Not prior in time, but superior in right - how trademark registrations can be affected by third-party interests in a sign

Annette Kur*

*Corresponding author for this work

Research output: Contribution to journalArticleScientificpeer-review

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) takes place. However, in certain exceptional cases priority is discarded due to superior interests of third parties. International law explicitly recognises two such constellations, namely, protection of well-known marks (Art. 6bis Paris Convention) and unauthorised 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 perspective, including a discussion of the Commission proposals for reform of European trademark 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 regard to Art. 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.

Original languageEnglish
Peer-reviewed scientific journalIIC International Review of Intellectual Property and Competition Law
Volume44
Issue number7
Pages (from-to)790-814
Number of pages25
ISSN0018-9855
DOIs
Publication statusPublished - 03.10.2013
MoE publication typeA1 Journal article - refereed

Keywords

  • 512 Business and Management
  • Well-known marks
  • Unregistered marks
  • Registration by an agent
  • Filing of marks in bad faith
  • European trademark law reform
  • 513 Law

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