Practitioner's Manual for Trade Mark Prosecution and Litigation in the EU


Overview   |   Authors

Sep 2011

Provides general knowledge of the trademark system in the EU, taking you through the basic legal principles and the significance of filing and litigation strategies

Shows how the trademark laws of the EU member states have been harmonised, as well as looking at the non-harmonised areas of law

Brings you commentary on the Community Trademark Directive including the must-know decisions of the European Court of Justice, in particular with respect to the question of likelihood of confusion

Deals with the filing options provided by the EU trademark system and the Madrid Agreement, including the interplay between both systems; providing you with case examples and filing advice

  • Explains the judicial trademark system for the 13 most important EU member states and contains valuable information on the local fees and the necessary involvement of local attorneys Guides you through the procedure for obtaining a community trademark, explains the particularities of a Community Trademark compared with national trademarks and looks at the possibilities of enforcing it at a national and at a EU level
  • Goes through the options and costs of enforcing trademark claims in court and out of court in each country; this includes C&D letters and preliminary injunction proceedings Outlines the proceedings for a trademark application in each of the national registering offices, including costs, scope of examinations, timescales, and remedies in case of refusal
  • Covers the opposition, revocation and judicial proceedings on a national and on a EU level, including costs, scope of examinations, timescales, and remedies in case of refusal Sets out multistate filing and litigation strategies and explains the possibilities of forum shopping
  • Adopts a country by country approach, making it easy to compare proceedings for enforcement claims for each jurisdiction Compares the advantages and disadvantages of a community trademark and a national trademark registration
  • Contains approximately 60 judgments of the European Court of Justice including the most recently issued judgment DHL Express France v Chronopost Annexes contain fee schedules for WIPO and OHIM filing, a list of useful web links (e.g. to free-of-charge trademark databases, legislation and case law) and case law statistics

Jurisdiction: Intellectual Property and Information Technology Law