Fettering: The UK Trade Mark Registry's Fugitive Doctrine

[2011] European Intellectual Property Review 668

3 Pages Posted: 18 Jul 2012

See all articles by Ilanah Simon Fhima

Ilanah Simon Fhima

Institute of Brand and Innovation Law, Unversity College London

Date Written: July 18, 2012

Abstract

Fettering, or inhibition, involves blocking the senior user’s ability to expand into new product classes. It is commonly believed that the Registry treats fettering as a relative ground for refusal under s.5(3) of the Trade Marks Act 1994. This comment examines the decisions on fettering, concluding that although many senior user have relied on the action, it has never been accepted by the Registry. However, there is some surprising evidence of its adoption by the Court of Appeal. The propriety of dealing with fettering as a form of dilution is also questioned since it does not fall within the categories of dilution recognised by the CJEU.

Keywords: trade mark, trademark, law, UK, fettering, dilution, Europe, registration

JEL Classification: K00, O34

Suggested Citation

Simon, Ilanah, Fettering: The UK Trade Mark Registry's Fugitive Doctrine (July 18, 2012). [2011] European Intellectual Property Review 668. Available at SSRN: https://ssrn.com/abstract=2111996

Ilanah Simon (Contact Author)

Institute of Brand and Innovation Law, Unversity College London ( email )

Gower St
London WC1E OEG, WC1E 6BT
United Kingdom

Here is the Coronavirus
related research on SSRN

Paper statistics

Downloads
54
Abstract Views
412
rank
404,352
PlumX Metrics