How Does 'Essential Function' Doctrine Drive European Trade Mark Law?
Ilanah Simon Fhima
Institute of Brand and Innovation Law, Unversity College London
April, 28 2010
International Review of Intellectual Property and Competition Law, Vol. 36, No. 4, p. 401, 2005
This paper begins with a statement. It was not crafted by the author (though she wishes it had been). Instead, it is a formula that is often recited in one form of another by the European Court of Justice (ECJ):
The essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality…For that guarantee of origin, which constitutes the essential function of a trade mark, to be ensured, the proprietor must be protected against competitors wishing to take unfair advantage of the status and reputation of the trade mark by selling products illegally bearing it
This definition can be broken down into a number of elements:
1. A trade mark must identify the origin of the goods or services to which it is affixed.
2. By doing so it must enable consumers or end users to distinguish the goods or services on which it is used from those of other undertakings.
3. It must do this without any possibility of confusion.
4. For the guarantee of origin mentioned in point 1 to work, the trade mark owner must be protected against competitors wishing to take unfair advantage of the status and reputation of the trade mark by selling products illegally bearing it.
This paper examines the role of the “essential function” in European trade mark law, considering where it originated, how it is currently utilised and its future prospects.
It concludes that the essential function has fundamentally influenced the development of the central tenets of trade mark law in Europe. In this way, it acts as a “grand unifying theory “ bringing together all of the aspects of trade mark law, by reference to the need for a trade mark to distinguish the goods of one undertaking from those of other undertakings. This makes perfect sense because what is required of a trade mark and how it can be used by its proprietor is regulated by reference to what the mark should be doing. This in turn ensures that trade marks continue to do what, as a matter of principle, they should be doing. Moreover, this focus on the essential function can be used as a predictive tool in relation to future directions likely to be taken by the ECJ.
Keywords: trademark, European Union, essential function, confusion, registration, Arsenl v Reed, infringement, ECJ, intellectual property
JEL Classification: O34, K00Accepted Paper Series
Date posted: May 2, 2010
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