Protection of trademarks

As in the case of marks that are well known within the meaning of Article 6bis of the Paris Convention, Article 8(3) grants only the possibility of invalidating marks illegitimately registered. To prevent also the unauthorized use of a conflicting sign, those who have built the fame of these signs will have the burden of registering them as trademarks.

Article 19(2) prohibits the registration of a mark filed in bad faith. An important area in which this provision can be invoked is that of marks that are famous abroad but not yet known to Italian consumers. Under these circumstances, in which it is not possible to resort to the protection afforded to marks that are well-known within the meaning of Article 6bis of the Paris Convention, the fact that the mark was well-known in other jurisdictions could play an important role in determining whether the adoption of an identical or similar mark in Italy by a third party was in bad faith and, specifically, was done with the intent of taking unfair advantage of the reputation that would eventually reach our country. Often, the element of bad faith can be inferred by the conduct of the registrant following registration.

Finally, it has been noted by commentators that European trade mark law makes very little specific provision for the protection of famous trade marks as a separate category of subject matter of legal protection.

With the implementation of the European Trademark Harmonization Directive a "new" trademark was born in Italy: a trademark is no longer merely an indicator of source; it is also a means of communication, a message bearer, a carrier of goodwill, functions that better reflect the role of trademarks in today's market reality. Well-known trademarks - or better yet, trademarks enjoying a reputation in the words of the Directive - are now recognized as having an intrinsic value, stretching beyond the information they provide to the public with respect to the entrepreneurial origin of the goods and services they distinguish. Although the indication of origin remains the fundamental and primary function of all trademarks, the existence of this additional function has become legally relevant. Thus, trademarks are protected also with respect to this intrinsic value and for which the concept of likelihood of confusion cannot provide appropriate protection.

Under the former Italian Trademark Act, which, as mentioned previously, did not expressly provide for any special protection of famous marks, courts, especially from the late 1970s, tended to hold that the achievement by a mark of a general reputation enabled the broadening of its scope of protection so as to extend also to goods and services not strictly related. "Famous" or "well-known" were only those marks known to the public at large, generally identified as those that:

(i) enjoyed a high degree of recognition: survey evidence, if accurate and trustworthy, was often admissible to prove such recognition;

(ii) were associated with products that were widely distributed and enjoyed great consumer recognition: documentation attesting a significant volume of sales in Italy was generally of great assistance in proving fame;

(iii) had been on the market for a long time;

(iv) were the subject of intense and effective advertising: evidence of extensive advertising, especially on television and/or in national or foreign pubblications circulating in Italy, was always of paramount importance.

In determining whether a mark was famous or well-known, Italian courts generally adopted a case-by-case approach, considering the overall commercial impression emerging from the totally of the evidence produced.

The Italian Industrial Property Code currently in force does provide special protection for marks enjoying a reputation. However, it still does not contain any definitions or guidelines to determine when a mark is well known within the Article 6bis of the Paris Convention or enjoys a reputation. In particular, debate arose among Italian scholars as to whether the concept of marks "which enjoy a reputation" set out in Article 1(1)(c) of the last Trademark Act - now Article 20(1)(c) of the Italian Industrial Property Code - is equivalent to that of well-known marks. Some authors assumed that the two categories were coincident. Others maintained that the definition "mark which enjoys a reputation" encompasses not only famous marks, i.e., marks that are known by a very high percentage of the public at large, but also marks that are simply known in the interested circles of trade or industry. This latter interpretation is now the prevailing one as a result of the European Court of Justice's decision in the General Motors Corporation v. Yplon case. According to the Court's ruling, a trademark is famous pursuant to Article 5(2) of the Directive and, therefore, is entitled to the broader protection set forth in such provision, when it "enjoys a reputation within the relevant sector of the public for which the particular goods or services it distinguishes are destined". In its decision, the Court of Justice also stated that "the higher the distinctiveness and reputation of the trademark, the easier the ability to demonstrate the existence of an injury to the interest of the owner".

The above decision is particularly important because it clearly indicates that the function of carriers of goodwill or message bearers is not performed only by exceptionally famous trademarks. Every trademark, as long as it has acquired some consumer recognition in the relevant field of trade or industry, is entitled to be protected against the unathorized use of an identical or similar mark, pursuant to Article 20(1)(c), even in the absence of a likelihood of confusion, when use of the later mark is likely to take unfair advantage of, or be detrimental to, the distinctive character or the repute of the prior mark.

Chapter 3. Protection of Well-Known Trademarks in Pakistan

Pakistan became a member of WTO, hence signatory to the Agreement on Trade Related Aspects of Intellectual Property Right (TRIPS Agreement), in 1995. TRIPS Agreement created an obligation on Pakistan to amend its intellectual property laws and to provide in its national legislation minimum standards of intellectual property rights protection provided in the TRIPS Agreement. Therefore, in order to comply with the TRIPS Pakistan promulgated its new Trademark Law in the year 2001(hereinafter referred to as Ordinance). Article 16(2) and 16(3) of the TRIPS Agreement which deal with the protection of well known trademarks were duly incorporated into the Ordinance, 2001.

Section 86(1) of the Ordinance provides that a Trade Mark which is entitled to protection as a well known trademark shall be a mark which is so entitled under the Paris Convention and which is well known in Pakistan as being the mark of a person who:

1. is a national of a Convention Country- a country, other than Pakistan, which is a party to the Paris Convention; or

2. is domiciled in, or has a real and effective industrial or commercial establishment in, a Convention Country.

It is not necessary that person carries on business, or has a good will, in Pakistan.

1. The Criteria: When is a Mark Well Known?

The Ordinance also set forth criteria for tribunal- "the Registrar or, as the case may be, the High Court or a District Court before which the proceedings concerned are pending" to distinguish well known trademarks from other marks.

Subsection 2 of Section 86 provides that the tribunal shall take into account the following factors as relevant criteria in deciding whether or not a Trade Mark is well known:

1. the amount of Pakistan or worldwide recognition of the Trade Mark;

2. the degree of inherent or acquired distinctiveness of the Trade Mark;

3. the Pakistan or worldwide duration of the use and advertising of the Trade Mark;

4. the Pakistan or worldwide commercial value attributed to the Trade Mark;

5. the Pakistan or worldwide geographical scope of the use and advertising of the Trade Mark;

6. the Pakistan or worldwide quality and image that the Trade Mark has acquired; and

7. the Pakistan or worldwide exclusivity of use and registration attained by the Trade Mark and the presence or absence of identical or deceptively similar third party Trade Marks validly registered or used in relation to identical or similar goods and services.

What is more significant is that the section 86(2) of the Ordinance provides that the following should not be required by the tribunal while determining a trademark is well known:

1. registration of the trademark is in Pakistan;

2. actual use in the form of sales of goods/services under the trademark in Pakistan.

However, in addition to the list of factors mentioned above the tribunal may consider any other factor as relevant while determining a trademark is well known or not among relevant public in Pakistan.

Section 86(3) of the Ordinance provides that the owner of a well known trademark is entitled to restrain, by injunction, the use in Pakistan of a trademark which or essential part of which is identical/deceptively similar to the well known trademark:

1. in relation to identical/similar goods or services where such use is likely to cause confusion; or

2. where such use causes dilution of the distinctive quality of the well known trademark.

2. Well Known Trademarks and Non-Competing Goods

The most important aspect of well known trademarks is that the protection extends beyond the class of goods/services. The Ordinance provides for this as a special right for well known marks in Section 17 which deals with the "relative grounds of refusal" of a trademark. Section 17(3) of the Ordinance reads:

"A trade mark which- (a) is identical with or similar to an earlier trade mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered. shall not be registered if, or to the extent that, the earlier trade mark has a reputation in Pakistan and the use of the later mark without due cause would take unfair advantage of, or be detrimental to , the distinctive character or the repute of the earlier trade mark".

Section 18(1)( c) of the Ordinance provides that an earlier trademark means a trademark which was entitled to protection under the Paris Convention as a well known trademark.

Section 40 (4) of the Ordinance provides that a person shall infringe a registered trade mark if the person uses in the course of trade mark which- (a) is identical with or deceptively similar to the trade mark; and (b) is used in relation to goods or services which are not similar to those for which the trade mark is registered. Where the trade mark is a well known trade mark, or has a reputation in Pakistan, and the use of the mark being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

3. Protection of Unregistered Well Known Trademarks under the Law of Passing Off:

Passing off is a common law tort which can be used to enforce unregistered trademark rights. The tort of passing off protects the goodwill of a trader from a misrepresentation that causes damage to goodwill. In passing off, the plaintiff is required to meet certain well entrenched qualifications in order to succeed. These test evolved as a result of successive court dicta, takes various forms ranging from the most basic ones calling for meeting of only the bare essential to more elaborate mandating the proof of supplementary conditions. The three essential constituents, viz., goodwill, misrepresentation and the damage are the primary elements, a successful claimant must prove, and are collectively referred to as the `classical trinity' of passing off.

Pakistani courts have been applying the common law action of passing off for the protection of well known trademarks in Pakistan for years. Keeping in mind the development in the protection of unregistered well known trademarks through passing off actions, the Ordinance under Section 17(4)(a) provides:

"A trade mark shall not be registered if, or to the extent that, its use in Pakistan

is liable to be prevented-

(a) by virtue of any law, in particular, the law of passing off, protecting an

unregistered trade mark or other mark used in the course of trade".

Section 46 (3) of the Ordinance provides that nothing in the Ordinance shall be deemed to affect rights of action against any person for passing off goods as the goods of another person or services as services provided by another person, or the remedies in respect thereof.

Also, Subsection 3 of Section 39 states that without prejudice to the right of the proprietor of a registered Trade Mark to obtain any relief under any other law for the time being in force, the proprietor shall also have the right to obtain relief under this Ordinance if the Trade Mark is infringed.

4. Protection of Well Known Trademarks under Unfair Competition

The Trademarks Ordinance, 2001 also provide protection to the well known trademarks under the law of unfair competition. Section 67 of the Ordinance provides that any act of competition contrary to honest business practices in industrial or commercial matters such as fraudulently registering or applying for registration of a trade mark is an act of unfair competition. And an action against unfair competition may be brought before a District Court of competent jurisdiction.

Section 14(4) of the Ordinance, which deals with the absolute grounds for refusal of registration, provides that a trade mark shall not be registered if or to the extent that the application is made in bad faith.

However, subsection 4 of Section 86 of the Ordinance provides that the continuation of any bona fide use of a trademark begun before the commencement of the Ordinance shall not be effected by the provisions of this Ordinance.

5. Opposition to Registration of a Trademark by Proprietor of a Well-Known Trademark

Pakistan Trademark Ordinance, 2001 provides an opportunity to the proprietor of a well known trademark to oppose an application for registration of trademark which is identical/deceptively similar to the well known trademark in Pakistan and the use of which is likely to cause dilution/confusion. Section 29 of the Ordinance provides grounds on the basis of which registration of a trademark may be opposed. Section 29(4) reads as follows:

"The registration of trade mark in respect of particular goods or services may be opposed on the grounds that- (a) it is substantially identical with, or deceptively similar to, a well known trade mark to a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Pakistan; and (b) because of the reputation of that other trade mark, the use of the first-mentioned trade mark would cause dilution or would be likely to deceive or cause confusion".

6. Approach of the National Courts

The Pakistani courts have long acknowledged the importance of protecting the rights of IP owners and have extended protection to well-known foreign trademarks far beyond the traditional scope of such protection. Their approach when dealing with issues relating to IP rights has been forward looking.

The first key judgment in this area was given in 1979 by the Sindh High Court in Societe De Fabrication v Deputy Registrar of Trademarks. In protecting an international trademark the court observed: "The conduct of the respondent in appropriating trademarks of foreign owners is not proper… It is common knowledge that trade in French perfumery is of international character. With the revival of international trade and international publicity, the rights of owners of foreign trademarks ought to receive some safeguard unless it is clear from the evidence that the foreign owners have abandoned their intention of marketing their products under the mark in this country." This trend was confirmed in Alpha Sewing Machine v Registrar of Trademarks, in which the Supreme Court of Pakistan approved the following observations of the Lahore High Court: "With the proliferation of the means of communication media the names and products of major world-renowned companies are getting the attention of the public at large in all civilized countries of the world and Pakistan is no exception. Extensive travelling abroad in the recent past has made it possible for the people of Pakistan to have knowledge of internationally renowned companies and their products." This judicial trend was explained by the Sindh High Court in Morphy Richards Ltd v Registrar of Trademarks as follows: "An enactment on trademarks is essentially an international statute, catering to national and international sensibilities… We are living in an information age where the world has become a veritable global village." Globalisation thrives on the honesty of business practices. The judgments delivered by the Pakistani courts on IP rights (particularly in relation to the adoption and use of marks, the marketing of novel products and the use of copyrighted matter) show that the consideration of honest intentions has been pivotal to such judgments. Thus, in Cooper's Incorporated v Pakistan General Stores the Supreme Court of Pakistan held that: "although the appellant has not been selling its products in Pakistan because of import restrictions, this does not entitle the respondent to copy the appellant's trademark because by doing so it is deceiving the public into thinking that its products are the products of the appellant." In the same case the Supreme Court also approved the following findings by the High Court: "Clearly, if the adoption of a trademark by an appellant is proved to be dishonest, no amount of use of the trademark by it can justify registration." In Kabushiki Kaisha Toshiba v Ch Muhammad Altaf the Supreme Court, while refusing a Pakistani applicant's registration of the trademark TOSHIBA, held that: "The respondent has shown no reason tenable at law to pick up an invented word of a foreign firm enjoying both inside and outside the country a reputation for electrical goods of various descriptions. It is registered in this country as such. Against this background, the adoption of the same trademark phonetically in respect of electric fans is bound to create a likelihood of confusion and deception to the consumers of such goods. Hence, it is against the public interest to register such a trademark." In another landmark judgment of the Sindh High Court in National Detergents Ltd v Nirma Chemicals Works, in which the foreign company's trademark NIRMA was not being used in Pakistan, it was held that: "The appellants have not alleged that the first respondents had abandoned any intention to use their foreign trademark in Pakistan for the goods and such inference cannot also be drawn in this case as the respondents have themselves filed an application for registration of their mark and have expressed their intention to use it in Pakistan. The use of the word `Nirma' is clearly not bona fide. No appreciable reason has been shown by the appellants or their counsel except with the intention to cause confusion. The conduct of the appellants in appropriating the trademark of foreign owners is not proper." In Mars Incorporated v Pakistan Mineral Water Bottling Plant (Private) Limitedthe defendants launched their beverages under the trademark MARS, which is famous worldwide for confectionery. The Sindh High Court at Karachi granted an interim injunction in favor of Mars even though the plaintiff's goods (confectionery products) were different from the defendant's goods, and recognized MARS as a well known intern

Chapter 4. Protection of Well-Known Marks in Uzbekistan

Since 1991, when Uzbekistan had to jump from socialist to market economy, there has been a great amount of work done in the field of legislative reforms in all of the branches of law, including intellectual property. As a member of the Paris Union and WIPO, and a country willing to become a member of World Trade Organization (WTO), Uzbekistan nowadays needs to build a mechanism for efficient protection of intellectual property, including the protection of well-known marks.

The national legislation concerning protection of well-known marks in Uzbekistan at the moment consists only of three documents. They are:

1) Law of the Republic of Uzbekistan "On Trademarks, Service Marks and Appellations of Origin", 2001 (hereinafter "The Law");

2) Rules of filing and examination of appeals and applications in the Board of Appeal of the State Patent Office of the Republic of Uzbekistan, reg.# 1889 of 24.01.2009 (hereinafter "The Rules");

3) Recommendations on the conduction of surveys among consumers on the issue of recognition of a trademark to be well-known in Uzbekistan (hereinafter "The Recommendations").

The Law

The current edition of the Law of the Republic of Uzbekistan "On Trademarks, Service Marks and Appellations of Origin" was adopted in 2001 and was amended twice since that time: in 2002 and 2007. The last time it was amended there were added two articles, the significance of which for the purpose of this chapter is enormous. Those two articles, namely 32¹ ("A Well-Known Trade Mark") and 32² ("Legal Protection of a Well-Known Trade Mark"), in strive of implementing of the Art. 6bis of the Paris Convention, directly deal with the issues of recognition of well-known marks in Uzbekistan.

Article 32¹ of the Law stipulates the following:

"A trademark protected in the territory of the Republic of Uzbekistan on the basis of its registration, a trademark, protected in the territory of the Republic of Uzbekistan without registration in accordance with the international treaty of the Republic of Uzbekistan, as well as a sign used as a trademark, but having no legal protection in the Republic of Uzbekistan, may be recognized as well-known in the Republic of Uzbekistan on the basis of the application of a legal or a natural person, if such trademarks or signs have on the date specified in the application become widely known among relevant consumers in respect of the goods of that person, as a result of their [trademarks and signs] intensive use.

Well-known trademark is granted the same legal protection as provided by this Act for a trademark".

As we can see, the article provides us with basic concept of a Well-Known Mark in Uzbekistan, namely it establishes the following requirements:

1) The mark claimed to be well-known must be one of the following 3 types of marks are eligible for protection:

a) registered trademarks;

b) unregistered trademarks protected under international treaties;

c) unregistered signs used as trademarks.

2) The mark is widely known among relevant consumers in respect of the goods of the claimant.

3) There must be intensive use of the mark.

The procedure of recognition can be started only upon the request (application) of an interested person, and not ex officio.

Article 32² of the Law deals with the bases of procedure for granting protection to well-known marks: designation of a "Competent Authority", inclusion of recognized well-known mark into the special List, publication and issuance of a certificate. According to this article, legal protection of a well-known trademark once granted is valid indefinitely.

As to the issue of protection from dilution the following must be stated. According to the Art. 10 of the, Law existence of a well-known trademark is an absolute ground for refusal of registration of another identical of confusingly similar trademark in respect of any types of goods [or services]. This looks like an attempt to comply with the requirements of the Art. 16.3 of the TRIPS Agreement, although rather awkward and vague, because it does not say that the well-known mark must be registered first, as well as that the requirements i) of a threat of "connection" or association with the well-known mark owner, and ii) possible damage to the interests of the latter, must be met. Therefore, this provision may, and certainly will, give birth to a lot of complications in practice.

The Rules

The document is compulsory to be followed by all legal and physical persons in Uzbekistan. The part relating to the procedure of recognition of a mark as well-known in Uzbekistan mainly deals with the following issues:

1) requirements to application on recognition of a well-known mark, and materials complementary to it;

2) procedural issues: registration of applications, duration of proceedings, rules of proceedings, and issuance of a decision by the BoA.

The core part of the Rules (for the purpose of this paper) is the requirements to application on recognition of a well-known mark, as it describes what type of information and supporting documents to be presented to the BoA for consideration. Article 7 of the Rules reads:

"Application […], and the accompanying materials must contain the actual data confirming that the trademark is well-known. These materials may be documents containing:

information about intensive use of the trademark on the territory of the Republic of Uzbekistan;

list of geographic locations where the goods (in respect of which the trademark is used) have been sold;

information about the amount of sales of these goods;

information about the way of use of the trademark, including advertising and presentation at fairs or exhibitions of products and/or services for which the mark is applied;

information about annual average number of consumers of the goods;

information about the countries in which the trademark has become well-known;

the surveys of consumers of goods, provided by specialized independent organization, in accordance with the recommendations set out by the Patent Office.

The duration, continuity, intensity and volume of use of a trademark may be demonstrated by presenting of: conclusions of product quality control bodies, trade organizations, and societies for the protection of consumer rights; declarations, quality certificates, and other documents.

The application must indicate the date from which the use of the trademark has begun, and the date from which the claimant considers his trademark as well-known in the territory of the Republic of Uzbekistan".

This is an obvious attempt to implement WIPO Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks, but with its specific features. Although optional (as well as the Joint Recommendation itself), the list above focuses more on the criterion of intensive use of the trademark in Uzbekistan, as implying that use is a decisive factor (and it actually is according to the Article 32¹ of the Law) in recognition of a well-known mark, which is inconsistent with the Art.2(3) of the Joint Recommendation. In fact the Rules (as well as the Law) do not contain any "non-criteria", i.e. criteria which cannot be demanded by the BoA to be met by the claimant, which leaves a room for abuse by the BoA of its powers to grant protection to a well-known mark.

The Recommendations

The Recommendations are not obligatory provisions to be taken into account when conducting a survey on whether the mark is well-known or not in Uzbekistan. According to the Rules mentioned above, surveys or polls are not compulsory to be presented to the Board of Appeal for the latter to decide on the issue of recognition of a mark to be well-known in Uzbekistan. But it is encouraged to present them anyway (although they can turn out to be very costly) because they give a clear picture of the issue, i.e. the actual numbers and figures on how well-known a mark is in a certain relevant sector of the public, or in other words, by an "average consumer" of goods and/or services in Uzbekistan.

Mainly the Recommendations contain guidelines for conducting a survey specifically designed to help specialized organizations present information necessary to identify if a trademark has or has not become well-know in Uzbekistan.

Chapter 5. A comparative analysis

No.	Name of the legal element of well-known marks protection regime	Italy	Pakistan	Uzbekistan	Notes
1	Legal System	Civil law	Common law	Civil law
2	International obligations	TRIPS, Paris Convention	TRIPS, Paris Convention	Paris Convention
3	Who can claim protection and how it can be claimed?	An interested legal or a natural person can file an application with the Competent Authority, not ex officio	Owner of a well known TM can file an application with the competent Authority.	An interested legal or a natural person can file an application with the Competent Authority, not ex officio
4	Grounds (criteria) for protection	The Italian Industrial Property Code affords to both marks that are well-known within the meaning of Article 6bis of the Paris Convention and registered marks that enjoy a reputation the power to cancel the registration of identical or similar marks for dissimilar goods or services, while it affords only the latter protection against the unauthorized use of identical or similar marks with respect to dissimilar goods or services.	Any ground competent authority consider relevant especially mentioned in Sec. 86(2) of the TM Ordinance, 2001.	1. The mark is widely known among relevant consumers in respect of the goods of the claimant 2. There must be intensive use of the mark	Uzbekistan: the criterion of intensive use of the trademark is contradicting to the Art.2(3) of the WIPO Joint Recommendation;
5	Competent authorities	Tribunal IP Specialized Sections	Trademark Tribunal, Court of law	Board of Appeal of the State Patent Office of Uzbekistan
6	Exception from the principle of territoriality	Present	Present	Present	Uzbekistan: protection may be granted to unregistered signs used as trademarks and service marks;
7	Exception from the principle of specificity	Present	Present	Present	Uzbekistan: too broad - existence of a WKTM is an absolute ground for cancellation of any identical or confusingly similar existing mark or refusal to future identical or confusingly similar mark for any types of goods or services;
8	Protection from dilution by blurring	Yes	Yes	See notes to point 7 above
9	Protection from dilution by tarnishment	Yes	Yes	See notes to point 7 above
10	Scope of protection if mark is registered	Registration does not influence the scope of protection	For protection of well-known mark registration is not mandatory	Registration does not influence the scope of protection	Uzbekistan: See notes to point 7
11	Scope of protection if mark is unregistered	Registration does not influence the scope of protection	Protection is provided for unregistered well known marks	Registration does not influence the scope of protection	Uzbekistan: See notes to point 7
12	Bad faith consideration	Article 19(2) prohibits the registration of a mark filed in bad faith.	Usually considered especially for passing off actions	Not present	Uzbekistan: This must be definitely included into legislation of Uzbekistan along with the basics of doctrine of passing off from common Law tradition
13	Retroactive protection of well-known mark or possibility of coexistence of two similar or identical marks (for similar or identical products in case of unregistered WKTMs)	See point 4 above	Yes, Depending upon the merits of a case.	See notes to point 7 above

Conclusions

Trademarks/service marks are used by persons or companies to identify their goods/services. Marks exist to protect consumers from confusion as to the source of a product/service. Principle of territoriality and specificity are very important part of any trademark law. However, an exception to these principles is the well known marks doctrine. Statutory evolution and recent cases show that the protection afforded to "Well Known" trademarks is increasing. Even in the absence of any likelihood of confusion as to the origin of products, the protection of a trademark aimed at providing its owner with a return for promotional and advertising investment is clear.

In this paper we have reviewed the concepts of the well known and famous marks. We have examined Trademark Laws of Italy, Pakistan and Uzbekistan for approaches to well known trademarks and have found that, in general, well known and famous trademarks are well protected by trademark law in Italy, Pakistan and Uzbekistan even though the means of achieving protection is sometimes is unclear in its path or uncertain in its objectives.

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FREDERICK M. ABBOTT - THOMAS COTTIER - FRANCIS GURRY, International intellectual property in an integrated world economy, Aspen Publishers, 2007

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ADRIANO VANZETTI - VINCENZO DI CATALDO, Manuale di diritto industriale, 6^ edizione, Giuffre Editore, 2009

JASMINE KARIMI, Avoiding Dilution of Well-known Marks in the US, EU and Asia, April 2007

C. HEATH & K. LIU, The protection of well-known marks in Asia, Kluwer, The Hague, 2000

K. FAULKNER, Branding in South East Asia, in Brands and Branding, The Economist Series, Bloomberg press, Princeton, New Jersey, 2004.

S. YOOK, Trademark Dilution in European Union, North Western School of Law, LEWIS & CLARK COLLEGE, 2001.

3. Commentaries:

PIERGAETANO MARCHETTI - LUIGI CARLO UBERTAZZI, Commentario breve alle leggi su proprieta intellettuale e concorrenza, 4 edizione, Cedam, 2007

4. Cases (Chronological order):

Corte di Giustizia 6 ottobre 2009, causa C-301/07, Pago International GmbH c. Tirolmilch Genossenschaft mbH, caso "Pago"

Opinion of the Advocate General Poiares Maduro of 22 September 2009, in Cases C-236-238/08, Google France e Google Inc. c. Lousi Vuitton Mallettier, Google France c. Viaticum Luteciel e Google France Bruno Raboin, Tiger SARL c. CNRHH, Pierre Alexis Thonet, case "Google-Ad-Words"

Trib. primo grado CE 15 settembre 2009, causa T-308/08, Parfums Christian Dior c. UAMI e Consolidated Artists BV, caso "Mango adorably"

Corte di Giustizia 18 giugno 2009, causa C-487/07, L'Oreal SA, Lancome parfums et beaute & Cie, Laboratoires Garnier & Ci. c. Bellure NV, Malaika Investments Ltd. e Starion International Ltd., caso "L'Oreal"

Conclusioni dell'Avvocato generale Paolo Mengozzi del 10 febbraio 2009, causa C-487/07, L'Oreal SA, Lancome parfums et beaute & Cie, Laboratoires Garnier & Ci. c. Bellure NV, Malaika Investments Ltd. e Starion International Ltd., caso "L'Oreal"

Corte di Giustizia 18 dicembre 2008, causa C-16/06 P, Les Editions Albert Rene c. UAMI, caso "Mobilix"

Corte di Giustizia 11 dicembre 2008, causa C-57/08 P., Gateway, Inc. c. UAMI e Fujitsu Siemens Computers, caso "Activy Media Gateway"

Corte di Giustizia 27 novembre 2008, causa C-252/07, Intel Corporation c. CPM UK Ltd., caso "Intel"

Conclusioni dell'Avvocato generale Sharpston del 26 giugno 2008, causa 252/07, Intel c. CPM UK Ltd., caso "Intel"

Trib. primo grado CE 19 giugno 2008, causa T-93/06, Muhlens GmbH & Ko. KG c. UAMI e Spa Monopole, compagnie fermiere de Spa SA/NV, caso "Mineral spa"

Corte di Giustizia 12 giugno 2008, causa C-533/06, O2 Holding Ltd., 02 (UK) Ltd. c. Hutchinson 3G UK Ltd., in Racc. 2008, I, 4231 ss., caso "O2"

Trib. primo grado CE 16 aprile 2008, causa T-181/05, Citigroup Inc. e Citibank NA c. UAMI e Citi SL, in Racc. 2008, II, 669, caso "Citi/Citibank"

Conclusioni dell'Avvocato generale Paolo Mengozzi del 31 gennaio 2008, causa C-533/06, O2 Holding Ltd., 02 (UK) Ltd. c. Hutchinson 3G UK Ltd., caso "O2"

Trib. primo grado CE 30 gennaio 2008, causa T-128/06, Japan Tobacco, Inc. c. UAMI e Torrefacao Camelo L^da, caso "Camelo"

Conclusioni dell'Avvocato Generale Trstenjak del 29 novembre 2007, causa C-16/06 P, Les Editions Albert Rene c. UAMI, caso "Mobilix"

Trib. primo grado CE 27 novembre 2007, causa T-434/05, Gateway Inc. c. UAMI e Fujitsu Siemens Computers GmbH, caso "Activy Media Gateway"

Corte di Giustizia 22 novembre 2007, causa C-328/06, Alfredo Nieto Nuno c. Leonci Monlleo Franquet, caso "Fincas Tarragona"

Conclusioni dell'Avvocato generale Paolo Mengozzi del 13 settembre 2007, causa C-328/06, Alfredo Nieto Nuno c. Leonci Monlleo Franquet, caso "Fincas Tarragona"

Trib. primo grado CE 11 luglio 2007, causa T-150/04, Muhlens GmbH & Co. KG c. UAMI e Minoronzoni s.r.l., in Racc. 2007, II, 2353 ss., caso "Tosca Blu"

Trib. primo grado CE 11 luglio 2007, causa T-263/03, Muhlens GmbH & Co. KG c. UAMI e Conceria Toska s.r.l., caso "Toska"

Trib. primo grado CE 16 maggio 2007, causa T-137/05, Gruppo La Perla c. UAMI e Worldgem Brands - Gestao e Investimentos L^da, caso "La Perla"

Court of First Instance 10 May 2007, in case T-47/06, Antartica s.r.l. c. UAMI e Nasdaq, case "Nasdaq"

CFI 22 March 2007, in Case T-215/03, Sigla SA v. OHIM and Elleni Holding BV, case "VIPS"

CFI 6 February 2007, case T-477/04, Aktieselkabet af 21.november 2001 v. OHIM and TDK Kabuiki Kaisha (TDK Corp.), case "TDK"

Corte di Giustizia 25 gennaio 2007, causa C-48/05, Adam Opel c. Autec, in Racc. 2007, I, 1017 ss.; in Foro It. 2007, 137 ss. con nota di Casaburi e in Il dir. ind. 2007, 423 ss. con nota di M. Bogni, Il marchio automobilistico dei modellini, caso "modellini in miniatura"

Trib. primo grado CE 27 ottobre 2005, causa T-336/03, Les Editions Albert Rene c. UAMI e nei confronti di Orange A/S, in Racc. 2005, II, 4667 ss., caso "Mobilix"

Trib. primo grado CE 25 maggio 2005, causa T-67/04, Spa Monopole, compagnie fermiere de SPA SA/NV c. UAMI e Spa-Finders Travel Arrangements, in Racc. 2005, II, 1825 ss., caso "Spa-Finders"

Trib. di primo grado 13 dicembre 2004, in causa T-8/03, El Corte Ingles SA c. UAMI e Emilio Pucci, in Racc. 2004, II, 4297 ss., caso "Emilio Pucci"

Corte di Giustizia 23 ottobre 2003, causa C-408/01, Adidas-Salomon AG e Adidas Benelux BV c. Fitnessworld Trading Ltd., in Racc. I, 389 ss., Giur. ann. dir. ind. 4608; in Il dir. ind., 2004, 31 ss. con Commento di R. S. De Marco e in Giur. comm. 2004, II, 363 ss. con nota di N. Bottero, Marchi notori, beni affini e usi atipici nella giurisprudenza comunitaria, caso "Adidas-Fitnessworld"

Corte di Giustizia 9 gennaio 2003, causa C-292/00, Davidoff & Cie SA e Zino Davidoff SA c. Gofkid SA, in Racc. 2003 I, 389 ss., in Giur. it. 2003, 283 s. con mia nota La tutela dei marchi che godono di rinomanza nei confronti della registrazione ed utilizzazione per beni affini nella giurisprudenza della Corte di Giustizia e in Giur. comm. 2003, II, 574-584 con mia nota Marchi che godono di rinomanza e beni affini nella giurisprudenza comunitaria,, caso "Davidoff"

Corte di Giustizia 14 settembre 1999, causa C-375/97, General Motors Corp. c. Yplon, in Racc. 1999, I, 5421 ss., caso "General Motors/Yplon"

Boards of Appeal, Yearly overview of decisions 2007

5. National Laws and Regulations

Pakistan Trademark Ordinance, 2001.

Pakistan Trademark Rules, 2003.

Law of the Republic of Uzbekistan on Trademarks & Appellations of Origin of Goods, 2001

Rules of filing and examination of appeals and applications in the Board of Appeal of the State Patent Office of the Republic of Uzbekistan, reg.# 1889 of 24.01.2009

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