How can freedom of expression and undistorted competition be safeguarded in EU trade mark law? Ask IP profs!

Trade mark law reform has been in the air for a while now. Last year the

It smells like ... like trade mark reform! 

Commission adopted proposals [here and here; Impact Assessment: here and here] for a revision of the Regulation on the Community trade mark and for a recast of the Trade Mark Directive. These followed the publication of a study prepared by the Max Planck Institute for Intellectual Property and Competition Law.

As explained by the Commission itself, "the package of initiatives aims at upgrading, streamlining and modernising the current legislation in order to make the trade mark registration systems all over the Union more accessible and efficient for businesses in terms of lower costs and complexity, increased speed, greater predictability and legal security."

What happened next was the release of an initial appraisal of the Commission's Impact Assessment and two further reports prepared by the Legal Affairs Committee, followed by publication by the Council in May 2014 of the Presidency Compromise proposals on the Regulation and the Directive.

The latest known addition [at least to this Kat] to this iter was adoption by the Council of a common position on the trade mark package in July last.

But can any IP reform occur without going through some intensive academic scrutiny first? Of course not.

Prof Martin
Senftleben

Thankfully, via learned Katfriend and leading expert on - among other things - the three-step test in EU copyright, Prof Martin Senftleben (VU Amsterdam), comes the news that several European trade mark academics [but there is a notable omission. Tip: it is not this Kat] have joined forces and released a Recommendation on Measures to Safeguard Freedom of Expression and Undistorted Competition in EU Trade Mark Law. 

Having emphasised that, "whatever the protection afforded to trade marks, it must always be balanced against general interests, in particular the fundamental freedom of expression and the guarantee of undistorted competition", the Recommendation points out that "in order to achieve an appropriate balance, the legitimate interests of trade mark proprietors, consumers, competitors and the public at large must be taken into account at all stages by legislators, trade mark registration offices and courts". 

What does this entail? 

First, that certain free uses should be expressly secured in the envisaged new EU trade mark legislation.

Secondly, that an open-ended clause should be added to the provision on limitations which allows courts to develop appropriate new defences on a case-by-case basis in circumstances where the purposes, objectives and fundamental principles underlying the existing legislation warrant permitting third party use notwithstanding the lack of an express limitation [should the same happen in copyright law? The academics reunited in the Wittem Group said yes in 2010]. 

Thirdly, that any legislative requirement for flexibility tools, such as limitations, to be exercised in accordance with “honest practices”, should not be applied in a way that erodes their effectiveness. In particular, the honest practices requirement must leave room for courts to enter into a balancing of all rights and interests at stake. It must not consist of a repetition of infringement criteria that brings protection interests into focus.