Navigating the Complex Terrain of Trademark and Trade Name Conflicts: A Comprehensive Analysis

Document Type : Research Paper

Author

ph.d university of Tehran

Abstract

In the global landscape of commerce, trademarks and trade names stand as pivotal identifiers, distinguishing products, services, and their origins. This study immerses itself in the intricate web of conflicts stemming from trademark and trade name rights, shedding light on the nuanced judicial procedures that underpin these disputes. Trademarks, tangible or invisible symbols, serve as commercial identity markers employed by entities across borders. Simultaneously, trade names, representing individuals or legal entities, introduce them to the societal framework. The convergence of these identifiers, often within similar or identical fields of operation, gives rise to complex conflicts, prompting a profound exploration into their origins, interpretations, and resolutions.
Understanding the Foundation: Trademarks and Trade Names
Trademarks and trade names, although seemingly distinct, share an underlying purpose – establishing identity. Trademarks, visible or otherwise, serve to distinguish goods and services, acting as symbols of quality, reliability, and origin. In contrast, trade names introduce the individuals or entities behind the products, forging a personal connection with the 
consumer base. The crux of the issue lies in discerning the intent behind their usage: is the purpose to differentiate goods and services or to familiarize consumers with entrepreneurs and econom  ic entities?

The Intricacies of Conflict Formation
At the heart of the matter lies the genesis of conflict. When trademarks and trade names intersect due to overlapping activities, discerning the cause becomes pivotal. Why do these conflicts emerge, and how are they perpetuated? Judicial analyses and consumer perceptions play a central role in deciphering the nature of trademarks and brand names, offering insights into conflict resolution mechanisms.
 
Consumer Perspective: A Key to Conflict Resolution
In the realm of trademarks and trade names, consumer perception is paramount. How do consumers differentiate between trademarks and trade names? Judges and experts must adopt a consumer-centric viewpoint to unravel the complexities. Analyzing consumer behavior forms the bedrock of conflict resolution strategies. When consumers encounter identical or similar marks and trade names, what factors influence their decision-making processes? Age, gender, and expertise serve as lenses through which consumers perceive these identifiers, adding layers of complexity to the analysis.
 
Judicial Challenges and Interpretations
Judicial interpretations shape the trajectory of conflicts. Examining past cases, this study delves into the nuances of judicial decisions, shedding light on the factors influencing outcomes. Addressing challenges faced by business owners, who invest years of effort and capital into their trade names, becomes imperative. This research scrutinizes at least twenty judicial decisions and incorporates expert opinions from three ongoing cases, offering a comprehensive understanding of the legal landscape.
 
Resolving Conflict: A Multifaceted Approach
Resolving conflicts arising from trademarks and trade names demands a multifaceted strategy. Registration office procedures and court interpretations form the foundation of conflict origins. However, the crux lies in comprehending the issue from a consumer's perspective, transcending expert and judicial analyses. Distinguishing trade names from trademarks emerges as a pivotal task, demanding a nuanced understanding of the essential differences. While canceling trademarks or mandating non-use of trade names are potential solutions, simultaneous usage can be considered, especially in cases where distinct geographical regions ensure consumer differentiation.
 
Conclusion and Future Implications
In conclusion, this comprehensive analysis illuminates the intricate dynamics of trademark and trade name conflicts. By delving into consumer perceptions, judicial interpretations, and the underlying intent behind these identifiers, this study paves the way for nuanced conflict resolution strategies. Acknowledging the multifaceted nature of these conflicts and embracing a consumer-centric approach remain fundamental in navigating the complex terrain of trademarks and trade names.

Keywords

Main Subjects

References

Abadeh Sediq Ceram and Pasargad Ceram Ceramics and Tile Factories Complex (2023). Last Visited at:
     2023/05/06,http://abadehtile.com/default/lang/Fa
Afrasyab, M. (2021). Industrial Property in Iran’s Legal System With emphasis on judicial procedures, Tehran: Elm va Danesh, [In Persian].
Baptista. M,. et al (2018). Trademark procedures and strategies: Portugal, Available at:
     https://www.worldtrademarkreview.com/brand-management/trademark-procedures-and-strategies-portugal
Case C-598/14 P, EUIPO v Szajner. On 17 January 2005, the Court of Justice of the European Union of 5 April 2017.
Eslami, Sh. (2010). Similarities and differences of brand name and trademark, Judgment, 65, 49-50 [In Persian].
Guo, C. (2021). Conflict Between Trade Name And Prior Registered Trademark, 14 December 2021, Available at:
     https://www.mondaq.com/china/trademark/1141632/conflict-between-trade-name-and-prior-registered-trademark
Graeme B. D. & Janis, M. D. (2007). Confusion Over Use: Contextualism in Trademark Law, Iowa Law Review, 92, 1599-1667.
Ley 17/2001, de 7 de diciembre, de Marcas,the CJEU’s judgment in the case C-17/06 Céline of 11 September 2007,Last Visited:2023/04/02. Available at:
     https://www.elzaburu.es/blog/2021/04/conflict-between-company-names-and-trademarks-or-tradenames.html
Habiba, S., Meshkin Azarian, A. )‌2020). An Empirical Study of the Iranian Judicial Precedent on Trademark with an Emphasis on the Statistical Models, Comparative Law Review, 11(2), 501-523. [In Persian].
Jafari Langarudi, M. J. (2007). Legal terminology, Tehran: Ganj Danesh, [In Persian].
Mirhosseini, S. (2021). The Lae of Trademarks,Tehran: Mizan Legal Fundation, [In Persian].
REGULATIONS (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 14 June 2017 on the European Union trade mark (codification)
Research Institute of Extraction and Judicial Procedure Studies, (2013) Collection of Judicial Opinions of Appeal Courts of Tehran Province (Law), Tehran: Markaz Matbu’at [In Persian].
Zandevakili, A., Sadeghi, M. (2013). Trade Name' and It’s Distinction from Similar Concepts, Iranian Journal of Trade Studies, 17(68), 113-148. [In Persian].
Samavati, H. (2014). Legal Basics of Trade Names, Tehran: Mizan. [In Persian].
Seyedin, A. Karchani, M. (2020). Generic Trademark: Lack & Loss of Distinctiveness in Light of “Akbarjoojeh” Case', The Judiciarys Law Journal, 84(111), 237-280 [In Persian].
Seyedin, A. Karchani, M. (2021 A). Industrial property rights in the mirror of judicial thoughts (scientific meetings and vote reviews), Tehran; Pajuheshgah ghove ghazaeyie. (in Persian)
Seyedin, A. Karchani, M. (2021 B). Intellectual property rights, law, jurisprudence, contract (collection of articles), Tehran: Pajuheshgah ghove ghazaeyie. [In Persian].
Seyedin, A. Karchani, M. (2020). Generic Trademark: Lack & Loss of Distinctiveness in Light of “Akbarjoojeh” Case', The Judiciarys Law Journal, 84(111), 237-280 [In Persian].
Shakeri, Z. Amirshahkarami, S. H. (2022). A Look at the Application of Artificial Intelligence in the Legal System of Trademarks, Iranian Journal of Public Policy, 8(3), 27-39. [In Persian].
REGULATIONS REGULATION (EU) 2017/1001 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 14 June 2017 on the European Union trade mark (codification).
Tamara Nanayakkara, IP and Business: Trademark Coexistence, WIPO Magazine, issue 6, 2006
Cases  [In Persian].
The United International Bureaux for the Protection of Intellectual
Property (BIRPI)(1967),The Model Law for developing Countries on Marks, Trade Names, and Acts of
Unfair Competition
Case number 9809980226300732 in the 3rd branch of Tehran General Court 13
Judgment No. 256 dated 11/07/2018 issued by Branch 3 of the Tehran Law Court 14.
Judgment No. 1301 dated 11/12/2018 Branch 10 of the Court of Appeal of Tehran Province 15.
Judgment No. 612 dated 30/09/2018 Branch 3 of Tehran General Court and Judgment No. 1801 dated 17/03/2020 Branch 10 of the Court of Appeal of Tehran Province 16.
Judgment No. 950658 dated 01/10/2016 issued by Branch 3 of the Tehran Law Court 17.
Judgment No. 554 dated 30/07/2017 Branch 10 of the Court of Appeal of Tehran Province 18.
 Judgment No. 9209970221200028 dated 15/04/2013 issued by Branch 3 of the Tehran Law Court 19.
Judgment No. 139 dated 04/05/2020 Branch 10 of the Court of Appeal of Tehran Province 20.
Judgment No. 1325 dated 27/04/2018 issued by Branch 3 of the Tehran Law Court and Judgment No. 1391 dated 13/01/2020 Branch 10 of the Court of Appeal of Tehran Province 21.
Judgment No. 319 dated 26/02/2019 issued by Branch 3 of the Tehran Law Court and Judgment No. 498 dated 17/07/2019 Branch 10 of the Court of Appeal of Tehran Province 22.
Judgment No. 9309970221200190 dated 19/05/2014 Branch 12 of the Court of Appeal of Tehran Province 23.
Judgment No. 457 dated 04/07/2001 issued by Branch 3 of the Tehran Law Court 24.
Judgment No. 766 dated 12/09/2017 Branch 10 of the Court of Appeal of Tehran Province 25.
Judgment No. 680 dated 27/08/2017 Branch 10 of the Court of Appeal of Tehran Province 26. Judgment No. 960238 dated 17/06/2017 issued by Branch 3 of the Tehran Law Court.
Order No. 9709972120211612 dated march 14, 2019, the second branch of the Prosecutor's Office of the 26th district of Tehran
Journal of Legal Studies
Volume 15, Issue 4 - Serial Number 50
December 2023
Pages 325-360

Files

Share

How to cite

Statistics