The Protection of Non-Traditional Trademarks

ISBN : 9780198826576

Irene Calboli; Martin Senftleben
432 ページ
156 x 234 mm

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.


Part I: Taking Stock - Legislative Framework and Practical Implications
1. Denis Croze: Making a Large Universe Visually Perceptible: The Development of Non-Traditional Marks in WIPO Treaties
2. Mitchell Adams and Amanda Scordamaglia: Non-Traditional Marks: An Empirical Study
3. Dev Gangjee: Non-Traditional Marks and Classification Traditions
4. Michael Handler: What Should Constitute Infringement of a Non-Traditional Mark?
5. Annette Kur: Keeping Indistinctive and Descriptive Shapes Free - The Broadened Limitation of Protection in the European Union
Part II: Assessing the Legislative Framework - Unresolved Challenges
6. Deven Desai: Should Trademark Laws Protect Non-Traditional Marks as Marketing Practices?
7. Ng-Loy Wee Loon: Special Restrictions on Registration of Product Shape Marks - A Breach of International Law?
8. Irene Calboli: Designing a Stricter Distinctiveness Requirement for Non-Traditional Marks under the Current Legislative Framework(s)
9. Graeme Dinwoodie: Aesthetic Functionality, Acquired Distinctiveness and Non-Traditional Marks
10. Justin Hughes: The Vexing Problem of Aesthetic Functionality in Non-Traditional Marks
Part III: Assessing the Impact on Freedom of Competition - Innovation Concerns
11. Gustavo Ghidini: Non-Traditional Marks as Eternal Monopolies on Product Features?
12. J. Glynn Lunney: Trade Dress Protection: The Error Costs of Making an Exception the Rule
13. Lavinia Brancusi: Assessing the Impact of Registering Non-Traditional Marks: A Competition Law Analysis
14. Arul Scaria: Non-Traditional Marks on Pharmaceutical Products: Non-Traditional Barriers to Access to Medicine?
15. Carolina Castaldi: The Economics and Management of Non-Traditional Marks
Part IV: Assessing the Impact on Freedom of Expression - Social and Cultural Concerns
16. Lisa Ramsey: Non-Traditional Marks and Inherently Valuable Expression
17. Martin Senftleben: The Corrosive Effect of Non-Traditional Marks on Cultural Follow-On Innovation
18. Haochen Sun: The Impact of Non-Traditional Marks on Access to Aesthetic Styles and Symbols


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 the 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 Dusseldorf. 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 litteraire et artistique internationale (ALAI) and the International Association for the Advancement of Teaching and Research in Intellectual Property Law (ATRIP).