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.

Table of Contents:
Foreword Part A: Introduction 1: Jeremy Phillips and Ilanah Simon: Introduction Part B: The Concept of Use 2: Bojan Pretnar: Use and Non-Use in Trade Mark Law 3: Jennifer Davis: The Need to Leave Free for Others to Use and the Trade Mark Common Part C: Registration 4: Arnaud Folliard-Monguiral: Distinctive Character Acquired through Use: The Law and the Case Law 5: Anna Carboni: Distinctive Character Acquired through Use: Establishing the Facts 6: Thomas Hays: Distinguishing Use versus Functional Use: Three-Dimensional Marks Part D: Exploitation 7: Neil J. Wilkof: Third Party Use of Trade Marks 8: Massimo Sterpi: Trade Mark Use and Denominative Trade Marks 9: Jeffrey Belson: Use, Certification and Collective Marks Part E: Infringement 10: Robert Sumroy and Carina Badger: Infringing 'Use in the Course of Trade', Trade Mark Use and the Essential Function of the Trade Mark 11: Ashley Roughton: Permitted Infringing Use: The Scope of Defences to an Infringement Action 12: Andreas Rahmatian: Infringing Use of a Trade Mark as a Criminal Offence Part F: Death of a Trade Mark 13: Belinda Isaac: Use for the Purpose of Resisting an Application to Revoke for Non-Use 14: Allan James: The Requirement for Evidence of Use of Earlier Trade Marks in Opposition and Invalidation Proceedings Part G: Broader Perspectives 15: Spyros Maniatis: Trade Mark Use on the Internet 16: Gail E Evans: TRIPs and Trade Mark Use 17: Graeme B. Dinwoodie and Mark D Janis: Use, Intent to Use and Registration in the USA 18: Sheldon H Klein and N Christopher Norton: The Role of Trade Mark Use in US Infringement, Unfair Competition and Dilution Proceedings Part H: Post Mortem 19: Jeremy Phillips and Ilanah Simon: Conclusion: What Use is Use?

About the Author :
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.

Review :
`...an entertaining treatment of an important subject, a mixture of practical advice, policy analysis and debate. there is something in the book for every trademark practitioner... Phillips and Simon obviously had high aspirations for this book and the end result is rewarding.' Anthony Prenol, The Trademark Reporter `... of interest to intellectual property lawyers, trade mark owners and brand managers.' Practical Law `...the reviewers admire all the more the ability of Jeremy Philips and Ilanah Simon to herd their cats together, not least on a topic where there are clearly many views to consider...Therefore the debate as to what is meant by "use" remains topical, and this new work, Trade Mark Use, considering various jurisdictions from a practical and academic perspective, is most welcome...Davis' style makes enjoyable reading, as she compares UK case law from the twentieth century on the trade mark common...the mixture of the editors and contributors ensures there will be something in the text of interest to any reader who turns to its pages.' James Tumbridge, Christopher Stothers and Charlotte Jacobsen(Milbank Tweed Hadley & McCloy LLP, London), European Intellectual Property Review. `a volume of essays authored by a distinguished collection of Trade Mark academics and practitioners...Good practical advice mixes with trade mark legal theory and case analysis. The result is fascinating, insightful and engaging. Trade Mark Use should find a place on the shelves of any institution where Trade Mark Law and practice is studied as apart of an intellectual property law syllabus. At the same time, it will be read with interest by students of marketing, branding and advertising...This book has not direct competitor. It enjoys the same relaxed yet authoritative style of Jeremy Philips' Trade Mark Law: A Practical Anatomy...Trade Mark Use will complement the standard intellectual property texts on trade marksit should be essential reading for students preparing for professional Trade Mark attorney qualifications. Academics will find much to enliven lectures, and enhance their own trade mark research.' Ruth Soetendorp, Bournemouth University