The Public Domain Is Under Pressure – Why We Should Not Rely on Empirical Data When Assessing Trademark Distinctiveness

Anemaet, Lotte

doi:10.1007/s40319-016-0459-8

Cited by 6 publications

(7 citation statements)

References 33 publications

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“…However, the wind started to blow in the opposite direction over two decades ago in the USA with Qualitex Co. v Jacobson Products Co. (1995) [4] and it seems that the world follows this new pattern. Currently, there is not any doubt that consumers are able to recognize without difficulty a colour as an identifier of a commercial source [1] [16]. In addition, courts are inclined to protect against copycat activities only highly distinctive features of brands [15] and so a colour as a mere part of a logo trademark is highly vulnerable.…”

Section: Statement Of a Problem And Aims Of Researchmentioning

confidence: 99%

“…The law on trademarks seeks to ensure market transparency [1], protects and facilitates all trademark functions and creates a valuable asset. As mentioned above, the law applicable regarding trademarks on the Czech market belongs basically to two systems, either to the EU law system with the EUIPO or to the Czech national system with the CZ IPO.…”

Section: The Current Eu Law and The Czech Law On Colour Trademarks -Amentioning

confidence: 99%

“…Hence, until 2015, the EU law was rather silent about colour trademarks, but still not excluding them, naturally providing the massive awareness of such a colour sign linking the undertaking and products was spread all over on the single internal market. At the same time, trademarks have been always important for the EU and they have received a lot of attention, especially due to their capacity to support the proper functioning of the single internal market [1].…”

Section: The Eu Law On Colour Trademarks -2015 Reform Provides For Comentioning

confidence: 99%

“…In other words, there is a legitimate fear that the public domain is under pressure, especially in the context of the EU law on trademarks, with respect to not strongly distinctive signs, including colours. Certain voices are even being raised against the possibility of acquiring distinctiveness through use in trade [1]. However, the available data, including the above tables, indicate that these fears are linked only to rare application excesses and not to the systematic setting.…”

Section: Single Colour Trademark Registration History -How Much Time mentioning

confidence: 99%

“…This perhaps creates an impression of inherent injustice for SMEs producing and commercializing particular goods or services known to a small segment of the population, because these SMEs can hardly pass the distinctiveness test for a single colour trademark. In addition, it is argued that colours are more important for superficial choices when consumers do not spend too much time checking products [1], i.e. SMEs with particular goods; and services generally target and get attention of more attentive consumers.…”

Section: Single Colour Trademark Registration History -How Much Time mentioning

confidence: 99%

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Single colour trademarks not only on the current czech market

Dmitrieva¹,

Pelikánová

2017

ACC

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Post-modern global society is marked by a highly intense competition in which proper referencing is critical. Indeed, a competitive advantage is useless without a legally protected method of linking the undertaking to its products. This method par excellence takes the form of a trademark, which is both a referencing tool and an extremely valuable intangible asset. Each jurisdiction provides for the registration of trademarks and over time the registries have become densely filled, i.e. it is extremely difficult to find a new, attractive and universal sign able to be registered in several jurisdictions and thus become a global trademark understood and recognized world-wide. To address this issue linked to conventional trademarks, both the EU law and the Czech law newly explicitly allow unconventional trademarks, such as colours. The goal of this paper is very innovative and pioneering, namely to research primary and secondary data about single colour Czech trademark registrations and related trends and to provide indices to confirm or to reject the hypothesis that single colour trademarks are perceived both by the fields of law and economics as more than a viable option for referencing and marketing, as well as being an asset.

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Section: Statement Of a Problem And Aims Of Researchmentioning

confidence: 99%

Section: The Current Eu Law and The Czech Law On Colour Trademarks -Amentioning

confidence: 99%

Section: The Eu Law On Colour Trademarks -2015 Reform Provides For Comentioning

confidence: 99%

Section: Single Colour Trademark Registration History -How Much Time mentioning

confidence: 99%

Section: Single Colour Trademark Registration History -How Much Time mentioning

confidence: 99%

See 3 more Smart Citations

Single colour trademarks not only on the current czech market

Dmitrieva¹,

Pelikánová

2017

ACC

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Vigeland and the Status of Cultural Concerns in Trade Mark Law – The EFTA Court Develops More Effective Tools for the Preservation of the Public Domain

Senftleben

2017

IIC

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The Vigeland decision of the EFTA Court is a milestone in the preservation of the public domain of cultural creations. It paves the way for an important and welcome recalibration of the copyright/trade mark interface. The Court departs from the traditional approach which relies on non-distinctiveness, descriptiveness or genericness to reject trade mark rights. Instead, the Court provides exemplary lines of argument for the application of considerations of public policy and principles of morality as grounds for refusal. As a refusal based on these grounds cannot be overcome through use in trade, this rejection of a registration request leads to an outright exclusion from trade mark protection and a robust preservation of a work's public domain status. National offices and courts should follow in the footsteps of the EFTA Court to avoid that trade mark law provides dysfunctional incentives for the re-privatization of cultural public domain material. In this way, they can also avoid that public money is wasted on the acquisition and maintenance of a costly trade mark portfolio relating to artworks.

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How Unitary is the EU Trade Mark? Territorial Aspects of Acquired Distinctiveness

Zelechowski

2020

IIC

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The geographical scope of the acquired distinctiveness of EU trade marks (EUTMs) is the subject of recurring dilemmas in case law and among scholars. The development of case law in this area is driven by the endeavour to reconcile the requirement that the acquired distinctiveness of such marks ought to be present throughout all Member States while simultaneously allowing certain evidentiary relaxation in that regard. Ultimately, however, the content of the requirements of establishing acquired distinctiveness in such instances remains, in the light of case law, uncertain. This paper argues that the principle of the unitary character of EUTMs should lead to adopting a more unitary approach towards the assessment of acquired distinctiveness, instead of the country-by-country approach dominant in case law. More specifically, whenever no territorially varying consumer perceptions are involved in establishing a lack of inherent distinctiveness of an EUTM, the territory of the EU should be treated, for the sake of establishing acquired distinctiveness, as a monolith undivided by borders between the Member States. This is normally the case with non-word marks, such as shapes or colour marks, which are perceived in a uniform manner throughout the EU as either possessing or lacking inherent distinctiveness. Concessions from this unitary approach are justified whenever territorially varying perceptions are involved. This normally concerns the descriptiveness or otherwise non-distinctiveness of word marks due to linguistic differences that are tailored across borders between Member States. The posited unitary approach concerning non-word marks should, however, be a measured one. Not only should acquired distinctiveness be present in the majority of the EU territory, but it should also be located at a proper geographical spread (without, however, following the country-by-country method). In the light of this approach, a non-word EUTM could still be registered (and remain incontestable) based on acquired distinctiveness when EU territories where acquired distinctiveness has not been established would constitute “blank” areas sporadically scattered across the Union without, however, constituting a concentrated larger part of the EU. Such “blank” areas could correspond to territories of a specific Member State or Member States. Negative effects of overprotection in such “blank” areas could be subsequently prevented with additional mitigating tools available at the stage of infringement and enforcement of EUTMs.

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The Public Domain Is Under Pressure – Why We Should Not Rely on Empirical Data When Assessing Trademark Distinctiveness

Cited by 6 publications

References 33 publications

Single colour trademarks not only on the current czech market

Single colour trademarks not only on the current czech market

Vigeland and the Status of Cultural Concerns in Trade Mark Law – The EFTA Court Develops More Effective Tools for the Preservation of the Public Domain

How Unitary is the EU Trade Mark? Territorial Aspects of Acquired Distinctiveness

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