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Few issues have raised as much controversy in trade mark law and policy as the case law of the Court of Justice of the European Union (CJEU) on trade mark functions. Enthusiastically greeted by some, others consider it disastrous in regard to reasoning and effect. The EU Commission has stepped in, first by filing a brief with the CJEU, then by way of proposed legislation that is supposed to push the genie back into the bottle: protection under the double identity clause shall be available only for use of a sign that affects or is likely to affect the origin function. Unsurprisingly, this proposal met with antagonistic reactions from the opposing camps; and according to the reactions so far available from the legislative bodies, it is most unlikely to succeed. This article tries to add nuance to the discussion by pinpointing the dilemma underlying the CJEU’s jurisprudence – the Court is no more to blame than the legislators who failed to articulate more clearly whether and how the protection granted in double identity cases should be limited. Furthermore it is argued that neither accepting the Commission’s proposal nor blindly continuing on the current path will yield satisfactory results. More important than arguing about the contents of various trade mark functions and their place in determining the scope of protection is to observe the manner in which trade mark law absorbs ways of reasoning typically found in unfair competition law. While that adds flexibility and may in the longer run lead to more substantive harmonization, the space for independent evaluation of unfair conduct under national law is narrowed accordingly. The effects of this process appear manageable where the scope of rights is concerned; however, the results are more hazardous on the level of enforcement, as was highlighted in the recent CJEU decision C-661/11 – Martin Y Paz.

Companies spend a significant part of their investment in order to create a Brand experience for the consumer. Besides large sums spent on the design of consumer goods, companies such as Apple are eager to create a brand experience by implementing a certain store design. Hence, these companies have a well-reasoned urge to protect such distinct store designs utilizing the current intellectual property system. In the tradition of the U.S. approach, where the get-up of a business venue can be protected by trade dress law, the most recent European Jurisprudence seems to tend towards the protection of such a get-up by trade mark law. As this could be good news for companies with a distinct store concept and design, this new approach also raises some concern: How will the protection of the get-up of a business venue affect competition? What are the measures to guarantee only distinct and non-functional store designs will find their way into the holy land of trade mark protection? This article analyzes and compares the current legal situation in the U.S. and the EU and discusses the available measures in place that will safeguard an undistorted competition.

Companies spend a significant part of their investment in order to create a Brand experience for the consumer. Besides large sums spent on the design of consumer goods, companies such as Apple are eager to create a brand experience by implementing a certain store design. Hence, these companies have a well-reasoned urge to protect such distinct store designs utilizing the current intellectual property system. In the tradition of the U.S. approach, where the get-up of a business venue can be protected by trade dress law, the most recent European Jurisprudence seems to tend towards the protection of such a get-up by trade mark law. As this could be good news for companies with a distinct store concept and design, this new approach also raises some concern: How will the protection of the get-up of a business venue affect competition? What are the measures to guarantee only distinct and non-functional store designs will find their way into the holy land of trade mark protection? This article analyzes and compares the current legal situation in the U.S. and the EU and discusses the available measures in place that will safeguard an undistorted competition.

Trademark law relies on the principle of priority: the person first filing for registration (or, depending on the legal system, the person first using a sign) becomes the owner of the right within the territory where the filing (or use) takes place. However, in certain exceptional cases priority is discarded due to superior interests of third parties. International law explicitly recognises two such constellations, namely, protection of well-known marks (Art. 6bis Paris Convention) and unauthorised registration by an agent or representative (6septies Paris Convention). Furthermore, it is widely acknowledged that the priority principle may not apply if a mark is filed in bad faith. The article presents all three constellations from an international and European legal perspective, including a discussion of the Commission proposals for reform of European trademark law. It is argued that while the current law as well as the proposals go beyond what is necessary to comply with international obligations in regard to Art. 6septies and application in bad faith, they do not live up to the required level when it comes to well-known marks. Nevertheless, in spite of certain deficiencies, it is also shown that European trademark law in its current state as well as in view of the envisaged reform proposals presents a fairly comprehensive panoply of options for protection of superior interests in a sign in spite of lacking registration.

This article argues that the regulatory steers in the recent EU Sustainable Disclosure and Taxonomy Regulations rely heavily on the outworking of market-based governance to meet public interest goals in sustainable finance. Hence, additional work in sustainability metrics development that informs the investment sector of sustainable performance in companies would be of key importance. This article argues that there remain gaps in EU leadership for governing metrics development, and suggests that EU-level governance can be designed appropriately, especially in a multi-stakeholder manner, for metrics development and in relation to key information intermediaries in this space.

A PDF version of this book is available for free in open access via www.tandfebooks.com as well as the OAPEN Library platform, www.oapen.org. It has been made available under a Creative Commons Attribution-Non Commercial-No Derivatives 3.0 license and is part of the OAPEN-UK research project. E-commerce offers immense challenges to traditional dispute resolution methods, as it entails parties often located in different parts of the world making contracts with each other at the click of a mouse. The use of traditional litigation for disputes arising in this forum is often inconvenient, impractical, time-consuming and expensive due to the low value of the transactions and the physical distance between the parties. Thus modern legal systems face a crucial choice: either to adopt traditional dispute resolution methods that have served the legal systems well for hundreds of years or to find new methods which are better suited to a world not anchored in territorial borders. Online Dispute Resolution (ODR), originally an off-shoot of Alternative Dispute Resolution (ADR), takes advantage of the speed and convenience of the Internet, becoming the best, and often the only option for enhancing consumer redress and strengthening their trust in e-commerce. This book provides an in-depth account of the potential of ODR for European consumers, offering a comprehensive and up to date analysis of the development of ODR. It considers the current expansion of ODR and evaluates the challenges posed in its growth. The book proposes the creation of legal standards to close the gap between the potential of ODR services and their actual use, arguing that ODR, if it is to realise its full potential in the resolution of e-commerce disputes and in the enforcement of consumer rights, must be grounded firmly on a European regulatory model.

This article discusses bad faith as a ground for trade mark invalidation under European Union law in view of the recent jurisprudence of the Court of Justice and General Court. The author analyses various cases of trade mark filings recently challenged before courts in Europe which may be qualified as made in bad faith due to an attempt to abuse some of the rules governing trade mark law. The author first discusses the famous SkyKick judgment (case C-371/18) of the Court of Justice, concerning very broad specifications of goods or services, including the central question of the importance of the intention to use the mark, and possible implementation of the judgment by the courts. Then the study touches upon the issue of repeat applications and carries out an assessment of the Monopoly judgment (case T-663/19) rendered by the General Court. Finally, the paper discusses the application of the bad faith ground to the filings made for so-called “historical” (or “vintage”) trade marks, namely marks previously registered by third parties that still enjoy some reputation; this issue was recently addressed by the General Court in Nehera (case T-250/21). In view of the developments of the case law applying the concept of bad faith, there is arguably the need to interpret and implement this ground for invalidity taking into account the whole trade mark system, to ensure compliance with its rules and not to question the rationale of other mechanisms governing trade mark law.

The geographical scope of the acquired distinctiveness of EU trade marks (EUTMs) is the subject of recurring dilemmas in case law and among scholars. The development of case law in this area is driven by the endeavour to reconcile the requirement that the acquired distinctiveness of such marks ought to be present throughout all Member States while simultaneously allowing certain evidentiary relaxation in that regard. Ultimately, however, the content of the requirements of establishing acquired distinctiveness in such instances remains, in the light of case law, uncertain. This paper argues that the principle of the unitary character of EUTMs should lead to adopting a more unitary approach towards the assessment of acquired distinctiveness, instead of the country-by-country approach dominant in case law. More specifically, whenever no territorially varying consumer perceptions are involved in establishing a lack of inherent distinctiveness of an EUTM, the territory of the EU should be treated, for the sake of establishing acquired distinctiveness, as a monolith undivided by borders between the Member States. This is normally the case with non-word marks, such as shapes or colour marks, which are perceived in a uniform manner throughout the EU as either possessing or lacking inherent distinctiveness. Concessions from this unitary approach are justified whenever territorially varying perceptions are involved. This normally concerns the descriptiveness or otherwise non-distinctiveness of word marks due to linguistic differences that are tailored across borders between Member States. The posited unitary approach concerning non-word marks should, however, be a measured one. Not only should acquired distinctiveness be present in the majority of the EU territory, but it should also be located at a proper geographical spread (without, however, following the country-by-country method). In the light of this approach, a non-word EUTM could still be registered (and remain incontestable) based on acquired distinctiveness when EU territories where acquired distinctiveness has not been established would constitute “blank” areas sporadically scattered across the Union without, however, constituting a concentrated larger part of the EU. Such “blank” areas could correspond to territories of a specific Member State or Member States. Negative effects of overprotection in such “blank” areas could be subsequently prevented with additional mitigating tools available at the stage of infringement and enforcement of EUTMs.

The issue of reconciling trade mark rights and freedom of expression is a classic question discussed by European scholars which has recently been reopened because of the express reference to “fundamental rights and freedoms, and in particular the freedom of expression” in the preambles of Directive 2015/2436 and of Regulation 2017/1001. In this article, the author argues that, in the light of the EU legislation, conflicts between the freedom of expression and trade mark rights are often illusory. Indeed, in this debate we focus too quickly on the question of resolving a potential conflict, while EU trade mark law itself provides for limits that guarantee respect of the freedom of expression. It should also be borne in mind that commercial expressions enjoy a more restricted freedom since they serve private economic interests and not the interests of society as a whole. The freedom of commercial expression therefore needs to be limited by trade mark rights which are also fundamental rights, having equivalent value. Consequently, it seems unnecessary to envisage use related to the freedom of expression, of a sign reproducing or imitating a trade mark, as a specific limitation of trade mark rights, either in the speciality or in the field of enhanced protection of trade marks with a reputation.

While the creation and still outstanding implementation of the Unified Patent Jurisdiction system continue to cause contentious debates among academics and practitioners, the system introduced in the early 1990s for adjudication of conflicts concerning unitary trade marks (and, later on, unitary design rights) had the charm of simplicity. Building on the national court systems instead of providing for a genuine EU judiciary, the scheme could easily be fitted into existing structures. On the other hand, the imperfect, limping character of the system creates issues inter alia concerning international jurisdiction and applicable law. Furthermore, attributing jurisdiction in infringement litigation to separate national court hierarchies may jeopardize the coherence of the system. While the prospects for reform may be dim insofar as the system in its entirety is concerned, the detrimental effects of fragmentation could be overcome at least to some extent by creating a unitary catalogue of sanctions.