Transcript WIPO: South-South Cooperation Cairo, May 7, 2013 Trademarks and the Public Domain Prof. Dr.

WIPO: South-South Cooperation
Cairo, May 7, 2013
Trademarks and the
Public Domain
Prof. Dr. Martin Senftleben
VU University Amsterdam
Bird & Bird, The Hague
WIPO Development Agenda
• ‘Consider the preservation of the public domain
within WIPO’s normative processes and deepen
the analysis of the implications and benefits of a
rich and accessible public domain.’
(Adopted Recommendation 16)
• ‘To promote norm-setting activities related to IP
that support a robust public domain in WIPO’s
Member States...’
(Adopted Recommendation 20)
Stakeholders
• social, political, cultural speech
• commercial speech
TM owner
competitor
consumers
Study on Misappropriation of Signs
Notion of ‘Public Domain’
Notion of the public domain
not only signs
unencumbered by
trademark rights
but also free use of
protected signs
(including exceptions)
Public domain in trademark law
• exclusion of signs from protection
– general bar to registration and protection as
trademarks
– exclusion on the basis of the basic protection
requirement of ‘distinctiveness’
• exemption of specific forms of use
– limited scope of trademark rights
– adoption of exceptions to keep certain forms
of use free
General bar to registration
and protection
Which signs may be denied registration?
(Art. 6quinquies(B) PC)
• deceptive signs
– also with regard to signs of indigineous
peoples
• signs contrary to morality or public order
– also a means of keeping signs of cultural or
religious significance free?
Which signs may not be registered or used
as trademarks? (Art. 6ter(1) and (2) PC)
• extensions at the national level
Technical and esthetic functionality
CJEU, 14 September 2010, case C-48/09 P,
Lego/OHIM (Mega Brands)
‘In the present case, it has not been disputed that
the shape of the Lego brick has become distinctive
in consequence of the use which has been made
of it and is therefore a sign capable of
distinguishing the appellant’s goods from others
which have another origin.’ (para. 40)
• nonetheless qualified as functional
• risk of consumer confusion accepted
Exclusion on the basis of
a lack of distinctiveness
New kinds of marks
CJEU, 6 May 2003, case C-104/01, Libertel
‘Consumers are not in the habit of making
assumptions about the origin of goods based on
their colour or the colour of their packaging, in
the absence of any graphic or word element,
because as a rule a colour per se is not, in
current commercial practice, used as a means of
identification. A colour per se is not normally
inherently capable of distinguishing the goods of
a particular undertaking.’ (para. 65)
Signs of cultural significance
CJEU, C-283/01, Shield Mark/Kist
‘I find it more difficult to accept […] that a creation of
the mind, which forms part of the universal cultural
heritage, should be appropriated indefinitely by a
person to be used on the market in order to distinguish
the goods he produces or the services he provides with
an exclusivity which not even its author's estate enjoys.’
(Opinion A-G Colomer, 3 April 2003, para. 52)
Too much reliance on
distinctive character?
• investment in abstract colour marks
desirable?
• investment in cultural heritage marks
desirable?
• important policy decisions left to market
participants?
Limited scope of
trademark rights
Limited scope of trademark protection
• principle of specialty (protection relating to
specific goods/services)
• notion of trademark use
– mere references to the trademark sufficient?
– cultural, political, religious, educational context
• but enhanced protection of well-known
marks
– may cover all kinds of goods and services
– proof of confusion not necessarily required
Exceptions covering
specific forms of use
International basis: Art. 17 TRIPS
Criteria to be fulfilled by limitations:
• limited exception
• example: fair use of descriptive terms
• take account of legitimate interests of
the trademark owner (and interests of
third parties)
Exceptions found at the national level
• personal name, address, geographic
name or place of business
• indications concerning the kind, quality,
quantity, intended purpose, value,
geographical origin, the time of
production and other characteristics of
goods or services
• functional features of a container, shape,
configuration, colour or pattern
Exceptions found at the national level
• indications concerning the intended
purpose of a product or service,
particularly in the case of accessories or
spare parts
• prior rights that have been acquired in
good faith
• use in comparative advertising
• use for the resale of goods
Conclusion
Main policy issues
• substantial differences in the use of
available instruments
– use of all available instruments in many
developed countries
– reliance on inherent limits of protection in
many developing countries
• guidelines for identifying the most
appropriate preservation tools?
Exclusions from protection
need to keep
free
risk of consumer
confusion
Exemption of specific forms of use
inherent limits of
trademark
protection
adoption of an
exception to enhance
legal certainty
The end. Thank you!
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