Professor Annette Kur, Max Planck Institute for Innovation and Competition, 'Striving for a Better Balance: changes in the catalogue of Trade Mark limitations and exceptions'

CJEU jurisprudence on trade mark infringement has attracted much critical attention, in particular with regard to double identity cases and the Court’s functions theory. It was feared that by extending protection of ‘normal’ marks to non-origin related uses the balance between the proprietor’s exclusionary rights and the interests of third parties to use the mark in their own commercial communication would become severely distorted. It added to those misgivings that the catalogue of limitations and exceptions currently enshrined in articles 6 TMD and 12 CTMR only addresses a number of specific situations, so that, due to its finite character, it is not capable of encompassing the entirety of constellations in which a mark is used for basically legitimate purposes. After the EU Commission’s attempts have failed to limit double identity protection to uses affecting the origin function, it thus became a matter of primary concern to broaden the scope of the limitations and exceptions so as to restore a reasonable equilibrium. The lecture will explore to what extent those attempts have been successful. In the first place this concerns future article 14 (1)(c) TMD (article 12(1)(c) EUTMR) that embraces all kinds of referential uses. However, equally important is a rather inconspicuous amendment in future article 14(1)(b) TMD (article 12(1)(b) EUTMR) that permits use of ‘indistinctive signs’. The potential impact of that amendment appears to be somewhat obscure, in particular as it does not have a forerunner in existing legislation anywhere. It will be argued that at least in principle it may become an important balancing tool addressing and correcting some of the shortcomings in current legal practice

The series is open to everyone and registration is not required. Seminars are typically held in The Dorfman Room, St Peter’s College at 5.15pm-6:45pm (exceptions are noted on the event page).  Please report to the Porter’s Lodge on arrival for directions. Refreshments are provided. (Please direct enquiries to jennifer.hassan@law.ox.ac.uk)

Convenors: Graeme Dinwoodie, Dev Gangjee & Robert Pitkethly