Book Review: The Protection of Non-Traditional Trade Marks

We know that the trade mark universe is expanding. The increased flexibility of the application for registration together with developments in modern marketing has extended the scope of trade marks, both practically and philosophically. The Protection of Non-Traditional Trade Marks, edited by Professor Irene Calboli (Texas A&M University School of Law) and Professor Martin Senftleben (Vrije Universiteit Amsterdam), is a timely collection. It serves to help us navigate the debate on these developments from a legal, economic and cultural perspective, it equips us with both empirical evidence and theoretical frameworks as the tools to do so.

This Kat’s thoroughly used copy!

The book takes an interdisciplinary approach to the key questions such as; how do offices and courts address the variety of issues, including legal, competition-based, and cultural concerns? And; what are the repercussions of the expansion of the trade mark domain, what is the impact on other areas of IP and the IP system as a whole?

To address these questions the edited collection is organised in two parts. The first part sets out the status quo on the legal treatment of non-traditional trade marks in nine chapters, which includes an overview of the historical development leading to the current international and national protection.  For example, Chapter 1 begins by considering in particular the WIPO Standing Committee on the law of trade marks and the WIPO treaties. This is complemented by an empirical study providing a twenty-year retrospective on non-traditional trade marks using the EU, UK, Singapore, Japan and Australia as case studies; the first comprehensive longitudinal study of its kind. It demonstrates the different rates of growths between the case study countries, and suggests that most of the marks related to shapes rather than scent or sound which might have been expected. Chapter four focuses on EU developments and chapter five provides an exhaustive review of the US case law. Chapter seven focuses on the international attitude toward protection for non-traditional marks and the acceptance of the functionality doctrine as a ground for refusal, particularly in relation to shape marks. The following chapters in this part then move to consider infringement cases and concludes with an analysis of the Hermes cases in the Chinese courts.

Part one provides a thoroughly researched and detailed overview of the current international legal landscape, including a foundation of the historical context, that will be useful for anyone who wants to get up to speed on the global status of non-traditional marks.

Part two of the book assesses the impact of non-traditional trade mark protection on market competition and freedom of expression, in eight chapters. These chapters present arguments utilising doctrinal legal, economics and competition perspectives. The first chapters in this part are dedicated to the challenges that non-traditional marks bring to market competition. This includes the first systematic empirical analysis of the extent of filings of non-traditional marks using data from the USPTO. Chapter 14 focuses on the impact of protection of non-traditional marks on the marketing of generic pharmaceuticals, arguing that this protection could pose significant barriers o access to medicine, in particular by increasing transactional costs and creating new barriers to generic entry.

Non-traditioanl Kat…. ?!

The subsequent chapters consider the impact of non-traditional marks on culture and freedom of expression. Chapter 15 considers product creativity and innovation, arguing that this protection promotes standardisation and repetition of the same features in product design. Chapter 16 warns of the corrosive effect on cultural follow-on innovation and suggests that this can be addressed with a broader application of public interest grounds for refusal which could lead to the exclusion of marks. Continuing with the public interest theme, the chapter 17 argues that non-traditional marks harm freedom of expression since they intrinsically convey information, ideas and other messages unrelated to the mark. In the final chapter, concerns of cultural dominance by a privileged few at the expense of the rest of society are raised.

Part two of this edited collection presents important discussion on the consequences of the expansion of the scope of trade marks, including the impact on competition, culture and innovation as well as freedom of expression.

This book is a useful source for policymakers, trade mark examiners, trade mark attorneys, judges and researchers with an in trade marks. In particular, anyone wanting to keep abreast the current climate and future of the trade mark landscape in relation to non-traditional marks and branding.

Extent: 432 Pages
ISBN: 9780198826576
Hardback from OUP £70.00
Also available as an eBook and from Amazon