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Trade Marks and Brands

Rationales and jurisdiction


Aims and objectives
The aim of this seminar is to assess the functions of trade marks
and to assess the broader rationales for trade mark protection.
By the end of the preparation for, and participation in the seminar
for this topic, you should be able to:
• Identify the main justifications for trade mark protection;
• Discuss the economic, social, and cultural foundations of trade
mark protection;
• Identify critical accounts of trade mark protection;
• Discuss the UK route to trade mark registration and outline EU
and international routes to trade mark registration.
Overview
• Nature of a trade mark
• Rationales
• Trade mark functions
• Analysing the functions and rationales
• Routes to registration
– National
– EU
– International
+ Brexit?
Nature of a trade mark
s. 22 Trade Marks Act 1994
“A registered trade mark is personal property (in Scotland,
incorporeal moveable property).”

Art. 26 Directive (EU) 2015/2436 (Trade Marks Directive)


Functions
Classic exposition: Schechter

“The preservation of the uniqueness of a trademark should


constitute the only rational basis for protection.”
Schechter, Frank I. “The rational basis for trademark protection” (1927) Harvard Law Review 40(6): 813-
833 (p. 831)
Functions
FUNCTIONS
1. TM as badge of origin
2. TM as indicator of quality Communication
3. TM for advertising
4. TM as investment
Rationales – Arsenal v Reed
Re sale of scarves and the like by R; A sues
• High Court – R not using sign as badge of allegiance not
of origin
• Preliminary reference to ECJ – whether TM infringed
when not impeding origin function
• ECJ – rejected badge of support argument; still affects
origin function
• Court of Appeal – applied ECJ judgment; held there was
infringement because R created impression of link
between A and the goods being sold
Rationales – Arsenal v Reed
Arsenal v Reed [2003] ETMR 19
“[T]he essential function of a trade mark is to guarantee the
identity of origin of the marked goods or services to the
consumer or end user by enabling him [or her], without any
possibility of confusion, to distinguish the goods and
services from others which have another origin.” (at [47])
Rationales – Arsenal v Reed
Arsenal v Reed [2003] ETMR 19

“[T]he essential function of a trade mark is to guarantee the


identity of origin of the marked goods or services to the
consumer or end user by enabling him [or her], without any
possibility of confusion, to distinguish the goods and
services from others which have another origin.” (at [48])
“[T]he use of the sign is such as to create the impression
that there is a material link in the course of trade between
the goods concerned and the trade mark proprietor.” (at
[56])
Rationales – Arsenal v Reed
Arsenal v Reed [2003] ETMR 19
“[“Once it has been found that, in the present case, the use
of the sign in question by the third party is liable to affect the
guarantee of origin of the goods and that the trade mark
proprietor must be able to prevent this, it is immaterial that in
the context of that use the sign is perceived as a badge of
support for or loyalty or affiliation to the proprietor of the
mark.” (at [61])
Rationales – Arsenal v Reed
Arsenal v Reed [2003] ETMR 73

Court of Appeal judgment

Badge of origin or badge of support?


Rationales – L’Oreal v Bellure
L’Oreal v Bellure C-487/07 [2009] ETMR 55; EU:C:2009:378

Link to seminar 1 definition of a brand:


“[A brand is] a collection of intangible values as perceived by
a consumer which are attributed to a name, symbol or
design used to identify a product or group of products or
services.” (at [79])
Rationales – L’Oreal v Bellure
L’Oreal v Bellure C-487/07 [2009] ETMR 55; EU:C:2009:378

Re comparative advertising of fragrances


• ECJ addressed extended TM functions

“These functions include not only the essential function of


the trade mark, which is to guarantee to consumers the
origin of the goods or services, but also its other functions, in
particular that of guaranteeing the quality of the goods or
services in question and those of communication,
investment or advertising.” (at [58])
Rationales – L’Oreal v Bellure
L’Oreal v Bellure C-487/07 [2009] ETMR 55; EU:C:2009:378
Rationales – L’Oreal v Bellure
Jacob LJ in L’Oreal v Bellure [2012] ETMR 47
“I am bound to say that I have real difficulty with these
functions when divorced from the origin function. There is
nothing in the legislation about them. Conceptually they are
vague and ill-defined. Take for instance the advertising and
investment functions. Trade mark owners of famous marks
will have spent a lot of money creating them and need to
continue to spend to maintain them. But all advertisements
for rival products will impinge on the owner’s efforts and
affect the advertising and investment function of the brand in
question.” (at [30])
Analysing the functions and rationales

Trade mark functions and the public interest:


1. Origin – enabling greater transparency for consumers
2. Quality as a guarantee – supporting consumer choice
3. Advertising – reducing consumer welfare?
4. Investment – increasing consumer welfare?
Analysing the functions and rationales
A possible summary of justifications:
• Creativity and innovation
• Information and the reduction of search costs
• Protecting TMs is fair
• Market efficiency – preventing misrepresentation of origin
Analysing the functions and rationales
Culture, TM and TM circulation:

“Intellectual property laws are those that enable the


commodification of symbols, imagery, and texts – they
create limited monopolies over representational forms. […]
Those who lay claim to intellectual property protections may
control both the sign’s circulation and its connotations.”
Coombe, Rosemary. “Tactics of appropriation and the politics of recognition in late modern
democracies” (1993) Political Theory 21(3): 411-433 (p. 414-5)
Analysing the functions and rationales
A Canadian example:

“The Olympic symbol and the RCMP image are visible,


reified signifiers of legitimacy whose connotations are legally
contained by powerful structures of prohibition. It is precisely
their status as official signifiers of power that make them
attractive to those who seek political recognition and
important to those who seek to maintain current
hegemonies.”

Coombe, Rosemary. “Tactics of appropriation and the politics of recognition in late modern
democracies” (1993) Political Theory 21(3): 411-433 (p. 420. emphasis in original)
Analysing the functions and rationales
Critical accounts of TM:

“A feminist critique recognizes that rights governing cultural


production did not arise in a social or cultural vacuum, but in
a crucible of gender and racial subordination, the embers of
which still burn today.”
Greene, K. J. “Intellectual Property at the Intersection of Race and Gender: Lady Sings the Blues”
(2008) Journal of Gender, Social Policy and the Law 16(3): 365-385 (p 378-379).
Routes to registration
NB trade marks may be registered or unregistered

Trade Marks Directive (EU) Paris Convention for the


protection of industrial property
(international)

Trade Marks Act 1994 (UK) – UK TM [IPO]

But note also EUTMR 2017/1001 – EUTM [EUIPO]


Routes to registration
Nice Classification (prescribed, s. 34 TMA)
Extract:
Brexit
• Current position:
– High level harmonisation with EU law
– TMA harmonised with EUTMR in January 2019

• European Union (Withdrawal) Act 2018

• Position after 31 October 2019…?


– Future: convergence or divergence?

Recent overview: Brown et al.


pp.539-540