Criteria for Infringement in Composite Trademarks:Analysis and criticism of case laws

Document Type : Original Article

Authors

1 PhD, Faculty of Law, Shahid Beheshti University, Tehran, Iran

2 PhD, Student, Faculty of Law, Tehran University: Kish International Campus, Hormozgan, Iran

Abstract

Legislator's support for the trademark owner is in line with the creation of business and its prosperity by the investor and entrepreneur, and this support should not prevent the creation of business by competitors of the trademark owner without a valid reason. Combined trademarks are examples of trademarks that, due to having different components, have the possibility of conflicting with the rights of competitors and third parties. This research tries to extract criteria related to infringement of the rights of owners of combined trademarks by reflecting on the fundamental standards and legal approaches of the leading systems, by analyzing and criticizing the domestic and foreign jurisprudence. In this regard, in this article, by examining the domestic and foreign judicial procedure, the analysis of the rules forbidding decomposition and the dominant feature in the analysis of the cases related to the infringement of the rights of the owners of such signs are discussed. The results of this article indicate that in the cases related to the infringement of combined trademarks, the courts will fully examine and compare the combined marks, and on the other hand, they may consider one of the characteristics of the mark more important in the analysis of the likelihood of confusion.

Keywords

Main Subjects

References

  1.  

    References

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    2. Davis, Jennifer. Intellectual property law, United Kingdom: Oxford University press: Fourth Edition, 2012.
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    Cases

    1. Alpha Industries, Inc. v. Alpha Steel Tube & Shapes, Inc.
    2. Arsenal Football Club plc v Reed (2002).
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    12. Judgment No. 970992192000400, dated 2018/06/19, issued by Branch 1045 of the second Criminal Court of Tehran. (in Persian)
    13. Koninklijke Philips Electronics NV v Remington\ Consumer Products Ltd (2002) (ECJ).
    14. Madison Reprographics, Inc. v. Cook’s Reprographics, Inc.
    15. OHIM v BORCO (2010).
    16. Pacific Telesis Group v. International Telesis Communications.
    17. 1 v OHIM (2004).
    18. Verdict No. 140068390018512479, issued by the third investigation branch of the 26th District Prosecutor's Office of Tehran. (in Persian)
    19. Verdict No. 140168390001882696, dated 2022/05/11, issued by the third investigation branch of the 26th district of Tehran. (in Persian)
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    21. Verdict No. 9909972120200777, issued by the second prosecutor branch of the 26th District Prosecutor's Office of Tehran. (in Persian)
    22. Walt Disney Productions v. Air Pirates.

     

     

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History

  • Receive Date: 05 January 2024
  • Revise Date: 22 February 2024
  • Accept Date: 18 March 2024

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