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

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

(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 Law

Code: 8380108

Assoc Prof Dr NGUYEN BA BINH

Hanoi, 2022

STATEMENT OF AUTHORSHIP

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

Approval of Supervisor Author of Dissertation

Assoc Prof Dr Nguyen Ba Binh

European Union ~ Vietnam Free Trade Agreement

Intemet Corporation for Assigned Names and Numbers

Intellectual Property

Internet Service Providers

Model Law on Electronic Commerce

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 113 Trademark right infringemert

12 The linkage between trademark protection and electronic 2L

commerce

12.1, Electronic conmerce definition it 1.2.2 Trademark protection in electronic conaherce 22 13 Chapter conclusion -25 CHAPTER 2: THE MAIN CONTENTS OF TRADEMARK PROTECTION IN ELECTRONIC COMMERCE UNDER EUROPEAN UNION LAW 6 6 33 2.1, Trademark right acquisition

2.2 Trademarkprotection methods in electronic commerce

23 Trademark infringement in electronic commerce lt CHAPTER 3: TRADEMARK PROTECTION IN ELECTRONIC COMMERCE IN VIETNAM AND RECOMMENDATIONS FOR

VIETNAM SO

3.2 Trademarkprotection methods in electronic cornmerce 54

3.4 Chapter conclusion CONCLUSION

BIBLIOGRAPHY

INTRODUCTION 1 Necessity of the Research

Even though tangible assets are early recognized, in the last couple of decades, intellectual properties have been showing their significance In some aspects, when the intangible properties are becoming more developed, the value gained from them proliferates and this phenomenon got to a point where these assets are sometimes much more valuable than tangible assets While intellectual 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 to implement IP law On grander scale, multilateral and bilateral agreements have created intemational legal frameworks on IP sights Even regional agreements are also encouraged to include IP rules This assists countries in achieving sustainable development as well as harmonization between their domestic legal systems with intemational IP standards.

It is even more urging to build such a system due to the advanced technologies The storm of the internet has fueled dramatic developments for the new digital communications and economy Intemnet makes a great impact on many aspects of intellectual property rights, and one of the ways is via electronic commerce E-commerce is a new way to promote socio-economic, drawing us close to modemity and convenience, but it also introduces different problems on IP nights, such as infringements The intemet is compared to the movement of weather within the global climate, and it ignores 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 ease Inftinging 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 buenrope Banei,pra.106,p.37

task to prevent Therefore, intellectual property rights in general, particularly industrial property rights for trademarks need to be protected in this digital environment In Vietnam, where e-commerce exchanges are developing drastically, it is necessary to protect trademarks with a legal framework This dissertation will analyze, from the perspective of a prominent jurisdiction in the world, the European Union, how this Union built its legal system for trademark protection in e-commerce and the implementation of the regulations in practice

2 Literature review 2.1, Domestic researches

Within the domestic scope, many pieces of research were conducted regarding IP law and e-commerce separately However, the one that focuses on these two in a relationship with each other has not been highlighted enough

One of the most prominent researches to be found was the University Scientific Research named “Bao Ve Quyen So Hha Tri Tue trong Thuong Mat Dien Tu — Kinh Nghtem Quoc Te va Hoan Thien Phap Luat o Viet Nam [intellectual Property Right Protection in Electronic commerce — International Experience and Improve Vietnam Law] by Nguyen Quynh Trang and others, 2019, Hanoi Law University This paper consists of 5 chapters addressing all categories of IP rights in e-commerce such as copyright and related rights and industrial property rights Since the research covers such wide range of issues, it gives the most general definitions on IP rights and e-commerce Simultaneously, it offers insights on the legal framework and practice in other countries on this matter and concludes with recommendations for Vietnam However, this research mainly focuses on the ‘most common IP subjects in e-commerce which are copyright and patent Further, since it focuses on all aspects of IP law, it has not been comprehensive 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 e-commerce environment: From Vietnam's practice to other nations

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

provides statistics on the number of infringing cases with the highlight of a particular case conceming the e-commerce platform owner Lazada It also raises some practical problems of intellectual property in e-commerce Accordingly, 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 e-commerce In addition, methods adopted by other countries such as China, India and the European Union are also mentioned but not analyzed thoroughly.

Along with this research, there are articles specially made on IP infringements such as “Bot thuong tiiet hat dimh truoc do xam pham quyen so Jnut tri tue theo phap Inat Viet Neon: Mot so van de dat ra va giai phap hoan thien” [Compensation regardmg ttellectual property right inftingement under Vietnam law: Issues and solutions for enhancement] by Hoang Van Thang, 2020, The State and Law and “Hanh vi xam phươn quyen tac gta theo phap inat so ina trí tue Viet Nam’ [Copyright inftingements wider Vietnam Jaw] by Nguyen Phuong Thao, 2018, Legal Studies Joumal no 7/2018 Even though 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 law systems on trademark protection in e-commerce to provide recommendation for 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,

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

Furthermore, there are articles by individuals analyzing trademark and e-commerce such as the Comment “Convergence of Trademark Law and E-Commerce: Overview of US EU and China Regulations on Trademarks and Domain Names” by Goce Naumovsli & Dimitri Chapkanov, 2014 This study focuses on three major regions, the US, China and the EU The article deals with the legal systems of these countries and outlines the possibilities of trademark and domain name infringement In addition to that, research papers often focus on trademark infringement issues such as “Keyword Advertising and Buropen Trade Mark Law” by Charles Gielen, NautaDutilh NV or “Liability jor Trademark Infringement for Internet Service Providers” by Katja Weckstrom, 2009 University of Turlu, Finland, or “Practical Trademark Protection on the Net” by Cynthia L Acree The articles analyze trademark infringements by explaining in detail the concepts and analyzing case law in the world These are research studies that have contributed but have 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, namely the latest “IVIPO (2021), World Intellectual Property Indicators 2021" This report not only shows the current number of applications, but also underlines the important role of IP along with the trends of the years ahead Defining future direction will guide policymakers and practitioners to develop a sustainable economy while enhancing innovations and creativities

In the EU, the EUIPO also publishes annual reports indicating its activities within the years The latest version is the “Consolidated Annual Activity Report 2021", Similar to WIPO's reports, it mainly focuses on the statistics of IP filings within the Union The EUIPO even has a more specific report 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 e-commerce The research also focuses on the practice of trademark within the EU to draw out some lessons and recommendations for Vietnamese law and

3.2 Scope of the research

Regarding the substance of the research, it covers three aspects trademark protection in commerce under EU law, trademark protection in e-commerce in Vieam and taking EU's experience as an example, the dissertation deduces recommendations for Vietnam The source of law for this paper is EU's legal acts being applied through out the whole territory of all EU'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 and Vietnam territories Further, for providing more reliable arguments, the research also stretches its scope out to other nations such as the US and China

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Regarding the scope of time, the dissertation studies the period of time from 2005 to the present This is the time when the Vietnam’ s first intellectual property 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, the dissertation mainly uses the dialectical and historical materialist methodologies

Further, in order to complete the dissertation, some methods such as dialectical method, historical method, theoretical research method in combination with reality to analyze, compare and synthesize are be used However, analysis method, comparing method and theoretical research method are the key ones In this dissertation, analysis method will be used in discussing the linkage between trademerk and e-commerce, the relationship among intemational agreements and the law of EU intemal market, while comparing ‘method is applied in estimating the effectiveness of the solutions taken by EU and other countries with Vietnam for the trademarie protection in e-commerce The dissertation also refers to many scholars’ research findings and legal opinions 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 e-commerce in general using intemational lawasa standard scale,

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

- Third, to make some recommendations for Vietnam based on the lessons leamt from EU law.

5.2, Tasks of the research

Based on the above subjects, the research tasks of the dissertation are as below

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

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

~ Analyze and evaluate current Vietnamese regulations related trademaric and 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 of trademark 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, and analyzing the relationship of these two objects, it then draws out opinions around the globe as well as in the EU Thereon, the dissertation has EU intellectual property law compared with Vietnamese law to spot out the limitations and disadvantages Accordingly, it offers further solutions to build more EU-compatible legal framework The dissertation also contributes to providing information and knowledge by sharing intemational perspectives and experiences in relation with intellectual property activities in Vietnam In addition, with its results, the dissertation promotes domestic scientific research 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 in various countries and organizations in EU and other parts of the world to draw out lessons for Vietnam From this, the paper also reviews Vietnamese trademark domestic law to detect certain challenges that Vietnam has been encountering and offers some recommendations for Vietnamese domestic Jaws and future intemational agreements For each issue, different solutions are drawn including amendments of legislations, or negotiation of

agreements, From there, the dissertation draws out solutions suitable to the reality in Vietnam related to trademarks and trademark infringement Accordingly, these solutions will help state agencies, organizations, ‘businesses and individuals better understand domestic regulations as well as help better enforce trademark rights in e-commerce

7 Structure of the dissertation

The dissertation consists of three parts: (1) introduction, (fi) the main contents which consists of three chapters, and (ii) conclusion Within the scope of research, Chapter 1 provides an overview on trademark protection in dlectronic commerce under intemational standards Chapter 2 particularly focuses on the main contents of trademark protection in electronic commerce under European Union law The last chapter reviews Vietnam trademark law and draw out some recommendations for Vietnam in both law and practice under 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 to Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement, as constituted by any sign, or any combination of signs, capable of distinguishing 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 the owner However, trademark is usually considered as a broader term that also covers 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 of goods or of the packaging of goods, or sounds, provided that such signs are capable of ) distinguishing the goods or services of one undertaking from those of other undertakings, and (ii) being represented on the Register of European Union trademarks (‘the Register’), in a manner which enables the competent 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

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

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 is planning to sell/provide The top tier company Apple, Inc filed a trademerkc application 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 the way for the growth of non-traditional marks such as sound marks, smell marks, 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 the mark itself as it would lack of indistinctiveness and hence, the sign cannot serve as a trademark For example, a smell sign will not be protected for perfumery 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 store their representations at the registry Reserving smell and taste from fading away 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 marie which is frequently the shape or the packaging of the products Trademark law in many countries does not address the precise definition for

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dimensional marc but rather focus on the conditions for granting protection against this sign, that is (i) to have a distinctive character and đi) to serve commercial 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 fried chicken.

Trademark is characterized into four types: trade/service marks, certification marks, and collective marks, The first two are the most common marks 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 these owned by one party that certifies the goods and services of others wien they meet certain standards or requirements Regarding collective marks, they are made up of letters, words, designs, and names similar to standard trademark, however, there are two types of collective marks those used by members ofa collective 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 By using their unique signs representing what they offer for sale, the trademaric owners maintain a repeat chain of customers and guarantee the product quality Aside from that, trademark plays a significant role for consumers as they use trademarks as a tool to distinguish goods and services, If the marks are similar, they might associate the goods or services designated by the marks come from the same source, The more popular a trademark is, the lower the likelihood of confusion it may get with other products from other companies This concems public interest because the consuming public is entitled to the choice of goods/services and not the deceiving products ‘borrowing another owner's name Therefore, both traders and end-users are in the need a protection mechanism for trademark to diminish unfair competition

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and confusion Trademark protection has been and will be unarguably compulsory 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 own trademark law, but as trade has expanded greatly beyond borders, the scope of trademark protection would inevitably swell across countries Several ‘multilateral and bilateral agreements on intellectual property such as Panis Convention 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 were signed and become an integral part of international legal system to serve one purpose to provide an intemational harmonious means Organizations and unions also make the same contribution, namely, WIPO, WTO Due to complications and variances among jurisdictions, intemational pacts are undoubtedly the one tool to help reduce conflict of laws

There are two principles regarding trademaric protection applied over the world: “firstto-file” principle and “first-to-use” prindple In the first principle, trademark protection is obtained through the process of registration The core of this principle is when two or more applications are filed by different parties for registration of the same mark, the registration may only be granted to the valid application with the eatliest priority or filing date among 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 more prevalent in common law based jurisprudence “First-to-use” means the priority 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 to now, fewer countries are applying this principle such as the United States,

Australia, India or Canada That being said, it must be emphasized that the choice of this basis does not omit the existence of a registry Having 2 colossal number of member states, the Paris Convention for the Protection of Industrial Property 1883, amended in 1979 has indicated that its participants must have a trademark registry office This means even countries as the United States or Canada, first-o-use countries, nevertheless, have their registering 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 is the Paris Convention Regardless of its broad coverage upon industrial property rights, the convention does not provide specific grounds for trademark protection but rather let its Members determine the particular conditions 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

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As of TRIPS Agreement, ít has a legal frameworks that regulates not only general intellectual property matters and principles, but also more specific trademark matters like its definition or conditions of registration Article 15.1 of TRIPS Agreement stipulates that:

‘Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use Members may require, as a condition of registration, that signs be visually perceptible

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

actual use of a trademark shall not be a condition for filing an application for registration An application shall not be refused solely 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 registering for trademarks, the Madrid Protocols, which was developed by WIPO This system is based ơn its legal basis of Madrid Agreement Conceming the Intemational Registration of Marks of 1801, as well as the Protocol Relating to the Madrid Agreement 1989 It permits the filing, registration and maintenance of trademark rights in more than just one country This way, trademark users only have to file one application as a basic application in one jurisdiction 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 savings Trademark search and monitoring

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

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‘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 tradenrk owners 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 for applicants and in case the mark in question is not found to be opposed by any prior 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 applying mark cannot be registered During this period, the EUIPO does not take any action regarding the likelihood of confusion amongst the trademarks This is entirely up to trademark owners to take action protecting the rights from being overstepped Therefore, taking regular trademark searches helps assure that the 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 not cover illegal use of marks in practice Therefore, taking only this search is not sufficient 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 or another party Nommally, authority competence on IP does not provide trademark monitoring services and this is rather provided, for instance, by an industrial property agent In trademark monitoring, the registered marks wall constantly be watching in order to monitor any possible misuse of such trademaric

Other metiiods

In case the trademark owner finds its mark being illegally used by a third party, the proprietor can request such party to stop all infringing acts, give out official apology, publicly announce of any wrongful act and even make compensation 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 a competent court to force the infringing party to stop the infringing act, destroy the infringing goods and pay compensation for damage or apply other measures to prevent the infringement

However, sometimes these measures do not have much impact in some cases, This is when punitive measures can come in for more serious in8ingement The right holder can request a competent state agency to handle acts of infringement via administrative handling depending on the seriousness of trademark infringement as well as the damage caused by the infringer to the owner

One other method that has been ubiquitous since the development of the intemet is developing a corresponding domain name along with the registered trademark Although domain names and trademarks have different meanings, liminating similar, confusingly similar domain names with trademarks is a good 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 a trademark In this perspective, it is a voluntary action taken by trademarie owners On the other hand, this can only exist ifthe State creates a system for trademark registration to serve the purpose of being a mechanism as a trademark 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 with infringement of trademark rights Normally, states often pass statutes or provide administrative procedures allowing the public to file or register trademarks that are used in commerce within that state These states will also provide statutory protections and causes of action against those who inftinge

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

For administrative measure, IP offices have the right to order the inBinging party to cease infringing acts and determine an amount of compensation This is normally considered as a non-contentious mechanism, unlike the second measure, civil litigation At this point, the right holder must present evidence showing the infringing activities, for instance, the infringer’s source of supply and its customers In China, administrative proceedings are handled by the Administration for Industry and Commerce The steps incude the receipt of complain from trademark owner, the verification of infringing acts, 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 and normally 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 means initiating 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 further using a trademark even before determining whether the use of such mark constitute 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 to ban the use of the trademark by the accused After trial, an order awarding damages for tradenwrk inBingement can also be passed by the court However, 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 certain countries, trademark infingement can be considered as serious as a criminal offence In the US, both counterfeiting and piracy are federal crimes Counterfeits are unauthorized copies of genuine branded products, including packaging and labels and in many cases, they are often produced with lower quality materials and cheap or free labor Trademark infringement may also be associated with the sale of counterfeit or pirated goods online using registered trademark Counterfeits often do not comply with the prothuct safety 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 and pharmaceuticals.

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

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 a trademark on or in connection with goods and/or services in a manner that is likely 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 of time, 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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consumers Counterfeit products are sold everywhere, from brick and mortal stores to online platforms

Trademark protection is granted via two conditions: (i) the mark's character of being inherently distinctive, meaning the mark can distinguish from its origin and be recognizable by the public, and đi) the mark’s ability to distinguish itself from other marks However, infringement only concems ‘with the second condition The injury to a trademark occurs when another person's acts upon the mark's distinguishability from others causes the mark not to meet its condition to serve asa trademark This is when the consuming masses get confused on the origin of the goods or services bearing that marie and through this, trademark infringement materializes Trademarie infringement takes place in various ways, but it can be categorized into two types: (i) direct infringement, also known as infringing uses and (ji) indirect infringement 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 frequently abbreviate the name of the drink as “coke” A competitor, Busch, sought to manufacture and sold a similar drink called “Koke-Up.” Coca-Cola then sued Busch 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 that the likelihood of injury to the public which may be caused by the use of the defendant's product is one of the essentials in infringement formation Hence, the court granted equitable relief to the defendant In other words, the Court found that if the defendant using the mark “Koke-up” on its products, trademark inftingement will assuredly constitute

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In this first case, even though the defendant has not actually infringed Coca-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” from Busch’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 in favoring 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 up new websites Consequently, other parties that involve in the process of infringement 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 infringement

before the Northem District Court of Califomia The claimant first discovered over 70 websites belong to the defendants were selling fake Louis Vuitton's handbags and some of those even indicated that they were selling the ‘unauthentic ones and no one should know if their products were counterfeit or not The claimant then sent out several notices to the owners of such websites and asked them to remove infringing content but they ignored and continued making profits out of the illegal activities Louis Vuitton claimed that the ‘website service provider had kmown that counterfeit products were sold on their websites and they should and they have the responsibility to prevent them from happening

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However, the district court held in favor with the defendant reasoning that there was no evidence proving the defendant had an obvious partnership with the direct inftingers, ones who actually sold the fake handbags Louis Vuitton then cross-appealed this order Here, the Court of Appeal agreed with the district court that no evidence showed that defendant operated the servers that hosted the direct infringers’ websites Nevertheless, the court contended that the appellee knew or should have known that its customers were infinging appellant's trademarks and copyrights and that the appellee had reasonable means to withdraw its services so that its services could not be used to infiinge Thus, it was ruled in favor of the claimant where Akanoc vwas liable for contributing to the trademark inftingement of Louis Vuitton 12 The linkage between trademark protection and electronic

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 between different individuals or enterprises by the drive of profits The tem “electronics”, on the other hand, is defined, according to the Cambridge Dictionary, 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 took the advantages and started the earliest electronic transactions where they do not 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

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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, through clectronic 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 and the delivery of the goods or service may be made offline The same definition was presented by the Organization for Economic Co-operation and Development

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 into the following main features: @) the tools for conducting business is via dlectronic means, (ji) transactions made via electronic commerce is often automatic, and (iii) aside from the trading parties to a transaction, another party involves in e-commerce is the provider of intemet services, (iv) the chains 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 scale First, there are the Model Law on Electronic Commerce and Electronic Commerce Agreement by the United Nations Commission on Intemational Trade (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 IP rights 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 to e-commerce, a new form of commerce via electronic means for several

Frst, in place of the great importance of online commercial activities, some of copyright objects such as photos, videos, music, software, designs are traded via e-commerce Unlike traditional commerce where matters of a purchase 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 a result, the music can be transferred directly to his choice of electronic device, In this case, buyers and sellers do not have to meet in person and the intangible goods are delivered straight to the buyer, unlike in traditional commerce where the goods are presented in the form of visible substance like 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 assets themselves Thus, the operation of such systems and IP rights are interdependent which both of them promote the development of one another.

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

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-end jewelry, and eBay Inc where the claimant alleged that the eBay network service provider infinged its trademarks by falsely advertised Tiffany's products However, eBay proved that it has made anti-counterfeiting efforts on its platform What eBay did was to run programs that traders can verify the authenticity of the goods sold on eBay Simultaneously, in May 2002, eBay established a Trust and Security Department dedicated to the detection of illegal offers, including counterfeits With regards to Tiffany's products, eBay used computer programs to filter out keywords in order to ensure the distinction between Tiffany's goods and its infringing goods In addition to this, Bay also allowed rights holders to open their own web pages on eBay's interface where they can provide IP rights information on their products For the mentioned measures taken by eBay, it successfully proved that it has taken all possible actions against the trading of counterfeit goods The Court, therefore, rejected claimant's accusations and stated that eBay had properly performed 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 that the counterfeits were offered by eBay; (ii) regarding Tiffany's claim of Bay contributed to such trademark infringement, the Court disagreed with the claimant, 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 goods and their counterfeits are sold on eBay's website, the Court was of the opinion that the advertising here was not fraudulent because eBay sold Tiffany's authentic products.

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‘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 instance judgment related to trademark issues Tiffany did not accept this result and applied to the superior court, in the hope that the high court would review the decision of the appellate court However, this appeal was also rejected by the high court

This case, one of the typical cases addressing the issue of whether an intermediary such as an e-commerce website is liable in the event of trademark infringement, and if so, to what extent are the owners of this ‘website liable In this dispute, itis clear that the defendant ~ eBay, had taken all possible measures to prevent infringement on its digital market The liability belongs to the counterfeit sellers using the claimant's trademark on that platform, Furthermore, eBay's advertisement was not literally untruthful because genuine products of Tiffany were indeed sold on their websites.

13 Chapter conclusion

The first chapter provides the general analysis on trademark protection and 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 and countries In addition, trademark law is viewed within the intemational scope as well as national jurisdiction From this, cases were introduced in relation with concept “trademark infringement” where it was then divided into two types, direct and indirect infringement

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

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 law and the national law Regarding the former, the source can come from primary 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 EU law is supetior to domestic law However, within the scope of this dissertation, only the subject matter of trademark protection under the law of the Union will be addressed and not individual state members’ law.

With regards to trademark sight in the European Union, it cannot be obtained 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 industrial property offices in EU countries, helps gain protection within a single country territory while the latter is made in a broader range, via the European Union Intellectual Property Office (EUIPO) In this sense, trademarks can be registered in either national IP office or at the Community office, or even at ‘both If the application is approved, the registrant will automatically gain legal protections in all 27 member countries However, within the scope of this 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 not national 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 the harmonization among national law systems The harmonization process has ‘been implementing for years and gets approval from all EU members In this process, the Community means to further develop some of the matters such as streamlining the tools for trademark filing and search databases, bringing in new methods to raise awareness regarding counterfeiting, organizing training programs for national office staffs, harmonizing practice on classification of

goods and services.

Similar to WIPO's and many jurisdictions’ definition of trademark, EU also has one according to Article 4 of Regulation (EU) 2017/1001 of The European 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 of goods or of the packaging of goods, or sounds, provided that such signs are capable of

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

(đ) being represented on the Register of European Union trademarks (‘the Register’), in a manner which enables the competent authorities and the public to detenmine the clear and precise subject matter of the protection afforded to its proprietor In this regulation, a trademark to be filed for registration must be representable 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 be pennitted for registration must have a graphic representation, and hence, other vasieties of representation are not accepted This rule was amended on the EU Community Trademark Regulation (207/2009), amended by EU Regulation 2015/2424, 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 the registrar office and the consumers can distinguish them This amendment also shows how EU's trademar law has grown to become more aligned with the intemational 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 mature for registration, provided that no obstacles arise.

First, when a trademark application is filed, the EUIPO will issue a receipt where the applicant can check the application data and notify the Office within that fling date if there is any incomect data such as the name and address of the applicants and specifications of goods/services If no notification is made, the Office will carry out the next step, which is language check over all 23 European official languages This stage is to make sure the verbal elements of the mari have any connotation and whether they fall into the grounds for absolute refusal After this, the applicant can request for a national or a Union trademark search conducted by the EUIPO to spot any

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

states, EU also applies the WIPO's Vienna Classification to classify figurative elements of a mark Applications that comply with the requirements of the regulation are accepted for publication and sent for translation into all the official languages of the EU The duration for this stage varies based on the complexity 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 goods and services to be used in the application must be acceptable to the EUIPO and the fees for application must be made promptly after submitting the application 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 Track procedure, the EUIPO begins to verify the marks on the absolute grounds for refusal These grounds are the ñrst encounter fora mark when examining its ability 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 of the 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 in dass 08: Hand tools, clamps, c-clamps, bar clamps, clamps, locking hold-down clamps, locking pipe clamps, pipe clamps; parts and fittings for the aforesaid goods” on July 17, 2000 On November 29, 2001, the application

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(OHI, Case 75103,

‘was refused on the ground of being descriptive of the designated goods and therefore, the mark is indistinctive under Article 7(1\(¢) of Regulation no.

40/04 The examiner even went further to state that it is impossible for the mark eam distinctiveness over time by useTM_ After the mark being refused for

registration, the applicant appealed against this decision.

Inits argument, the applicant claims that the mark does not describe the designated goods because combination of the words “QUICK” and “GRIP” is unusual 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 sense delivers the idea of rapidity or speed and that in association with the goods of lamps, 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” is regarded as an unusual tem, it nevertheless describes a common characteristic of clamps, hold firmly or grip Therefore, the public canpick up that the product clamps grip rapidly and that they can be quickly assembled foruse

‘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 the designated goods Accordingly, a sign must be refused for registration under Article 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 of First Instant, unfortunately, the Court upheld the former decision by the Board of Appeal

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

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

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

analyzing the characteristics of descriptiveness The reason behind the refusal for registration of a descriptive mark is because this mark is incapable of distinguishing 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 to function as a trademark if they have not acquired distinctiveness in consequence of the use over time, pursuant to Article 7(3) of Regulation No 40/94

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 The duration of this stage is 3 months from the publication date of the trademark application In the 3-month period, the proprietors of earlier trademarks may file a notice of opposition against the opposed mark stating why he believes that the opposed mark can be an infringement of trademark rights if being granted for registration It was also regulated that the ground for oppositions cannot be on absolute grounds for refusal but only based on relative grounds for refusal such as an existence of prior mark in EU that can create conflicts with the new application If the mark is opposed, the Office will notify the applicant of the contested mark and start the opposition procedure, The Office will also be examining the opposition made by the opponent If such opposition 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 happens when the mark does not receive any opposition or the opposition is rejected, the EUIPO will issue a registration certificate indicating that the trademark

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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 cancellation from third parties Any third party who considers that the mari has not been used may bring an action for revocation for non-use, without having to demonstrate any legal interest in bringing such an action for revocation The main reason behind this requirement is because of its function in distinguishing the goods and services of a business operation from another Where a registered trademark has been in use by the trademark owmer for an uninterrupted five-year period, it attains a distinctive quality under the law Another reason for the requirement to use a trademark is to ensure that other pasties 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, through lectronic 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 and amendments, Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Intemal Market (hereinafter referred to as the “Directive on electronic commerce”) is the most fundamental 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

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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 intermediary services, including services provided free of charge to the recipient, such as those funded by advertising

2.2 Trademark protection methods in electronic commerce

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

‘Fist, the most essential method to protect tradenerk right from infringement is registration of trademark Since under EU law, only "ñrst-t0-file” principle is applied, using the mark without registering does not form trademark right that one might need to avoid infringement that one has to apply for registration This is a self-protecting method and is a method applied in both conventional commerce and e-commerce After attaining protection 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 of causing confusion or mislead of the source of goods/services between the earlier trademark and the published mark, the owner can file an opposition against such marke

Further, as mentioned in the previous part of this chapter, the EUIPO wall not be examining the trademark applications with regards to substance If not opposition is filed within the prescribed period of time, the mark is granted for registration Therefore, monitoring trademaric on the EUIPO publication of trademarks cannot be overlooked This is an extremely important step to avoid any registration that may later cause confusion on the source of products towards earlier registered trademarks

Second, a binding measure that can be used in case of infingement incurring is civil enforcement Any trademark ovmer finds its trademark being illegally used can initiate a civil lawsuit at the EU trademark courts of the EU member states Any party that is adversely affected by a decision of the EUIPO Boards of Appeal may bring an action before the EU General Court within two months of notification of the contested decision A decision of the