WIPO: South-South CooperationCairo, 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 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)

WIPO Development Agenda

TM owner competitor

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. 6quinquies(B) PC)

• extensions at the national level

Which signs may not be registered or used as trademarks? (Art. 6ter(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 appellant’s 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

The end. Thank you!For publications, search for

‘senftleben’ on www.ssrn.com.

contact: m.r.f.senftleben@vu.nl