Wolf in Sheep’s Clothing? Trade Mark Rights Against Goods in Transit and the End of Traditional Territorial Limits

The December 2015 reform of EU trade mark law led to the introduction of a new exclusive right against goods in transit in Art. 9(4) of the EU Trade Mark Regulation and Art. 10(4) of the Trade Mark Directive. This new right raises complex questions of compliance with the international guarantee of freedom of transit set forth in Art. V GATT. In the light of the applicable international provisions, the status of the new right against goods in transit must at least be qualified as ambiguous. It is conceivable that it will be challenged on the ground that it leads to an unjustified impediment of international trade. As the new EU trade mark legislation requires the application of Art. 9(4) of the EU Trade Mark Regulation and Art. 10(4) of the Trade Mark Directive in line with international standards, in particular Art. V GATT, courts will have to face the complexity of the international legal framework and develop workable solutions by applying an amalgam of EU and international law. The result of this exercise will show whether the potential corrosive effect of the new right can be kept within reasonable limits. An overambitious interpretation would unmask the new right as a wolf in sheep’s clothing that imposes a heavy burden on world trade

The International Three-Step Test - A Model Provision for EC Fair Use Legislation

The three-step test is central to the regulation of copyright limitations at the international level. Delineating the room for exemptions with abstract criteria, the three-step test is by far the most important and comprehensive basis for the introduction of national use privileges. It is an essential, flexible element in the international limitation infrastructure that allows national law makers to satisfy domestic social, cultural, and economic needs. Given the universal field of application that follows from the test’s open-ended wording, the provision creates much more breathing space than the more specific exceptions recognized in international copyright law. EC copyright legislation, however, fails to take advantage of the flexibility inherent in the three-step test. Instead of using the international provision as a means to open up the closed EC catalogue of permissible exceptions, offer sufficient breathing space for social, cultural, and economic needs, and enable EC copyright law to keep pace with the rapid development of the Internet, the Copyright Directive 2001/29/EC encourages the application of the three-step test to further restrict statutory exceptions that are often defined narrowly in national legislation anyway. In the current online environment, however, enhanced flexibility in the field of copyright limitations is indispensable. From a social and cultural perspective, the web 2.0 promotes and enhances freedom of expression and information with its advanced search engine services, interactive platforms, and various forms of user-generated content. From an economic perspective, it creates a parallel universe of traditional content providers relying on copyright protection, and emerging Internet industries whose further development depends on robust copyright limita- tions. In particular, the newcomers in the online market – social networking sites, video forums, and virtual worlds – promise a remarkable potential for economic growth that has already attracted the attention of the OECD. Against this background, the time is ripe to debate the introduction of an EC fair use doctrine on the basis of the three-step test. Otherwise, EC copyright law is likely to frustrate important opportunities for cultural, social, and economic development. To lay groundwork for the debate, the differences between the continental European and the Anglo-American approach to copyright limitations (section 1), and the specific merits of these two distinct approaches (section 2), will be discussed first. An analysis of current problems that have arisen under the present dysfunctional EC system (section 3) will then serve as a starting point for proposing an EC fair use doctrine based on the three-step test (section 4). Drawing conclusions, the international dimension of this fair use proposal will be considered (section 5)