Trade Mark Use

Author: Jeremy Phillips; Hannah Simon
Publisher: Oxford University Press
ISBN: 9780199280339
Published In: March 2005
Format: Hardback , 436 pages
Jurisdiction: U.K. ? Disclaimer:
Countri(es) stated herein are used as reference only

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Provides concise, analytical coverage of all aspects of trade mark use

Logically divided into areas of modern practice

This central aspect of trade mark law and practice has never before received such focused treatment

Written by an accomplished team of both practitioners and academics, it provides valuable insights into practice while giving succinct analysis of case law in the light of legal principles

Exposes new angles on what is currently one of trade mark law's most topical areas

"Use" is a concept which is fundamental to modern trade mark law, within the European Union, the US and elsewhere. The use concept is ubiquitous, since it must be understood before even basic issues of registrability, infringement and validity can be resolved.

This book analyses the concept of "use" in trade mark law by tracing it at every stage of a trade mark's lifecycle. Topics covered include The Concept of Use, Registration, Exploitation, Infringement, and Death of a Trademark. It focuses primarily on European trade mark law, but also examines key aspects of US and international law.

It is an invaluable information source if you or your client: (i) want to register a trade mark; (ii) are accused of infringing it; (iii) want to prove that, through use, the mark is entitled to remain on the register; (iv) want to make money from using the mark and (v) want to argue that another person's mark should not remain registered.

Readership: Practitioners specialising in trade mark law or intellectual property more generally (including trade mark and patent attorneys); academics and students interested in intellectual property; reference libraries; trade mark examiners and hearing officers.

Foreword
Part A: Introduction
1: Jeremy Phillips and Ilanah Simon: Introduction
Part B: The Concept of Use
2: Bojan Pretnar: Use and Non-Use in Trade Mark Law
3: Jennifer Davis: The Need to Leave Free for Others to Use and the Trade Mark Common
Part C: Registration
4: Arnaud Folliard-Monguiral: Distinctive Character Acquired through Use: The Law and the Case Law
5: Anna Carboni: Distinctive Character Acquired through Use: Establishing the Facts
6: Thomas Hays: Distinguishing Use versus Functional Use: Three-Dimensional Marks
Part D: Exploitation
7: Neil J. Wilkof: Third Party Use of Trade Marks
8: Massimo Sterpi: Trade Mark Use and Denominative Trade Marks
9: Jeffrey Belson: Use, Certification and Collective Marks
Part E: Infringement
10: Robert Sumroy and Carina Badger: Infringing 'Use in the Course of Trade', Trade Mark Use and the Essential Function of the Trade Mark
11: Ashley Roughton: Permitted Infringing Use: The Scope of Defences to an Infringement Action
12: Andreas Rahmatian: Infringing Use of a Trade Mark as a Criminal Offence
Part F: Death of a Trade Mark
13: Belinda Isaac: Use for the Purpose of Resisting an Application to Revoke for Non-Use
14: Allan James: The Requirement for Evidence of Use of Earlier Trade Marks in Opposition and Invalidation Proceedings
Part G: Broader Perspectives
15: Spyros Maniatis: Trade Mark Use on the Internet
16: Gail E Evans: TRIPs and Trade Mark Use
17: Graeme B. Dinwoodie and Mark D Janis: Use, Intent to Use and Registration in the USA
18: Sheldon H Klein and N Christopher Norton: The Role of Trade Mark Use in US Infringement, Unfair Competition and Dilution Proceedings
Part H: Post Mortem
19: Jeremy Phillips and Ilanah Simon: Conclusion: What Use is Use?

Edited by Jeremy Phillips, Intellectual Property Consultant, Slaughter and May; Visiting Professorial Fellow, Queen Mary Intellectual Property Research Institute, University of London; Professor, Magister Lucentinus, University of Alicante, and Ilanah Simon, Lecturer in Law, Brunel University, West London

Contributors:

Carina Badger, Slaughter and May, London

Jeffrey Belson, Hewlett-Packard, Israel

Anna Carboni, Wilberforce Chambers, London

Jennifer Davis, University of Cambridge

Graeme B. Dinwoodie, Chicago-Kent College of Law, US

Gail E Evans, Queen Mary Intellectual Property Research Institute, London

Arnaud Folliard-Monguiral, OHIM Industrial Property Litigation Unit, Spain

Thomas Hays, University of Aberdeen

Belinda Isaac, Morgan Cole, Oxford

Allan James, UK Patent Office

Mark D Janis, University of Iowa College of Law, US

Sheldon H Klein, Arent Fox, Washington DC, US

Spyros Maniatis, Queen Mary Intellectual Property Research Institute, University of London

N Christopher Norton, Arent Fox, Washington DC, US

Jeremy Phillips, Slaughter and May and Queen Mary Intellectual Property Research Institute, University of London

Bojan Pretnar, World Intellectual Property Organization, Geneva

Andreas Rahmatian, University of Stirling

Ashley Roughton, Hogarth Chambers, London

Ilanah Simon, Queen Mary Intellectual Property Research Institute, University of London

Massimo Sterpi, Studio Legale Jacobacci e Associati, Turin, Italy

Robert Sumroy, Slaughter and May, London

Neil J. Wilkof, Herzog, Fox & Neeman, Tel-Aviv, Israel

"thought-provoking, challenging and illuminating... a fascinating book... I very much hope that there will be a second edition of this excellent work." - The CIPA Journal (Tibor Gold)