The Protection of Non-Traditional Trademarks

Critical Perspectives

Edited by Irene Calboli and Martin Senftleben

Detailed analysis of the issues related to the protection of non-traditional marks including colour, sound, smell, and shape marks
Overview of the debate and state of the law surrounding non-traditional marks at the international, regional, and national level
Addresses relevant international treaties administered by the World Intellectual Property Organization (WIPO) and the Agreement on Trade-Related Aspects to Intellectual Property Rights (TRIPS) as well as several regional and national legislations and leading judicial decisions
This is an open access title available under the terms of a CC BY-NC-ND 3.0 licence.

Voted IPKAT Best Trade Mark Book 2018

The Protection of Non-Traditional Trademarks

Critical Perspectives

Edited by Irene Calboli and Martin Senftleben

Description

This volume offers a detailed analysis of the issues related to the protection of non-traditional marks.

In recent years, the domain of trademark law and the scope of trademark protection has grown exponentially. Today, a wide variety of non-traditional marks, including colour, sound, smell, and shape marks, can be registered in many jurisdictions. However, this expansion of trademark protection has led to heated discussions and controversies about the impact of the protection of non-traditional marks on freedom of competition and, more generally, on socially valuable use of these or similar signs in unrelated non-commercial contexts. These tensions have also led to increasing litigation in this area across several jurisdictions.

This book provides an overview of the debate and state of the law surrounding non-traditional marks at the international, regional, and national level. In particular, this book addresses relevant international treaties administered by the World Intellectual Property Organization (WIPO) and the Agreement on Trade-Related Aspects to Intellectual Property Rights (TRIPS) as well as several regional and national legislations and leading judicial decisions in order to examine current law and practice culminating in critical reflections and suggestions on the topic.

This is an open access title available under the terms of a CC BY-NC-ND 3.0 licence. It is free to read at Oxford Scholarship Online and offered as a free PDF download from OUP and selected open access locations.

Voted IPKAT Best Trade Mark Book 2018

The Protection of Non-Traditional Trademarks

Critical Perspectives

Edited by Irene Calboli and Martin Senftleben

Part I: Assessing the Legal Framework and Unresolved Challenges
1:Making a Large Universe Visually Perceptible: The Development of Non-Traditional Marks in WIPO Treaties, Denis Croze
2:Non-Traditional Marks: An Empirical Study, Mitchell Adams and Amanda Scordamaglia
3:Paying the Price for Admission: Non-Traditional Marks Across Registration and Enforcement, Dev Gangjee
4:Yellow Dictionaries, Red Banking Services, Some Candies and a Sitting Bunny: Protection of Colour and Shape Marks from a German and European Perspective, Annette Kur
5:Non-Traditional Marks and the Dilemma of Aesthetic Functionality, Justin Hughes
6:Should Trademark Laws Protect Non-Traditional Trademarks?A Look at How Marketing Practices Try to Capture Essences, Deven Desai
7:Absolute Bans on the Registration of Product Shape Marks - A Breach of International Law?, Ng-Loy Wee Loon
8:What Should Constitute Infringement of a Non-Traditional Mark? The Role of “Trademark Use”, Michael Handler
9:Protecting Non-Traditional Trademarks in China: New Opportunities and Challenges, Hoachen Sun
Part II: Assessing the Impact on Competition and Culture
10:The Protection of (Three-Dimensional) Shape Trademarks and Its Implications for the Protection of Competition, Gustavo Ghidini
11:Non-Traditional Trademarks: The Error Costs of Making an Exception the Rule, J. Glynn Lunney
12:Assessing the Impact of Non-Traditional Marks: A European Union Competition Law Analysis, Lavinia Brancusi
13:The Economics and Management of Non-Traditional Marks: Why, How Much, What and Who, Carolina Castaldi
14:Non-Traditional Marks on Pharmaceutical Products: Non-Traditional Barriers to Access to Medicine?, Arul Scaria and Kavya Susan Mammen
15:Hands Off "My" Colors, Patterns, and Shapes! How Non-Traditional Trademarks Promote Standardization and May Negatively Impact Creativity and Innovation, Irene Calboli
16:A Clash of Culture and Commerce: Non-Traditional Marks and the Impediment of Cyclic Cultural Innovation, Martin Senftleben
17:Non-Traditional Marks and Inherently Valuable Expression, Lisa Ramsey
18:Non-Traditional Trademark Protection as (Non-Traditional) Means of Cultural Control, Katya Assaf

Voted IPKAT Best Trade Mark Book 2018

The Protection of Non-Traditional Trademarks

Critical Perspectives

Edited by Irene Calboli and Martin Senftleben

Author Information

Edited by Irene Calboli, Professor, Texas A&M University School of Law, and Martin Senftleben, Professor, Vrije Universiteit Amsterdam

Irene Calboli is Professor of Law at Texas A&M University School of Law, and Transatlantic Technology Law Forum Fellow at Stanford Law School. She has been a visiting professor and scholar in academic institutions world-wide. Most recently, she was Visiting Professor, Lee Kong Chian Fellow, and the Founding Deputy Director of the Applied Research Centre for Intellectual Assets and the Law in Asia, a Centre that she headed from 2015 until 2017, at Singapore Management University School of Law. An elected member of American Law Institute and associate member of the Singapore Academy of Law, she currently serves, inter alia, as member of the Council of the International Law Association (Singapore Branch), Chair of the Art Law Section of the Association of American Law Schools, and member of the Legislation and Regulation Committee of the International Trademark Association.

Martin Senftleben is Professor of Intellectual Property, Centre for Law and Internet, Vrije Universiteit Amsterdam, and Of Counsel, Bird & Bird, with admission to the bar in The Hague and Düsseldorf. Besides intellectual property courses at his own university, he regularly teaches at the Centre for International Intellectual Property Studies (CEIPI), Strasbourg, the EBS University of Business and Law, Wiesbaden, the HANKEN School of Economics, Helsinki, the Munich Intellectual Property Law Center (MIPLC) and the Universities of Vienna and Catania. Professor Senftleben is a member of the Executive Committee of the Association littéraire et artistique internationale (ALAI) and the International Association for the Advancement of Teaching and Research in Intellectual Property Law (ATRIP).

Contributors:

Mitchell Adams, Swinburne University Law School
Katya Assaf, Faculty of Law, Hebrew University of Jerusalem
Lavinia Brancusi, Institute of Law Studies, Polish Academy of Sciences
Irene Calboli, Singapore Management University School of Law and Texas A&M University School of Law
Carolina Castaldi, Department of Industrial Engineering & Innovation Sciences Department of Industrial Engineering & Innovation SciencesDepartment of Industrial Engineering and Innovation Science, Technische Universiteit Eindhoven
Denis Croze, World Intellectual Property Organization
Deven Desai, Scheller College of Business, Georgia Tech University
Graeme Dinwoodie, Faculty of Law, University of Oxford
Dev Gangjee, Faculty of Law, University of Oxford
Gustavo Ghidini, Faculty of Law, Università Statale of Milano
Michael Handler, Faculty of Law, University of New South Wales
Justin Hughes, Loyola law School, Los Angeles
Annette Kur, Max Planck Institute for Innovation and Competition, Munich
Ng-Loy Wee Loon, Faculty of Law, National University of Singapore
J. Glynn Lunney, Texas A&M University School of Law
Lisa Ramsey, University of San Diego School of Law
Arul Scaria, National Law University, Delhi
Amanda Scordamaglia, Swinburne University Law School
Martin Senftleben, Faculty of Law, Vrije Universiteit Amsterdam
Haochen Sun, Faculty of Law, University of Hong Kong

Voted IPKAT Best Trade Mark Book 2018

The Protection of Non-Traditional Trademarks

Critical Perspectives

Edited by Irene Calboli and Martin Senftleben

Reviews and Awards

Voted IPKAT Best Trade Mark Book 2018

"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 [...] 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 book is a useful source for policymakers, trade mark examiners, trade mark attorneys, judges and researchers with an interest 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." - Hayleigh Bosher, IPKAT