Due Cause

(2017) 12 Journal of Intellectual Property Law and Practice

19 Pages Posted: 29 Sep 2017

See all articles by Ilanah Simon Fhima

Ilanah Simon Fhima

Institute of Brand and Innovation Law, Unversity College London

Date Written: September 27, 2017

Abstract

Due cause is the inbuilt exception to the Trade Mark Directive’s dilution and unfair advantage provision. Until recently, it was believed that it should be interpreted restrictively, following the pre-harmonization Benelux approach. However, this has been cast into doubt by two recent Court of Justice of the European Union (CJEU) cases.

This article examines the extent of ‘due cause’ in the light of Interflora, Leidseplein and how those cases have been received and interpreted by the UK courts. It is argued that, while ‘due cause’ is certainly understood as a wider concept than it has in the past, courts in the UK remain relatively cautious about its breadth. It is further argued that, in the light of the CJEU’s jurisprudence, ‘due cause’ has particular application in unfair advantage cases, but may be less relevant, or even unavailable, where there is blurring or tarnishment.

Nevertheless, there is still the potential for ‘due cause’ to further develop into a more flexible tool, particularly in relation to alleviating the strictness of the CJEU’s approach to unfair advantage.

Keywords: trademark, dilution, defense, defence, due cause, Europe

JEL Classification: k3, k30

Suggested Citation

Simon, Ilanah, Due Cause (September 27, 2017). (2017) 12 Journal of Intellectual Property Law and Practice. Available at SSRN: https://ssrn.com/abstract=3044062

Ilanah Simon (Contact Author)

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

Gower St
London WC1E OEG, WC1E 6BT
United Kingdom

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