Zeist 2007 - the scope of trade mark protection

IPKat team blogger Jeremy spent this afternoon in the Netherlands, participating in a discussion on the scope of trade mark protection. The event was the Dutch AIPPI's annual conference at the Figi Hotel, Zeist. The discussion was shared with Verena von Bomhard (Lovells, Alicante), with Professor Charles Gielen (NautaDutilh) in the chair.

The idea was to hit on six topics, introducing some contrasting perspectives on them and then opening them to the floor for discussion. Verena's starting-point was the jurisprudence of national and European courts on the scope of protection, while Jeremy took as his premise the problem facing the businessman who visits his lawyer and asks if he can pursue a particular course of activity. The topics included the extent of protection accorded to the Lindt Golden Bunny Community trade mark, the fact that after ten years of authoritative rulings from the ECJ and national courts we seem to be no closer to eliminating the "grey area" in which it is unclear whether infringement occurs, the residual risk of usurpation of others' marks even after the THOMSON LIFE ruling and the issues raised where a business plan involves amassing and exploiting a family of trade marks each of which is linked to the others by a common element (eg the Mc- prefix favoured by McDonald's).

What came out of the session was the impression that European trade mark law is very much in danger of becoming over-intellectualised and increasingly detached from the realities of the way in which traders commercialise goods and services. After a complete overhaul of European trade mark law between 1994 and 1996 and a series of rulings from the European Court of Justice and the Court of First Instance, we may have harmonised Community trade mark law and established a pan-European right, but we have at the same time acquired a pool of shared uncertainties and we are collectively little the wiser on even many of the most basic topics. To start again with a fresh set of trade mark rules and guidance as to their application would be admission that we have squandered the past decade in empirical tinkering, to no avail - but to leave the law as it is, expecting litigant-financed questions to a Delphic court to lead us to a position of greater certainty, seems most unattractive.