WIPO: South-South Cooperation Cairo, May 7, 2013 Trademarks and the Public Domain

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

2. WIPO Development Agenda • ‘Consider the preservation of the public domain within WIPO’s 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 WIPO’s Member States...’ (Adopted Recommendation 20)

3. Stakeholders • social, political, cultural speech • commercial speech TM owner competitor consumers

4. Study on Misappropriation of Signs

5. Notion of ‘Public Domain’

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

7. 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 specificforms of use • limited scope of trademark rights • adoption of exceptions to keep certainforms of use free

8. General bar to registration and protection

9. Which signs may be denied registration? (Art. 6quinquies(B) PC) • 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?

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

11. Technical and esthetic functionality

12. CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands) ‘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 appellant’s goods from others which have another origin.’ (para. 40) • nonetheless qualified as functional • risk of consumer confusion accepted

13. Exclusion on the basis of a lack of distinctiveness

14. New kinds of marks

15. CJEU, 6 May 2003, case C-104/01, Libertel ‘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)

16. Signs of cultural significance

17. 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)

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

19. Limited scope of trademark rights

20. 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

21. Exceptions covering specific forms of use

22. International basis: Art. 17 TRIPS 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)

23. Exceptions found at the national level • 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

24. 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

25. Conclusion

26. 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

27. Exclusions from protection risk of consumer confusion need to keep free

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

29. The end. Thank you!For publications, search for ‘senftleben’ on www.ssrn.com. contact: m.r.f.senftleben@vu.nl