1. WIPO Sixth Advanced Research Forum Geneva, May 30, 2012 Trademark Law and the Public Domain Prof. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

2. Contents Introduction Notion of Public Domain Impact of Trademark Law Conclusion

3. Introduction

4. Impact of IP on trade worldwide copyright: information products patents: technical know-how distinctive signs: product marketing, goodwill

5. too heavy a burden for developing countries? 1994 TRIPS Agreement

6. WIPO Development Agenda ‘Consider the preservation of the public domain within WIPO’s normative processes and deepen the analysis of the implications and benefits of a rich and accessible public domain.’ (Adopted Recommendation 16) ‘To promote norm-setting activities related to IP that support a robust public domain in WIPO’s Member States...’ (Adopted Recommendation 20)

7. master consultant and 14 region reporters basis: template for region reports –scope of protection –common patrimony signs –signs to be kept free for the public 02-12/2011: coordination of report writing 03/2012: final report presenting region reports and providing theoretical framework, summary and impact assessment Study on Misappropriation of Signs

8. Notion of ‘Public Domain’

9. narrow definition =unprotected material that is freely available (potential access problem) broad definition =unprotected material that is freely available +all instances in which protected material may be used freely (exceptions and limitations) Notion of ‘Public Domain’

10. copyright law: creation sufficient 70 years post mortem auctoris Term of protection patent law: registration requirement 20 years

11. Copyright law: an inspiration system public domain of cultural expression (cultural heritage)

12. Patent law: an innovation system public domain of technical solutions (know-how commons)

13. costs during period of protection but also constant enrichment of the public domain ideally: engine of cyclic innovation creation I creation II Limited term of protection

14. Impact of Trademark Law

15. renewable indefinitely copyright law: as of creation 70 years post mortem auctoris Potentially indefinite protection patent law: as of registration 20 years trademark law: registration or use

16. Trademark law: a market transparency system distinctive signs to be protected as long as they are used as source identifiers

17. Impact of trademark law divergence of principles: static market transparency system

18. narrow definition =unprotected material that is freely available (potential access problem) broad definition =unprotected material that is freely available +all instances in which protected material may be used freely (exceptions and limitations) Notion of ‘Public Domain’

19. general bar to registration and protection as trademarks exclusion on the basis of the basic protection requirement of ‘distinctiveness’ limited scope of trademark rights exceptions to trademark rights covering specific forms of use Public domain in trademark law

20. General bar to registration and protection

21. deceptive signs –“Orwooola” for goods made 100% of synthetic material –also with regard to signs of indigineous peoples signs contrary to morality or public order –“Jesus” for jeans –“Cannabia” for foodstuff Which signs may be denied registration? (Art. 6 quinquies (B) PC)

22. emblems of States or intergovernmental organizations Which signs may not be registered or used as trademarks? (Art. 6 ter (1) and (2) PC)

23. extensions at the national level Which signs may not be registered or used as trademarks? (Art. 6 ter (1) and (2) PC)

24. Technical and esthetic functionality

25. ‘…the prohibition on registration as a trade mark of any sign consisting of the shape of goods which is necessary to obtain a technical result ensures that undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions.’ (para. 45) qualified as functional also to safeguard freedom of competition CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)

26. Exclusion on the basis of a lack of distinctiveness

27. signs devoid of distinctive character –general expressions used in advertising –signs that are not perceived as source identifiers generic signs –“Apple” for apples –cultural and social context decisive Which signs may be denied registration? (Art. 6 quinquies (B) PC)

28. Descriptive signs consisting exclusively of signs indicating the... kind, quality, quantity value, intended purpose place of origin other characteristics …of the goods or services. Which signs may be denied registration? (Art. 6 quinquies (B) PC)

29. New kinds of marks

30. Federal Patent Court of Germany, 25 November 1997, ‘Mona Lisa’ The Mona Lisa is not distinctive. The Mona Lisa has become customary in trade practices. But there is no conflict with morality or public order.

31. distinctiveness may be acquired through use in trade Less absolute

32. Signs of cultural significance

33. Limited scope of trademark rights

34. principle of specialty (protection relating to specific goods/services) notion of trademark use –mere references to the trademark sufficient? –cultural, political, religious, educational context but enhanced protection of well-known marks –may cover all kinds of goods and services –proof of confusion not necessarily required Limited scope of trademark protection

35. Exceptions covering specific forms of use

36. Basis: Article 17 TRIPS Criteria to be fulfilled by limitations: limited exceptions example: fair use of descriptive terms take account of legitimate interests of the trademark owner (and interests of third parties)

37. Exceptions found at the national level personal name, address, geographic name or place of business indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production and other characteristics of goods or services functional features of a container, shape, configuration, colour or pattern

38. Exceptions found at the national level indications concerning the intended purpose of a product or service, particularly in the case of accessories or spare parts prior rights that have been acquired in good faith use in comparative advertising use for the resale of goods

39. Conclusion

40. substantial differences in the use of available instruments guidelines for identifying the most appropriate instrument –various factors to be considered –exclusions from protection: need to keep free vs. risk of confusion –exemption of specific forms of use: legal certainty as to inherent limits of protection vs. adoption of exceptions Impact assessment

41. The end. Thank you! For publications, search for ‘senftleben’ on www.ssrn.com. contact: m.r.f.senftleben@vu.nl