Strategic Branding: Does Trade Mark Law Provide for Sufficient Self-Help and Self-Healing Forces?

Abstract

As a matter of principle, the tensions between trade marks and free competition are less obvious than in other fields of IP law. By providing information on the availability and sources of goods and services without restricting production as such, trade marks rather serve to enable than to restrain competition. However, problems may arise where, contrary to a general assumption, specific types of signs are not in infinite supply, or where the acquisition of a trade mark right otherwise confers on the holder more or other competitive advantages than those deriving from the goodwill acquired under the sign. The article examines certain constellations in which such advantages may typically accrue - inter alia marks designating major sports events, marks consisting the shape of products, abstract colour marks - and poses the question whether European trade mark law is capable and ready to deal with the problems raised thereby. It is argued that in order to activate the self-healing forces of trade mark law against undue restraints of competition, the purely empirical approach frequently adopted by the courts in the appraisal of the distinctive character of trade marks must be complemented by a normative assessment taking also account of competition aspects.

Keywords: Trade marks, free competition, event marks, ambush marketing, functional marks, three-dimensional marks, colour marks