Trade Marks and Freedom of Expression: A Call for Caution

Burrell, Robert; Gangjee, Dev

doi:10.2139/ssrn.1604886

Cited by 11 publications

(7 citation statements)

References 2 publications

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“…However, this is perhaps in no small part because other jurisdictions also provide for a recognition threshold. Irrespective of whether this threshold is expressed in terms of the mark having a reputation, as in Europe; or the mark being famous, as in the United States; or the mark being well-known, as in New Zealand, 51 the problem remains that the harms 50 See further Burrell/Gangjee [4] and the sources cited therein. that antidilution actions are intended to protect against are not confined to marks with a reputation.…”

Section: Resultsmentioning

confidence: 99%

“…This is reflected in the provision of EU law that prevents the use of a sign that 'takes unfair advantage of the distinctive character or the repute of the trade mark'. These extended protections are afforded to owners of marks with a reputation in two contexts: first, where the owner is claiming that its mark has been infringed; 4 and second, as grounds that serve to block the registration of later, similar, marks. 5 As Advocate General Jääskinen has noted, the consequence of the extended protections against dilution is to transform trade mark law from a 'deception-based' 1 First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, OJ L 40 of 11 February 1989, pp.…”

Section: Protection Of Marks With a Reputationmentioning

confidence: 99%

“…The EUTMR entered into force on 23 March 2016. 4 1989 Directive, Art. 5 (2) and 2015 Directive, Art.…”

Section: Protection Of Marks With a Reputationmentioning

confidence: 99%

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Reputation in European trade mark law: a re-examination

Burrell

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2016

ERA Forum

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Under the harmonised European trade mark regime marks with a reputation enjoy expanded protection. This article casts doubt on whether this 'reputational trigger' can be justified. It then explores some difficult operational questions about the way the reputation threshold works in cases where the mark enjoys fame only in niche markets or in a limited geographical area, the aim being to illustrate further why reputation is an unsatisfactory trigger for a different type of trade mark protection. Finally, it looks at some of the evidential difficulties involved in adjudicating disputes in which expanded protection is being claimed. It concludes by suggesting that if the evidential problems we identify were tackled the reputation threshold could be abandoned.

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Section: Resultsmentioning

confidence: 99%

Section: Protection Of Marks With a Reputationmentioning

confidence: 99%

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Reputation in European trade mark law: a re-examination

Burrell

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2016

ERA Forum

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“…17 (2) of the Charter of Fundamental Rights of the EU (the Charter), 2 with other fundamental rights and freedoms has grown in importance in recent years and has been largely elaborated in legal literature. 3 The increasing significance of this issue has interrelated with the noticeable quest for striking a balance betweenon one hand-interests of the trade mark proprietors resting in effective protection of their rights and-on the other hand-other competing interests, including interests of competitors in the marketplace in preventing trade mark law from introducing unnecessary market entry barriers, interests of consumers of goods and services resting in protecting them against confusion and any other distortions of competition which could negatively affect the process of making their market decisions, and also interests of the public at large in having access to the use of protected trade marks in public discourse. 4 While the shape of the pre-reformed EU trade mark law, contained in the Trade Mark Directive 2008/95 (TMD 2008) 5 and the Community Trade Mark Regulation No 207/2009 (CTMR 2009), 6 could be perceived as reflecting the neo-liberal assumption that all actors on the market have equal positions and that law should intervene in the market to the minimal extent, the development of case law of the Court of Justice of the European Union (the CJEU) and of national courts has proven, that there might be instances in which there is a need for an intervention taking the form of a balancing of interests of various actors at play.…”

Section: Introductionmentioning

confidence: 99%

Invoking freedom of expression and freedom of competition in trade mark infringement disputes: legal mechanisms for striking a balance

Zelechowski

2018

ERA Forum

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The article explores legal mechanisms for striking a balance of competing interests on the premise of freedom of expression and freedom of competition in the area of trade mark infringement. Special focus is given to the respective framework under the reformed EU trade mark law. The paper argues that the newly introduced references to fundamental rights and freedoms in the preambles of relevant acts should play a crucial role in interpreting and applying provisions of trade mark law at all stages of assessing an infringement action. As for specific issues, the paper, notably, discusses the potential for providing a balance of interests resting in the 'due cause' clause and the amended catalogue of limitations and exceptions, arguing in particular that the narrowing of the own name and address limitation to natural persons properly balances the interests at stake. Finally, the paper questions the inapplicability of national correction instruments to trade mark infringement matters, implied in the case law of the Court of Justice. Keywords Trade marks • Freedom of expression • Undistorted competition • Limitations and exceptions • Due cause The author would like to thank Dr Jennifer Davis for her valuable comments on an earlier draft of this paper. All mistakes and omissions are the author's own. This publication was prepared in the course of a research project funded by the National Science Centre, Poland (project no 2014/13/D/HS5/01450).

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“…CJEU, Opinion of Advocate General Jääskinen in L'Oréal and Others v eBay , C‐324/09, EU:C:2010:757, paragraph 158. More generally on the interplay of trademarks and freedom of expression, see Senftleben (); Ramsey (); Sakulin (); Burrell and Gangjee ().…”

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confidence: 99%

The Freedom of Expression Contours of Copyright in the Digital Era: A European Perspective

Izyumenko

2016

World Intellectual Property

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This paper analyses the influence of the right to freedom of expression and information on European copyright law in the digital context. Drawing on the practice of the two major European courts—the European Court of Human Rights (ECtHR) and the Court of Justice of the European Union (CJEU)—it begins by exploring how this fundamental right shapes both the scope of copyright protection in Europe and what is traditionally termed as “exceptions and limitations” to exclusive rights. Specifically, a long‐standing practice of the ECtHR, in accordance with which copyright in turn may be viewed as an exception to freedom of expression and must hence be narrowly interpreted, is scrutinized. On a related note, a recent recourse by the CJEU to the language of “users' rights” is examined, inasmuch as it allows for a reconceptualization—in a normative framework of freedom of information—of copyright “exceptions” not as the exceptions as such, but as the equal rights of users of protected subject‐matter. In this regard, the locus standi of “mere users” of online content and the somewhat diverging approaches of the Strasbourg and Luxemburg courts toward granting thereof are addressed. The paper then turns to discuss the recent recourse by the European courts to freedom of expression as a means to define the role of internet service providers in digital copyright enforcement, implicating issues ranging from the providers' liability in respect of the third‐party content posted online to the often far‐reaching injunctions imposed on non‐liable intermediaries. Several conclusions are drawn from the above analysis, reflecting on the potential of freedom of expression and information to inform the development of European standards applicable in the field of digital copyright.

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Trade Marks and Freedom of Expression: A Call for Caution

Cited by 11 publications

References 2 publications

Reputation in European trade mark law: a re-examination

Reputation in European trade mark law: a re-examination

Invoking freedom of expression and freedom of competition in trade mark infringement disputes: legal mechanisms for striking a balance

The Freedom of Expression Contours of Copyright in the Digital Era: A European Perspective

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