1 / 41

Trademark Law Institute Conference, 4-5 November 2016

Broaden Functionality Doctrine? From Shapes to Product Characteristics. Irene Calboli School of Law, Singapore Management University Texas A&M University School f Law. Trademark Law Institute Conference, 4-5 November 2016.

pauljohnston
Download Presentation

Trademark Law Institute Conference, 4-5 November 2016

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. Broaden Functionality Doctrine? From Shapes to Product Characteristics Irene Calboli School of Law, Singapore Management University Texas A&M University School f Law Trademark Law Institute Conference, 4-5 November 2016

  2. Question: Would broadening the functionality doctrine be a desirable development? Answer: Yes, because we need to find a solution for the (relentless and problematic to me) expansion of trademark protection Possible challenges in interpretation: taken to the extreme, the doctrine would deny trademark protection to the use of many marks, as they could be seen as product features adding substantial value

  3. Kraft Foods registered a moving image (UK 228003) for chocolate and chocolate confectionery. CTM 1400092: Lamborghini moving image for car doors opening and turning upward.

  4. USPTO TM 1.928.424: computer generated sequence showing the central element from several angles as though a camera is moving around the structure. The drawing represents four “stills” from the sequence.

  5. USPTO TM 1.975.999; moving image of a flash of light from which rays of light are emitted against a background of sky and clouds. The scene then pans downward to a torch being held by a lady on a pedestal. The word “COLUMBIA” appears across the top running through the torch and then a circular rainbow appears in the sky encircling the lady.

  6. US Registration 3343733, registered in 2007

  7. sewing thread and embroidery yarn with a fragrance a floral fragrance/smell reminiscent of roses as applied to tyres

  8. Examples of Marks at the IPOS • Color marks in SG: • Mark No.: T9900634E • Owner: BP • Description: The colour green as shown on the application form applied to containers for liquid petroleum gas

  9. Sign/Mark Because of very few exclusions on protectable subject matter, as long as an item is “capable of distinguish” it is likely to qualify for trademark protection Distinctive

  10. Sign/Mark Distinctive of “what” ? Of source? By and in itself distinctive because of product features? Distinctive

  11. Is this expansion of trademark protection a problem? Is protecting these signs compatible with protecting trademark functions? Anticompetitive effects, and possibly undesired monopolies on aesthetic product features

  12. Are these marks necessary to distinguish?

  13. Are these marks necessary to distinguish?

  14. Case T 409/10 Bottega Veneta International Sarl v. OHIM • OHIM refused BottegaVeneta’s applications on June 16, 2010. • The General Court affirmed the OHIM’s decision on March 22, 2013.

  15. Case T 409/10 Bottega Veneta International Sarl v. OHIM • OHIM refused BottegaVeneta’s applications on June 16, 2010. • The General Court affirmed the OHIM’s decision on March 22, 2013.

  16. Case T-359/12 and Case T-360/12, Louis Vuitton Malletier v. OHIM • The EU General Court invalidated LV’s Damier checkered patterns (black and grey, and brown and beige) were invalidated. • The registrations were challenged by German retailer Nanu-Nana. • The General Court held that the registrations were basic and banal, and lacked distinctive character.

  17. Societe Des Produits Nestle SA and Another v. International Foodstuffs Co. and Others (100/2014), (2014 ZASCA 187); (2015 1 All SA 492 (SCA) (27 November 2014)

  18. Societe Des Produits Nestle SA and another v. Petra Foods Ltd. and another (2014 SGHC 252)

  19. Sign/Mark Distinctive of “what” ? Of source? By and in itself distinctive because of product features? Distinctive

  20. Protecting non traditional marks may result in decreased number of competing products > increase costs of products in general Increase trademark litigation > chilling effects, rent seeking via licensing More licensing > less competition but also less creativity

  21. Limitations to Protectable Subject Matter Sign/Mark • Perhaps we can break the circularity with AF Distinctive

  22. Downsides of Defenses • High cost of litigation • Chilling effects (market failures) • Rent paid to avoid litigation • Lack of adequate punishment for overreaching claims • Judicial outcomes are unpredictable • No clear tests • Ambiguous factors • Degree of transformation? • Non-reputation related advantage? • Nominative use restrictions

  23. Aesthetic Functionality in US

  24. Aesthetically Functional? 9th Cir.: Audi’s and Volkswagen’s marks are not aesthetically functional: • Marks are not essential to the use of the product (license plate holders can be used without the marks). • Marks are not performing a function that would put competitors at a disadvantage. Ultimately, the marks function is to associate goods with a particular source, thus they are non functional.

  25. Marks are not necessarily functional even if they are important ingredients in the commercial success of a product, as long as they continue to serve their function of indicators of commercial origin

  26. Thank You! I welcome your questions and comments irenecalboli@smu.edu.sg

More Related