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Distinctive Character as a Prerequisite for Trade Mark Registration

Romana Matanovac Vučković ; Pravni fakultet Sveučilišta u Zagrebu, Zagreb, Hrvatska

Puni tekst: hrvatski pdf 215 Kb

str. 929-960

preuzimanja: 542



The paper discusses the issue of the practical difference between the position, held mostly by German jurists, that the EU acquis lays down a graded, i.e. abstract and concrete distinctive character, and the position, held mostly by English jurists, that the definition of a mark eligible for trade mark registration only refers to the principal function of the trade mark, while the distinctive character (without gradation) is required only with regard to the products or services to which registration pertains. The author tends to agree with the German position on graded, i.e. abstract and concrete distinctive character, but also concludes that there is actually no practical difference between these two legal dogmatic positions seeing as both positions ultimately lead to the same results. Abstract distinctive character and distinctive character as the principal function of the trade mark are not mutually exclusive, but actually only represent two different ways to explain the same legal effects. A mark lacking an abstract distinctive character may not perform the principal function of a trade mark, i.e. may not designate the origin of the product or service and may not, therefore, be registered as a trade mark. However, it should be noted that the European Court of Justice failed to answer the question whether the acquis lays down a graded distinctive character.
As concerns the other issue discussed in this paper, that of defining the concept of distinctive character by way of the novelty of the mark in recent Croatian legal literature, the author concludes that novelty cannot be linked to a distinctive character. The mark needs not be novel in order to be distinctive, and vice versa. These are two entirely different concepts. The concept of novelty is used to determine whether there already exists an identical or similar trade mark registered in the area. In the registration procedure the existence of relative grounds is always tested only after it has been established that there is no absolute ground for refusal of trade mark registration. It is the distinctive character of the mark that must primarily be determined. In this phase it is still not legally relevant whether there exists an earlier identical or similar trade mark for the same or similar products or services, which could represent a relative ground for refusal. Absolute grounds, i.e. the distinctive character of a mark, are tested ex officio. On the other hand, relative grounds, i.e. the concept of novelty of the mark, are usually tested at the request of an interested party, even though there are offices which perform this testing ex officio. The Croatian administrative practice to date has correctly interpreted and applied the concept of distinctive character and no decisions have been reached in which distinctive character could be linked to or conditioned by its novelty. In accordance with the Croatian Trade Mark Act, novelty as a concept is no longer referred to.

Ključne riječi

trade mark, origin function, distinctive character of a trade mark, trade mark novelty

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