Recommendation on Measures to Safeguard Freedom of Expression and Undistorted Competition in EU Trade Mark Law

Senftleben, Martin; Bently, Lionel; Dinwoodie, Graeme B.; Geiger, Christophe; Griffiths, Jonathan; Kur, Annette; Ohly, Ansgar; Peukert, Alexander; Ricolfi, Marco; Schovsbo, Jens; Weckstrom, Katja; Zelechowski, Lukasz

doi:10.2139/ssrn.2496351

Cited by 2 publications

(5 citation statements)

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“…8 Max Planck Institute (2011), p. 51;Phillips (2005), p. 392; Kur and Senftleben (2017), pp. 22-23;Senftleben et al (2015); Sakulin (2011); Ramsey and Schovsbo (2013), p. 671; Simon Fhima (2013), p. 293; Burrell and Gangjee (2010), p. 544;Nasser 2009, p. 188;McGeveran (2008); AG Poiares Maduro, Opinion of 22 September 2009, cases C-236/08-238/08 (Google France and Google/Louis Vuitton et al), para 102: ''whatever the protection afforded to innovation and investment, it is never absolute. It must always be balanced against other interests, in the same way as trade mark protection itself is balanced against them.…”

Section: Balancing Between Preserving the Public Domain And Protectinmentioning

confidence: 99%

The Many Faces of the Average Consumer: Is It Really So Difficult to Assess Whether Two Stripes Are Similar to Three?

Anemaet

2020

IIC

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This article shows the necessity of including policy concerns, in particular the need to keep signs available for competitors, when assessing a likelihood of confusion. In the Adidas/Marca case, the CJEU ruled that the need to keep signs freely available for other economic operators cannot be a relevant factor in the infringement analysis. This is particularly problematic in relation to appealing signs such as stripe motifs. These signs not only serve as a source identifier, but also appeal to consumers and therefore give trademark owners an advantage over competitors on the market. In order to offer sufficient room for the concerns of trademark owners and competitors (and ultimately also consumers), it is essential to apply normative corrections not only in favour of trademark owners but also in favour of competitors. The current analysis of confusion in EU trademark law already contains a normative correction in favour of trademark owners. From an empirical perspective, the more distinctive the trademark, the less likely consumers are to be confused when confronted with a similar sign. The CJEU, however, assumes that consumers are more likely to be confused when confronted with signs that are similar to a highly distinctive trademark. In a trademark system where this normative correction is possible in favour of trademark owners, similar steps should be taken to give sufficient weight to the interests of competitors. In this light, this article concludes that the Adidas/Marca decision should be overruled.

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Section: Balancing Between Preserving the Public Domain And Protectinmentioning

confidence: 99%

The Many Faces of the Average Consumer: Is It Really So Difficult to Assess Whether Two Stripes Are Similar to Three?

Anemaet

2020

IIC

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“…Notably, the Court considered use of a company name in relation to goods or services, even without a direct affixation, as long as the manner of the use allowed establishing a link between the trade name and the goods or services, as falling within the scope of actionable trade mark use. 23 The reformed legislation clearly mentions use of the sign as a trade or company name or part thereof as an instance of infringing use (Art. 10(3)(d) TMD 2015; Art.…”

Section: Applying the Criteria Of Use 'In The Course Of Trade' And Usmentioning

confidence: 99%

“…3 With regard to the EU law e.g. Geiger [10]; Bently [2]; Burrell, Gangjee [3]; Sakulin [19]; Ramsey, Schovsbo [17]; Fhima [9]; Senftleben [24]; Senftleben et al [23]; von Kapff [12]; Schovsbo [20]. 4 Study [27], pp.…”

Section: Introductionmentioning

confidence: 99%

“…55-59 paras. 1.40-1.51; Davis [7]; Senftleben et al [23]. 5 Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks [2008] OJ L 299/25; it replaced the earlier Directive 89/104.…”

Section: Introductionmentioning

confidence: 99%

“…Opinion of AG Poaires Maduro in Joined Cases C-236/08 to C-238/08 Google, EU:C:2009:569, para. 102; Senftleben et al[23].…”

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confidence: 99%

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Invoking freedom of expression and freedom of competition in trade mark infringement disputes: legal mechanisms for striking a balance

Zelechowski

2018

ERA Forum

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The article explores legal mechanisms for striking a balance of competing interests on the premise of freedom of expression and freedom of competition in the area of trade mark infringement. Special focus is given to the respective framework under the reformed EU trade mark law. The paper argues that the newly introduced references to fundamental rights and freedoms in the preambles of relevant acts should play a crucial role in interpreting and applying provisions of trade mark law at all stages of assessing an infringement action. As for specific issues, the paper, notably, discusses the potential for providing a balance of interests resting in the 'due cause' clause and the amended catalogue of limitations and exceptions, arguing in particular that the narrowing of the own name and address limitation to natural persons properly balances the interests at stake. Finally, the paper questions the inapplicability of national correction instruments to trade mark infringement matters, implied in the case law of the Court of Justice. Keywords Trade marks • Freedom of expression • Undistorted competition • Limitations and exceptions • Due cause The author would like to thank Dr Jennifer Davis for her valuable comments on an earlier draft of this paper. All mistakes and omissions are the author's own. This publication was prepared in the course of a research project funded by the National Science Centre, Poland (project no 2014/13/D/HS5/01450).

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Recommendation on Measures to Safeguard Freedom of Expression and Undistorted Competition in EU Trade Mark Law

Cited by 2 publications

References 3 publications

The Many Faces of the Average Consumer: Is It Really So Difficult to Assess Whether Two Stripes Are Similar to Three?

The Many Faces of the Average Consumer: Is It Really So Difficult to Assess Whether Two Stripes Are Similar to Three?

Invoking freedom of expression and freedom of competition in trade mark infringement disputes: legal mechanisms for striking a balance

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