(Re)Claiming Trade Mark Protection

Abstract

This chapter, published in a collection on the theme of trade mark law reform, deals with the problem of “overclaiming”. This is an area that, in our view, has yet to attract sufficient attention: although some of the individual problems we discuss in this chapter have been recognized by other commentators, little attention has been given to the way in which these problems converge and ought to be understood as part of a broader and much more concerning phenomenon. In Section II we explore the opportunities trade mark owners have during the registration process to carve out an unduly broad sphere of protection. We consider the ways in which the law facilitates and tolerates the use of overly broad specifications of goods and services, as well as the ways in which the law allows for representations of marks that produce genuine uncertainty as to the scope of the resulting monopoly. We then turn in Section III to the enforcement of registered trade marks, and demonstrate that owners may be able to frame their registrations in ways that are not obvious and that serve to extend the scope of their rights still further. We conclude in Section IV by offering some suggestions as to what might be done about the problems identified.

Keywords: trade mark, trademark, overclaiming