Journal of Intellectual Property Law & Practice Advance Access originally published online on September 6, 2006
Journal of Intellectual Property Law & Practice 2006 1(11):703-713; doi:10.1093/jiplp/jpl142
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© The Author (2006). Published by Oxford University Press. All rights reserved.
State of the Art |
Coexistence in Community trade mark disputes: conditions and implications
Legal context. A defence based on coexistence has no legal basis in the Trade Mark Directive or in the Community Trade Mark Regulation. Still, a practical approach to Community trade mark conflicts requires attention to the situation in the marketplace where conflicting marks may be shown to coexist without any current confusion or dilution being reported.
Key points. Trade mark coexistence may sometimes be persuasive, the strict requirements being laid down by the Community courts. Through a detailed review of the case-law of the Community courts and OHIM's Boards of Appeal, this article explains the conditions for and the consequences of proving the coexistence of the conflicting marks in cases based on likelihood of confusion or dilution.
Practical significance. Consideration must also be given to the effects of third parties' neighbouring marks which may diminish an earlier mark's distinctive character. Accordingly, this article further addresses the issue of whether the scope of protection of a mark may be damaged by the use of later marks in the light of the ECJ Judgment in the preliminary ruling Case C-145/05 Levi Strauss v Casucci Spa.
*Industrial Property Litigation Unit, OHIM. This article has no official character and the views expressed are the personal views of the author.