Keyword: Trademark law

Developing Defences for Fashion Upcycling in EU Trademark Law

Senftleben, M.
GRUR International, 2023

Abstract

Trademarked fashion items pose a particular obstacle to reuse projects in the circular economy. By granting broad exclusive rights, EU trademark law exposes sustainable reuse practices, such as upcycling, to allegations of infringement ranging from (post-sale) confusion to blurring, tarnishment and unfair freeriding. Against that background, this analysis explores strategies to assure fashion re-users that, as long as they do not specifically aim to mislead consumers or damage and exploit protected brand insignia, they can rework trademarked fashion items without risking the verdict of infringement. Two options for enhancing legal certainty will be explored: the first consists in adopting a strict test for ‘use as a trademark’ that could immunise sustainable fashion reuse against allegations of trademark infringement on the ground that consumers understand the specific reuse context and perceive third-party trademarks on circular economy products as mere decorative elements. The second option involves strengthening defences, in particular the referential use defence, by developing labelling guidelines that allow fashion re-users to ensure compliance with the requirement of honest practices in industrial or commercial matters.

Fashion, Trademark law

Bibtex

Article{nokey, title = {Developing Defences for Fashion Upcycling in EU Trademark Law}, author = {Senftleben, M.}, doi = {https://doi.org/10.1093/grurint/ikad131}, year = {2023}, date = {2023-12-21}, journal = {GRUR International}, abstract = {Trademarked fashion items pose a particular obstacle to reuse projects in the circular economy. By granting broad exclusive rights, EU trademark law exposes sustainable reuse practices, such as upcycling, to allegations of infringement ranging from (post-sale) confusion to blurring, tarnishment and unfair freeriding. Against that background, this analysis explores strategies to assure fashion re-users that, as long as they do not specifically aim to mislead consumers or damage and exploit protected brand insignia, they can rework trademarked fashion items without risking the verdict of infringement. Two options for enhancing legal certainty will be explored: the first consists in adopting a strict test for ‘use as a trademark’ that could immunise sustainable fashion reuse against allegations of trademark infringement on the ground that consumers understand the specific reuse context and perceive third-party trademarks on circular economy products as mere decorative elements. The second option involves strengthening defences, in particular the referential use defence, by developing labelling guidelines that allow fashion re-users to ensure compliance with the requirement of honest practices in industrial or commercial matters.}, keywords = {Fashion, Trademark law}, }

Signs Eligible for Trademark Protection – Dysfunctional Incentives and a Functionality Dilemma in the EU external link

Senftleben, M.
1126, pp: 209-225

Abstract

In the European Union (EU), the criteria for determining a sign’s eligibility for trademark protection are harmonized to a large extent. On the one hand, the trademark legislation and office practices in EU Member States have to keep within the harmonized legal framework set forth in the EU Trade Mark Directive (TMD). On the other hand, the European Union Trade Mark Regulation (EUTMR) provides for a set of eligibility criteria that apply to European Union Trade Marks (EUTM) with equal effect throughout the EU territory. As the rules in the Regulation are in line with those in the Directive, the two legislative instruments constitute a robust body of harmonized norms informing the decision on the registration of a sign as a trademark. The harmonizing effect is enhanced by the fact that national courts have to refer questions relating to the application and interpretation of eligibility criteria to the Court of Justice of the European Union (CJEU). As in other regions of the world, the criteria applied to determine eligibility for trademark protection are quite flexible in the EU. The open-ended definition of protectable subject matter leaves room for the extension of trademark protection to non-traditional types of marks, such as shape, sound and colour marks. Trademark offices applying EU trademark law have also accepted, for instance, abstract colours and colour combinations, motion and multimedia marks, melodies and sounds, taste marks, hologram marks and position marks. The analysis of the trend to register non-traditional marks in the EU outlines the legal framework which the CJEU developed to assess the eligibility of non-traditional types of source identifiers for trademark protection. On this basis, it discusses the objective to safeguard freedom of competition and the legal instruments which the CJEU employs for this purpose: the requirement of providing evidence of the acquisition of distinctive character through use in trade and the categorical exclusion of functional signs from trademark protection. Drawing conclusions, it will become apparent that the basic requirement of distinctive character plays an ambiguous role in the regulation of access to trademark protection for non-traditional marks. It is both an obstacle to trademark protection and an incentive for enhanced investment in non-traditional types of marks.

depletion theory, distinctive character, eu-recht, freedom of competition, frontpage, functionality doctrine, harmonization in the EU, Merkenrecht, need to keep free, non-traditional types of marks, proof of acquired distinctive character, retroactive effect, secondary meaning, Trademark law, trademark law reform

Bibtex

Chapter{Senftleben2020f, title = {Signs Eligible for Trademark Protection – Dysfunctional Incentives and a Functionality Dilemma in the EU}, author = {Senftleben, M.}, url = {https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3717753 https://www.ivir.nl/publicaties/download/Signs_Eligible_for_Trademark_Protection.pdf https://doi.org/10.1017/9781108399456.014}, year = {1126}, date = {2020-11-26}, abstract = {In the European Union (EU), the criteria for determining a sign’s eligibility for trademark protection are harmonized to a large extent. On the one hand, the trademark legislation and office practices in EU Member States have to keep within the harmonized legal framework set forth in the EU Trade Mark Directive (TMD). On the other hand, the European Union Trade Mark Regulation (EUTMR) provides for a set of eligibility criteria that apply to European Union Trade Marks (EUTM) with equal effect throughout the EU territory. As the rules in the Regulation are in line with those in the Directive, the two legislative instruments constitute a robust body of harmonized norms informing the decision on the registration of a sign as a trademark. The harmonizing effect is enhanced by the fact that national courts have to refer questions relating to the application and interpretation of eligibility criteria to the Court of Justice of the European Union (CJEU). As in other regions of the world, the criteria applied to determine eligibility for trademark protection are quite flexible in the EU. The open-ended definition of protectable subject matter leaves room for the extension of trademark protection to non-traditional types of marks, such as shape, sound and colour marks. Trademark offices applying EU trademark law have also accepted, for instance, abstract colours and colour combinations, motion and multimedia marks, melodies and sounds, taste marks, hologram marks and position marks. The analysis of the trend to register non-traditional marks in the EU outlines the legal framework which the CJEU developed to assess the eligibility of non-traditional types of source identifiers for trademark protection. On this basis, it discusses the objective to safeguard freedom of competition and the legal instruments which the CJEU employs for this purpose: the requirement of providing evidence of the acquisition of distinctive character through use in trade and the categorical exclusion of functional signs from trademark protection. Drawing conclusions, it will become apparent that the basic requirement of distinctive character plays an ambiguous role in the regulation of access to trademark protection for non-traditional marks. It is both an obstacle to trademark protection and an incentive for enhanced investment in non-traditional types of marks.}, keywords = {depletion theory, distinctive character, eu-recht, freedom of competition, frontpage, functionality doctrine, harmonization in the EU, Merkenrecht, need to keep free, non-traditional types of marks, proof of acquired distinctive character, retroactive effect, secondary meaning, Trademark law, trademark law reform}, }

Preliminary ruling to the CJEU on geographical boundaries of UCD novelty assessment external link

Stapel, S.
Journal of Intellectual Property Law & Practice, vol. 15, num: 4, pp: 240-241, 2020

Abstract

Beverly Hills Teddy Bear Company v PMS International Group Plc [2019] EWHC 2419 (IPEC), High Court of England and Wales, 17 September 2019. The High Court of Justice of England and Wales has sought guidance from the Court of Justice of the European Union (CJEU) as regards whether the disclosure of a design outside the Community can still qualify for protection within the Community.

design, frontpage, Trademark law

Bibtex

Article{Stapel2020, title = {Preliminary ruling to the CJEU on geographical boundaries of UCD novelty assessment}, author = {Stapel, S.}, url = {https://doi-org.proxy.uba.uva.nl:2443/10.1093/jiplp/jpaa032}, doi = {https://doi.org/https://doi.org/10.1093/jiplp/jpaa032}, year = {0324}, date = {2020-03-24}, journal = {Journal of Intellectual Property Law & Practice}, volume = {15}, number = {4}, pages = {240-241}, abstract = {Beverly Hills Teddy Bear Company v PMS International Group Plc [2019] EWHC 2419 (IPEC), High Court of England and Wales, 17 September 2019. The High Court of Justice of England and Wales has sought guidance from the Court of Justice of the European Union (CJEU) as regards whether the disclosure of a design outside the Community can still qualify for protection within the Community.}, keywords = {design, frontpage, Trademark law}, }

Back to Black: justice.cn external link

Tsoutsanis, A.
Journal of Intellectual Property Law & Practice, num: 10, pp: 725., 2015

Abstract

This short - peer reviewed - article touches on innovation in China in the field of smart phones, recent legislative reform in China for fostering intellectual property and combating counterfeit and trade mark grabbing. It also touches on human rights in China, the different approach in which the West advances its economic v human rights agenda and the selective way Silicon Valley industry participates in grass roots debate on civil liberties. The article also touches on the 'right to seek counsel' as one of the fundamental rights, which many arrested lawyers in China were deprived of during the July 2015 arrests.

bad faith, China, counterfeit, Fundamental rights, Human rights, innovation, Intellectual property, national security law, Patent law, Trademark law

Bibtex

Article{nokey, title = {Back to Black: justice.cn}, author = {Tsoutsanis, A.}, url = {http://ssrn.com/abstract=2667516}, year = {1015}, date = {2015-10-15}, journal = {Journal of Intellectual Property Law & Practice}, number = {10}, abstract = {This short - peer reviewed - article touches on innovation in China in the field of smart phones, recent legislative reform in China for fostering intellectual property and combating counterfeit and trade mark grabbing. It also touches on human rights in China, the different approach in which the West advances its economic v human rights agenda and the selective way Silicon Valley industry participates in grass roots debate on civil liberties. The article also touches on the \'right to seek counsel\' as one of the fundamental rights, which many arrested lawyers in China were deprived of during the July 2015 arrests.}, keywords = {bad faith, China, counterfeit, Fundamental rights, Human rights, innovation, Intellectual property, national security law, Patent law, Trademark law}, }