CLASS 46
Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.
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TUESDAY, 1 NOVEMBER 2011
Why size doesn't matter
Although it is disputed by some people, the saying that "size doesn't really matter" still hasn't lost its validity. It does not happen every day that big, well-known companies are forced to protect and enforce their rights "thanks to" incidents that occurred in small countries such as Slovakia.
This has been illustrated well in the recent Jamieson case, which proves that even small markets can sometimes cause big problems.
Jamieson Laboratories, set up in 1922, is a well-known Canadian-based producer of vitamins. Despite being present on the EU market, it did not register its trade marks. This was later done by a Slovak businessman who apparently had a contractual relationship with Jamieson Laboratories' distributor in Slovakia. The Slovak businessman obtained several Jamieson trade mark registrations in Slovakia and in the Czech Republic in 1999, and later started to offer products bearing Jamieson trade marks. As the owner of the registered trade marks, he filed an application for a customs action with the Slovak customs administration and requested protection for his goods bearing the Jamieson trade marks.
Tags: Slovakia,
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Why size doesn't matter
Although it is disputed by some people, the saying that "size doesn't really matter" still hasn't lost its validity. It does not happen every day that big, well-known companies are forced to protect and enforce their rights "thanks to" incidents that occurred in small countries such as Slovakia.
When Jamieson goods from the Canadian producer were subsequently detained by Slovak customs, the Canadian vitamin producer quickly realised the consequences of operating without trade mark registrations.
The battle between the parties is currently ongoing at several venues. While the goods are still being held by Slovak customs, the Slovak businessman filed a preliminary injunction against the Canadian manufacturer, claiming that the goods infringed its registered trade mark rights and were thus counterfeit.
Meanwhile, Jamieson Laboratories filed a request with the Slovak Industrial Property Office to declare the trade marks invalid. If the trade marks were to be declared invalid, it would be as if they never existed. In this case, there is a big chance of this happening. The Slovak Industrial Property Office could declare the trade mark registrations invalid on the basis that the previous registrations were obtained in bad faith or because of the unregistered trade mark rights of the well-known Canadian producer.
Even if the Slovak Industrial Property Office declares the trade mark registrations invalid, Jamieson Laboratories will likely have to go through the same thing at the Czech Intellectual Property Office, where the Slovak company likewise holds trade mark registrations.
Only after these decisions will Jamieson Laboratories finally be able to register its trade marks at the EU-level and obtain Community trade marks for its products.
This case is a typical example of the need to operate with proper trade mark registrations in all relevant markets. In competitive environments such as the EU, creativity and inventions are starting to run out of new ideas and this often leads to abusive trade mark registrations. Enforcement is possible, but it takes time and certainly costs a lot more than filing a trade mark registration.
Posted by: Blog Administrator @ 18.35 Class 46 thanks Zuzana Hecko (Allen & Overy, Bratslava), for providing this item.
Tags: Slovakia,
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MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.
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