Table of Contents

Too Common, Too Splendid, or ‘Just Right’? Trade Mark Protection for Product Shapes in the Light of CJEU Case Law

Annette Kur, Max Planck Institute for Innovation and Competition

Are You Still in? – The Impact of Licensing Requirements on the Composition of Standards Setting Organizations

Thimo Pascal Stoll, Max Planck Institute for Innovation and Competition

Declaration on Patent Protection - Regulatory Sovereignty under TRIPS

Matthias Lamping, Max Planck Institute for Innovation and Competition
Reto Hilty, Max Planck Institute for Innovation and Competition, University of Zurich, Ludwig-Maximilians-Universität München
Dan L. Burk, University of California, Irvine School of Law
Carlos M. Correa, Universidad de Buenos Aires - Faculty of Law and Social Sciences
Peter Drahos, Australian National University (ANU) - Research School of Social Sciences (RSSS), Queen Mary University of London, School of Law, Australian National University (ANU) - Regulatory Institutions Network (RegNet)
N.S. Gopalakrishnan, Cochin University of Science and Technology (CUSAT)
Henning Grosse Ruse-Khan, University of Cambridge - Faculty of Law, Max Planck Institute for Innovation and Competition
Annette Kur, Max Planck Institute for Innovation and Competition
Geertrui Van Overwalle, Leuven University
Jerome H. Reichman, Duke University - School of Law
Hanns Ullrich, Max Planck Institute for Innovation and Competition


MAX PLANCK INSTITUTE FOR INNOVATION & COMPETITION
RESEARCH PAPER SERIES

"Too Common, Too Splendid, or ‘Just Right’? Trade Mark Protection for Product Shapes in the Light of CJEU Case Law" Free Download
Max Planck Institute for Innovation & Competition Research Paper No. 14-17

ANNETTE KUR, Max Planck Institute for Innovation and Competition
Email:

Due to their capacity to confer ‘eternal’ protection on product shapes, three-dimensional trade marks seem to defy the basic tenets of intellectual property. Registration of such marks is therefore regularly subject to certain restrictions set forth in the law or developed by the courts. European trade mark law is no exception in that regard. While the CJEU insists that shape marks are to be assessed under the same principles as other forms of marks, obtaining protection in practice is quite difficult, which is only partially explained by the different perception of consumers. Furthermore, shapes are the only form of signs that is subject to an absolute and permanent exclusion from protection in order to safeguard competition interests. While the latter provision has been dormant in practice for most of the time, recent jurisprudence has given it more teeth; however, it has also rendered the contents of the provision and its relation to the other obstacles for protection more obscure, making it extremely difficult in practice to distinguish between the different categories. The article gives an overview on the legal situation and recommends a more transparent, balanced approach.

"Are You Still in? – The Impact of Licensing Requirements on the Composition of Standards Setting Organizations" Free Download
Max Planck Institute for Innovation & Competition Research Paper No. 14-18

THIMO PASCAL STOLL, Max Planck Institute for Innovation and Competition
Email:

Opportunistic behavior such as hold-up by owners of standard-essential patents increasingly affects standardization processes as well as the implementation of standards. The vague fair, reasonable and non-discriminatory (FRAND) licensing requirement applied in the majority of standards setting organizations (SSOs) only mitigates hold-up in the rare case of categorical refusal to license. In recent years, public authorities and some SSOs have therefore intensified their efforts to promote royalty-free (RF) standards. While this approach definitely contributes to a faster standards development process and eventually faster implementation, certain important contributors might decide to leave an SSO or not to join in the first place if they have to forego any licensing revenues from standard-essential patents.

To analyze the substitutability of the two licensing regimes, this paper assesses the impact of the IP policy change at the SSO OASIS in April 2005. Based on a unique dataset, a survival analysis finds that the change from a FRAND to a RF licensing regime is correlated with a significant decrease in the overall number of new SSO members. Second, among the new members the share of non-profit research organizations and systems integrators significantly increases in the aftermath of the change. Third, the change has a positive impact on the duration for which the producers of physical goods remain at OASIS.

The analysis suggests that SSOs and public authorities have to consider important trade-offs regarding static versus dynamic efficiency when considering to introduce or promote RF licensing requirements.

"Declaration on Patent Protection - Regulatory Sovereignty under TRIPS" Free Download
IIC - International Review of Intellectual Property & Competition Law, 2014, Vol. 45, Is. 6, pp 679-698
Intellectual Property Law and Policy Journal, 2014, Vol. 45, pp.1 - 32 (in Japanese)
Max Planck Institute for Innovation & Competition Research Paper No. 14-19

MATTHIAS LAMPING, Max Planck Institute for Innovation and Competition
Email:
RETO HILTY, Max Planck Institute for Innovation and Competition, University of Zurich, Ludwig-Maximilians-Universität München
Email:
DAN L. BURK, University of California, Irvine School of Law
Email:
CARLOS M. CORREA, Universidad de Buenos Aires - Faculty of Law and Social Sciences
Email:
PETER DRAHOS, Australian National University (ANU) - Research School of Social Sciences (RSSS), Queen Mary University of London, School of Law, Australian National University (ANU) - Regulatory Institutions Network (RegNet)
Email:
N.S. GOPALAKRISHNAN, Cochin University of Science and Technology (CUSAT)
Email:
HENNING GROSSE RUSE-KHAN, University of Cambridge - Faculty of Law, Max Planck Institute for Innovation and Competition
Email:
ANNETTE KUR, Max Planck Institute for Innovation and Competition
Email:
GEERTRUI VAN OVERWALLE, Leuven University
Email:
JEROME H. REICHMAN, Duke University - School of Law
Email:
HANNS ULLRICH, Max Planck Institute for Innovation and Competition
Email:

As a framework regulation for innovation markets, the patent system needs to be tailored to the innovation process, which it is supposed to serve, and to the competitive environment, within which it must operate. In order to ensure an efficient functionality of the patent system as an innovation policy tool, patent rights ought to be defined, justified and continually reconsidered by reference to their socio-economic benefits and costs.

Sovereign states should retain the discretion to adopt a patent system that best suits their technological capabilities as well as their social, cultural and economic needs and priorities, with the proviso that the exercise of such discretion must remain within the boundaries of international law. Taking into account the customary principles of interpretation of international law, this Declaration seeks to shed light on these boundaries. The purpose is to clarify the policy space that the ‘Agreement on Trade-Related Aspects of Intellectual Property Rights’ (TRIPS Agreement) leaves to national legislators and judicial authorities with regard to the implementation and administration of their patent systems.

When the world’s major patent systems first developed into their present form, nation states were able to engage in the regulatory design process under conditions of high sovereign autonomy. Over the past decades, this autonomy has been progressively eroded. Today, states face a legal and institutional regime consisting of multilateral, regional and bilateral agreements, which are becoming increasingly complex and set more and more limits to their regulatory freedom.

As a result, the ability of states to maintain a proper balance between the need for protection of knowledge goods in global markets, the freedom to regulate national or regional innovation markets, and the policy space for pursuing diverse public interest goals risks becoming unduly constrained. This Declaration seeks to clarify some of the regulatory options states still retain under international law, in particular the TRIPS Agreement.

^top

About this eJournal

The Max Planck Institute for Innovation and Competition Research Paper Series is a source for research papers authored by the Max Planck Institute for Innovation and Competition academic staff (Eds.: Prof. Josef Drexl, Exec. Dir., Prof. Dietmar Harhoff, Dir., Prof. Reto M. Hilty, Dir.). Papers cover topics on intellectual property law (copyright, patent, trademark law), competition law (law of unfair competition, antitrust law), innovation research and entrepreneurship. To access all the papers in this series please use the following URL: http://www.ssrn.com/link/Max-Planck-Intellectual-RES.html

Submissions

To submit your research to SSRN, sign in to the SSRN User HeadQuarters, click the My Papers link on left menu and then the Start New Submission button at top of page.

Distribution Services

If your organization is interested in increasing readership for its research by starting a Research Paper Series, or sponsoring a Subject Matter eJournal, please email: RPS@SSRN.com

Distributed by

Legal Scholarship Network (LSN), a division of Social Science Electronic Publishing (SSEP) and Social Science Research Network (SSRN)

Directors

LAW RESEARCH CENTERS PAPERS

BERNARD S. BLACK
Northwestern University - School of Law, Northwestern University - Kellogg School of Management, European Corporate Governance Institute (ECGI)
Email: bblack@northwestern.edu

RONALD J. GILSON
Stanford Law School, Columbia Law School, European Corporate Governance Institute (ECGI)
Email: rgilson@leland.stanford.edu

Please contact us at the above addresses with your comments, questions or suggestions for LSN-RES.