Paying the Price for Admission: Non-Traditional Marks Across Registration and Enforcement
Forthcoming in Irene Calboli and Martin Senftleben (eds), THE PROTECTION OF NON-TRADITIONAL MARKS: CRITICAL PERSPECTIVES (2018)
28 Pages Posted: 5 Feb 2018 Last revised: 15 Feb 2018
Date Written: January 27, 2018
This chapter makes the case for joined-up thinking when approaching non-traditional signs in trademark law. Over the past three decades, trade mark registration has moved from up-front exclusions for certain categories of signs (no shapes, no colours) towards cautious and incremental acceptance. However the policy concerns generated by the grant of legal monopolies in such signs remain equally relevant today. The grant of an abstract colour mark to one trader closes off a part of the colour spectrum to others. Can we therefore allow such signs in to the system while successfully managing the tensions generated by their admission?
Responding to this challenge, this chapter explores two potential responses. First, when permitting such marks to be registered, should we correlate the mark as characterised at the time of registration—agreeably modest in its scope and ambitions—with the mark as deployed in an enforcement context, where it otherwise tends to be read more generously? Second, when it comes to regulating non-traditional marks, should we move beyond historic upstream solutions—in the form of exclusions from registrability—and proactively consider additional scope limitation mechanisms when applying infringement tests and defences?
Drawing on a range of EU and US decisions across various categories of non-traditional marks, the chapter argues that both questions should be answered affirmatively. Section II reviews the manner in which non-traditional marks came to be accommodated within trademark registration systems. Section III focuses closely on the characterisation of the mark at the time of registration. Trademark registration calls for a non-traditional mark to be depicted or represented (always), described (often) and classified according to type (where possible). This characterisation has profound consequences, as the ongoing Louboutin (C-163/16) red-soled shoes litigation before the Court of Justice demonstrates. Once characterised, the mark is then channelled into the relevant stream of substantive examination analysis. Since characterisation matters, applicants have learned to adapt, in order to overcome obstacles to registration. However where characterisation techniques have been used to subvert substantive criteria, registries and courts have responded by overriding the applicant’s own preferred characterisation with an objective assessment of the mark’s content. Section IV outlines the importance of consciously connecting the scope of the mark as characterised for the purposes of registration with its scope for the purposes of infringement. Section V concludes.
Keywords: intellectual property, scope, non-traditional trademarks, colour, shape
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