Chocolate, Fashion, Toys and Cabs: The Misunderstood Distinctiveness of Non-Traditional Trademarks

Editorial Excerpt: What do Cadbury, Toblerone and Kit-Kat chocolates, the Rubik’s Cube and Lego mini-figurine toys, Louboutin shoes, Bottega Veneta bags and London Taxi Company cabs all have in common? These products have been, along with several others, protagonists of the rising trend of registering shapes and other non-traditional trademarks in a variety of countries, and then, in several cases, protagonist of ensuing litigation addressing the validity of these marks. To a large extent, the review panels and the courts involved in these cases have declared several of these marks invalid or have reduced their scope considerably. Hence, these cases have often involved several degrees of litigation and have been heralded in the news. In some instances, the courts have also upheld the validity of non-traditional marks and the possibility to register these signs, for example, with respect to the registrability of the décor of the Apple Store

Geographical Indications of Origin, Economic Development, and Cultural Heritage: Good Match or Mismatch?

In this article, I propose that geographical indications (GIs) carry important economic benefits. First, GIs are essential instruments to facilitate investments in high-quality products and niche markets, and promote local trade and development. Second, GIs offer an additional layer of information for consumers about the geographical origin and quality of the products they identify, in turn reducing the information asymmetries between producers and consumers. Third, because of this information function, GIs can assist in rewarding or holding producers accountable for their products based on the additional information they convey to the market. Yet, GIs can also protect culture-related interests and not only trade. Specifically, in this article, I suggest that protecting GIs can promote local products and their associated knowledge as cultural expressions. In particular, GIs could contribute to preserving cultural heritage and existing traditions, and in turn could promote the recognition of the heritage and traditions nationally and internationally. In the past decade, discussions over the recognition of culture-related concerns have led to the adoption of the Convention for the Safeguarding of the Intangible Cultural Heritage under the patronage of the United Nations Educational, Scientific and Cultural Organization (UNESCO) in 2003. A few years later in 2005, another relevant convention, the Convention on the Protection and Promotion of the Diversity of Cultural Expressions, was adopted by the UNESCO General Conference. Even though neither the 2003 nor 2005 UNESCO Conventions refer to intellectual property or GIs, GIs seem well-suited to also protect culture-based interests under the framework established by these Conventions

Geographical Indications between Trade, Development, Culture, and Marketing: Framing a Fair(er) System of Protection in the Global Economy?

This chapter analyzes some of the topics on the current debate involving geographical indications (GIs) of origin that will be further elaborated by the contributors to this volume from a variety of perspectives and angles. As the title indicates, this volume focuses on GI protection “at the crossroads of trade, development, and culture,” with a specific focus on the countries in the Asia-Pacific region. This choice is due primarily to the fact that the analysis of issues related to GI protection in this region is, to date, not as extensive as the analysis in other regions, particularly in the Western world. This volume intends to fill this gap and aims, in particular, at analyzing the potential benefits, but also related problems, of GI protection for local and national development in Asia-Pacific countries. Trade- and culture-related issues, primarily issues related to the conservation and promotion of local culture and cultural diversity, are also central to the contributions to this volume. As the opening contribution of this volume, this chapter then aims at setting the stage and framing the context for other authors by offering an overview of the status of the GI debate, as well as emphasizing some of the trends that have become salient features of this debate in Asia-Pacific, and worldwide. These trends are, in particular, the following: the globalization of the GI debate beyond Western countries and beyond a “wine and cheese” agenda, or trade war, between primarily Western interests; the increased attention for the potential benefits of GI protection by developing countries and the often neglected attention to the potential problems associated with GI protection for local producers in these countries; and the increasing loosening of the definition of GIs as symbols of true geographical origin in favor of a definition granting exclusive rights based on the “historical reputation” of GIs

Geographical Indications: new perspectives and recent developments

Not even three decades ago, Geographical Indications (GIs) were a niche subject. Scholarship on the topic was rare, in particular, in the English-speaking world. Then, after the adoption of the TRIPS Agreement, the role of GIs started to become increasingly more prominent at the multilateral level, as well as part of free trade agreements\u27 negotiations and national policies. This translated to a growing body of scholarship that included not only authors from Europe, the continent from which GIs originate, but also from other countries and the global South. In the past ten years, attention to GIs has continued to grow and the legal treatment of GIs has become a fundamental part of policy discussions on economic and social development both nationally and internationally. Today, the field attracts distinguished scholars from every continent and different disciplines. In brief, GIs have become a primary area of Intellectual Property Law

Reading the Tea Leaves in Singapore: Who Will Be Left Holding the Bag for Secondary Trademark Infringement on the Internet

This Article explores the issue of secondary liability in Singapore trademark law, with particular attention to intermediaries on the Internet, including Internet service providers (ISPs), e-commerce companies, search engines, website operators, online financial service providers and social media sites. Section 27(5) of the Singapore Trade Marks Act attributes liability to those who use a mark knowing or having reasons to believe that such use is not authorized by the trademark owner or licensee. More precisely, the provision excludes trademark liability for those persons who use a trademark in the course of trade, namely for labelling or packaging goods or as a sign on commercial documents or in advertising, provided that they do[] not know nor ha[ve] reason to believe that the owner of the mark or his licensee has not consented to such use. Although the provision was adopted before widespread use of the Internet, its wording excludes Internet intermediaries from liability just as it excludes intermediaries in the brickand-mortar world. Section 27(5) does not elaborate, however, on the meaning of knowing or having reasons to believe or on the level of knowledge necessary to infer liability under the provision. In particular, must the person referred to in section 27(5) have actual knowledge that the use of the mark was unauthorized, or is constructive knowledge sufficient to find trademark liability? Similarly, does the phrasing have reasons to know include the concept of willful blindness-that is, shutting one\u27s eyes in the face of an obvious infringement? Moreover, the provision does not mention whether courts, in assessing secondary liability for trademark infringement, should consider intermediaries\u27 degree of control over the activities at issue in addition to intermediaries\u27 knowledge of such activities. Yet, on a general level, the element of control constitutes one of the most relevant elements to consider in assessing claims of secondary liability, particularly as evidence supporting a presumption of constructive knowledge or willful blindness when the plaintiffs cannot prove that intermediaries had actual knowledge. Intermediaries who have a degree of control over the activities of their users may in fact be more likely to know or to have reasons to believe that the use of the mark was not authorized, when compared to the intermediaries who did not have such control. Adding to this statutory uncertainty, the courts in Singapore have not had the opportunity, to date, to apply or interpret the language of section 27(5), either in general or with respect to intermediaries on the Internet. This Article addresses this interpretative vacuum and suggests that some useful guidelines in this area could be derived from existing judicial precedents in Singapore in the copyright context, specifically those cases in which the Singapore courts have interpreted the concepts of authorizing and secondary copyright infringement under the Singapore Copyright Act. In these cases, the courts elaborated on the level of knowledge required to find intermediaries liable for copyright infringement. In relation to this analysis, the courts also discussed the level of control that intermediaries must have over their users, either in practice or by contract, to find secondary copyright liability. As a result, the principles elaborated on in these decisions could assist the courts in future trademark cases under section 27(5). Furthermore, the analysis in these decisions indicates that, when addressing secondary liability copyright claims, courts in Singapore carefully considered public interest and market competition concerns stemming from the imposition of copyright liability. Building upon the courts\u27 analysis in these cases, this Article observes that the same concerns would certainly guide the courts when deciding claims relating to secondary trademark liability. In line with the theme of this Symposium, this Article additionally considers the ongoing debates over increasing the duty of care of online intermediaries and the possibility that such a requirement would be adopted in Singapore. Trademark owners have advocated for the introduction of a duty of care requirement in multiple jurisdictions (so far with no success), yet this Article notes that the introduction of such an additional requirement for online intermediaries seems unlikely in Singapore, at least for the time being. Notably, the current text of section 27(5) already provides a comprehensive framework to address claims of secondary trademark liability, including for Internet intermediaries. As a result, to directly paraphrase the title of this Symposium, trademark owners may be left holding the bag of continuing to assist intermediaries in monitoring the Internet for possible trademark (and copyright) infringement. This, however, may not represent a negative development for trademark owners, as they remain the best equipped to assist intermediaries with this duty of care. Ultimately, as the title of this Article suggests, the observations elaborated on in the following pages remain a matter of personal (academic) speculation since the precise answers to the questions addressed could be provided only when, and if, the courts in Singapore rule on the issue of secondary trademark liability. Yet, academic exercises frequently involve reading tea leaves, and Singapore judicial precedents in copyright law certainly offer important insights with respect to the topic at issue

In Territorio Veritas? Bringing Geographical Coherence into the Ambiguous Definition of Geographical Indications of Origin

In this article, I touch upon a topic that remains highly controversial in international intellectual property law—the legal protection of geographical indications of origin (GIs): Chianti wine, Champagne sparkling wine, Gorgonzola cheese, Parma ham, Darjeeling tea, Colombian coffee, and other terms that indicate (or are supposed to indicate, as I will develop in this article) the geographical origin of the products they identify. In line with the theme of this special issue of the WIPO Journal, I focus on the requirement of “geographical origin” upon which the protection of GIs has been historically built and is generally justified. In particular, I question the ambiguity that characterises the current definition of GIs under art.22(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), which does not require that products originate entirely from their GI-denominated regions to enjoy GI protection as long as the quality, characteristic or reputation of the products at issue can be “essentially” attributed to those regions. In my previous scholarship, I have recognised that GIs add value to the products that they identify and this may offer a competitive advantage to their producers, but I have nonetheless concluded that a system of GI protection is more beneficial for economic development than a system in which competitors can freely use geographical terms without a direct connection to the GI-denominated region. In particular, I have highlighted that GIs can benefit local economies, the environment, and the conservation of local culture. Moreover, I have underlined that GIs do not grant an exclusive right over a type of product. Cheese makers in Wisconsin, for example, would remain free to produce and market “mozzarella” and “mozzarella di bufala” even if the UnitedStates concedes to the long-held pressure of the European Union (EU) to “claw-back” several geographical names of cheese (currently held to be generic in the United States). Equally asrelevant, TRIPs permits competitorsto use GIsin descriptive contexts(e.g. comparative advertising) and to name their products as a “style”, “like” or “type” of GI-related product in several circumstances—the only exception to this general rule are GIs identifying wines and spirits. Still, in my writing I have expressed scepticism over GI protection when the products at issue are not grown or manufactured entirely or nearly entirely in the GI-denominated territory. In these cases, I have argued that GI protection indeed may transform into an unjustified anticompetitive subsidy as well as a tool for potential consumer confusion, or even deception. In this article, I further bring my scepticism to what I call “ambiguous geographical origin” of GIs and advocated against the misuse, or misinterpretation, of the terms “geographical origin” in art.22(1) of TRIPs. More specifically, I expose the partial inconsistency between the legal definition under TRIPs and the dictionary definition of the terms “geographical” and “origin”. In this respect, I point out that, from a strictly linguistic standpoint, the term “geographical”, in its variation as “geographic”, is defined as “of or relating to geography” and as “belonging to or characteristic of a particular region”. Likewise, the word “origin” is defined as “the point at which something begins or rises or from which it derives”. Based on these definitions, I note that art.22(1) of TRIPs essentially misuses, or at least misinterprets, the notion of the terms “geographical” and “origin” and expandsthe scope of GI protection beyond the meaning of these terms. This departure from a literal interpretation contributes to granting exclusive rights to GIs beyond the original rationale for protection, which remains protecting GIsfor the information they convey to the public about products’ geographical origin and as incentives for investment in local economies. In this article, I argue that this should not be permitted and that the definition and protection of GIs should return to coherently identifying products’ “geographical origin”. My argument in favour of this narrower approach is threefold. First, as noted by GI critics, GIs become an unjustified barrier to entry in the market, and a disguised subsidy, when they do not fully reflect the geographical origin of the products that they identify. Secondly, the use of GIs on products not fully locally grown or made becomes a source of misinformation for the consumers that rely on the GI as a source of geographical information, and a potential source of negative reputation for producers that operate within the GI-denominated region when the former products are of lesser or different quality, or pose a safety or health-related issue. Finally, adopting a stricter territorial approach could be the much-needed solution for bringing back legitimacy to the international debate over GIs. As I note in this article, GIs are and remain an important tool for economic and cultural development—finding a compromise like the one advocated in this article could perhaps move forward the gridlocked international agenda on GI protection

Trademarks and the COVID-19 Pandemic: An Empirical Analysis of Trademark Applications Including the Terms COVID, Coronavirus, Quarantine, Social Distancing, Six Feet Apart, and Shelter in Place

True to its nature as a (hopefully) once in a lifetime event, the COVID-19 pandemic has led to a tsunami of trademark applications. These include the terms “COVID,” “Coronavirus,” and other medical and pandemic-management related terms. This unprecedented number of applications has been highlighted by several commentators in general terms in the past months. This Article examines these applications in detail. Notably, the Article presents the first and most complete survey of the applications filed between the onset of the pandemic and the end of 2020, which include the following terms: “COVID,” “Coronavirus,” “Quarantine,” “Social Distancing,” “Six Feet Apart,” and “Shelter in Place.” The author chose to include four additional terms related to the pandemic besides “COVID” and “Coronavirus” to illustrate the broader effects of the pandemic on the trademark application process. The Article proceeds as follows: Section II describes the methodology used to collect and examine the relevant “COVID-19 related” applications; Section III presents the data with specific details regarding the products for which the applications have been filed, the type of filing entities, the legal basis for filing, and the date of filing throughout the relevant period—the year 2020; Section IV elaborates on the distinct legal challenges that the “COVID-19 related” applications may face in order to be registered, notably the possibility that the signs are found to be descriptive, generic, or misleading, or cannot function as marks; Section V concludes and compares the data related to these applications with previous filings for signs including terms related to past sensational events, including pandemics. This comparison shows that the numbers of “COVID-19 related” applications are much higher than the filings submitted in the past. Moreover, 2020 saw a large increase in the numbers of trademark filings including other medical terms. This again illustrates the catalyst effect of the COVID-19 pandemic on the trademark application system. For the interest of the readers, the Article includes the complete dataset presented as Appendix

Trade marking ‘COVID’ and ‘Coronavirus’ in the USA: an empirical review

Famous and sensational events often lead to several entities filing trade mark applications that include terms related to these events. The most recent example of this phenomenon is the COVID-19 pandemic, which has led to large numbers of (largely controversial) filings worldwide. In this article, I review the applications including the terms ‘COVID’ and ‘Coronavirus’ filed with the United States Patent and Trademark Office (USPTO) in 2020 based on the data available and recorded by the end of January 2021. These data offer significant information related to the type of products for which the applications were filed, the type of filing entities, the legal basis for filings and the timing of these filings throughout the months of 2020. In particular, the COVID-19 pandemic led not only to a large number of filings for medical and pandemic related products, but also, and even more, for unrelated and promotional products. Individuals and small businesses were the largest groups of filing entities. Moreover, over two-thirds of the filings were submitted based on intent-to-use rather than use in commerce. Not surprisingly, the number of filings closely mirrored the development of the pandemic during the various months of 2020. Perhaps, one of the lessons that could be derived from the COVID-19 pandemic, and this unprecedented number of applications, is the need to further study the phenomenon of ‘sensation-drive’ trade mark filings and the problems that these filings can represent for the trade mark system

What if, After All, Trademarks Were Traded in Gross

The conditions upon which trademarks should be traded --that is, assigned and licensed in the marketplace--have traditionally been at the center of the trademark debate. Historically, based upon the assumption that trademarks can be protected only as conveyers of commercial information and as symbols of business goodwill, trademark law has prohibited trading in trademarks in gross and has required that trademarks be assigned with their goodwill and licensed only as long as licensors control the quality of the products. Yet, these criteria have been proven controversial and difficult to enforce because they hinge on two concepts that are ambiguous and difficult to frame in a legislative context: trademark goodwill and quality control. Not surprisingly, the result of such uncertainty has been inconsistent case law and much ambiguity as to what currently represents a valid assignment and a valid license. This Symposium Essay summarizes my previous scholarship arguing against these inconsistencies and advocating for a change in the current standards. Specifically, this Essay repeats, in a shorter format, the proposal of the adoption of new rules that would allow trading of trademarks in gross --that is, assignment with or without goodwill and licensing with or without control. In support of these changes, this Essay reiterates that the current rules are negatively affecting market competition and promoting unnecessary legal actions. Building upon the recent judicial trend, this Essay concludes repeating my previous positions that the courts should assess the validity of assignments and licensing by focusing directly on the result of the agreements at issue-whether the use of the assigned or licensed marks will confuse or deceive the public