When Trademarks Overlap With Other IP Rights: conference report 4

Opening the "Trademarks and Designs" session after lunch, Katfriend and internationally respected scholar Annette Kur reminded us that some of the things we are prone to label "problems" are often capable of being construed as "opportunities" too. Describing trade mark protection as the finger that is pointed at a product, as distinct from the protection of the product itself, Annette explained that the two notions are effectively merged in the case of three-dimensional products.  However, where overlap exists, it's not the overlap itself which is the problem but any assymetry that is caused by the fact that the two types of overlapping rights are not of equal size and scope.

Let's look first at the law as it stands, said Annette, and see if it gives us any problems, rather than assume that problems exist.  Once we identify actual problems, then we can address them. Perhaps this is the approach adopted by WIPO in its earliest days, when it gradually moved away from the one-right-per-subject-matter policy: the organisation must have recognised that preventing overlap was treating the symptoms rather than curing any ills. Much latitude is given to the protection of shapes. Neither TRIPS nor the Paris Convention specify the framework within which product shapes are protected, though it seems to be an almost universal phenomenon that national law makes some sort of special provision for them.

Annette then took the audience through a sequence of shape-as-trade-mark decisions involving Community trade mark registration: C-371/06 Benetton v G-Star, T-508/08 Bang & Olufsen (illustrated right) and Hauck/Stokke (the TRIPP TRAPP case, discussed in the previous report), together with the various "prongs" of Article 7(1)(e) the Community Trade Mark Regulation,

(i) the shape which results from the nature of the goods themselves;

(ii) the shape of goods which is necessary to obtain a technical result;

(iii) the shape which gives substantial value to the goods;

How do these apply, how far do they apply and how consistently do they apply? Leaving us with these questions and a round of applause, Annette was then followed by Grégoire Bisson (WIPO),

Grégoire promised to do more than merely advertise the facility of filing for design protection under the Hague System, though it was plain that he was enthusiastically committed to it. International design filings are rising at a far faster rate than patents and trade marks, though it was sad to say that most applications are made by domestic applicants. Still, every domestic applicant is potentially an applicant for registration in other countries, so there is at least the potential for improvement.

Hague, said Grégoire, was truly a one-stop shop. To prove it, Grégoire ran us through the application process from start to finish. In management terms, having single title, a single renewal date and centrally recorded events was so much easier than having to keep jurisdiction-by-jurisdiction records. Embarrassingly, Hague is still hugely Euro-centric. There are lots of countries who are actively considering membership, but it's nowhere near the scale of Madrid System international trademark coverage. Embedded intelligence is making Hague even more intelligence: it will help applicants to avoid losing out by filing designs for classes that are not protected in specific jurisdictions (like trying to register a design for "logos" in Locarno Class 32 in Korea).

Should logos be registered as designs under Class 32? This was controversial when introduced and in 2011 some 6% of registrations were for logos. By 2014 this had fallen to 4% and it seems that applicants are being more sensible with their logo-as-design registration policy. There are further problems with classification of what are apparently word marks, which don't really fit in with the Vienna system for the classification of the figurative element of marks either.

Next to speak was Theophile Margellos (Office for Harmonisation in the Internal Market, right). He emphasised the difference between the specification of goods in Community trade mark applications, which is decisive for the scope of protection, and the specification of goods in Community design law, where it is not.  Prior art is differently handled too: prior art that will anticipate a Community trade mark is EU-wide, while it may be global for designs.  Also, time works in favour of trade marks, which can become more distinctive and therefore more registrable the longer they aren't applied for, while time generally works against design applications.

Theophile cited a number of overlaps with logos registered designs and logos, with some being registered as both. Shapes departing significantly from the customs of the relevant sector were those that could be registered both as designs and trade marks. He ran through the salient registration criteria of Community trade marks and designs and added that no mark would be refused on the basis that it was already registered as a design. Conflicts between Community trade marks and designs was Theophile's next subject, since the prior registration of each by a third party was capable of destroying the other. He reviewed the manner in which the respective mark and design were contrasted with one another: was it the "likelihood of confusion" test or was it based on the impression of the informed user -- or both, depending on which was the earlier?