Trade Mark Use

"Use" is a concept which is fundamental to modern trade mark law, within the European Union, the US and elsewhere. The use concept is ubiquitous, since it must be understood before even basic issues of registrability, infringement and validity can be resolved. This book analyses the concept of "use" in trade mark law by tracing it at every stage of a trade mark's lifecycle. Topics covered include The Concept of Use, Registration, Exploitation, Infringement, and Death of a Trademark. It focuses primarily on European trade mark law, but also examines key aspects of US and international law. It is an invaluable information source if you or your client: (i) want to register a trade mark; (ii) are accused of infringing it; (iii) want to prove that, through use, the mark is entitled to remain on the register; (iv) want to make money from using the mark and (v) want to argue that another person's mark should not remain registered.

1 - Introduction
2 - Use and Non-Use in Trade Mark Law
3 - The Need to Leave Free for Others to Use and the Trade Mark Common
4 - Distinctive Character Acquired through Use: The Law and the Case Law
5 - Distinctive Character Acquired through Use: Establishing the Facts
6 - Distinguishing Use versus Functional Use: Three-Dimensional Marks
7 - Third Party Use of Trade Marks
8 - Trade Mark Use and Denominative Trade Marks
9 - Use, Certification and Collective Marks
10 - Infringing 'Use in the Course of Trade', Trade Mark Use and the Essential Function of the Trade Mark
11 - Permitted Infringing Use: The Scope of Defences to an Infringement Action
12 - Infringing Use of a Trade Mark as a Criminal Offence
13 - Use for the Purpose of Resisting an Application to Revoke for Non-Use
14 - The Requirement for Evidence of Use of Earlier Trade Marks in Opposition and Invalidation Proceedings
15 - Trade Mark Use on the Internet
16 - TRIPs and Trade Mark Use
17 - Use, Intent to Use and Registration in the USA
18 - The Role of Trade Mark Use in US Infringement, Unfair Competition and Dilution Proceedings
19 - Conclusion: What Use is Use?

Professor Jeremy Phillips is Intellectual Property Consultant to London-based solicitors Slaughter and May, and previously held a variety of academic posts. He is currently Visiting Professorial Fellow, Queen Mary Intellectual Property Research Institute, as well as a visiting professor at UCL, Bournemouth University and the University of Alicante. Jeremy edits the European Trade Mark Reports and has been consultant editor of the Butterworths Intellectual Property Law Handbook since its inception. His most recent book, Trade Mark Law: A Practical Anatomy, was published in 2003 by Oxford University Press. Ilanah Simon is a Doctoral Associate of the Queen Mary Intellectual Property Research Institute, and holds two degrees from University College London. Her doctoral thesis is a comparative study of trade mark dilution in the United States and the European Union. She has published numerous articles in recent years, particularly within the field of trade mark law. A regular contributor of cases for the MARQUES case law database, Ilanah is Deputy Editor of the European Trade Mark Reports and the contributory editor for trade mark law in the European Union Law Reporter. She is also joint director of the IPKat, the first European-based intellectual property based weblog to be based in Europe.