نوع مقاله : پژوهشی
پژوهشگر پژوهشکدۀ قوۀ قضائیه، تهران، ایران
عنوان مقاله [English]
Generic trademarks are not entitled to exclusive rights, since due to lack of distinctiveness they deprive competitors of necessary words required to introduce goods and services, and eventually, they create confusion for consumers. For some reasons, a trademark may become the generic name for the category of services and goods to which it belongs; In this case, the death of a trademark which is called Genericide will occur. Semantic gap as a result of the non-existence of product or class name along with the novelty of trademark, death by patent, shorter length and simplicity compare to the product name and also market dominance as well as fame are among the prominent linguistic and social processes of trademark genericization. In order to confront the unjustified monopoly of generic trademarks, pre-registration, and post-registration, legislators can provide a couple of mechanisms that the most important are: refusal ground for registration, invalidation trial, cancellation, or removal of the registry, and limitation of exclusive rights. However, three questions shall remain to be answered, case by case, in judicial proceedings: First, what is the genus of goods and services with respect to the key aspect of the product? Second, how and from which point of view and perception of which group shall trademark be deemed generic (end users, intermediaries or, manufacturers)? Third, considering the evidence particularly surveys, linguistic tools, search engines, and testimony of members of trade-in relevant sector, what is the perception of relevant public regarding primary significance of trademark? The goal of this article is to review genericization processes, conducting a comparative study of anti-generic mechanisms of trademark law, and elaborating procedure of determining the genericness of trademark in judicial proceedings in light of US, EU, and Iran courts judgments. Finally, as needed, providing suggestions to overcome legislation shortcomings and gaps as well as optimizing proceedings regarding generic trademark.
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