Trade Mark Protection

1. Trade Mark Protection Trade mark

2. Trade Mark Protection: Scope Trade Mark

3. Valuable Third Party Uses Comp Ads Accessory Products Related Services Resale of Second hand goods Trade Mark Competitors Describing Products Artistic Parodic Uses Political Expressive Uses

4. Enlarging Scope of Marks (eg to protect additional functions) Comp Ads Accessory Products Related Services Resale of Second hand goods Trade Mark Competitors Describing Products Artistic Parodic Uses Political Expressive Uses

5. Policy Options • Limit scope of protection (current TMD. art. 5; Recast TMD, art. 10) * Original Commission/MPI Proposal (limit double identity to protect origin function) • Create Defences Explicitly to Authorise third party uses (current, TMD, art 6; Recast TMD, art. 14)

6. Options (drawing from US)

7. New Kids on the Block: Nominative Fair Use (1) the product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. Note on dynamics: drawing from Smith v. Chanel (cf Interflora)

8. (1) the product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. (1) use of plaintiff's mark is necessary to describe both the plaintiff's product or service and the defendant's product or service; (2) defendant uses only so much of the plaintiff's mark as is necessary to describe plaintiff's product; and (3) defendant's conduct or language reflect the true and accurate relationship between plaintiff and defendant's products or services Note on Dynamics: after prima facie case NKOTB Lending Tree

9. Rogers v. Grimaldi • A Lanham Act claim will be barred by the First Amendment unless the potentially confusing title (1) has no artistic relevance to the underlying work whatsoever or (2) explicitly misleads as to the source or content of the work • E.S.S. Entertainment 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008)

10. 2006 Dilution Defenses (A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with— (i) advertising or promotion that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner. (B) All forms of news reporting and news commentary. (C) Any noncommercial use of a mark.

11. Louis Vuitton v. Haute Diggity Dog

12. 2006 Defenses (A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with— (i) advertising or promotion that permits consumers to compare goods or services; or (ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner. (B) All forms of news reporting and news commentary. (C) Any noncommercial use of a mark.

13. Use as a Mark

14. Structuring Defences: Principles and Considerations 1. Defences are needed when the third party use would otherwise be prohibited (or is close enough that the valuable use might be chilled by threats)

15. Structuring Defences: Principles and Considerations • Defences are needed when the third party use would otherwise be prohibited (or is close enough that the valuable use might be chilled by threats) * Need to make clear that not merely applicable when not infringing anyway

16. Structuring Defences: Principles and Considerations • Defences are needed when the third party use would otherwise be prohibited (or is close enough that the valuable use might be chilled by threats)

17. Structuring Defences: Principles and Considerations • Defences are needed when the third party use would otherwise be prohibited (or is close enough that the valuable use might be chilled by threats) * Need to make clear that not merely applicable when not infringing anyway • How to Define Permissible Acts?

18. Structuring Defences: Principles and Considerations • Defences are needed when the third party use would otherwise be prohibited (or is close enough that the valuable use might be chilled by threats) • How to Define Permissible Acts? • Illustrations?

19. Options • Lists certain uses (the Parliament proposal gave a very full list; now see recital 27) • Policy concerns • Need for future-proofing and adaptation • Has to be non-exhaustive • With one open-ended option? • Extend Due Cause? • Or Recommendation, page 2 . . .

20. Structuring Defences: Principles and Considerations • Defences are needed when the third party use would otherwise be prohibited (or is close enough that the valuable use might be chilled by threats) • How to Define Permissible Acts? • Illustrations . . . But not only specific illustrations, so as to ensure adaptability

21. Structuring Defences: Principles and Considerations • Defences are needed when the third party use would otherwise be prohibited (or is close enough that the valuable use might be chilled by threats) • How to Define Permissible Acts? • Illustrations . . . But not only specific illustrations, so as to ensure adaptability • Illustrations: also useful for certainty and clarity