Not Prior in Time, But Superior in Right: How Trademark Registrations Can be Affected by Third Party Interests in a Sign

IIC - International Review of Intellectual Property and Competition Law, 2013 Vol. 44, Issue 7, pp 790-814

Max Planck Institute for Intellectual Property & Competition Law Research Paper No. 13-10

31 Pages Posted: 4 May 2013 Last revised: 15 Nov 2013

See all articles by Annette Kur

Annette Kur

Max Planck Institute for Innovation and Competition

Date Written: May 24, 2013

Abstract

Trademark law relies on the principle of priority: The person first filing for registration (or, depending on the legal system, the person first using a sign) becomes the owner of the right within the territory where the filing (or use) took place. However, in certain exceptional cases priority is discarded vis-à-vis superior interests of third parties. International law explicitly recognizes two such constellations, namely protection of well-known marks (Article 6bis Paris Convention) and unauthorized registration by an agent or representative (6septies Paris Convention). Furthermore, it is widely acknowledged that the priority principle may not apply if a mark is filed in bad faith. The article presents all three constellations from an international and European legal background, including a discussion of the Commission proposals for reform of European trade mark law. It is argued that while the current law as well as the proposals go beyond what is necessary to comply with international obligations in regards of Article 6septies and application in bad faith, they do not live up to the required level when it comes to well-known marks. Nevertheless, in spite of certain deficiencies, it is also shown that European trademark law in its current state as well as in view of the envisaged reform proposals presents a fairly comprehensive panoply of options for protection of superior interests in a sign in spite of lacking registration.

Keywords: Well-known marks, unregistered marks, registration by an agent, filing of marks in bad faith, European trademark law reform

Suggested Citation

Kur, Annette, Not Prior in Time, But Superior in Right: How Trademark Registrations Can be Affected by Third Party Interests in a Sign (May 24, 2013). IIC - International Review of Intellectual Property and Competition Law, 2013 Vol. 44, Issue 7, pp 790-814; Max Planck Institute for Intellectual Property & Competition Law Research Paper No. 13-10. Available at SSRN: https://ssrn.com/abstract=2253888

Annette Kur (Contact Author)

Max Planck Institute for Innovation and Competition ( email )

Marstallplatz 1
Munich, Bayern 80539
Germany

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