A European Constitution for IPRs? Competition, Trade Marks and Culturally
Significant Signs
Dr. Jennifer Davis
Wolfson College, Cambridge
jsd27@cam.ac.uk
“There are some apprehensions which were expressed like curry is being made a
trade mark in Japan. What has curry got to do with Japan?”
“In America, there is basmati and all these things are there. These apprehensions
are there in the minds of the Indians. You will have to do something to stop this.
The biggest market today is the perfume industry. It is even bigger than
marketing liquor or beer. It is the biggest market. Do you know what they are
doing? They have already got the Jaipur perfumes. Now what is Jaipur? It is a
famous city in India. It has a history behind it. It has got hundreds of years of
history and that also of the Maharajas and the system. They were with Akbar
and they also fought against the Marathas and what not. The whole history is
being taken away by a perfume company. Can we stop it? We cannot stop it.”
Shri V.P. Singh Badnore (Bhilwara) speaking in support of the Indian Trade
Marks Bill 1999 in the Lok Sabha Debates, Session II, 22/12/1999
*
JAIPUR: UK Trade Mark no. 2228391 (Class 33: Gin)
JAIPUR: CTM no. 000728915 (figurative: word in Arabic) (Class 25: ready made
clothing)
*
I
Despite V. P. Singh Badnore’s misgivings about the effects of trade mark
registration on appropriating cultural symbols, he nonetheless embraced the
Indian Trade Marks Act. Trade mark registration of these same cultural symbols
among other signs was, he said, “how our industry can cope with international
competition.”1 By juxtaposing the possible social and cultural costs of
increasingly broad trade mark protection against the necessity for a system
which enhances and permits international competition, V. P. Singh Bandore’s
concerns encapsulate a fundamental tension in contemporary trade mark
regimes. Furthermore, it is a tension which has almost from its inception been
Lok Sabha Debates, Session II, 22/12/1999. In the West, too, there is of course an increasingly
popular recognition that trade mark owners may both appropriate cultural symbols and, indeed,
seek to monopolise their meaning as the success of Naomi Klein’s book, No Logo (Harper
Collins: London, 2000) makes clear.
1
1
implicit in trade mark protection and one which has found resonance in other
areas of intellectual property, such as copyright and patents. For much of the
past century, this tension has creatively shaped the way the protection of trade
marks and other IPRs has developed.
However, it will be argued here that the two inter-related discourses
which have shaped our understanding of intellectual property, the one which
sees it as a social and cultural asset and the other as an agent of competition, in
various guises, has become unbalanced. Increasingly, in a globalised economy,
intellectual property has come to be seen and treated almost exclusively as a
trading asset. The result has been an increase in the protection of IPRs, which
has often paid scant attention to their wider social and cultural role. Nowhere is
this more evident than in the new European Union trade mark regime, which
was introduced by the Directive, and which had as its aim the overcoming of
impediments to the free movement of goods and the distortions to competition
which might arise from differing levels of trade mark protection in Member
States.2 It will be suggested that not surprisingly, given its stated purpose, as the
Directive has been interpreted by the ECJ and the UK courts, there has been an
inevitable sidelining of wider social or cultural concerns, such as those expressed
by V. P. Singh Bandore, where they have diverged from the requirements of
enhanced competition. Furthermore, because there is by no means a judicial
consensus as to how trade mark protection might be shaped to enhance
international competitiveness and the free market, the result has been a series of
conflicting decisions which neither clearly demarcate an optimal trade mark
regime for the global market nor a clear definition of the wider public interest in
protecting cultural assets.
To an overwhelming extent, discussion of IPRs, how they should be
protected and to what extent, has been coupled with an assumption that they
may be an instrument of or an impediment to competition. There are, at least,
three key areas where IPRs have been seen to enhance both national and
international competition. It has been widely accepted that national protection of
intellectual property rights is necessary for countries to be able to compete
effectively on the world market. Such a belief lay behind the first UK Trade
Marks Act which was designed to give the same protection in the UK for trade
marks which they would have abroad.3 Secondly, it has been again widely
The First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the
Member States relating to trade marks.
3 Report from the Select Committee on Trade Marks and Merchandising Marks Bill PP XII 1862.
The same sentiment lay behind the 1872 Vienna Congress for the Consideration of Patent
Protection, see: A. A. Yusuf, “Trips: Background, Principles and General Provisions” in C. M.
Correa and A. A. Yusuf (eds.), Intellectual Property and International Trade: The Trips
Agreement (Kluwer Law: London, 1998) , p. 7.
2
2
assumed that there is a need for strong IPRs to encourage the creation of IP,
which will in turn give countries and now, in the case of the EU, regions a
competitive advantage in world trade.4 A third common assumption is that for
international free markets to function to their potential, ideally there should be
an equivalent level of IP protection for all those operating on the same market.
This latter assumption of course lies behind international conventions such as
the Berne and the Paris Conventions (both, of course, products of an era of free
trade), the harmonisation of intellectual property rights, most notably trade
marks, in the EU, and, of course, behind TRIPS. Indeed, TRIPS embodies two of
the key assumptions set out above. The first is that international competition is
best enhanced by strong national protection, to encourage the creation and
production of IP assets. The second is that these should be combined with a
uniform level of protection for IPRs world wide in order to avoid ‘artificial’
barriers to trade.5 It can be argued that a similar combination of assumptions lies
behind EU harmonisation of IPRs.
But it is equally clearly the case that at the simplest level, by endowing
even a limited monopoly, IPRs may undermine competition. If protection of IP
rights is too wide, it has been argued, this can prevent the entry of competing
enterprises onto the market or have a chilling effect on innovation. An oft cited
example from the past was the use of copyright protection in the US by
television production companies to prevent the introduction of satellite
television.6 Conversely, it has been persuasively argued that it has been
precisely the difficulty of applying traditional copyright protection to the internet
which lies behind its rapid and innovative growth.7 With changes to copyright
law aimed at strengthening copyright protection in order to regulate the internet
in the interests of right holders, investment in new companies seeking to exploit
for example, peer to peer technology, has apparently fallen.8
4For
example, the discrepancy between the patent protection offered to computer programs in the
USA and Japan and the weaker copyright protection offered in Europe has been seen by
European software companies as increasing their vulnerability to foreign competition. S. Davies,
“Computer Program Claims: The Final Frontier for Software Invention”, EIPR [1998] 430. The
EU is now drafting a Directive on computer-implemented inventions to help close this gap. A
similar point has been made about the European Database Right which does not have a US
equivalent, although in this instance to the advantage of the EU. N. Thakur, “Database
Protection in the European Union and the United States: The European Database Directive as an
Optimal Global Model”, 1 IPQ 100.
Yusuf, “Trips: Background, Principles and General Provisions”, p. 11; see also, I. Govaere, The
Use and Abuse of Intellectual Property Rights (Sweet & Maxwell: London, 1996).
6 J. Litman, Digital Copyright (Prometheus: NY, 2001).
5
This is the argument put by L. Lessig in The Future of Ideas: The Fate of the Commons in a
Connected World (Random House: NY, 2001).
8 Lessig, The Future of Ideas, p. 201.
7
3
The protection of intellectual property has thus been seen as strongly
associated, both by legislators, the judiciary and in a wider public discourse, for
at least the past century and a half as an element in enhancing, and sometimes
inhibiting, competition.9 Such an association has been particularly evident
during periods, such as the present, when the strongest economic powers have
favoured ‘free trade’ ideologies.10 However, IPRs have also found their
justification and have been shaped by far less materialistic concerns. This is most
clearly apparent in the justifications which have been given for copyright
protection in various jurisdictions. Thus, in continental Europe, copyright has
been seen as recognising a natural right for authors to enjoy the fruits of their
own creation; as a ‘just reward for creation’, an idea embodied in early copyright
cases in the UK; and, in the US, as a social good, in that it promotes “the progress
of science” not simply by encouraging creative activity but also by encouraging
authors (and inventors) to place their creations before the public and hence to
enrich the cultural and scientific wealth of society.11 Conversely, too strong
protection of copyright has been seen as potentially impoverishing the public
domain and limiting the free flow of information and ideas, hence the fair use
exceptions and the term limitations.12
In the area of trade marks, moral justifications for protection are less
evident. However, as I have argued elsewhere, the UK courts had, before the
implementation of the Directive, viewed trade marks as having a strong public
interest component. Thus, for the UK courts an important virtue of a properly
regulated trade mark regime was the protection which it provided to consumers
who relied upon the mark to recognise not just the origin of goods, but also to
assess their quality.13 At the same time, the UK courts also recognised that too
strong protection for certain descriptive marks might impoverish the public
For the US position, see J. Litman, “Breakfast with Batman: The Public Interest in the
Advertising Age”, The Yale Law Journal [Vol. 108: 1717 1999].
10 Such as the late 19th and the late 20th –early 21st centuries. See fn. 3 above.
11 For a summary of these justifications in relation to copyright see, G. Davies, Copyright and the
Public Interest (Sweet & Maxwell: London, 2002), chap. 2: “The Underlying Principles
Governing Copyright Legislation”; also, J. Hughes, “The Philosophy of Intellectual ‘Property’” in
A. D. Morre, From Intellectual Property: Moral, Legal and Political Dilemmas (Lanham
Md.1997), pp. 107-203.
12 See for example, G. Davies, Copyright and the Public Interest, chap. 10: “Limitations on
Copyright”.
13 J. Davis, “To Protect or Serve? European Trade Mark Law and the Decline of the Public
Interest”, 4 EIPR 2003, pp. 180-188.
9
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domain, or as the Master of the Rolls famously put it in 1887, lead to the
enclosure of “ the great common of the English language….”14
However, it is not intended to suggest that in the past it would have been
possible to divorce the discourse in which IPRs were constructed as a social and
cultural asset from a discourse which primarily framed IPRs as an agent of
competition. While the two did not always overlap, they could equally be seen
as intimately connected and often inseparable. For example, the traditional
approach of the UK courts to trade mark protection has been to view the interests
of proprietors, their competitors and the public not only as potentially in conflict
but also of equal concern.15 More fundamentally, in capitalist societies,
competition itself is generally viewed as conferring social benefits. Such a belief
is, of course fundamental to the founding of the European Union with its aim of
creating a common market, and more particularly, “ensuring that competition in
the internal market is not distorted.”16 It is to the relationship between the
European Union, competition and trade marks that this paper now turns.
II
In the European Union, it has long been recognised that the existence of
IPRs, which are traditionally determined at a national level, can be an instrument
for promoting a strongly competitive market by encouraging innovation.
Conversely , IPRs have also been viewed as a possible inhibitor of competition by
endowing monopolies, which may raise barriers to market entry or to the free
movement of goods between member states.17 Thus, Article 30 of the E.C.
Treaty states that “prohibitions or restrictions on imports, exports or goods in
transit” are “justified on grounds of the …..protection of industrial and
commercial property” and is interpreted as applying to intellectual property.18
Similarly, its caveat that “such prohibitions shall not, however, constitute a
means of arbitrary discrimination or a disguised restriction on trade between
Member States” has also been applied to IPRs.19 This has led to the development
In the Matter of an Application by Joseph Crosfield & Sons Ltd. to Register a Trade Mark (“Perfection”)
(1909) 26 R.P.C. 837 at 854. See, J. Davis, “European Trade Mark Law and the Enclosure of the
Commons”, 4 IPQ 2002, pp. 342-367.
15 Davis, “European Trade Mark Law,” pp. 357-359.
16 Govaere, The Use and Abuse of Intellectual Property Rights, p. 4. Article 3 (g) European
Convention.
17 S. D. Anderman, EC Competition Law and Intellectual Property Rights [Clarendon Press:
Oxford, 1998], pp. 5-7.
18 Govaere, The Use and Abuse of Intellectual Property Rights, pp. 6-7.
19 According to Govaere, Article 30, “admits derogation from the principle of free movement of
goods to the extent to which such derogation is justified for the purpose of safeguarding right
which constitute the specific subject-matter of that property.” (p. 45).
14
5
of the ‘existence/exercise’ dichotomy in the way the ECJ has approached IPRs.20
On the one hand , the ECJ has consistently given the reassurance that it will not
interfere with the normal exercise of IPRs.21 But it has also been convincingly
argued that Articles 81 and 8222 will place ‘unyielding restrictions’ on the
exercise of IPRs and that the “exercise of IPRs must defer to the competition rules
where the two are in conflict.”23
Apart from the application of Articles 81 and 82 to the manner in which
IPRs are exercised, the EU has applied another approach to overcoming the
barriers to the internal market which may be raised by the territorial nature of IP
protection. This approach is the harmonisation or approximation of the
substantive laws relating to the protection of IP, in the case of trade marks,
through the 1989 Directive.24 Again, as in the case of trade marks, barriers to the
internal market might also be overcome by the introduction of a supra-national
IPR, in this case, the Community Trade Mark.25 The following section will
consider how the harmonisation approach to trade mark law and competiton has
been understood by the ECJ. It will then go on to consider the implications of
that understanding for the protection of culturally significant signs.
III
There may be little controversy in the statement that the harmonisation of
substantive trade mark law across national boundaries is a useful tool for
20
Park Davis v Probel Case 24/67 [1968] ECR 55.
Deutsche Grammophon Gesellschaft mbH v Metro-SB-Grossmarketete GMbH & Co (Case 78/70)
[1971] ECR 1919; see, Anderman, EC Competition Law, p. 9.
22 Article 81 prohibits agreements which prevent, distort or restrict competition. Article 82
prohibits dominant undertakings from weaking the competitive structure of the market.
Anderman, EC Competition Law, p. 13.
23 Anderman, EC Competition Law, p. 9. For case law, see Consten Grundig v Commission [1966]
ECR 235. However, according to the European case law, interference with the exercise of
intellectual property rights under Articles 81 and 82 can be justified only in exceptional
circumstances. Held most recently, in IMS Health Corp v Commission of the European Communities
(Case T184/01) [2002] 5 C.M.L.R. 1. C. Stothers, “The End of Exclusivity? Abuse of Inellectual
Property Rights in the E.U.” 2 E.I.P.R. [2002], 86-93.
24 The Trade Mark Directive refers to the ‘approximation’ of national laws. In practice, its overall
effect has been to harmonise national trade mark laws within the EU and the latter word will be
preferred here when referring to the Directive.
25 The Council Regulation (EC) No, 40/94 of 20 December 1993 on the Community Trade Mark
sets out the substantive law governing the CTM. To all intents and purposes, it is the same as
that governing the Trade Mark Directive and will be treated as such in this paper. E. Gastinel
and M. Milford, The Legal Aspects of the Community Trade Mark (Kluwer Law International:
the Netherlands, 2001). Most recently a European design right has been introduced through the
Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the
legal protection of designs.
21
6
enhancing competition, particularly when the nations involved are of roughly
comparable wealth and political influence, as is the case within the EU.26
However, for those who take the view that protecting competition and protecting
the public interest are not necessarily synonymous, harmonisation raises areas of
the concern. The first is at the level of discourse. Faced with a statement of
substantive law, whose raison d’être derives from its role in enhancing
competition, the relevant courts both national and the ECJ are finding it
increasingly difficult to privilege other social or cultural concerns. Second,
beyond a statement of general principle, courts have consistently differed as to
which interpretation of substantive trade mark law might best serve to enhance
competition.27 The results may be measured in two key areas. The first is the
increasing ease with which it has become possible to register marks, which might
have an important social or cultural value: for example, descriptive, generic or
colour signs, or signs which relate to geographical areas. The second is the
unpredictability of ECJ decisions particularly in this key area.28
Of course, in the case of TRIPS, such a comparison may not be so readily made. See for
example, P. Drahos, “Global Property Rights in Information: The story of TRIPS at the GATT”,
Prometheus, vol. 13, No. 1, June 1995, reprinted in P. Drahos (ed.), Intellectual Property (Ashgate:
Aldershot, 1999), pp. 419-432.
27 This paper does not intend to consider the question of how trade mark protection and
competition might interact from an academic perspective. Rather the intention here is to uncover
and interrogate the assumptions about the relationship between trade mark protection and
competition which are implicit in the Trade Mark Directive and which are present either
implicitly or explicitly in the decisions of the European Court of Justice. There have of course
been a large number of sophisticated academic studies which have considered the legal
protection of trade marks and its effects on competition. Two early and influential studies were
F. I. Schechter, “The Rational Basis of Trademark Protection”, Harvard Law Review, vol. XL,
1926-27, 813-833 and R. S. Brown Jr., “Advertising and the Public Interest: Legal Protection of
Trade Symbols,” 57 Yale Law Journal 1165 (1948). Another important study, reflecting the Law
and Economics approach, is W. M. Landes and R. A. Posner, “Trade Mark Law: An Economic
Perspective,” Journal of Law & Economics, vol. XXX (October, 1987), 265-309. More recently,
there is S. M. Maniatis, “Competition and the Economics of Trade Marks” in A. Sterling (ed.),
Perspectives on Intellectual Property, vol. II (Sweet & Maxwell: London, 1997), pp. 63-130. See
also, A. Griffiths, “Modernising Trade Mark Law and Promoting Economic Efficiency: An
Evaluation of the Baby-Dry Judgment and its Aftermath” [2003] I.P.Q.: no. 1. From a purely
marketing perspective, see for example, S. M. Mudambi, P. Doyle and V. Wong, “An Exploration
of Branding in Industrial Markets”, Industrial Marketing Management 26 [1997], 433-446. From
an economic perspective, see S. Paba, “Brand reputation, efficiency and the concentration
process: a case study”, Cambridge Journal of Economics vol. 15 [1991] 21-43 and S. Paba,
“’Brand-Naming’ as an entry strategy in the European White Goods Industry”, Cambridge
Journal of Economics, vol. 10 [1986], 305-318 and J. Rubery, R. Tarling and F. Wilkinson,
“Flexibility, Marketing and the Organisation of Production”, Labour and Society, vol. 12, no. 1,
January 1987, 131-151.
28 Similar conclusions might be reached from an examination of the ECJ’s approach to trade
marks and parallel imports and trade mark dilution.
26
7
Another level of uncertainty may be introduced which in part explains
and in part exacerbates the two problems identified above. The harmonisation of
EU trade mark laws fits easily within an economic model which has been
characterised as ‘the structure/conduct/performance paradigm’ and which, as
has been convincingly argued, characterises the EU approach to creating
competitive markets.29 However, it may argued that the substantive law of trade
marks, as embodied in the Directive and the CTM regulations takes an altogether
different stance. Indeed, implicit in the Trade Mark Directive is a neo-liberal
approach, which views the market itself as the final arbiter of what should or
should not be protected by trade mark registration.30
The embodiment of the market driven approach is to be found in Article 3
of the Trade Mark Directive which sets out the absolute grounds for refusal of
registration.31 Article 3(1)(a) concerns marks which cannot constitute a trade
mark because, inter alia, they are not capable of distinguishing the goods or
services of one undertaking from another. Article 3(1)(b)-(d) refuses registration
to marks which are devoid of distinctive character (Art. 3(1)(b)), which consist
exclusively of signs which may serve to designate, inter alia, the kind, quality or
geographical origin of the goods or services (Art. 3(1)(c)) and generic marks
(Art.3(1)(d)). These provisions have been explicitly identified as serving the
public interest, in so far as they reflect a concern that broad monopolies in such
signs may inhibit competition.32 However, in relation to Art. 3((1)(b-d), any such
marks may be registered if they have before the date of registration acquired
distinctiveness through use (Art.3(3)). In other words, any mark which is
operating as a badge of origin on the market may be registered. Thus, despite
the recognition both in the Directive and by the courts that the monopolisation of
certain basic signs are undesirable and inhibit competition, the Directive also
appears to adopt the view, that exactly how broad those monopolies will be
should be determined by the invisible hand of the market.33
Anderman explains this paradigm as “that if the structure of the market is competitive, this will
affect the conduct of companies on that market as well as their economic performance”. He
notes that this paradigm has been extensively criticised by the Chicago School. Anderrman,
Intellectual Property and Competition Law, p. 17.
29
For example, Landes and Posner, “Trade Mark Law.”
The equivalent in the CTM Regulation is Article 7(1)(a-d) and Article 7(3).
32 A recent case is Linde AG (C-53/01), Winward Industries Inc. (C054/01) and Rado Uhren (C55/01), 8 April 2003, ECJ. The case will be considered in detail below.
33 Article 3(1)(a) which states marks may only be registered if they consist of a sign which can be
represented graphically and are capable of distinguishing the goods or services of one
undertaking from another may be said to provide a bottom line for which marks may be
registered. However, the decision in Koninklijke Philips Electronics NV v Remington Consumer
Products Ltd. (C-299/99) ECJ [2002] E.T.M.R. 81 which suggests that a trade mark should first be
considered for registration under Articles 3(1)(b-d) has rendered Article 3(1)(a)’s requirement
that a sign be capable of distinguishing largely otiose.
30
31
8
The Directive thus appears to countenance two different views of how
trade mark protection might enhance competition. The first seeks, as a matter of
principle, to limit monopolies in certain signs which a significant number of
traders might wish to employ. The second appears to accept that the final arbiter
of whether signs are registerable should be the free market. The divergence
between these principles in the Directive itself has been mirrored at the level of
judicial decision making, where again there appears to be no clear consensus as
to what is the correct balance between them. The result has been not only
uncertainty, but also a progressive lowering of the barrier for trade mark
registration, since it will be suggested that the market driven approach to
registration inevitably trumps any concern for leaving culturally significant signs
free. The next section of this paper will examine the result of the variable
approach which the Directive and the judiciary, both national and at the ECJ,
have taken towards the nexus between trade mark protection and competition
through an examination of the case law. In particular, it will examine what the
effects have been for broadening the protection offered to signs which may play
an important role in the public domain.
IV
A concern for the relationship between trade marks and competition has
consistently been at the centre of ECJ decision making. Indeed, it is precisely this
relationship which has given the ECJ locus standi in trade mark disputes at all.
Trade marks confer a monopoly which can affect the free movement of goods.
Over the years, the ECJ has sought to define the essential function of trade marks
which would in effect balance their role as a potential barrier to the freedom of
the internal market. Thus, according to the ECJ in the recent case of Arsenal v
Reed (2003), “…the 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, without any possibility of confusion, to distinguish the goods or
services from others which have another origin. For the trade mark to fulfil its
essential role in the system of undistorted competition which the Treaty seeks to
establish and maintain, it must offer a guarantee that all the goods or services
bearing it have been manufactured or supplied under the control of a single
undertaking which is responsible for their quality.”34 The longevity of this view
may be suggested by the fact that the ECJ in this case took as earlier judicial
authority, the 1978 decision, Hoffmann-La Roche.35 But it has been repeated in
many cases since.
34
35
Arsenal Football Club plc v Matthew Reed (C-206/01) ECJ [2003] ETMR 19 at para. 48.
Hoffman-La Roche (C-102/77) [1978] E.C.R. 1139, para. 7.
9
Before harmonisation, it had been up to individual member states, or at
least their judiciaries, to determine the extent of the monopoly accorded to trade
marks, so long as their decisions had no effect on intra-European trade.
Following harmonisation, this role has fallen to the European court. As I have
argued elsewhere, in the UK Courts, at least, concern for the monopolies
afforded by trade mark registration reached beyond their role as a guarantors of
origin to take into account not just the effect of registration on present and
potential competitors, but also to the protection of a public domain: an English
language commons.36 Following the Directive, the question arose as to whether
the essential function of trade marks, which had been developed by the
European courts in the context of seeking to establish a system of undistorted
competition, would allow for an equally nuanced view of trade mark protection.
The first case following harmonisation that clearly raised this question
was Windsurfing (1999), which concerned an application to register a
geographical name.37 The Court’s answer was by no means conclusive and
signposted some of the problems which were to lie ahead. The claimant, had
sought to register the word, ‘Chiemsee’, the largest lake in Bavaria and an
important tourist and sporting attraction, for clothing. The claimant
manufactured and sold clothing in the area. The ECJ was asked, inter alia,
whether signs which consist exclusively of geographical indications may be
registered. The Advocate General Cosmas had stated in so many words that any
‘rigid’ view that certain geographical names could not be registered was no
longer tenable under the Directive which allows registerability to be determined
by the market.38 However, the ECJ appeared to take a more open view. It held
that geographical names were unregisterable under Article 5(1)(c) if they were
currently associated with the relevant category of goods. Indeed, it went further
to hold that even where there was currently no association in the minds of the
relevant class of persons between the geographical name and the category of
goods, if it was capable of designating such an association in the future, it should
not be registered. It based this view on the inherent public interest concern in Art
3(1)(c) that indications of geographical origins should not be ‘preserved for one
undertaking alone’.39 This did not however mean that geographical names
were understood to merit greater protection than other signs when it came to the
simpler market-led view of what may constitute a trade mark, a principle which
we have suggested was also incorporated in the Directive. The ECJ also held that
Davis, “European Trade Mark Law and the Enclosure of the Commons”.
Winsurfing Chiemsee Produktions-Und Vertriebs GmbH v Boots-Und Segelzubehor Walter Huber and
Franz Attenberger (Case C-108/97) ECJ[1999] E.T.M.R. 585.
36
37
Windsurfing Chiemsee Produktions-Und Vertriebs GmbH v Boots-Und Segelzubehor Walter Huber and
Franz Attenberger (Case C-108/97) Advocate General J. Cosmas [2000] Ch. 523 at para. 49.
39 Windsurfing v Huber, ECJ at p. 595.
38
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in relation to Article 3(3), in determining whether a mark has acquired a
distinctive character following use, there may be “no differentiation as regards
distinctiveness by reference to the perceived importance of keeping the
geographical name available for use by other undertakings.”40
Arguably, the decision in Windsurfing demonstrates that the ECJ was
interpreting a Directive which offered two competing views of how trade marks
should interact with the market. The following decision in ‘Baby-Dry’ suggests
how the courts themselves might differently understand this relationship.41 In
the case Procter & Gamble sought to register the community trade mark ‘BabyDry’, for diapers. The application had been refused by the OHIM as being too
descriptive (Art. 7(1)(c)) and being devoid of distinctive character (Art. 7(1)(b)).
The claimant’s appeal reached the ECJ. This time Advocate General Jacobs
argued against what in this case he termed the ‘out dated’ view of countries
such as the UK which privileged a concern about trade marks as monopolies, in
determining whether a sign should be registered. As he put it, “it is better to
think of Article 7(1)(c) of the Trade Mark Regulation as intended not to prevent
any monopolising of ordinary descriptive terms but rather to avoid the
registration of descriptive brand names for which no protection could be
available”.42 In other words, it is a marks measure of distinctiveness, presumably
in a market context, which should be determinate rather than the needs of
competing traders. Furthermore, the Advocate General went on to point out that
trade marks did not endow a monopoly in any event since Article 12(b) of the
Regulations allowed use of a registered mark in the course of trade to indicate,
inter alia, the kind, quality, quantity or other characteristics of goods or
services.43
The ECJ, while not explicitly endorsing the Advocate General’s approach,
certainly appeared to take a view which emphasised the market as the decisive
factor in determining registration. It noted that the purpose of Article 7(1)(c) is
purely to prevent the registration of trade marks because they are no different
from the usual way of designating the goods and so cannot fulfil their function
of acting as a badge of origin on the market. Because ‘Baby-Dry’ was different
from ‘the usual way of designating the goods’, however minimally, it could be
registered.44
Windsurfing v Huber, ECJ at p. 599.
Procter & Gamble v Office for Harmonisation in the Internal Market (OHIM) (Case C-383/99) ECJ
[2002] E.T.M.R. 3.
40
41
Procter & Gamble v OHIM (Case C-383-/99P) Adovate General Jacobs’ Opinion [2001] E.T.M.R.
at p. 847.
43 Procter & Gamble v OHIM, Advocate General’s opinion at p. 847.
44 Procter & Gamble v OHIM, ECJ at para. 40
42
11
The differing views of the relationship between competition and trade
marks in Windsurfing and ‘Baby-Dry’ cases have caused a great deal of
controversy among commentators and indeed within the judiciary. The ‘BabyDry’ judgment was understood as a suggesting that, henceforth, any mark which
achieved a minimal level of distinctiveness should be registered.45
Commentators praised the ‘Baby-Dry’ judgement as reflecting a ‘liberal modern’
approach to trade mark protection.46 In ‘Baby-Dry’, the ECJ apparently abjured
the ‘old fashioned’ approach which focussed on trade marks as monopolies and
the effect on competition if they were endowed too readily. Instead, the ‘BabyDry’ decision was praised for promoting economic efficiency, since setting a
minimal or threshold level of distinctiveness for registration introduced a greater
certainty into the law.47 In this view, trade mark law becomes an efficient and
self-regulating market mechanism. Marks capable of distinctiveness even at the
most minimal level will be registered. However, the stronger the mark the wider
the core of protection it receives. The weaker the mark, the more vulnerable it is
to being legitimately challenged, and indeed, used by competitors under one of
the exceptions set out in the Directive (and the CTM regulations), such as use for
descriptive purposes.48
On the other hand, for precisely the reasons set out above, the ‘Baby-Dry’
decision was condemned for inhibiting competition. Jacob J., in the UK courts,
“was surprised when the Court took into account the defence of descriptiveness.
Traditionally that has not been the approach of the law, both in the UK, and as I
understand it, in many other European jurisdictions.”49 He went on, “The
problem with saying ‘registration will not harm the public: if a third party wants
to use the mark descriptively he has a defence” is this: that in the practical
world powerful traders will naturally assert their rights even in marginal cases.
By granting registration of a semi-descriptive or indeed a nearly-but-not quite
descriptive mark one is placing a powerful weapon in powerful hands.
Registration will require the public to look to its defences. With such words or
This was the argument put forward by the claimants in DKV Deutsche Krankenversicherun AG v
OHIM (Case C-104/00P) ECJ (5th Chamber) [2003] E.T.M.R. 20 who sought to register the mark
‘Companyline’ for insurance and financial services. This has been refused registration by the
OHIM and the Court of First Instance for lack of distinctiveness. The ECJ held that the Court of
First Instance had applied the approach for judging distinctiveness as set out in the Baby-Dry
case correctly.
46 Griffiths, “Modernising Trade Mark Law and Promoting Economic Efficiency”, p. 2 and
throughout; also citing Verbruggen, “Baby-Dry—The origin function ‘revisited’” GRUR Int. 2002,
Part 3, 213.
47 Griffiths, “Modernising Trade Mark Law”, pp. 33-34. See also H. J. Herrmling, “The ECJ
Rescuses Descriptive Marks”, Managing Intellectual Property, November 2001, pp. 15-21.
48 Griffiths, “Modernising Trade Mark Law”, pp. 29-30.
49 Re Nichols plc [2003] R.P.C. 16 at para. 13.
45
12
phrases the line between trade mark and descriptive use is not always sharp.
Moreover it must not be forgotten that the monopoly extends to confusingly
similar marks. In any marginal case defendants, SMEs particularly, are likely to
back off when they receive a letter before action. It is cheaper and more certain to
do that than stand and fight, even if in principle they have a defence.
‘Baby-Dry’ has, if I have interpreted it right, shifted the balance towards trade
mark owners and those who have the resources and foresight to use the
registration system and against the public in general and weaker and less
organised companies. It does seem to be somewhat in conflict with Chiemsee
…..”50
Following ‘Baby-Dry’, it was possible to conclude that the harmonisation
of trade mark law under the Directive apparently allows for radically differing
judicial approaches to how trade marks and competition interact. Partly this has
been because, as it has been argued, the Directive encompasses the possibility of
these conflicting approaches. Partly, it appears that the ECJ itself can take
differing views of the same question, using the same body of substantive law.
Subsequent to the ‘Baby-Dry’ decision, the ECJ has, at times, appeared to recoil
from its market-driven approach towards trade mark registration by reRe Nichols at paras. 13-15. In his opinion in ‘Baby-Dry’, Advocate General Jacobs also noted
that he appeared to be putting forward a view that may “conflict with some passages in the
Windsurfing Chiemsee judgment”. However, he took the view that geographical names have a
special status in that they are singled out for protection as collective marks and that they create
monopolies which are more damaging than if a descriptive word is registered. Windsurfing
Chiemsee v Huber, AG’s opinion at 847-848. In his recent opinion in OHIM v Wm. Wrigley Jr.
Company (Case C-191/01 P), Advocate General Jacobs has attempted to square the circle. In this
case, Wrigley sought to register the mark “Doublemint” as a CTM for chewing gum. It was
refused by the OHIM on the basis that it consisted exclusively of the word Doublemint, which
may serve in trade to designate the characteristics of goods. This decision was overturned by the
Court of First Instance, holding that the word “Doublemint” was not exclusively descriptive and
may be open to various interpretations. The OHIM appealed. Not surprisingly, Wrigley
questioned how Doublemint differed from ‘Baby-Dry’. AG Jacobs held that the approach of the
Court of First Instance had been wrong. If a mark has a number of possible meanings, only one
of which was descriptive, then it should not be registered. In his opinion AG Jacobs
acknowledged that it might be useful to ‘refine’ the ‘Baby-Dry’ judgment (at para. 2). He argues
that to be registerable a mark must be ‘perceptibly’ different from a descriptive term, not
‘minimally’ so. ‘Baby-Dry’ passed this threshold, while Doublemint did not. He also
acknowledged that many commentators have viewed his opinion in Baby-Dry as contradicting
the judgement in Windsurfing (para. 91) , and acknowledged the fears, expressed by Jacob J. in Re
Nichols, for example, that allowing a descriptive mark to be registered on the assumption that it
might be later be challenged gave too much power to the proprietor who would seek to
maximize the protection for his mark. AG Jacobs’ answer was that so long as the ‘perceptible
difference’ test was followed then such fears would be misplaced (paras. 93-96). He concludes at
para. 97, “In any event, it seems clear that there was no intention, in the Baby-Dry judgment, to
depart from the view in Windsurfing Chiemsee that it is in the public interest that descriptive signs
may be freely used by all.”
50
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emphasising the importance of public interest concerns in looking at questions of
distinctiveness and descriptive marks. However, the ability to resurrect the
language of the public interest has inevitably been hampered by both the need to
adhere to the competition justification of the Directive and by the essential fact,
that according to the Directive, all marks which are distinctive on the market
may be registered.
The return to the language of the public interest is particularly evident in
the case of Linde AG and others (2003).51 Linde essentially concerned the
registration of the actual shape of goods, themselves, as trade marks. In this
case, the shapes concerned were a forklift truck, a torch, and a wristwatch,
respectively. The ECJ was asked first whether, once these shapes were found to
have surmounted the absolute grounds for refusal of registration of shape marks,
as set out in the Directive, they would also be subject to the test of whether they
were devoid of distinctive character or were descriptive. This question was
answered in the positive.52 The second question was whether, when these
second tests were considered, stricter criteria should be applied to shape marks
than to other marks, because of the interest of the trade in having the shape of a
product kept available for others to use.
The judgment in Linde once again demonstrated the difficulties facing the
court in having two different views of competition embodied in the Directive,
and the further difficulty of extricating trade mark decisions from a discourse in
which competition concerns are inevitably privileged. In relation to Article 3(b)
and whether a shape mark was devoid of distinctive character, the ECJ held that
it was possible only to look at whether the shape was acting as a trade mark on
the market. If so, no stricter criteria could be applied to assessing the
distinctiveness of shape marks than to other marks.53 Turning however to the
question of descriptiveness, the ECJ sought the authority of Windsurfing. In
relation to Article 3(c), it was necessary to interpret that section in light of the
public interest underlying it.54 To put it simply, the public interest was in
ensuring that descriptive signs or indications (in this case the three-dimensional
shape of goods trade marks) which consist exclusively of signs or indications
which may serve to designate the characteristics of goods or services must be
Linde AG(C-53/01)/Winward Industries Inc. (C-54/01) and Rado Uhren AG (C-55/01) (8 April 2003)
ECJ.
52 Linde at para. 69
51
Linde at para. 46. Although, the ECJ also acknowledged that because the public do not expect
shapes to act as badges of origin, distinctiveness might be harder to achieve. (at para. 48).
54 Linde at para. 71. The ECJ said that in ‘effect’, this was the implication of the Windsurfing
judgment.
53
14
“freely used by all” and “cannot be reserved for one undertaking alone”.55 But
the ECJ added, “The authority may not, however, refuse such an application as a
matter of principle”.56 While calling upon the authority of Windsurfing, it is
difficult to see how this decision would not also be perfectly consistent with
‘Baby-Dry’.
The last and most recent case this paper will examine concerned an
application to register a sign which has broad social and cultural resonance: in
this case the colour orange, for which registration was sought for mobile
phones.57 In Libertel (2003), as we shall see, the Court appears to have formulated
yet another view of the relationship between trade marks and competition, and
one which undermines the permissive approach taken by ‘Baby-Dry’ and the
matter of fact approach of Linde.
In Libertel, the court was first asked whether a colour is per se capable of
constituting a trade mark.58 The ECJ’s answer was that while a colour per se
cannot be ‘presumed’ to constitute a sign, since ‘normally it is a simple property
of things’, yet it ‘may’ constitute a sign, depending upon the context in which it
is used.59 The next question before the court was whether a colour was capable
of acting in a trade mark sense, that is as a guarantee of origin. In answering
this, the ECJ for once alluded to the wider cultural significance that a sign, in this
case a colour, might carry: colours may convey ‘certain associations of ideas’,
‘arouse feelings’.60 But as a matter of principle, there was nothing to stop a
colour per se serving as a badge of origin in the right circumstances. Finally the
court was asked whether in assessing the potential distinctiveness of a specific
colour as a trade mark, it is necessary to consider whether there is a general
interest in that colour remaining available to all (as in the case of geographical
signs).
It is here that the Court most notably diverged from earlier case law. It
took as given that trade mark rights constitute an essential element in the system
of undistorted competition which the EC Treaty seeks to establish and maintain
and that the rights and powers that trade marks confer on their proprietors must
be considered in light of that objective.61 It then followed Linde in asserting that
Linde at para. 73.
Linde at para. 75.
57 Libertel Groep BV v Benelux-Merkenbureau (Case C-104/01), 6 May 2003.
58 Article 2 of the Trade Mark Directive states that ‘A trade mark my consist of any sign capable
of being represented graphically, particularly words, including personal names, designs, letters,
numerals, the shape of goods or of their packaging, provided that such signs are capable of
distinguishing the goods or services of one undertaking from those of other undertakings.’
59 Libertel at para. 27.
60 Libertel at para. 40.
61 Libertel at para. 48
55
56
15
the grounds for refusing registration of a sign may be based on the public
interest underlying each of the grounds for refusal of registration. But it went on
to emphasise specifically that, under the Directive, trade mark registration allows
the monopoly of a sign for an unlimited period. It was this aspect of the trade
mark regime to which it gave the greatest prominence. The ECJ stated:
“As regards the registration of colours per se, not spatially delimited, the
fact that the number of colours actually available is limited means that a small
number of trade mark registrations for certain goods or services could exhaust
the entire range of colours available. Such an extensive monopoly would be
incompatible with a system of undistorted competition, in particular because it
could have the effect of creating an unjustified competitive advantage for a single
trader. Nor would it be conducive to economic development or the fostering of
the spirit of enterprise for established traders to be able to register the entire
range of colours that is in fact available for their own benefit, to the detriment of
new traders.”62
It concluded that there is, in trade mark law, a public interest in not unduly
restricting the availability of colours for competitors.63
The second notable aspect of Libertel, was that the ECJ addressed the issue
of whether the ECJ had introduced a test of ‘minimal distinctiveness’ in relation
to descriptive marks or marks devoid of distinctive character. Here, the Court
appears to have holed the ‘modern, liberal’ view of trade mark registration
below the bowline. ‘The examination carried out at the time of the application’,
it stated, ‘must not be a minimal one.’ Instead, the ECJ called for a ‘full and
stringent examination’ of trade marks in order to prevent them from being
invalidly registered. The ECJ concluded: the Directive does not take an ‘a
posteriori’ view of registration.64 In other words, it was not for competitors to
use the Article 6 defences to determine the limits of protection afforded by trade
mark registration.65 The responsibility of determining whether a mark was
properly registered lay not with the courts, ex post facto, but in the first instance
with the competent registering authority.
The decision in Libertel gives a strong indication that the ECJ wishes to
pull back from a view of the relationship between trade marks and competition
which deems that the limits of trade mark protection for certain categories of
signs, which have a broad cultural significance, should be dictated solely by the
Libertel at para. 54.
Libertel at para. 55.
64 Libertel at para. 59.
65 Article 6 of the Directive is equivalent to Article 12 of the CTM Regulations, for which see the
discussion of ‘Baby-Dry’ above.
62
63
16
market. The former view, which appeared to reach its apogee in ‘Baby-Dry’,
would privilege trade mark proprietors, introducing greater certainty into the
registration process and hence, as some have argued, increasing its efficiency.
Instead, in Libertel, the ECJ has emphasised that trade marks endow a monopoly.
It went further to suggest that the exceptions to registered trade marks, in
relation to descriptive, geographic or generic signs, should not simply constitute
a residual category determined through court action following registration.
Rather, the ECJ appears to be developing a category of signs, most notably,
colours, geographical signs, three dimensional marks, which in the interest of
competition should be left free for others to use whenever possible. This latter
view is, of course, also determined by an understanding of the relationship
between trade marks and competition, but one which privileges the importance
of limiting monopolies available to would be proprietors, in order to allow
maximum room for potential competitors.
It is worth making three general points about the Libertel and earlier
decisions. First, despite its ringing endorsement of the need to leave colours free
whenever possible, in Libertel, the ECJ was inevitably compelled to concede that
where a colour is recognised by the relevant public, taking in all the relevant
circumstances, as a badge of origin, it must be registered.66 Second, that as in all
the earlier judgements, the ECJ was constrained by the terms of the Directive,
into discussing the social benefits of registering such culturally important signs
solely in the language of competition. Thirdly, and for the same reason, neither
in Libertel nor any of the earlier cases, cited above, did the ECJ have available to it
an alternative language which might have recognised the need to protect a public
domain of socially or culturally significant signs which constituted more than a
potential economic asset.
V
This paper has been concerned with an intellectual property regime, the
EU Trade Mark Directive67, which derives its legitimacy solely from a concern for
competition. It has considered the problems that such a single minded concern
has raised for those who see merit in affording special protection for socially or
culturally significant signs. At present, the EU is debating the adoption of a
constitution, which goes beyond a mere concern for trade, and extends to
political and human rights. Perhaps, now is also an apt time to advocate the
adoption of a legal regime which recognises that IPRs are more than simple
economic assets. One suggestion would be for EU Members to identify cultural
assets, say in the case of trade marks, primary colours for example or
66
67
Libertel at para. 40.
And of course the CTM Regulations.
17
geographical areas, which would be protected from monopolisation by IPRs.
However, such an approach might well prove contentious and give rise to
anomalous results.68 An alternative and better approach, which is advocated
here, would be for Member States to agree on a statement of first principles
which would provide an equal and alternative discourse, not based on
competition, to which the courts might turn when assessing the social and
cultural value or otherwise in giving legal protection to intellectual property of
all kinds.
The author hopes that this is not a naïve suggestion. For example, it is
certainly not intended to suggest that a legal regime which from its inception
recognised a wider cultural role for IPRs will not, over time, come to be shaped
by more mundane commercial interests. Despite the grand enlightenment ideals
which gave copyright a central role in the US constitution, Jessica Litman has
convincingly argued that successive copyright acts were primarily shaped by
horse-trading between competing right holders.69 Furthermore, even
constitutional guarantees may be whittled away in a propitious ideological
climate, as the recent decision in Eldred v Ashcroft suggests.70 Conversely,
although the first Trade Marks Act in the UK was intended to lubricate the
wheels of global commerce, through a series of judicial decisions in the following
century, the courts were able to carve out an irreducible public domain which
took account of a wider social interest in preserving an ‘English language
common’.
Arguably this has been the case with geographical indications, which may be protected by
national laws, by EU Regulation No. 2081/92, the Paris Convention 1987, and under Articles 22
to 24 of TRIPS. These are of course concerned with areas known for a particular economic
activity, such as the production of cheese or olive oil. The WTO gives enhanced protection to
wines and spirits. The EU would like this to be extended to other products, such as cheese, rice
and tea. Dr. Vandana Shiva in “The Basmati Battle and Its Implications for Biopiracy and Trips”,
has pointed out the limitations that such a regime has for important regional products. See also,
R. Knaak, “Case Law of the European Court of Justice on the Protection of Geographical
Indications and Designations of Origin Pursuant to E.C. Regulation No. 2081.92” IIC (2001), vol
32, no. 4 , pp. 375-389.
69 J. Litman, Digital Copyright, esp. chap. 2 (“The Art of Making Copyright Laws”) and chap. 3
(“Copyright and Compromise”).
68
Eric Eldred et al v John D. Ashcroft, Supreme Court of the United States (January, 2003) In this
case, an on-line publisher of public domain works challenged the constitutionality of the 1998
Sonny Bono Copyright Extension Act, which retroactively increased copyright protection for
works published after 1976 by twenty years to seventy years plus life. In brief, the plaintiffs
argued that the constitutional guarantee that copyright should be for ‘limited times’, was
breached by retroactive extensions. Such extensions, it was argued, meant that the copyright
term was potentially unlimited. The defendants countered that as long as the term of copyright
was limited in time it was constitutional. The Supreme Court found for the defendants by a 7-2
majority. The Act is commonly understood to have been passed through the lobbying of right
holders, particularly Disney Corp., as Mickey Mouse was about to fall out of copyright.
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Rather, it has been argued here that a body of substantive law which has
as its sole justification market concerns, leaves little room for an alternative
discourse which privileges a wider social role for IPRs. The example of the EU
Trade Mark directive has suggested that the result will be a steady strengthening
of the protection for IPRs, and a proportionately decreasing area in which social
or cultural concerns may be prominent. Furthermore, because there is no broad
consensus among the judiciary, both at the supra-national and national level, as
to exactly how trade marks and competition might interact, the result has been a
period of uncertainty in relation to judicial decisions. Such an outcome should
be of concern at a time when EU members are about to adopt the first Directive
which deals substantively with copyright law.71
In relation to trade marks, one possible response is that these are, unlike
copyright works, pre-eminently creatures of the market. At base, what limited
monopoly they possess is owed, not to their originality, but rather to their ability
to function as indicators of origin in the marketplace.72 Furthermore, as Landes
Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the
harmonisation of certain aspects of copyright and related rights in the information society. The
EU notes that input was received from the telecoms and computer hardware industry, the
Business Software Alliance, record companies and the Recording Industry Association of
America. See also, S. A. Fitzpatrick, “Prospects of Further Copyright Harmonisation?” [2003]
EIPR 215.
72 A recent US Supreme Court case endorsing this view of trademarks is Dastar Corp. v. Twentieth
Century Foxfilm Corp. (2 June 2003). In this case, Dastar had taken videotapes of a television
series on World War II, which were in the public domain, modified them and produced a new
series of videotapes which they marketed under the mark, “Dastar Corp”. Fox took the view
that this ‘misrepresented’ Fox’s goods and services as their own and hence was in violation of the
Lanham Act. The court found for Dastar. In doing so, it stated:
“In sum, reading the phrase “origin of goods” in the Lanham Act in accordance with the Act’s
common-law foundations (which were not designed to protect originality or creativity), and in
light of the copyright and patent laws (which were), we conclude that the phrase refers to the
producer of the tangible goods that are offered for sale, and not to the author of any idea,
concept, or communication embodied in the goods. ….To hold otherwise would be akin to
finding that s43 [of the Lanham Act] created a species of perpetual patent and copyright, which
Congress may not do.” The issue was also addressed by the ECJ in S. A Cnl-Sucal NV v Hag CF
AG (Hag II) (Case C-10/89) [1990] 3 C.M.L.R. at para. 15. In its discussion of the function of
trade marks the ECJ looked critically at the observations of Advocate General Dutheillet de
Lamothe in Sirena C.M.LR. pp. 264-265. The Advocate General had observed that “Both from the
economic and from the human point of view the interests protected by patent legislation merit
greater respect than those protected by trade marks….From the human point of view, the debt
which society owes to the ‘inventor’ of the name “Prep Good Morning” [a brand of shaving
cream] is certainly not of the same nature, to say the least, as that which humanity owes to the
discoverer of penicillin.” In Sirena, the ECJ endorsed this view (at para. 7) In Hag II, the ECJ took
issue with the AG’s remarks in Sirena. It observed: “It is noteworthy that this conception of the
relative merits of trade marks and other forms of intellectual property was based on an invidious
comparison between a rather trivial trade mark and one of the most important discoveries in the
71
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and Posner have pointed out, there is certainly no shortage of words which
remain available in the public domain, even if many are co-opted into limited
private ownership.73 In truth it may be difficult to invest signs with the same
romantic aura which traditional copyright justification apparently endows on
even the most mundane creative efforts. Nonetheless, one would be hard
pressed to identify more than a handful of copyright works produced over the
past century which possess any greater cultural resonance to such a broad mass
of the world’s population than the word, “Jaipur”. India has just adopted a trade
marks act which in most respects coincides closely with the EU Directive.74
Given the European experience, one can only accede to V. J. Singh Bandore’s
conclusion concerning the commercialisation of “Jaipur”. It would appear we
cannot stop it.
history of medicine. Different comparisons might have produced different results more
favourable to trade marks. The truth is that, at least in economic terms, and perhaps also “from
the human point of view”, trade marks are no less important, and no less deserving of protection
than any other form of intellectual property.” The ECJ then cites W. R. Cornish, to the effect that
trade marks are ‘nothing more nor less than the fundament of most market-place competition”.
W. R. Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights, 2nd ed.
(1989), p. 393.
73 They also argue that trade mark protection encourages businesses to create new words and
thus enrich the language. Landes & Posner, Trade Mark Law: An Economic Perspective, p. 273.
74 The Trade Marks Act, 1999 (Act 47 of 1999).
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