[Book review] European and UK Trade Mark Law

This Kat is happy to share with our readers her impressions of “European and UK Trade Mark Law”, authored by David T. Keeling (Publishing Push LTD, 2024, 1170 pp.). In this volume, Mr. Keeling, former member of the EUIPO’s Boards of Appeal, focuses on general principles of trade mark law and absolute grounds of refusal.

The book consists of 23 chapters that can be broadly divided into three categories: introductory thoughts (such as Chapter 2, where the author addresses trade marks’ functions); chapters separately covering various types of marks, such as three-dimensional trade marks in Chapter 10 and sound marks in Chapter 15; and chapters that discuss each of the absolute grounds of refusal in detail.

The book’s structure and exhaustiveness reminded this Kat of the EUIPO’s Guidelines (which, undoubtfully, is due to Mr. Keeling’s own professional experience). Yet, unlike some legal treatises, this volume is presented in an approachable style.

“The main thrust of this book is that the [Court of Justice] and General Court have underperformed in the field of trade mark law”, claims the author towards the end. While this may seem like a bold statement, the author guides his readers towards this conclusion throughout the book.

Mr. Keeling suggests that various factors contributed to the mishaps of EU (and UK) trade mark law. One of them, according to the author, is that the Court of Justice of the European Union (CJEU) believes that everything done by EU legislative bodies has an inherent logic (that the CJEU tries to uncover in its rulings). By exploring this argument, the author indirectly addresses one of the main flaws of the EU’s legislative technique: the EU acquis is often the result of a patchwork of national laws and compromises that do not necessarily have to make sense.

To uncover the true meaning of EU legal norms, Mr. Keeling submits, one has to find the norm’s origin in national law and case-law. He does so for each of the topics covered in the book, deriving guidance from, e.g., a 1902 German case on exhaustion principles or the Explanatory Memorandum on the 1962 Uniform Benelux Trade Mark Law, where the prohibition concerning aesthetic functionality of shapes was laid down.

Mr. Keeling also suggests legislative reforms, such as the repeal of the prohibition to register shapes or other characteristics giving substantial value to the goods, and how to eradicate legal formalism at the CJEU.

This Kat, however, worryingly notes Mr. Keeling’s proposal to replace geographical indications (GIs) with collective and certification marks. The author’s UK background and professional experience at the EUIPO must have set him against a sui generis GI system. Though not without its flaws (which Mr. Keeling thoroughly discusses all of this in Chapter 21), GI laws play an important role in preserving the EU’s cultural and gastronomic heritage.

Different audiences will engage with this book on different levels: law students may prepare for their trade mark exams with an immersing material, researchers will identify the case law behind a contentious provision of EU trade mark law, while experienced lawyers will find unusual, yet strong arguments that suit their case.

While the book is available on Amazon, David T. Keeling invites interested readers to buy it directly from him, with a big discount, by writing to him at dtkeeling@gmail.com