Courts should not be given free rein to create new defences against trade mark infringement

Some leading academics have proposed that an "open-ended clause" should be written into EU trade mark law to give courts freedom to create new defences against trade mark infringement on a case-by-case basis.

The provision would allow trade mark law to adapt to changes in technology and ensure that rights to freedom of expression and competition are balanced alongside the rights of brand owners to control how their trade marks are used, they said.

However, trade mark law specialist Iain Connor of Pinsent Masons, the law firm behind Out-Law.com, said it would be wrong to reform EU trade mark laws in the way the academics have proposed.

The academics' recommendation (5-page / 80KB PDF) said: "In order to keep pace with technological developments and to allow the adaptation of the law to changing circumstances, an open-ended clause should be added to the provision on limitations which allows courts to develop appropriate new defences [to infringement] on a case-by-case basis in circumstances where the purposes, objectives and fundamental principles underlying the existing legislation warrant permitting third party use notwithstanding the lack of an express limitation."

Connor called the plans a "recipe for disaster".

"The development of the Community Trade Mark law has already been hijacked by the Court of Justice of the EU (CJEU), interpreting the Directive in ways never anticipated by the legislators by, for example, gold-plating the test for infringement, diluting the absolute protection afforded to identical marks used on identical goods and services and by introducing different tests for online and offline infringement. No court should be given discretion to move away from the unvarnished tests set out in the Directive and that should include the CJEU when interpreting the law."

In their paper, the academics also said a reformed EU trade mark law should introduce new rights to make "free use" of trade marks in certain circumstances. It said the 'free use' right should cover use of trade marks in works of parody, in reporting current events, and in the context of product comparison advertising, among other examples.

The academics also recommended that trade marks should be free to use if brand owners would otherwise obtain a "monopoly on functional product characteristics of a technical or aesthetic nature which consumers are likely to seek in the products of competitors" from being able to rely on trade mark protection.