zambian patents and companies registration office (pacro) presentation crf 2009
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Presentation by Zambian Patents and Companies Registration Office (PACRO) - Prevention and Resolution of Clashes between the Company Names Register and the Trade Marks RegisterTRANSCRIPT
Prevention and Resolution of Clashes between the Company Names Register and the Trade Marks
Register
Presented by
Christopher Mapani
Senior Examiner (Trade Marks) - Zambian Patents and Companies Registration Office (PACRO)
The Patents and Companies Registration Office
Outline of Presentation
Trademarks
Evolution in trademark functions
Corporate Names
a company name generally designates the business being
carried out
traditionally, criteria for approval of a name has
primarily been to ensure that it does not misrepresent its
industry
Corporate Names
in several jurisdiction, searches are done but
largely to check whether a proposed name is
confusingly similar to a registered name
Corporate Names
rarely is a proposed company name evaluated
as a prospective trademark
Corporate Names
but a company name is much more than a symbol of the
business – it represents trust, confidence and tells a story
about why the company exists
Corporate Names
Commonalities between company names and trademarks
Guidance of the ECJ on conflicts between Company Names and
Trademarks
a trademark proprietor can only prevent its unauthorised use where
such use affects the essential function of the mark (Refer to
Judgment Number C-17/06 involving Celine SA and Celine Sarl, French
Companies).
the purpose of the company name is generally not to
distinguish the goods produced but to designate the business
being carried out
Guidance of the ECJ on conflicts between Company Names and
Trademarks
Guidance of the ECJ on conflicts between Company Names and
Trademarks
but while attempting to draw the line between functions of a company name and a
trademark, the court did not dispute that a company name could distinguish goods and
thus infringe upon a trademark. The court appeared more concerned with giving
guidance on circumstances that could give rise to infringement.
Recognition of trademark rights by corporate law in
selected jurisdictions
Similarly under our guidelines for
approval of company names in which the
trademark is registered are such as not to cause the public to
confuse the trademark with the name of the
company.
Section 69 of the Companies Act of the United Kingdom (of 2006) confers upon
brand owners the right to object to misleading
company names
Conflicts between domain names and trademarks
The way conflicts between trademarks and the registration of domain names are being resolved
provide valuable lessons:
Possible solutions to conflicts between trademarks and company names
Possible solutions to conflicts between trademarks and company names
Possible solutions to conflicts between trademarks and company names
Conclusion
I THANK YOU.