark Consultation System [for further details on this project see: http://oami.eu.int/EN/enlargement/prepgroup.htm], plus the fact that the accession of candidate countries is a publicly known and foreseeable event would allow to build up on these a number of presumptions, which would further have to take into account several different factors’.
24. Acronym used for European trademark in this text and elsewhere.
25. Council Regulation (EC) No. 40/94 of 20 December 1993 on the Community trademark.
26. Reflects status as of April 25, 2003.
27. Reflects status as of May 14, 2003, there are 97 companies listed on OTC. Only non-zero results are shown (57 of 97 OTC listed corporations have no Slovenian national, Madrid Agreement/Protocol or CTM trademarks).
28. http://www.uil-sipo.si.
29. http://www.wipo.org.
30. http://oami.eu.int.
31. Treaty of Accession of the Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovenia and Slovakia to the European Union: Act concerning the conditions of accession of the Czech Republic, the Republic of Estonia, the Republic of Cyprus, the Republic of Latvia, the Republic of Lithuania, the Republic of Hungary, the Republic of Malta, the Republic of Poland, the Republic of Slovenia and the Slovak Republic and the adjustments to the Treaties on which the European Union is founded, 2003, http://europa.eu.int/comm/enlargement/negotiations/treaty_of_accession_2003/sl.zip.
32. Short description taken with some modifications from Ženko and Marn, 2003.
33. Absolute grounds for refusal are essentially same as those given by Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ L 11, 14.1.1994, p. 1), as amended by Council Regulation (EC) No 3288/94 of 22.12.1994 (OJ L 349, 31.12.1994, p. 83) (CTM Regulation).
34. Opposition is primarily based on relative grounds for refusal which are essentially same as those given by CTM Regulation.
35. Industrial Property Act (ZIL-1), Official Bulletin of R. of Slovenia 45/2001, in English available at http://www.sipo.mzt.si/Laws/zil_1e.pdf.
36. Constitutional matters are heard by Slovene Constitutional Court, Slovenia Supreme Court is highest regular court.
37. The applicant must have a real and effective industrial or commercial establishment in the contracting State, or the applicant must be domiciled in the Contracting State, or the applicant must be a national of the Contracting State.
38. Application designates countries in which registration is to take effect, number of designated countries is reflected in amounts of fees payable to the administrator.
39. The term 12 months cannot be extended.
40. Date on which signatory state has been notified about extended registration.
41. The term 18 months can be extended for specific reasons.
42. The only way to redress this assumption would be to undertake search in several national registers, i.e. all current and new member states - such search would be prohibitively expensive and would not significantly affect our conclusions. At the same time it should be noted that applications via Madrid Agreement are far (order of magnitude) cheaper than national registrations provided at least half a dozen signatory states are designated in the application.
43. It is our assumption that the trademarks will first be protected in Slovenia, and then expanded either via Madrid Agreement/Protocol or via CTM. This can be achieved taking advantage of Paris convention for protection of industrial property (Paris convention) priority mechanism which enables a trademark applicant from the country signatory to the Paris convention to file his or her trademark in another country signatory to the Paris convention within six months from original filing date and be awarded all benefits of original filing date in this, other, country. The same principle applies to the CTM.
44. Mid-May, 2003.
45. On May 15, 2003 there were 100,193 trademarks shown in SIPO and WIPO databases - some of them were in refusal proceedings, or refused. It would be difficult to try to winnow these out by hand, and there were no automated means at authors disposal, however, number of refused trademarks are negligible compared to total number and percentage of national vs. international trademark holders would have not changed significantly, and in authors assessment far less than 1% point.
46. As on February 2003 there were over 300.000 CTM applications filed before OHIM.
47. The authors are not aware of any cease-and-desist letters or other legal proceedings which will most likely not be used prior to actual accession of Slovenia and other member states to the EU.
48. Article 12: Limitation of the effects of a Community trade mark
49. A Community trademark shall not entitle the proprietor to prohibit a third party from using in the course of trade:
50. his own name or address;
51. indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service
52. the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts provided he uses them in accordance with honest practices in industrial or commercial matters.
53. Article 48: Limitation of rights conferred by a mark
54. The mark shall not entitle the owner to prohibit a third party from using in the course of trade and in accordance with honest practices in industrial or commercial matters: his own name or address; indications concerning the kind, quality, quantity, intended purpose, value geographical origin, the time of production of goods or of rendering the service, or other characteristics of goods or services the mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts any sign which is identical or similar to the mark, where the third party started to use it in good faith before the date of filing of the application or, if priority is claimed, the date of priority.
55. As no country has joined the EU since the creation of Community trademark system, all examples are hypothetical by definition at the time this work was written. The examples shown are based on possible conflicts which may or may not arise in the future, depending on trademark holders interests in Slovenia.
56. Article 14: Complementary application of national law relating to infringement: The effects of Community trademarks shall be governed solely by the provisions of this Regulation. In other respects, infringement of a Community trade mark shall be governed by the national law relating to infringement of a national trade mark in accordance with the provisions of Title X. This Regulation shall not prevent actions concerning a Community trade mark being brought under the law of Member States relating in particular to civil liability and unfair competition.The rules of procedure to be applied shall be determined in accordance with the provisions of Title X.
57. Actually, where more than three years have passed from publication of registration of such fictitious person in Official Bulletin of R. of Slovenia (Uradni list Republike Slovenije).
58. Acts of unfair competition referred to in the previous paragraph shall include in particular: sale of goods bearing designations or data which will or might lead to a confusion concerning the origin, method of production, quantity, quality or other properties of goods; unjustified use of a name, business name, mark or any other designation of another company regardless of whether that company granted approval for this, when this will or might lead to a confusion on the market.
59. There is no right per se to use CTM given in CTM Regulation, only to prevent others from unauthorized use of trademark in course of trade.
60. According to telephonic conversation with Unitas sales people.
61. It is the authors’ opinion that faucets are similar goods to water purification and water filtration apparatus as they are sold in similar stores to similar buyers.
62. According to telephone conversation with Cinkarna technical contact person.
63. Act concerning the conditions of accession of the Czech Republic, the Republic of Estonia, the Republic of Cyprus, the Republic of Latvia, the Republic of Lithuania, the Republic of Hungary, the Republic of Malta, the Republic of Poland, the Republic of Slovenia and the Slovak Republic and the adjustments to the Treaties on which the European Union is founded.
64. Article 106: Prohibition of use of Community trade marks: This Regulation shall, unless otherwise provided for, not affect the right existing under the laws of the Member States to invoke claims for infringement of earlier rights within the meaning of Article 8 or Article 52 (2) in relation to the use of a later Community trade mark. Claims for infringement of earlier rights within the meaning of Article 8 (2) and (4) may, however, no longer be invoked if the proprietor of the earlier right may no longer apply for a declaration that the Community trade mark is invalid in accordance with Article 53 (2).
65. This Regulation shall, unless otherwise provided for, not affect the right to bring proceedings under the civil, administrative or criminal law of a Member Sate or under provisions of Community law for the purpose of prohibiting the use of a Community trade mark to the extent that the use of a national trade mark may be prohibited under the law of that Member State or under Community law.
66. Paris Convention for the Protection of Industrial Property.
67. Paris Convention for the Protection of Industrial Property (of March 20, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at the Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967, and as amended on September 28, 1979).
68. One of such examples is Madrid Agreement/Protocol trademark ALEA (Reg. no. 798169) registered by Slovenian OTC corporation DZS d.d. which was extended, Unter alia, to Austria, Germany, France, and Italy, for goods and services in classes, inter alia, 9 and 35 on 31.12.2002 compared to CTM registration ALEA for same classes, CTM number 1941566, applied for on 7.11.2000.
69. Article 32 (2) of CTM Regulation states: Seniority shall have the sole effect under this Regulation that, where the proprietor of the Community trade mark surrenders the earlier trade mark or allows it to lapse, he shall be deemed to continue to have the same rights as he would have had if the earlier trade mark had continued to be registered.
70. This is a central point of so called ‘Central attack’ theory under which it may be beneficial to try to invalidate a national trademark registration upon which Madrid Agreement/Protocol trademark registration is based in a country of its origin - by invalidating national trademark registration before five years from Madrid Agreement/Protocol registration extension one automatically invalidates extended trademark in all countries to which the mark was extended. After five years, the mark needs to be challenged in each country following rules of that country which may prove to be very expensive.
71. The authors did not check whether other conditions are met, in particular those set out in Article 53 (2) of CTM Regulation related to limitation in consequence of acquiescence: ‘Where the proprietor of an earlier national trade mark as referred to in Article 8 (2) or of another earlier sign referred to in Article 8 (4) has acquiesced, for a period of five successive years, in the use of a later Community trade mark in the Member State in which the earlier trade mark or the other earlier sign is protected while being aware of such use, he shall no longer be entitled on the basis of the earlier trade mark or of the other earlier sign either to apply for a declaration that the later trade mark is invalid or to oppose the use of the later trade mark in respect of the goods or services for which the later trade mark has been used, unless registration of the later Community trade mark was applied for in bad faith.’