Territorial Overlaps in Trademark Law: The Evolving European Model
76 Pages Posted: 13 Mar 2017 Last revised: 5 Jul 2017
Date Written: May 2, 2017
This is a contribution to a symposium on overlapping intellectual property rights. Trademark law has to address “overlapping” rights in a number of contexts. This Article tackles the territorial overlap of competing trademark rights. One cause of the increasing conflict between overlapping trademark rights is the trend in international trademark law to develop (mostly, but not entirely, administrative) mechanisms designed to extend rights more easily and more quickly beyond the borders of a single nation state. These efforts reflect pressures caused by global trade and digital commerce. But these mechanisms, purportedly prompted by and designed to further international trade, can cause problems that both hinder trade and arguably undermine competing social and economic norms (especially as the normative effects of unthinking internationalisation are increasingly questioned). The difficulties caused are particularly acute when rights have been granted in systems that do not require use in order to secure a trademark registration, and where registrations are of ever greater reach. This is true of the European Union Trade Mark system, which is one such mechanism designed to extend the geographic scope of rights beyond the nation-state. Under that arrangement, a single application can secure a right valid throughout the entire territory of the European Union and that can be enforced in one proceeding via the grant of an EU-wide injunction even without the plaintiff having used its mark. The application can be filed without even an intent to use the mark in question and the territorial scope of the resulting European Union Trade Mark (or EUTM, formerly called a Community Trade Mark or CTM) is defined by the external political boundaries of the EU, which now encompasses twenty-eight member states. Despite this, courts in the European Union have in a number of recent cases resisted some of the innovations of the EU system and have affirmed the enduring pull of a different conception of territoriality. This Article defends many of these acts of resistance, and supports further modifications of the EU model, in part because of the increased problem of overlapping rights. That increased overlap requires a critical reading of these innovative mechanisms and attention to a broader range of values in implementing the model. These propositions are supported both by a more theoretically complex conception of trademark territoriality and a richer normative account of the European project. The Article endorses the role of national (or at least sub-Union) rights not simply as a necessary irritant flowing from the nature of trademarks. Rather, they should perhaps be embraced normatively as part of a trademark agenda that blends regard for economic expansion, free movement of goods, consumer protection, and economic efficiency (encompassing transaction costs) as well as the maintenance of diverse social, cultural, and linguistic traditions within Europe.
Keywords: Territoriality, EUTMs, CTMs, transnational rights, genuine use, scope of relief, EU-wide rights, clutter, trademark registration, DHL, EU-wide relief
JEL Classification: K10, K11, K20
Suggested Citation: Suggested Citation