(Eng) The submitted master's thesis discusses non-conventional signs and trade marks, which have grown in significance, especially from the perspective of marketing, traders and law, as was demonstrated by the recent amendments of the European trade mark law. The main aim of this thesis is to identify the particularities of non-conventional signs and obstacles to their registration from the perspective of the selected jurisdictions and consequently, to evaluate the reasons and justifications of the countries' approach. After a historical overview of trade mark functions and the development of law in the studied jurisdictions, the thesis is concerned with outlining the theoretical legal basis of trade mark protection in the European Union, Canada, Australia and the United States of America. The main focus of the thesis lies in the specific effects of the law on the individual types of non-conventional signs and trade marks, with a particular emphasis on the decisions of offices and courts, especially the Court of Justice of the European Union. The analysis includes sounds, scents, shapes and colours, as well as motion marks, holograms, position marks and tactile signs. The main part of the thesis is subdivided into several sections in order to grasp the particularities and singularities of each type...

As a response to trade marks’ enhanced importance within trade, the EU’s interest in the area has increased by proponing a harmonization of the member states’ trade mark pro-tection so far as needed to preserve the EU’s objective of an internal market. The area is therefore regulated by an EU Directive, however allowing some national discretion. The purpose of this study was to investigate if a specific part of the trade mark protec-tion, the assessment-based confusion doctrine, corresponds on a Swedish and EU level. The aim was to locate statutory discrepancies in order to stimulate further review of the practical application of the doctrine from the analytical perspective of legal certainty. A scientifically accepted and traditional legal research method was applied when ex-amining and interpreting the sources of law. In addition, a comparative study was con-ducted between the two investigated legal systems to achieve the overall purpose. When comparing the results from the investigated sources, the legislations present a sta-tutory diversity, opening up for practical discrepancies. So was also the case with the application at the early stage of national implementation of the EU Directive. The tradi-tional national confusion doctrine, prescribing a more legal-technical assessment, did not correspond to the more flexible and contemporary EU view. Consequently, some national courts had to endure criticism for not adjusting to the EU development. Later case law however presents a very positive transition to the EU view of the confu-sion doctrine, suggesting a partial abandonment of the national legal sources of law for the benefit of EU law. Conclusion was however that despite this practical transition to EU law, statutory changes are necessary in order to safeguard the legal certainty in the way of achieving predictability.

L’objet de cette thèse est d’expliquer le lien entre utilisation de marques et activités innovantes. Le premier chapitre décrit les principaux aspects juridiques des marques et passe en revue la littérature en économie et gestion s’y rapportant. Le second chapitre analyse comment et pourquoi les firmes utilisent les marques et comment celles-ci s’intègrent dans leurs activités innovantes. À travers une approche théorique et empirique, nous montrons que les marques sont utilisées en lien avec les innovations prenant place à l’interface du marché, principalement les innovations de produit et de marketing. Le troisième chapitre étudie les interactions entre marques et brevets dans la protection de l’innovation. Nous montrons que selon les caractéristiques du marché ils peuvent se complémenter ou se substituer l’un à l’autre. Dans le dernier chapitre, nous explorons les schémas d’utilisation de marques par les universités et leur lien avec les activités de recherche de ces institutions. / This thesis aims at explaining the link between trade mark use and innovative activities. The first chapter describes the main legal aspects of trade marks and reviews existing literature in economics and management relating to them. The second chapter analyses how and why firms use trade marks and how they integrate them in their innovative activities. Through a theoretical and empirical approach, we show that trade marks are used in relation to innovations which are at the interface of the market, mainly product and marketing innovations. The third chapter then studies the interrelated effect of trade marks and patents in the protection of innovation. We show that depending on market characteristics, they may complement or substitute each other. In the fourth and final chapter, we explore the patterns of trade mark use by academic institutions, and investigate how these relate to their research activities.

Little attention is paid to the civil remedies available when infringement of a trade mark or the right to goodwill occurs. Yet, for the owners of ~uch rights, these remedies are of much greater importance than theoretical considerations regarding the nature of the rights or what constitutes their infringement. This thesis analyses the civil remedies for trade mark infringement granted by the South African Trade Marks Act 194 of 1993. In the South African context, any consideration of civil remedies is rendered problematic by the attempted graft of English remedies onto a legal system with a different common-law background. It is, therefore, essential first to trace the English origin and application of these remedies, and then to determine whether each remedy is acceptable in terms of the South African common law. This is necessary, as our courts have previously rejected or adapted English remedies which were unknown to our common law but which Parliament introduced in legislation. The remedies of interdict (or injunction) in final and interlocutory form, compensatory damages, reasonable royalties, and delivery up are analysed from a substantive law and a procedural perspective. The procedural innovation of an inquiry as to damages is also considered. In respect of each remedy, (1) the English roots and development of the remedy are traced; (2) differences of approach in two other Commonwealth jurisdictions, Australia and Canada, are highlighted; (3) the development of the South African equivalent is detailed; and (4) suggestions for the future implementation of the remedy in South Africa are made. In the penultimate chapter, our common law and legislation (including the Constitution of the Republic of South Africa 108 of 1996 ) are measured against the requirements of the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS). Recommendations for the effective utilization of each remedy in South Africa are then made. They include suggestions for legislative amendment in respect of delivery up and an inquiry as to damages, and the introduction of statutory damages as an further civil remedy. / Mercentile Law / LL. D. (Laws)

"Mémoire présenté à la faculté des études supérieures en vue de l'obtention du grade LL.M. en droit des technologies de l'information" / Le présent mémoire de maîtrise a pour objet l'analyse du droit international des marques de commerce et du droit de certains pays industrialisés en comparaison avec la législation canadienne sur les marques de commerce. Il traite également des modifications qu'il serait nécessaire d'apporter à la loi canadienne en vue de l'adoption du Protocole de Madrid, du Traité sur le droit des marques et de l'Arrangement de Nice, et de la mise en application de la Recommandation commune sur les marques notoires. Le Canada devrait aussi modifier certaines dispositions de la loi sur les marques de commerce pour la rendre plus conforme à l'Accord sur les ADPICs et à la Convention de Paris. Compte tenu des lacunes du droit international en ce qui a trait à l'utilisation de la marque, le mémoire analyse et critique cette notion en droit canadien et la compare aux tendances actuelles qui ont cours aux États-Unis et au Royaume-Uni. / The purpose of this thesis is to compare the Canadian legislation in trade-marks law with international trade-marks law and the law of sorne industrialized countries. It is also suggested that the implementation of the Madrid Protocol, of the Trademark Law Treaty, of the Nice Arrangement and of the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks would necessitate some amendments to the Canadian Trade-Marks Act. Moreover, some sections of the Canadian Trade-Marks Act should be amended so as to comply with the TRIPs Agreement and with the Paris Convention. U.S. and UK. approaches regarding the use of a trade-mark are also analysed, since international law does not appear to have fully addressed this issue.

Domain names are still a relatively unknown occurrence and despite being a natural part in most people’s every-day life, there are few who reflect over their importance. The original function of domain names was merely to serve as technical addresses and to facilitate the locating of websites on the Internet. Today domain names are much more than this. In addition to the address function, domain names may also serve as indications of goods, services, businesses or information. The domain name is usually the first contact one gets with a website and it has become crucial for businesses to have their company name or trade marks registered as domain names. The issue of the legal status of domain names has mainly been discussed from an American point of view and in Sweden this discussion has almost entirely fallen under the radar. If the legal status of a domain name were clear, it would be easier for businesses to avail themselves of the value of that domain name. It would possibly even contribute to strengthening the legal protection for the domain name holder, in for example insolvency or bankruptcy procedures. Intellectual property exists in many different forms, the main being patents, trade marks, copyright and design rights. Although there are many differences between them, they all have in common that they establish property protection over intangibles such as ideas, inventions, signs and information. As a domain name is not a physical object, there can be no doubt that it is an intangible. The question is whether it is property. Intellectual property is not a static area and it can, in line with societal and technological development, be expanded to include new types. The legal status of domain names is generally discussed in the light of the close connection they have with trade marks. Except from their original function, the trade mark function of domain names can probably be considered as one of the most commonly accepted. It is indicated in this thesis that that function contributes to that a domain name can be considered as a distinctive sign and thereby obtain protection, in the same way as an unregistered trade mark. According to current accounting rules, businesses may, to some extent, avail themselves of the value of a domain name. Domain names are under certain circumstances identified as intangible assets and even as ‘similar rights’ to for example trade marks and patents in accounting and taxation situations. At this time it is not possible to legislate on the area of the legal status of a domain name on a Community level, as this most likely would have to include a consideration of the existence of property rights and consequently fall outside the legislative powers of the Community. Both the legal development and the legal discussions on the topic of the legal status of domain names in Sweden have been relatively sparse. Nonetheless, there have been some interesting opinions. By investigating what positions the different authorities, academics and practitioners have taken on the legal status of domain names it can be concluded that the prevailing opinion in Sweden is that domain names are not considered as property. The reason for this seems to be that domain names as such, are in fact no more than technical constructions and that by registering a domain name the registrant only becomes the holder of a contractual right. However, there are some diverging opinions which could suggest that the legal status of domain names in Sweden is not yet settled. The aspects which are then taken into consideration include that domain names have developed to become important and valuable assets for an increasing number of businesses. A domain name is a precondition for the creation of a website and therefore of crucial importance for, in particular, online based businesses. However, they are of increasing importance for all businesses to reach out to and compete over the same customers. It is advocated that the fact that domain names are freely traded with indicates that domain names are property. It has also been questioned whether an asset with a true economic value, such as a domain name, can exist without being considered as an item of property. The steps taken in other jurisdictions have shown that the legal status of domain names is not even clear in some of the countries with the greatest experience of domain names. Nonetheless, the legal status is given attention in those countries and the discussion has been initiated. In general, it can be concluded that the development seems to go toward higher awareness of the value of domain names.

<p>Domain names are still a relatively unknown occurrence and despite being a natural part in</p><p>most people’s every-day life, there are few who reflect over their importance. The original</p><p>function of domain names was merely to serve as technical addresses and to facilitate the</p><p>locating of websites on the Internet. Today domain names are much more than this. In</p><p>addition to the address function, domain names may also serve as indications of goods,</p><p>services, businesses or information. The domain name is usually the first contact one gets</p><p>with a website and it has become crucial for businesses to have their company name or</p><p>trade marks registered as domain names. The issue of the legal status of domain names has</p><p>mainly been discussed from an American point of view and in Sweden this discussion has</p><p>almost entirely fallen under the radar. If the legal status of a domain name were clear, it</p><p>would be easier for businesses to avail themselves of the value of that domain name. It</p><p>would possibly even contribute to strengthening the legal protection for the domain name</p><p>holder, in for example insolvency or bankruptcy procedures.</p><p>Intellectual property exists in many different forms, the main being patents, trade marks,</p><p>copyright and design rights. Although there are many differences between them, they all</p><p>have in common that they establish property protection over intangibles such as ideas,</p><p>inventions, signs and information. As a domain name is not a physical object, there can be</p><p>no doubt that it is an intangible. The question is whether it is property. Intellectual</p><p>property is not a static area and it can, in line with societal and technological development,</p><p>be expanded to include new types.</p><p>The legal status of domain names is generally discussed in the light of the close connection</p><p>they have with trade marks. Except from their original function, the trade mark function of</p><p>domain names can probably be considered as one of the most commonly accepted. It is</p><p>indicated in this thesis that that function contributes to that a domain name can be</p><p>considered as a distinctive sign and thereby obtain protection, in the same way as an</p><p>unregistered trade mark.</p><p>According to current accounting rules, businesses may, to some extent, avail themselves of</p><p>the value of a domain name. Domain names are under certain circumstances identified as</p><p>intangible assets and even as ‘similar rights’ to for example trade marks and patents in</p><p>accounting and taxation situations.</p><p>At this time it is not possible to legislate on the area of the legal status of a domain name</p><p>on a Community level, as this most likely would have to include a consideration of the</p><p>existence of property rights and consequently fall outside the legislative powers of the</p><p>Community.</p><p>Both the legal development and the legal discussions on the topic of the legal status of</p><p>domain names in Sweden have been relatively sparse. Nonetheless, there have been some</p><p>interesting opinions.</p><p>By investigating what positions the different authorities, academics and practitioners have</p><p>taken on the legal status of domain names it can be concluded that the prevailing opinion</p><p>in Sweden is that domain names are not considered as property. The reason for this seems</p><p>to be that domain names as such, are in fact no more than technical constructions and that</p><p>by registering a domain name the registrant only becomes the holder of a contractual right.</p><p>However, there are some diverging opinions which could suggest that the legal status of</p><p>domain names in Sweden is not yet settled. The aspects which are then taken into</p><p>consideration include that domain names have developed to become important and</p><p>valuable assets for an increasing number of businesses. A domain name is a precondition</p><p>for the creation of a website and therefore of crucial importance for, in particular, online</p><p>based businesses. However, they are of increasing importance for all businesses to reach</p><p>out to and compete over the same customers.</p><p>It is advocated that the fact that domain names are freely traded with indicates that domain</p><p>names are property. It has also been questioned whether an asset with a true economic</p><p>value, such as a domain name, can exist without being considered as an item of property.</p><p>The steps taken in other jurisdictions have shown that the legal status of domain names is</p><p>not even clear in some of the countries with the greatest experience of domain names.</p><p>Nonetheless, the legal status is given attention in those countries and the discussion has</p><p>been initiated. In general, it can be concluded that the development seems to go toward</p><p>higher awareness of the value of domain names.</p>

Le présent mémoire de maîtrise a pour objet l'analyse du droit international des marques de commerce et du droit de certains pays industrialisés en comparaison avec la législation canadienne sur les marques de commerce. Il traite également des modifications qu'il serait nécessaire d'apporter à la loi canadienne en vue de l'adoption du Protocole de Madrid, du Traité sur le droit des marques et de l'Arrangement de Nice, et de la mise en application de la Recommandation commune sur les marques notoires. Le Canada devrait aussi modifier certaines dispositions de la loi sur les marques de commerce pour la rendre plus conforme à l'Accord sur les ADPICs et à la Convention de Paris. Compte tenu des lacunes du droit international en ce qui a trait à l'utilisation de la marque, le mémoire analyse et critique cette notion en droit canadien et la compare aux tendances actuelles qui ont cours aux États-Unis et au Royaume-Uni. / The purpose of this thesis is to compare the Canadian legislation in trade-marks law with international trade-marks law and the law of sorne industrialized countries. It is also suggested that the implementation of the Madrid Protocol, of the Trademark Law Treaty, of the Nice Arrangement and of the Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks would necessitate some amendments to the Canadian Trade-Marks Act. Moreover, some sections of the Canadian Trade-Marks Act should be amended so as to comply with the TRIPs Agreement and with the Paris Convention. U.S. and UK. approaches regarding the use of a trade-mark are also analysed, since international law does not appear to have fully addressed this issue. / "Mémoire présenté à la faculté des études supérieures en vue de l'obtention du grade LL.M. en droit des technologies de l'information"

Traditional trade marks, such as words and figures, have for a long time constituted of visual signs. However, due to the evolution of modern technology and changing marketing methods, non-traditional trade marks have been increasing in todays highly competitive market.1 Consequently, the evolution created legal uncertainties in the European Union (EU) since in order to register a trade mark, it had to be represented graphically. This requirement was difficult to achieve for some non-traditional trade marks which were perceived through other sensed than the sight. On the 1 October 2017, requirement for graphical representation has been amended in the EU Trade Mark Regulation 2017/10012 by a technical neutral requirement which opens up possibilities for registration of European Union trade marks in a more suitable way, using generally available technology. The purpose of this thesis has been to analyse how the abolition of graphical representation and the new wider requirement will affect the registration of non-traditional trade marks in the EU. Signs which have been analysed in the frame of this thesis are: sound, olfactory, three-dimensional, colour, motion, multimedia, holograms, pattern, tactile and taste marks. Conclusively, I found that the technical neutral registration requirement has opened up possibilities for trade mark holders to register new types of marks like multimedia marks. Moreover, it has simplified the registration process for already accepted non-traditional trade marks such as hologram, motion and sound marks. However, the reform has hardly affected the registration process of colour, pattern and three-dimensional marks since their biggest challenge with the registration have been the requirement for distinctiveness. Furthermore, it is currently still not possible to register olfactory, tactile and taste marks. Though the new and flexible amendments indicate that those types of marks may be more easily registered in the future.

Little attention is paid to the civil remedies available when infringement of a trade mark or the right to goodwill occurs. Yet, for the owners of ~uch rights, these remedies are of much greater importance than theoretical considerations regarding the nature of the rights or what constitutes their infringement. This thesis analyses the civil remedies for trade mark infringement granted by the South African Trade Marks Act 194 of 1993. In the South African context, any consideration of civil remedies is rendered problematic by the attempted graft of English remedies onto a legal system with a different common-law background. It is, therefore, essential first to trace the English origin and application of these remedies, and then to determine whether each remedy is acceptable in terms of the South African common law. This is necessary, as our courts have previously rejected or adapted English remedies which were unknown to our common law but which Parliament introduced in legislation. The remedies of interdict (or injunction) in final and interlocutory form, compensatory damages, reasonable royalties, and delivery up are analysed from a substantive law and a procedural perspective. The procedural innovation of an inquiry as to damages is also considered. In respect of each remedy, (1) the English roots and development of the remedy are traced; (2) differences of approach in two other Commonwealth jurisdictions, Australia and Canada, are highlighted; (3) the development of the South African equivalent is detailed; and (4) suggestions for the future implementation of the remedy in South Africa are made. In the penultimate chapter, our common law and legislation (including the Constitution of the Republic of South Africa 108 of 1996 ) are measured against the requirements of the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS). Recommendations for the effective utilization of each remedy in South Africa are then made. They include suggestions for legislative amendment in respect of delivery up and an inquiry as to damages, and the introduction of statutory damages as an further civil remedy. / Mercentile Law / LL. D. (Laws)