Luận văn thạc sĩ luật học: Bảo hộ nhãn hiệu trong thương mại điện tử theo pháp luật Liên minh Châu Âu và khuyến nghị đối với Việt Nam

Court of Justice of European European Union European Union ~ Vietnam Free Trade Agreement Intemet Corporation for Assigned Names and Numbers Intellectual Property Internet Service Provid

MINISTRY OF EDUCATION MINISTRY OF JUSTICE

RECOMMENDATIONS FOR VIETNAM

MASTER OF LAW DISSERTATION

(Applied Program)

Hanei, 2022

MINISTRY OF EDUCATION MINISTRY OF JUSTICE

AND TRAINING

HANOILAW UNIVERSITY

LE MINH TRANG

TRADEMARK PROTECTION IN ELECTRONIC

COMMERCE UNDER EUROPEAN UNION LAW AND

RECOMMENDATIONS FOR VIETNAM

MASTER OF LAW DISSERTATION

‘Major: International LawCode: 8380108

SUPERVISORAssoc Prof Dr NGUYEN BA BINH

Hanoi, 2022

STATEMENT OF AUTHORSHIP

Thereby state that this dissertation is my originalwork The references and data used in thisdissertation are accurate and trushworthy /

Approval of Supervisor Author of Dissertation

Assoc Prof Dr Nguyen Ba Binh

Court of Justice of European

European Union

European Union ~ Vietnam Free Trade Agreement

Intemet Corporation for Assigned Names and Numbers

Intellectual Property

Internet Service Providers

Model Law on Electronic Commerce

Page

Paragraph

Trade-Related Aspects of Intellectual Property Rights

Uniform Domain Name Dispute Resolution Policy

United Nations Commission on Intemational Trade

‘World Intellectual Property Organization

‘World Trade Organization

3 Subject and scope of the research

3.2 Scope of the research

4, Research methodologies and methods

s Objectives and tasks of the research

6 Scientific and practical significance of the research

7 Structure of the dissertation

CHAPTER 1: OVERVIEW ON TRADEMARK PROTECTION

ELECTRONIC COMMERCE

11 Trademarkprotection

LLL Trademark definition and trademarkprotection’s significance

9-12BT

`

112 Trademarkprotection methods

113 Trademark right infringemert

12 The linkage between trademark protection and electronic

2L

commerce

12.1, Electronic conmerce definition it1.2.2 Trademark protection in electronic conaherce 22

13 Chapter conclusion -25CHAPTER 2: THE MAIN CONTENTS OF TRADEMARKPROTECTION IN ELECTRONIC COMMERCE UNDER EUROPEANUNION LAW 6

633

2.1, Trademark right acquisition

2.2 Trademarkprotection methods in electronic commerce

23 Trademark infringement in electronic commerce lt23.1 Cybersquatting 3623.2 Meta-tagging 3823.3 Keyword advertising 4d23.4 Contributory infringement via online intermediaries 442.4, Chapter conclusion ABCHAPTER 3: TRADEMARK PROTECTION IN ELECTRONICCOMMERCE IN VIETNAM AND RECOMMENDATIONS FOR

VIETNAM SO

3.2 Trademarkprotection methods in electronic cornmerce 543.2.1 Self-protecting methods Sd3.2.2 State’s enforcement 553.2.3 Other measures a3.3 Recommendations for enhancement of trademark protection inelectronic commerce _-3.3.1 Practice of trademark infringement in electronic commerce 633.3.2 Reconmendations 68

3.4 Chapter conclusion.CONCLUSION

BIBLIOGRAPHY

1 Necessity of the Research

Even though tangible assets are early recognized, in the last couple ofdecades, intellectual properties have been showing their significance In someaspects, when the intangible properties are becoming more developed, thevalue gained from them proliferates and this phenomenon got to a point wherethese assets are sometimes much more valuable than tangible assets Whileintellectual property (IP) can be referred to as industrial property and to

copyright and related rights’, IP law is established to protect human mind

creation This is why most countries in the world enhance their ability toimplement IP law On grander scale, multilateral and bilateral agreementshave created intemational legal frameworks on IP sights Even regionalagreements are also encouraged to include IP rules This assists countries inachieving sustainable development as well as harmonization between theirdomestic legal systems with intemational IP standards

It is even more urging to build such a system due to the advancedtechnologies The storm of the internet has fueled dramatic developments forthe new digital communications and economy Intemnet makes a great impact

on many aspects of intellectual property rights, and one of the ways is viaelectronic commerce E-commerce is a new way to promote socio-economic,drawing us close to modemity and convenience, but it also introducesdifferent problems on IP nights, such as infringements The intemet iscompared to the movement of weather within the global climate, and itignores distinctions based on territorial borders Instead, infrastructure, code

and language have thus far had a greater bearing on the reach of its currents”

As the intemet began to be expanded to the commercial environment, it

‘made communication for fast-forwarding and information exchange at easeInftinging goods and services are ubiquitous and have become a challenging

Werk Eieleehal Propety Orgaizatin (WIPO), Suall and Medina Sind Breyrists Divison, pealecmal Property kanes Reltedto Become Coumerce,p3.

‘Wer Sa Tectal Property Orguiation (WIPO) C000), Pramer on Tecrontc Commerce ut buen rope Banei,pra.106,p.37

task to prevent Therefore, intellectual property rights in general, particularlyindustrial property rights for trademarks need to be protected in this digitalenvironment In Vietnam, where e-commerce exchanges are developingdrastically, it is necessary to protect trademarks with a legal framework Thisdissertation will analyze, from the perspective of a prominent jurisdiction inthe world, the European Union, how this Union built its legal system fortrademark protection in e-commerce and the implementation of theregulations in practice

‘most common IP subjects in e-commerce which are copyright and patentFurther, since it focuses on all aspects of IP law, it has not beencomprehensive enough on trademark matters in e-commerce and in EU

One other paper on IP rights in e-commerce is the “Phap iuat ve bao ho

30 jun tr he trong mot truong thuong mat dien tu: Tu time tien cua Viet Nam

den kinh nghiem mot so nưoc ” [Law on intellectual property protection tr commerce environment: From Vietnam's practice to other nations

e-experience] by Manh Thuat and Van Chien, 2021, Legal Joumal? This article

provides statistics on the number of infringing cases with the highlight of aparticular case conceming the e-commerce platform owner Lazada It alsoraises some practical problems of intellectual property in e-commerceAccordingly, the article assessing the current law of Vietnam is not keeping

up with reality However, the article also stops at the level of assessing the

‘most basic issues without going into the issue of trademark protection in commerce In addition, methods adopted by other countries such as China,India and the European Union are also mentioned but not analyzedthoroughly

e-Along with this research, there are articles specially made on IPinfringements such as “Bot thuong tiiet hat dimh truoc do xam pham quyen soJnut tri tue theo phap Inat Viet Neon: Mot so van de dat ra va giai phap hoanthien” [Compensation regardmg ttellectual property right inftingementunder Vietnam law: Issues and solutions for enhancement] by Hoang VanThang, 2020, The State and Law and “Hanh vi xam phươn quyen tac gta theophap inat so ina trí tue Viet Nam’ [Copyright inftingements wider VietnamJaw] by Nguyen Phuong Thao, 2018, Legal Studies Joumal no 7/2018 Eventhough the articles analyzed both domestic law and intemational agreements,

IP infringement and compensation are more outstanding Other than these,there are also many more domestic researches on IP matter and e-commerce

in general but there has not been any paper essentially analyzing EU lawsystems on trademark protection in e-commerce to provide recommendationfor Vietnam,

2.2, Foreign researches

Intellectual property rights are also an issue that has been developed and,concemed for a long time in the world In addition to national legislation,

s88 vi bon ko nghssot co anor 30S0U ben), at acest: Angne 18,2022

intemational organizations have also developed a legal framework to regulatethis issue Regarding intellectual property rights in e-commerce, manyscholars have given their views Specifically, WIPO, a large organization,also publishes publications analyzing this issue such as “Intellectual PropertyIssues Related to Electronic Commerce” However, the publications are forreference only, guiding the approach to the issue without specific analysis and

opinions

Furthermore, there are articles by individuals analyzing trademark and commerce such as the Comment “Convergence of Trademark Law and E-Commerce: Overview of US EU and China Regulations on Trademarks andDomain Names” by Goce Naumovsli & Dimitri Chapkanov, 2014 This studyfocuses on three major regions, the US, China and the EU The article dealswith the legal systems of these countries and outlines the possibilities oftrademark and domain name infringement In addition to that, research papersoften focus on trademark infringement issues such as “Keyword Advertisingand Buropen Trade Mark Law” by Charles Gielen, NautaDutilh NV or

e-“Liability jor Trademark Infringement for Internet Service Providers” byKatja Weckstrom, 2009 University of Turlu, Finland, or “PracticalTrademark Protection on the Net” by Cynthia L Acree The articles analyzetrademark infringements by explaining in detail the concepts and analyzingcase law in the world These are research studies that have contributed buthave not been concretized related to EU and Vietnamese laws Furthermore,the development of IP law has brought new issues to the practice, therefore,more updated researches are required

Intemational-wide, WIPO publishes yearly reports to reflecting statistics,regarding intellectual property filings in practice around the world, namelythe latest “IVIPO (2021), World Intellectual Property Indicators 2021" Thisreport not only shows the current number of applications, but also underlinesthe important role of IP along with the trends of the years ahead Definingfuture direction will guide policymakers and practitioners to develop asustainable economy while enhancing innovations and creativities

In the EU, the EUIPO also publishes annual reports indicating itsactivities within the years The latest version is the “Consolidated AnnualActivity Report 2021", Similar to WIPO's reports, it mainly focuses on thestatistics of IP filings within the Union The EUIPO even has a more specificreport relating IP infringement which is the "2020 Status Report on IPR

Infringement" This report particularly analyzes the value of IP rights and

howit can be used in bad faith via counterfeiting and piracy

3 Subject and scope of the research

3.1 Subjects of the research

‘The main subject of this research is the EU law on trademark matter in commerce The research also focuses on the practice of trademark within the

e-EU to draw out some lessons and recommendations for Vietnamese law and

practice

3.2 Scope of the research

Regarding the substance of the research, it covers three aspectstrademark protection in e-commerce under EU law, trademark protection in e-commerce in Vieam and taking EU's experience as an example, thedissertation deduces recommendations for Vietnam The source of law for thispaper is EU's legal acts being applied through out the whole territory of allEU's member states including regulations, directives, decisions,recommendations, opinions and other acts Each member states’ domestic law

‘will not be taken into consideration within the scope of this paper

Regarding the scope of space, the research mainly covers the EU andVietnam territories Further, for providing more reliable arguments, theresearch also stretches its scope out to other nations such as the US andChina

ˆ EU (2020), 2070 See Report on PR Đựnhgưne, Why TP Piges we hụt, IR nữ ngư,

and the fight apust comtafehing amd pracy See a: lớp/euposgmsvhuuek T9blsoEtAptbdsrigtei8eotuaog lènrvinbeerartartiđoapaostsErpe:020 Same Bepat on DE af

‘Eugen /090_ Same Report oh, DR xem sp, lụt accessed: Agar 18,2022

Regarding the scope of time, the dissertation studies the period of timefrom 2005 to the present This is the time when the Vietnam’ s first intellectualproperty law was first issued as a separate legal document

4, Research methodologies and methods

‘The methodologies carried out by the dissertation are based on the theory

of Marxism-Leninism, the policies of the Party and the State, in such, thedissertation mainly uses the dialectical and historical materialistmethodologies

Further, in order to complete the dissertation, some methods such asdialectical method, historical method, theoretical research method incombination with reality to analyze, compare and synthesize are be usedHowever, analysis method, comparing method and theoretical research methodare the key ones In this dissertation, analysis method will be used in discussingthe linkage between trademerk and e-commerce, the relationship amongintemational agreements and the law of EU intemal market, while comparing

‘method is applied in estimating the effectiveness of the solutions taken by EUand other countries with Vietnam for the trademarie protection in e-commerceThe dissertation also refers to many scholars’ research findings and legalopinions by theoretical method

5 Objectives and tasks of the research

5.1 Objectives of the research

- First, to provide an insight into the nature of trademark protection in commerce in general using intemational lawasa standard scale,

e Second, to identify and analyze the legal matters on trademarkprotection in e-commerce under EU law,

- Third, to make some recommendations for Vietnam based on thelessons leamt from EU law

5.2, Tasks of the research

Based on the above subjects, the research tasks of the dissertation are asbelow

~ Analyze and evaluate the need of trademark protection in e-commerce,

~ Research the theoretical basis and EU law on trademark protection of

e-‘commerce;

~ Analyze and evaluate current Vietnamese regulations related trademaricand e-commerce As a result, the dissertation deduces some

‘recommendations to promote strength and improve wealmesses

6 Scientific and practical significance of the research

6.1 Scientific significance of the research

The dissertation has classified and analyzed two main aspects oftrademark protection in e-commerce in general and under EU law, namely,trademark nights acquisition and trademark inftingement By analyzing,comparing and evaluating EU legislation on trademarks and e-commerce, andanalyzing the relationship of these two objects, it then draws out opinionsaround the globe as well as in the EU Thereon, the dissertation has EUintellectual property law compared with Vietnamese law to spot out thelimitations and disadvantages Accordingly, it offers further solutions to buildmore EU-compatible legal framework The dissertation also contributes toproviding information and knowledge by sharing intemational perspectivesand experiences in relation with intellectual property activities in Vietnam Inaddition, with its results, the dissertation promotes domestic scientificresearch activities of individuals and groups, especially regarding trademark

protection in e-commerce

6.2 Practical significance of the research

In practical terms, the dissertation uses different trademark disputes invarious countries and organizations in EU and other parts of the world todraw out lessons for Vietnam From this, the paper also reviews Vietnamesetrademark domestic law to detect certain challenges that Vietnam has beenencountering and offers some recommendations for Vietnamese domesticJaws and future intemational agreements For each issue, different solutionsare drawn including amendments of legislations, or negotiation of

agreements, From there, the dissertation draws out solutions suitable to thereality in Vietnam related to trademarks and trademark infringementAccordingly, these solutions will help state agencies, organizations,

‘businesses and individuals better understand domestic regulations as well ashelp better enforce trademark rights in e-commerce

7 Structure of the dissertation

The dissertation consists of three parts: (1) introduction, (fi) the maincontents which consists of three chapters, and (ii) conclusion Within thescope of research, Chapter 1 provides an overview on trademark protection indlectronic commerce under intemational standards Chapter 2 particularlyfocuses on the main contents of trademark protection in electronic commerceunder European Union law The last chapter reviews Vietnam trademark lawand draw out some recommendations for Vietnam in both law and practiceunder the current status of trademark law implementation

CHAPTER 1: OVERVIEW ON TRADEMARK PROTECTION IN

ELECTRONIC COMMERCE

11 Trademarkprotection

LLL Trademark definition and trademarkprotection’ significance

World Trade Organization (WTO) defines a trademark, according toTrade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, asconstituted by any sign, or any combination of signs, capable ofdistinguishing the goods or services of one undertaking from those of other

undertakings’, Similarly, World Intellectual Property Organization (WIPO)

has a definition for trademark as any sign that individualizes the goods of a

given enterprise and distinguishes them from the goods of its competitors®

Accordingly, in one of the WIPO's publications, the term of “service mark”

‘was also mentioned’ In a narrower meaning, trademarks only cover marks on

goods for sale and do not include marks on services being provided by theowner However, trademark is usually considered as a broader term that alsocovers both “trade mark” and “service mark”

Similarly, EU also has a definition for trademark regulated in Regulation(EU) 2017/1001 of The European Parliament and of The Council of 14 June

2017 Accordingly, a trademark may consist of any signs, in particular, words,including personal names, or designs, letters, numerals, colors, the shape ofgoods or of the packaging of goods, or sounds, provided that such signs arecapable of ) distinguishing the goods or services of one undertaking fromthose of other undertakings, and (ii) being represented on the Register ofEuropean Union trademarks (‘the Register’), in a manner which enables thecompetent authorities and the public to determine the clear and precise subject

matter of the protection afforded to its proprietor*

Signs that can serve as trademark are words, letters and numerals,devices, and the combination of the above In general, for a sign to be

"price 151, TRIPS Ageemert

‘World heres Prope Drgoizuien (2004), WIPO Duele Property Hook: Poi, Za ud tức WIPO Pobcwson io 409) 9.68

Bi.

ˆ Ai 4 of Reguation (EU) 2017/1001 of The Buropean Patani and of The Como 14 me 2017

registered as a trademark, it must be distinguishable In other words, it cannot

be a generic term or be descriptive of the goods/services that the owner isplanning to sell/provide The top tier company Apple, Inc filed a trademerkcapplication for “Apple” designated for the electronic devices and software in

class 09° In this case, the trademark was granted for protection because it had

met the condition of distinctiveness

Aside from this, the fast-paced development of technology has paved theway for the growth of non-traditional marks such as sound marks, smellmarks, and taste marks, Examples of sound trademarks are the sound of

chimes registered by Microsoft in 2004” or the musical notes G,E, C for the

services of broadcasting of television programs owmed by NBC Universal

Media, LLC in the United States Regarding smell signs, to obtain

protection, the products camying the mari cannot associate or result to themark itself as it would lack of indistinctiveness and hence, the sign cannotserve as a trademark For example, a smell sign will not be protected forperfumery or detergents because the essence of the products is the scents In

contrast, a bubble gum scent can be registered for footwear products” and

fresh mint aroma can be registered for automobiles tires, and so on

Nevertheless, applying olfactory/taste mark can be very complicated,Not only it is challenging to give these marks precise description in order not

to be confuse with other olfactoryhaste marks, it is also problematic to storetheir representations at the registry Reserving smell and taste from fadingaway or becoming decay over time requires a lot of work Consequently, not

‘many successfully attain protection for smell and taste marks,

Another type of non-conventional trademark is three-dimensional mariewhich is frequently the shape or the packaging of the products Trademarklaw in many countries does not address the precise definition for three-

"Thisrefesto cassified goods fervices m the Nice btsmationa Chssticetim of Goods and Savices

* pe ed pte gvlEctssNgebki=791435758&:set Tpa=SBELAT NO.Gerch Typeset oath, hết

accessed: Aagst 18,2022

ac Noasber=72340406Saes TNpe=SERIAL NO Gear Typenrme Soar at accessed: Aagat 18,2022

‘US Thêm Ragisratio no 4.756435,

See a tps upto seper/TMOSOS65443, hết accessed: Angst 18,2022

dimensional marc but rather focus on the conditions for granting protectionagainst this sign, that is (i) to have a distinctive character and đi) to servecommercial origin function A case of successfully gain protection for three-dimensional mark is Sanders doll of Kentucky Fried Chicken company under

‘Registration no 41588664 in Japan The representation of this trademark is a

3-D image of a doll in black and white and the designated goods is friedchicken

Trademark is characterized into four types: trade/service marks,certification marks, and collective marks, The first two are the most commonmarks and are addressed in the beginning of this chapter A certification marie

is any word, phrase, symbol, or design or a combination of any of theseowned by one party that certifies the goods and services of others wien theymeet certain standards or requirements Regarding collective marks, they aremade up of letters, words, designs, and names similar to standard trademark,however, there are two types of collective marks those used by members ofacollective and those registered by a cooperative, association

In the view of business sectors, trademark is a valuable intellectual asset

in branding that helps to make reputation and reassure of market shares Byusing their unique signs representing what they offer for sale, the trademaricowners maintain a repeat chain of customers and guarantee the productquality Aside from that, trademark plays a significant role for consumers asthey use trademarks as a tool to distinguish goods and services, If the marksare similar, they might associate the goods or services designated by themarks come from the same source, The more popular a trademark is, thelower the likelihood of confusion it may get with other products from othercompanies This concems public interest because the consuming public isentitled to the choice of goods/services and not the deceiving products

‘borrowing another owner's name Therefore, both traders and end-users are inthe need a protection mechanism for trademark to diminish unfair competition

"ups Thee jplpet pe gp p00, ls accessed: Angust 18,2022

and confusion Trademark protection has been and will be unarguablycompulsory for trade to flowin a more smoothly manner

1.12 Trademarkprotection methods

L121 Selfprotecting methods by trademark owners

Use of trademark and appiteation for protection at registries

Nations around the globe have created and developed their owntrademark law, but as trade has expanded greatly beyond borders, the scope oftrademark protection would inevitably swell across countries Several

‘multilateral and bilateral agreements on intellectual property such as PanisConvention for the Protection of Industrial Property, TRIPS Agreement,Madrid Convention Conceming the Intemational Registration of Marks,Beme Convention for the Protection of Literary and Artistic Works weresigned and become an integral part of international legal system to serve onepurpose to provide an intemational harmonious means Organizations andunions also make the same contribution, namely, WIPO, WTO Due tocomplications and variances among jurisdictions, intemational pacts areundoubtedly the one tool to help reduce conflict of laws

There are two principles regarding trademaric protection applied over theworld: “firstto-file” principle and “first-to-use” prindple In the firstprinciple, trademark protection is obtained through the process of registration.The core of this principle is when two or more applications are filed bydifferent parties for registration of the same mark, the registration may only

be granted to the valid application with the eatliest priority or filing dateamong applications that satisfy all required conditions, This principle is used

by a larger proportion of countries than “first-to-use” countries, namely,Brazil, China, European Union, Korea, Spain, Vietnam, and so on

‘The second basis of trademark protection is “first-o-use” which is moreprevalent in common law based jurisprudence “First-to-use” means thepriority is given to the first user of a mark regardless of the filing date (if any)

as long as one can prove the date of use of such marie in commerce Up tonow, fewer countries are applying this principle such as the United States,

Australia, India or Canada That being said, it must be emphasized that thechoice of this basis does not omit the existence of a registry Having 2colossal number of member states, the Paris Convention for the Protection ofIndustrial Property 1883, amended in 1979 has indicated that its participantsmust have a trademark registry office This means even countries as theUnited States or Canada, first-o-use countries, nevertheless, have theirregistering offices

In the US, trademarks are registered at the United States Patent and

‘Trademark Office (USPTO) and they can be identified with the “®” symbol

following the top end of the mark" This symbol means the mark has been

registered However, in the US, a mark can still obtain rights through use

‘without having to file an application at the registry’ The symbol "TM is

frequently seen being used as well but mostly in common law jurisdiction for

unregistered trademarks", By using this symbol, the trademark user indicates

they are using common law to protect their interests

One of the intemational intellectual property (IP)-related agreements isthe Paris Convention Regardless of its broad coverage upon industrialproperty rights, the convention does not provide specific grounds fortrademark protection but rather let its Members determine the particularconditions for the filing and registration of trademarks under their domestic

legislation” This convention contains provisions conceming trademark protection such as protection of well-known overseas marks’®, protection of state emblems etc.”, assignment of marks”, protection of marks registered in

other countries”, protection of trade names”, regulation of goods unlawfully bearing a mark or trade nameTM

up inv pt gor donb hat wader, let accessed Angst 18,2022.

° [ne Tir van goss douorilbonlitere-1, lst accesed: Ang 18,2022

"fe ihre ata =øfact dự hovsdososiE sinboki ast acceseed- Aigust 18,2022.

“An 61, Paris Convention for the Protectan of hnezhl Property.

`9 gosh Gis, Pais Convention for th Protection of futsal Property

‘secs Ger, Pars Convention for he rote ction of deri Drapery

° Ardcb 6guter, Pri Conversa forte Protection of deri rope.

hs

“Arúch 8, Pes Convestion forthe Protection of Insta ropery.

» ice 9, ars Convetaon forthe Dotection of user ropey

As of TRIPS Agreement, ít has a legal frameworks that regulates not onlygeneral intellectual property matters and principles, but also more specifictrademark matters like its definition or conditions of registration Article 15.1

of TRIPS Agreement stipulates that:

‘Where signs are not inherently capable of distinguishing therelevant goods or services, Members may make registrabilitydepend on distinctiveness acquired through use Members mayrequire, as a condition of registration, that signs be visuallyperceptible

However, although the TRIPS Agreement provides that a Member mayenable registration ofa trademark due to use, itis stipulated that

actual use of a trademark shall not be a condition for filing anapplication for registration An application shall not be refusedsolely on the ground that intended use has not taken place before

the expiry ofa period of three years from the date of applicationTM

Along with the two most prominent multilateral agreements, another

‘means harmonizing trademark law is the intemational system of registeringfor trademarks, the Madrid Protocols, which was developed by WIPO Thissystem is based ơn its legal basis of Madrid Agreement Conceming theIntemational Registration of Marks of 1801, as well as the Protocol Relating

to the Madrid Agreement 1989 It permits the filing, registration andmaintenance of trademark rights in more than just one country This way,trademark users only have to file one application as a basic application in onejurisdiction with a single fee and still obtain protection spreading across

Parties to the AgreementTM In summary, the main advantages are the

simplicity of the intemational registration system and the financial savingsTrademark search and monitoring

Before using or applying a mark for protection, one can conduct atrademark search to see if the use or applying of such mark shall inftinge

3 anich 153, TRIPS Ag con

‘Wer be Tecenl Property Organzttion (2021), Guide lo 0y Buematonal Regisraion of Marks incr

‘he Machid Protocol, WIPO Abbestion sa 455(5),p 12

other trademark owner's rights And thus, this is also a means for tradenrkowners to protect their trademark rights

In some countries, trademark search is not compulsory in the procedures

of examination at the registry This is a completely voluntary action forapplicants and in case the mark in question is not found to be opposed by anyprior trademark owners, it is granted for protection The same is applied in the

EUTM The whole process for a marke to be registered in the EUIPO does not

indude a trademark search There is a period of 03 months where proprietors

of earlier trademarks can file a notice of opposition arguing why the applyingmark cannot be registered During this period, the EUIPO does not take anyaction regarding the likelihood of confusion amongst the trademarks This isentirely up to trademark owners to take action protecting the rights from beingoverstepped Therefore, taking regular trademark searches helps assure thatthe prior trademark owmers are aware of any possible infringement However,this measure only covers marks that are published on the registry database,

‘which means that they have already been applied for registration and does notcover illegal use of marks in practice Therefore, taking only this search is notsufficient to protect one’s trademark

In addition to trademark searches on the registry database, owners should

‘monitor their trademark Trademeri monitoring can be done via software oranother party Nommally, authority competence on IP does not providetrademark monitoring services and this is rather provided, for instance, by anindustrial property agent In trademark monitoring, the registered marks wallconstantly be watching in order to monitor any possible misuse of suchtrademaric

Other metiiods

In case the trademark owner finds its mark being illegally used by a thirdparty, the proprietor can request such party to stop all infringing acts, give outofficial apology, publicly announce of any wrongful act and even makecompensation for damage, This is the first step for infinging party to deal

See mare Chapter 2

with infringers, The method is applied in many countnes For example, in the

US, trademark owners can request the infringing party or initiate a lawsuit at acompetent court to force the infringing party to stop the infringing act, destroythe infringing goods and pay compensation for damage or apply othermeasures to prevent the infringement

However, sometimes these measures do not have much impact in somecases, This is when punitive measures can come in for more seriousin8ingement The right holder can request a competent state agency to handleacts of infringement via administrative handling depending on the seriousness

of trademark infringement as well as the damage caused by the infringer tothe owner

One other method that has been ubiquitous since the development of theintemet is developing a corresponding domain name along with the registeredtrademark Although domain names and trademarks have different meanings,liminating similar, confusingly similar domain names with trademarks is agood way to prevent visitors from confusing the domains

1.12.2 State's mechanisms

‘As mentioned above, a sign can be filed to gain protection as atrademark In this perspective, it is a voluntary action taken by trademarieowners On the other hand, this can only exist ifthe State creates a system fortrademark registration to serve the purpose of being a mechanism as atrademark safeguard In the US, the USPTO is the national patent office and

trademark registration authonity for the whole country” This Registrar's role

is to protect ideas in innovations and creativity To sum up, it isa mechanism

‘with the authority to grant protection for IP properties

States also have the power to create legal framework to deal withinfringement of trademark rights Normally, states often pass statutes orprovide administrative procedures allowing the public to file or registertrademarks that are used in commerce within that state These states will alsoprovide statutory protections and causes of action against those who inftinge

ips Jr pte g004bo:te, hót accessed: Angas 18,2

‘upon an individual's state-recognized trademark rights It is often divided intofour types @) administrative measure, (i) civil litigation, (6) criminal

‘measure, and (iv) customs measure

For administrative measure, IP offices have the right to order theinBinging party to cease infringing acts and determine an amount ofcompensation This is normally considered as a non-contentious mechanism,unlike the second measure, civil litigation At this point, the right holder mustpresent evidence showing the infringing activities, for instance, the infringer’ssource of supply and its customers In China, administrative proceedings arehandled by the Administration for Industry and Commerce The steps incudethe receipt of complain from trademark owner, the verification of infringingacts, raid action, issuance of penalty decision, and disposure of infringing

goods This measure is more time saving and cost effective than civil

measure, However, it cannot be applied to more complicated cases andnormally no damage is granted to the right holder

Civil litigation is somewhat more of a well-known tool and is chosen to

‘be simultaneously applied with administrative measure Civil measure meansinitiating a lawsuit at a competent cout or an arbitrator to protect the owmers’legitimate rights and interests against an infringement This method is offered

by the State but it can only be initiated by a party of interest With this

‘method, the court passes an injunction order to prevent a person from furtherusing a trademark even before determining whether the use of such markconstitute infringement If proceeding carries on and it doesn’t become clear

‘whether there is an infringement or not, the court can pass a temporal order toban the use of the trademark by the accused After trial, an order awardingdamages for tradenwrk inBingement can also be passed by the courtHowever, it is yet to be a lengthy and costly procedure, hence, it is not the

‘most popular choice if one is looking for more instant measure

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Criminal measure is also applied in some circumstances In certaincountries, trademark infingement can be considered as serious as a criminaloffence In the US, both counterfeiting and piracy are federal crimes.Counterfeits are unauthorized copies of genuine branded products, includingpackaging and labels and in many cases, they are often produced with lowerquality materials and cheap or free labor Trademark infringement may also

be associated with the sale of counterfeit or pirated goods online usingregistered trademark Counterfeits often do not comply with the prothuctsafety standards that are put in place to protect consumers from risks of injury

or death®®, Any IP protected product can be infringed, with counterfeits found

in all sectors, from luxury designer goods such as watches and handbags to

‘business products like machines and spare parts and even food andpharmaceuticals

Regarding the last measure, customs play an important role in identifyingand preventing infringing goods from entering or leaving the country.Therefore, this measure can prevent such infringement from the border Inmany countries, customs will have a register enabling the night holder torequest authorities to prevent entry of inftinging goods Customs Officers areauthorized to restrain goods that are suspected of infringing trademark or

copyright.

1.13 Trademark right infringement

Infringement of trademaric right is @ part regulated in trademark law and

‘unfair competition law Trademark infringement is the unauthorized use of atrademark on or in connection with goods and/or services in a manner that islikely to cause confusion, deception, or mistake about the source of the goods

and/or services” The act of infringement is getting as widespread as it can

due to technology advances While businesses spend copious amounts oftime, resources, and creativity to build their brands by trademarking products,others use without the owner's consent and make profits out of deceiving

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‘with the second condition The injury to a trademark occurs when anotherperson's acts upon the mark's distinguishability from others causes the marknot to meet its condition to serve asa trademark This is when the consumingmasses get confused on the origin of the goods or services bearing that marieand through this, trademark infringement materializes Trademarieinfringement takes place in various ways, but it can be categorized into twotypes: (i) direct infringement, also known as infringing uses and (ji) indirectinfringement or secondary infringement, usually via advertisement.

‘The former was well portrayed by the dispute between Coca-Cola Co v

Busi The Coca-Cola Company sold a soft drink under the trademark:

“Coca-Cola” and through common usage, the public came to frequentlyabbreviate the name of the drink as “coke” A competitor, Busch, sought tomanufacture and sold a similar drink called “Koke-Up.” Coca-Cola then suedBusch for constituting unfair competition by using the abbreviation of Coca-Cola as a part of Busch’s product name The legal issue stated in this case was

whether the defendant infringes claimant's trademark or not if in the future®

“Koke-up” products are manufactured and advertised The court asserted thatthe likelihood of injury to the public which may be caused by the use of thedefendant's product is one of the essentials in infringement formation Hence,the court granted equitable relief to the defendant In other words, the Courtfound that if the defendant using the mark “Koke-up” on its products,trademark inftingement will assuredly constitute

`) Coca-Cola Co Busch, 4 8p 405 (ED Pa 1982)

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In this first case, even though the defendant has not actually infringedCoca-Cola's right in practice, the potential use of the mark “Koke-up” would.Since the sound of the abbreviation “Coke” and the word “Koke” fromBusch’s mark are identical, together with the fact that their designated

products are both soft drinks where mostly order verbally®, the likelihood of

confusion will occur Therefore, the Court's order was entirely logical infavoring the claimant

However, it should be noted that reality proves that direct inRingers may

be hard to trace They sell counterfeits or other infringing products on the

intemet can get away easily One of the ways is that infringers often conduct

‘business worldwide from a distant country where they continuingly set upnew websites Consequently, other parties that involve in the process ofinfringement are the new target to impose liability of trademark ovmers

‘These indirect infringers comprise of search engines, auction sites, credit card

companies*, and sơ on.

In Louis Vuitton Malletier, S.A v Akanoc Solutions, Inc.**, Louis

Vuitton sued web hosting companies and their owmers on charges of

‘trademark infringement, contributing to trademark and copyright infringementbefore the Northem District Court of Califomia The claimant first discoveredover 70 websites belong to the defendants were selling fake Louis Vuitton'shandbags and some of those even indicated that they were selling the

‘unauthentic ones and no one should know if their products were counterfeit ornot The claimant then sent out several notices to the owners of such websitesand asked them to remove infringing content but they ignored and continuedmaking profits out of the illegal activities Louis Vuitton claimed that the

‘website service provider had kmown that counterfeit products were sold ontheir websites and they should and they have the responsibility to preventthem from happening

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"Louis Vaiton Malieter, SA Alanoc Sohtions, Inet, Nó 10-15909 (ih Cx 2011.

However, the district court held in favor with the defendant reasoningthat there was no evidence proving the defendant had an obvious partnershipwith the direct inftingers, ones who actually sold the fake handbags LouisVuitton then cross-appealed this order Here, the Court of Appeal agreed withthe district court that no evidence showed that defendant operated the serversthat hosted the direct infringers’ websites Nevertheless, the court contendedthat the appellee knew or should have known that its customers wereinfinging appellant's trademarks and copyrights and that the appellee hadreasonable means to withdraw its services so that its services could not beused to infiinge Thus, it was ruled in favor of the claimant where Akanocvwas liable for contributing to the trademark inftingement of Louis Vuitton

12 The linkage between trademark protection and electronic

commerce

1.2.1 Electronic conmnerce definition

Around the 1970s, the phrase “electronic commerce”, also known as

“e-commerce”, came about in the more developing part of the world”, The term

“commerce” can be easily understood as the activities of trading betweendifferent individuals or enterprises by the drive of profits The tem

“electronics”, on the other hand, is defined, according to the CambridgeDictionary, as using, based on, or used in a system of operation that involves

the control of electric current by various devicesTM®,

‘When the intemet and personal computers went ubiquitous, traders tookthe advantages and started the earliest electronic transactions where they donot have to meet in person in order to trade The biggest advantage of e-commerce is that both buyers and sellers only need a device with intemet

connection and there they can easily make transactions” This also made

place for electronic signatory, online payment and cross-country business

Wigan, T.(1997) secon Commerce: Defration Teer, and Context The formation Society,

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‘The European Union (EU) also provides a general definition for term

“electronic commerce” as the sale or purchase of goods or services, whether

‘between businesses, households, individuals or private organizations, throughclectronic transactions conducted via the intemet or other computer-mediated

(online communication) networks" It also covers the ordering of goods and.

services over computer networks, but not necessary make online payment andthe delivery of the goods or service may be made offline The same definitionwas presented by the Organization for Economic Co-operation andDevelopment

Hence, e-commerce can be simply understood as any transaction made

‘between parties for buying, selling goods and services over the intemet Thus,compared to traditional commerce, electronic commerce is characterized intothe following main features: @) the tools for conducting business is viadlectronic means, (ji) transactions made via electronic commerce is oftenautomatic, and (iii) aside from the trading parties to a transaction, anotherparty involves in e-commerce is the provider of intemet services, (iv) thechains of added value change, and e-commerce involves in every step of the

chains of added value"?

‘The law on e-commerce is rapidly developed in an intemational scaleFirst, there are the Model Law on Electronic Commerce and ElectronicCommerce Agreement by the United Nations Commission on IntemationalTrade (UNCITRAL), and then in a more regional scope, there is the EU

Directives on Electronic Commerce”.

1.2.2, Traidemarkprotection in electronic conunerce

IP sights, in general, have a linkage with commercial activities As IPrights offer its ovmer interests and forbid competitors from exploiting or using

of such creation It also encourages new creations and healthy competition

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‘Therefore, IP rights and traditional commerce should be viewed as having a

‘mutually impact relationship For that, IP rights are unquestionably related toe-commerce, a new form of commerce via electronic means for several

reasons

Frst, in place of the great importance of online commercial activities,some of copyright objects such as photos, videos, music, software, designsare traded via e-commerce Unlike traditional commerce where matters of apurchase are visible and physical products that carry the intangible value, e-commerce provides the essence of the products For example, if a person

‘wants to purchase a music album, he can do it via an online website and as aresult, the music can be transferred directly to his choice of electronicdevice, In this case, buyers and sellers do not have to meet in person and theintangible goods are delivered straight to the buyer, unlike in traditionalcommerce where the goods are presented in the form of visible substancelike a CD

Second, in some cases, these intangible properties are exact tools to

make electronic transaction feasible in the world of cyberspace The system.

that gives traders access to e-commerce such as networks, software, routes,chips are protected by IP rights Simultaneously, they are also the IP assetsthemselves Thus, the operation of such systems and IP rights areinterdependent which both of them promote the development of one another

‘Trademark protection in e-commerce is not all the same as in traditionalcommerce Though obtaining trademark right requires going through the sameprocess in both e-commerce and traditional commerce, when discussing ontrademark protection, the dissertation refers to the trademark infringement in

e-commerce.

Inthe US, one of the most popular cases on trademark infringement in

e-commerce is the Tiffany Inc v eBay Inc“ The dispute began in

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Tatay GH) Te v-eBey Ic, 600 3493 (24 Ci 2010) 2010)

2003between Tiffany Inc a company specializing in the sale of high-endjewelry, and eBay Inc where the claimant alleged that the eBay networkservice provider infinged its trademarks by falsely advertised Tiffany'sproducts However, eBay proved that it has made anti-counterfeiting efforts

on its platform What eBay did was to run programs that traders can verify theauthenticity of the goods sold on eBay Simultaneously, in May 2002, eBayestablished a Trust and Security Department dedicated to the detection ofillegal offers, including counterfeits With regards to Tiffany's products, eBayused computer programs to filter out keywords in order to ensure thedistinction between Tiffany's goods and its infringing goods In addition tothis, Bay also allowed rights holders to open their own web pages on eBay'sinterface where they can provide IP rights information on their products Forthe mentioned measures taken by eBay, it successfully proved that it hastaken all possible actions against the trading of counterfeit goods The Court,therefore, rejected claimant's accusations and stated that eBay had properlyperformed its obligations, namely, (i) when the claimant alleged the defendant

‘was liable for trademark inRingement by having counterfeits using Tiffany's

‘brand sold on its website", the Court did not agree because there was no

connection between eBay and Tiffany so consumers were not confused thatthe counterfeits were offered by eBay; (ii) regarding Tiffany's claim of Baycontributed to such trademark infringement, the Court disagreed with theclaimant, argued that in this case, the defendant did not have the responsibility

of the “knows or has reason to know of specific instances of actual

infringement” theory“, and thus, was not liability for the infringement; (ii)

for the allegation that eBay has falsely advertised because Tiffany's goodsand their counterfeits are sold on eBay's website, the Court was of the opinionthat the advertising here was not fraudulent because eBay sold Tiffany'sauthentic products

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“9 Tủ refs tothe case wood Labertris, nev Hes Laboratories Ie, 486 U 5 S944 (1882)

‘Unsatisfied with such ruling, the claimant appealed to the US TM Circuit

Court of Appeals in 2010 The results of the appellate court's first instancejudgment related to trademark issues Tiffany did not accept this result andapplied to the superior court, in the hope that the high court would review thedecision of the appellate court However, this appeal was also rejected by thehigh court

This case, one of the typical cases addressing the issue of whether anintermediary such as an e-commerce website is liable in the event oftrademark infringement, and if so, to what extent are the owners of this

‘website liable In this dispute, itis clear that the defendant ~ eBay, had takenall possible measures to prevent infringement on its digital market Theliability belongs to the counterfeit sellers using the claimant's trademark onthat platform, Furthermore, eBay's advertisement was not literally untruthfulbecause genuine products of Tiffany were indeed sold on their websites

13 Chapter conclusion

The first chapter provides the general analysis on trademark protectionand e-commerce, and the linkage between the two of them

First, the dissertation looks at the definition of the concepts “trademark”,

“trademark protection” through the glance of different organizations andcountries In addition, trademark law is viewed within the intemational scope

as well as national jurisdiction From this, cases were introduced in relationwith concept “trademark infringement” where it was then divided into twotypes, direct and indirect infringement

After that, the relationship between trademark protection and commerce is studied in the second part of this chapter Here, the chapter firstapproaches the definition of e-commerce and its main features In order toillustrate the interdependency between trademark protection and e-commercebetter, disputes in practice are evidenced To conclude, dissertation alsoprovides comments with regards to the mentioned cases

e-CHAPTER 2: THE MAIN CONTENTS OF TRADEMARK

PROTECTION IN ELECTRONIC COMMERCE UNDER EUROPEAN

UNION LAW

21 Trademark right acquisition

In the European Union, there is a relationship between the Union lawand the national law Regarding the former, the source can come fromprimary law such as intemational treaties and secondary law such as

regulations, directives, decisions, recommendations and opinions’ As the

law systems have been co-existing, conflicts between the two are inevitable

‘The principle of primacy is one that helps to decide which one overrules the

other, Declaration 17 in the Annex of the Lisbon Treaty" regulates that if a

conflict arises between national law and EU law, EU law will prevail and EUlaw is supetior to domestic law However, within the scope of thisdissertation, only the subject matter of trademark protection under the law ofthe Union will be addressed and not individual state members’ law

With regards to trademark sight in the European Union, it cannot beobtained on use basis, therefore, in order to gain rights, users must file an

application on the basis of first-to-file® Accordingly, trademark can be

registered at two different levels: () national level as a national trademark, or(i) EU-tevel as a European Union trademark The former is done at industrialproperty offices in EU countries, helps gain protection within a single countryterritory while the latter is made in a broader range, via the European UnionIntellectual Property Office (EUIPO) In this sense, trademarks can beregistered in either national IP office or at the Community office, or even at

‘both If the application is approved, the registrant will automatically gainlegal protections in all 27 member countries However, within the scope ofthis dissertation, only the subject matter of trademaric protection at the Union

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level and registrations under the law of the Union is addressed and notnational trademark law.

In order to create such a unified system of all 28 different jurisdictions

in trademark law and practice, the Community had to gradually improve theharmonization among national law systems The harmonization process has

‘been implementing for years and gets approval from all EU members In thisprocess, the Community means to further develop some of the matters such asstreamlining the tools for trademark filing and search databases, bringing innew methods to raise awareness regarding counterfeiting, organizing trainingprograms for national office staffs, harmonizing practice on classification of

goods and services.

Similar to WIPO's and many jurisdictions’ definition of trademark, EUalso has one according to Article 4 of Regulation (EU) 2017/1001 of TheEuropean Parliament and of The Council of 14 June 2017

An EU trademark may consist of any signs, in particular, words,including personal names, or designs, letters, numerals, colors, the shape ofgoods or of the packaging of goods, or sounds, provided that such signs arecapable of

(@) distinguishing the goods or services of one undertaking fromthose of other undertakings, and

(đ) being represented on the Register of European Uniontrademarks (‘the Register’), in a manner which enables thecompetent authorities and the public to detenmine the clear andprecise subject matter of the protection afforded to its proprietor

In this regulation, a trademark to be filed for registration must berepresentable to the Register and the public The tems being used are

“subject matter” which refer to a wide range of different types of mark.Before issuing Regulation 2017/1001, EU Commission passed Regulation

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(EC) no 2868/5 on 13 December 1905 where the registrable types of mark

‘were narrowed dowm In particular, Rule 3 stipulates that a sign to bepennitted for registration must have a graphic representation, and hence, othervasieties of representation are not accepted This rule was amended on the EUCommunity Trademark Regulation (207/2009), amended by EU Regulation2015/2424, and the Community Trademark Implementing Regulation

(2868/95) By broadening means of representing a trademark into “any appropriate form using generally available technology”, applicants are

allowed to have more flexibility in their choice of marks, such as odor marks

or taste marks, as long as they can represent the marks in a way that theregistrar office and the consumers can distinguish them This amendment alsoshows how EU's trademar law has grown to become more aligned with theintemational law system, namely, WIPO’s standards

Regarding the procedures of processing a trademark application for

registration, EU built a system under the Regulation (EU) 2017/1001

Accordingly, it would take around 4 to 6 months for an application to maturefor registration, provided that no obstacles arise

First, when a trademark application is filed, the EUIPO will issue areceipt where the applicant can check the application data and notify theOffice within that fling date if there is any incomect data such as the nameand address of the applicants and specifications of goods/services If nonotification is made, the Office will carry out the next step, which is languagecheck over all 23 European official languages This stage is to make sure theverbal elements of the mari have any connotation and whether they fall intothe grounds for absolute refusal After this, the applicant can request for anational or a Union trademark search conducted by the EUIPO to spot any

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© Raghlaion (EU) 20171001 af The Bropean Patina a of The Comcilef Kms 14,2017

prior rights can conflict with the searched marlk”” Like most WIPO's member

states, EU also applies the WIPO's Vienna Classification to classify figurativeelements of a mark Applications that comply with the requirements of theregulation are accepted for publication and sent for translation into all theofficial languages of the EU The duration for this stage varies based on thecomplexity of the application such as the specification of goods and services

‘However, an application can also apply for Fast Track® if it complies with all

the conditions set out for this expedition Accordingly, the terms for the goodsand services to be used in the application must be acceptable to the EUIPOand the fees for application must be made promptly after submitting theapplication to the Office Using Fast Track, an application can be process

‘more swiftly and move to publication stage faster than a regular application.Second, for regular application which does not apply for Fats Trackprocedure, the EUIPO begins to verify the marks on the absolute grounds forrefusal These grounds are the ñrst encounter fora mark when examining itsability to serve as a trademaric Ifa sign falls into one or more of the cases, it

‘will be refused without further examination As regulated in the Regulation

2017/1001", a sign must not consist of distinctive characters or indications

that may serve to designate the kind, quality, intended purposes, value ofthe goods/services, it must not be contrary to the public policy or principles of

‘morality The mentioned grounds are quite straightforward and are adopted

in many nations other than the Union

‘A case in point for refusal on absolute ground is Invin Industriai Tool

Co v OHIM® In this case, the applicant, Invin Industriai, filed an

application with the OHIM for the word mark “QUICK-GRIP” for goods indass 08: Hand tools, clamps, c-clamps, bar clamps, clamps, locking hold-down clamps, locking pipe clamps, pipe clamps; parts and fittings for theaforesaid goods” on July 17, 2000 On November 29, 2001, the application

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7, Regulation (EU) 30171001 of The Eeepaeh Persian en of The Coucilof Ame 14,2017

` Enin laôneal Tool Co Office fr Hannonsrien te teal Masket (Trade Micke and Designs)

(OHI, Case 75103,

registration, the applicant appealed against this decision.

Inits argument, the applicant claims that the mark does not describe thedesignated goods because combination of the words “QUICK” and “GRIP” isunusual and the mark should be viewed at as a whole, not individually

worded Therefore, the terms “QUICK-GRIP” does not have any meaningTM

‘The OHIM, on the other hand, argues that the word “QUICK” in some sensedelivers the idea of rapidity or speed and that in association with the goods oflamps, the tems “QUICK-GRIP” can be understood as holding or making

fast grabs and firm holding” Therefore, the terms are descriptive for the

designated goods Moreover, OHIM argues that, even if the word “QUICK” isregarded as an unusual tem, it nevertheless describes a commoncharacteristic of clamps, hold firmly or grip Therefore, the public canpick upthat the product clamps grip rapidly and that they can be quickly assembledforuse

‘The Board of Appeal argues that the combination of the two words, as a

‘whole, is undoubtedly descriptive because it refers to the purpose of use of thedesignated goods Accordingly, a sign must be refused for registration underArticle 7(1)(c) of Regulation 40/94 and in this case, the mark “QUICK-GRIP"should be refused The applicant then filed a request for appeal at the Court ofFirst Instant, unfortunately, the Court upheld the former decision by the Board

of Appeal

The case typically exemplifies one of the most common grounds forrefusal, marks being descriptive In a different case, EUIPO v Wm Wrigley

Tố (EC) No 4004 of Decenber 20,1903 nthe Conmamty trade mack

‘Pun 4, Order of The Cour of Fist stance (font Chamba) an May 27,2004, on Instr Tool Có

-y, OMIM, Cục T6103,

2 mat pe.

“Da pm 18

Jz Company®, the judge provided further explanation on this matter by

analyzing the characteristics of descriptiveness The reason behind the refusalfor registration of a descriptive mark is because this mark is incapable ofdistinguishing the goods/services it bears of one undertaking from those of

another No one can claim a descriptive term as a trademark themselves.

This means no monopoly for words that do not meet conditions for a sign tofunction as a trademark if they have not acquired distinctiveness inconsequence of the use over time, pursuant to Article 7(3) of Regulation No40/94

Third, if the trademark does not violate any absolute registration

prohibition, it wall be published in the EU Trade Mark Bulletin®* This is the

period where a trademark is exposed to observations and oppositions Theduration of this stage is 3 months from the publication date of the trademarkapplication In the 3-month period, the proprietors of earlier trademarks mayfile a notice of opposition against the opposed mark stating why he believesthat the opposed mark can be an infringement of trademark rights if beinggranted for registration It was also regulated that the ground for oppositionscannot be on absolute grounds for refusal but only based on relative groundsfor refusal such as an existence of prior mark in EU that can create conflictswith the new application If the mark is opposed, the Office will notify theapplicant of the contested mark and start the opposition procedure, The Officewill also be examining the opposition made by the opponent If suchopposition exposes potential conflicts with regard to the goods and services

‘bearing the marks, the application for the opposed maric will be refused, If

not, the opposition will be rejected

‘The last stage is the mark being granted for registration This happenswhen the mark does not receive any opposition or the opposition is rejected,the EUIPO will issue a registration certificate indicating that the trademark

“Judgment of the Court of October 23,2003, Bropean Uns ilecual Dopary Office v Win Wiigey

Company, CeseC-191001 Ppa 18.

` get 44G), Regu EU) 201771001 of The Bropesn Peliamunt end of The Council of Jae 14,2017

An AT) bi.

right is granted to the owner subject to the payment ofa fee” The registration

will take effect in the entire territory of the European Union and wall have

duration of registration of 10 years from the filing date of the application®

After the 5-year period of granted for registration, a mari must be used

in the market for the goods and services it bears to avoid non-use cancellationfrom third parties Any third party who considers that the mari has not beenused may bring an action for revocation for non-use, without having todemonstrate any legal interest in bringing such an action for revocation Themain reason behind this requirement is because of its function indistinguishing the goods and services of a business operation from another.Where a registered trademark has been in use by the trademark owmer for anuninterrupted five-year period, it attains a distinctive quality under the law.Another reason for the requirement to use a trademark is to ensure that otherpasties have the opportunity to put the non-used trademark to use

‘As mentioned in the previous chapter, the general definition for the term

“electronic commerce” is the sale or purchase of goods or services, whether

‘between businesses, households, individuals or private organizations, throughlectronic transactions conducted via the intemet or other computer-mediated(online communication) networks

Under the Union law, e-commerce is no longer a new legal matter,nevertheless, it is stil an issue requiring a lot of continual updates andamendments, Directive 2000/31/EC of the European Parliament and of theCouncil of 8 June 2000 on certain legal aspects of information societyservices, in particular electronic commerce, in the Intemal Market (hereinafterreferred to as the “Directive on electronic commerce”) is the mostfundamental legal frameworie governing e-commerce in the EU It aims to

remove obstacles to cross-border online services among its Member StatesTM

The scope of services covered by the Directive includes online information

San 51) it

oat $2 i.

2 Ax 1G), Duective 2000/31/EC of te Furopem Param maf the Come 8 Je 2000 on certain

legal aspects of fama society services, m particu electronic commerce, te hong] Market.

services, online selling of products and services, online advertising,professional services, and entertainment services and basic intermediaryservices, including services provided free of charge to the recipient, such asthose funded by advertising

2.2 Trademark protection methods in electronic commerce

In general, measures taken to support trademark protection in commerce overlaps with the ones taken in conventional commerce

e-‘Fist, the most essential method to protect tradenerk right frominfringement is registration of trademark Since under EU law, only "ñrst-t0-file” principle is applied, using the mark without registering does not formtrademark right that one might need to avoid infringement that one has toapply for registration This is a self-protecting method and is a methodapplied in both conventional commerce and e-commerce After attainingprotection over the trademark the right holder can do regular searches to have

a general view on the published mark Ifa mark shows to have a possibility ofcausing confusion or mislead of the source of goods/services between theearlier trademark and the published mark, the owner can file an oppositionagainst such marke

Further, as mentioned in the previous part of this chapter, the EUIPO wallnot be examining the trademark applications with regards to substance If notopposition is filed within the prescribed period of time, the mark is grantedfor registration Therefore, monitoring trademaric on the EUIPO publication

of trademarks cannot be overlooked This is an extremely important step toavoid any registration that may later cause confusion on the source ofproducts towards earlier registered trademarks

Second, a binding measure that can be used in case of infingementincurring is civil enforcement Any trademark ovmer finds its trademark beingillegally used can initiate a civil lawsuit at the EU trademark courts of the EUmember states Any party that is adversely affected by a decision of theEUIPO Boards of Appeal may bring an action before the EU General Courtwithin two months of notification of the contested decision A decision of the