WIPO: South-South Cooperation Cairo, May 7, 2013 Trademarks and the Public Domain Prof. Dr. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

Consider the preservation of the public domain within WIPOs normative processes and deepen the analysis of the implications and benefits of a rich and accessible public domain. (Adopted Recommendation 16) To promote norm-setting activities related to IP that support a robust public domain in WIPOs Member States... (Adopted Recommendation 20) WIPO Development Agenda

TM ownercompetitor consumers social, political, cultural speech commercial speech Stakeholders

Study on Misappropriation of Signs

Notion of Public Domain

not only signs unencumbered by trademark rights but also free use of protected signs (including exceptions) Notion of the public domain

exclusion of signs from protection –general bar to registration and protection as trademarks –exclusion on the basis of the basic protection requirement of distinctiveness Public domain in trademark law exemption of specific forms of use –limited scope of trademark rights –adoption of exceptions to keep certain forms of use free

General bar to registration and protection

deceptive signs –also with regard to signs of indigineous peoples signs contrary to morality or public order –also a means of keeping signs of cultural or religious significance free? Which signs may be denied registration? (Art. 6 quinquies (B) PC)

extensions at the national level Which signs may not be registered or used as trademarks? (Art. 6 ter (1) and (2) PC)

Technical and esthetic functionality

In the present case, it has not been disputed that the shape of the Lego brick has become distinctive in consequence of the use which has been made of it and is therefore a sign capable of distinguishing the appellants goods from others which have another origin. (para. 40) nonetheless qualified as functional risk of consumer confusion accepted CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)

Exclusion on the basis of a lack of distinctiveness

New kinds of marks

Consumers are not in the habit of making assumptions about the origin of goods based on their colour or the colour of their packaging, in the absence of any graphic or word element, because as a rule a colour per se is not, in current commercial practice, used as a means of identification. A colour per se is not normally inherently capable of distinguishing the goods of a particular undertaking. (para. 65) CJEU, 6 May 2003, case C-104/01, Libertel

Signs of cultural significance

CJEU, C-283/01, Shield Mark/Kist I find it more difficult to accept […] that a creation of the mind, which forms part of the universal cultural heritage, should be appropriated indefinitely by a person to be used on the market in order to distinguish the goods he produces or the services he provides with an exclusivity which not even its author's estate enjoys. (Opinion A-G Colomer, 3 April 2003, para. 52)

investment in abstract colour marks desirable? investment in cultural heritage marks desirable? important policy decisions left to market participants? Too much reliance on distinctive character?

Limited scope of trademark rights

principle of specialty (protection relating to specific goods/services) notion of trademark use –mere references to the trademark sufficient? –cultural, political, religious, educational context but enhanced protection of well-known marks –may cover all kinds of goods and services –proof of confusion not necessarily required Limited scope of trademark protection

Exceptions covering specific forms of use

Criteria to be fulfilled by limitations: limited exception example: fair use of descriptive terms take account of legitimate interests of the trademark owner (and interests of third parties) International basis: Art. 17 TRIPS

personal name, address, geographic name or place of business indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production and other characteristics of goods or services functional features of a container, shape, configuration, colour or pattern Exceptions found at the national level

indications concerning the intended purpose of a product or service, particularly in the case of accessories or spare parts prior rights that have been acquired in good faith use in comparative advertising use for the resale of goods Exceptions found at the national level

Conclusion

substantial differences in the use of available instruments –use of all available instruments in many developed countries –reliance on inherent limits of protection in many developing countries guidelines for identifying the most appropriate preservation tools? Main policy issues

need to keep free risk of consumer confusion Exclusions from protection

inherent limits of trademark protection adoption of an exception to enhance legal certainty Exemption of specific forms of use

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