scholarly journals Why is the Functionality Doctrine in Trade Mark Law worth Advanced (Re)Consideration?

2019 ◽  
pp. 43-54
Author(s):  
Lavinia Brancusi
Keyword(s):  
Law And Economics ◽  
Trade Mark ◽  
Market Definition ◽  
Trademark Law ◽  
The Us ◽  
Trade Dress ◽  
Competition Rules ◽  
Trade Mark Law ◽  
Comparative Results ◽  
Functionality Doctrine

This article considers the necessity of preparing a comprehensive study, over absolute refusal grounds pertaining to functional signs set in the EU trademark law, which would meet the business community’s need to register non-traditional trade marks. The study aims to define the exact scope of the aforementioned exclusions through objective criteria that can render them a workable tool, distinct from refusal grounds pertaining to distinctiveness, and able to solve problems of overlapping rights. As its specific research methodology, the study adopts comparative results coming from the US trade dress functionality doctrine, and a specific input offered from a ‘law and economics’ perspective, including competition rules related to market definition and substitutability of products.

scholarly journals Assessing the Impact of Registering Non-Traditional Marks

2018 ◽  
pp. 235-256
Author(s):  
Lavinia Brancusi
Keyword(s):  
Law And Economics ◽  
Focal Point ◽  
Market Competition ◽  
Competition Law ◽  
Market Definition ◽  
Negative Effects ◽  
Trademark Law ◽  
Competition Rules ◽  
Product Substitutability ◽  
The Impact

This chapter discusses possible negative effects on market competition resulting from registration and exercise of NTTMs. A first insight into EU judicial precedents dealing with trademarks reveals the risk of different practices violating competition rules. A following inquiry from a “law and economics” approach emphasizes certain competition concerns characteristic of NTTMs. The focal point concerns the issue of product substitutability, with a consideration as to whether competition law perspective may be of some use for trademark law, especially for functionality cases featuring NTTMs. After articulating the need of applying a functionality test based on product delineation and an assessment of substitutable alternatives, separate remarks discuss market definition in competition law underlining cases of narrowly defined markets because of branding strategies. The study advocates the use of methods and proofs modeled on those applied in competition law for examining the registrability and resolution of conflicts related to NTTMs.

scholarly journals ZNAČAJAN UTJECAJ OBLIKA PROIZVODA NA VRIJEDNOST PROIZVODA KAO APSOLUTNA PREPREKA ZA REGISTRACIJU ŽIGA

2020 ◽  
Vol 36 (3-4) ◽  
pp. 167-200
Author(s):  
Tea Hasić
Keyword(s):  
Case Law ◽  
Trade Mark ◽  
The European Union ◽  
Trademark Law ◽  
Law System ◽  
The Us ◽  
Negative Side Effects ◽  
The One ◽  
Functionality Doctrine ◽  
The Eu

The paper provides a comprehensive analysis of “substantial value rule” as an absolute ground for trademark refusal. Originating from the US “aesthetic functionality doctrine”, the rule took a specific form in the EU. There it was incorporated in Directive (EU) 2015/2436 to approximate the laws of the Member States relating to trade marks – Article 4 (1) (e) (iii), as well as in Regulation (EU) 2017/1001 on the European Union trade mark - Article 7 (1) (e) (iii). Pursuant to “substantial value rule”, signs consisting exclusively of the shape that gives substantial value to the goods are not to be registered as trademarks or, if registered, are liable to be declared invalid. The objective of the paper is therefore threefold: a) to define the rationale of “substantial value rule”; b) to analyze relevant case law; c) to conclude whether a respective rule shall be abolished (providing its purpose may be achieved by other legal instruments without negative side-effects) or kept in the EU trademark law system. Bearing in mind the rationale of “substantial value rule” (on the one hand) and numerous problems that arise whenever “substantial value rule” is applied in practice (on the other hand) the paper provides guidelines for its appropriate interpretation.

scholarly journals Paying the Price for Admission

2018 ◽  
pp. 59-88
Author(s):  
Dev S. Gangjee
Keyword(s):  
Trade Mark ◽  
Patent Law ◽  
Trademark Law ◽  
Relevant Today ◽  
Trade Mark Law ◽  
Color Spectrum ◽  
Prosecution History Estoppel ◽  
Trade Mark Registration

This chapter makes the case for joined-up thinking when approaching non-traditional signs in trade mark law. Trade mark registration has moved from up-front exclusions for certain categories of signs (no shapes, no colours) toward 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 color mark to one trader closes off a part of the color spectrum to others. Can we therefore allow such signs in to the system while successfully managing the tensions this generates? The approach advocated here is that we should correlate the mark as characterized 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. The doctrine of prosecution history estoppel in patent law may have valuable lessons for trademark law.

scholarly journals The conflict between market competition and worker solidarity: moving from consumer to a citizen welfare standard in competition law

Legal Studies ◽  
2020 ◽  
pp. 1-18
Author(s):  
Firat Cengiz
Keyword(s):  
Law And Economics ◽  
Market Competition ◽  
Competition Law ◽  
Consumer Welfare ◽  
Public Attention ◽  
Gig Economy ◽  
The Us ◽  
Competition Rules ◽  
Competitive Behaviour ◽  
The Eu

Abstract This paper critically investigates the law and economics of competition law enforcement in conflicts between workers and employers in the EU and the US. The conflict between worker solidarity and market competition attracts significant public attention due to the legal conundrum facing precariously employed gig workers. This paper reveals that in light of the strict consumer welfare standard underlying competition rules, competition law has become an overall disciplining mechanism impeding collective worker action beyond the limited case of the gig economy. Using a holistic theoretical framework comprising of neoclassical and Marxist exploitation theories, the paper shows that sound economic analysis justifies resolving the competition–solidarity conflict in favour of solidarity. After showing that the consumer welfare standard overlooks the idiosyncratic qualities of labour as a ‘fictitious’ commodity, the paper offers an original and inclusive ‘citizen welfare’ standard that takes into consideration how anti-competitive behaviour affects workers as well as consumers. As a result, the paper also contributes to the post-2008 debate on whether and how competition law could contribute to equality by shedding light on competition law's treatment of workers and their welfare.

Four Dimensions of Diamond T: Combination Trade Marks of Colours And Shapes

2006 ◽  
Vol 37 (4) ◽  
pp. 583
Author(s):  
Michael McGowan
Keyword(s):  
Three Dimensional ◽  
Trade Mark ◽  
Fourth Dimension ◽  
Trade Marks ◽  
Four Dimensions ◽  
Trade Mark Law ◽  
Dimensional Shape ◽  
Three Dimensional Shape

This article examines the relatively new fields of colour and shape trade marks. It was initially feared by some academics that the new marks would encroach on the realms of patent and copyright.  However, the traditional requirements of trade mark law, such as functionality and descriptiveness, have meant that trade marks in colour and shape are extremely hard to acquire if they do not have factual distinctiveness. As colour and shape trade marks have no special restrictions, it is proposed that the combination trade mark theory and analysis from the Diamond T case should be used as a way to make them more accessible. The combination analysis can be easily applied because every product has a three dimensional shape and a fourth dimension of colour.

Sign in / Sign up

Export Citation Format

Share Document