C. En particulier: le sondage d’opinion
III. Non-Traditional Trademarks as Means To Perpetually Protect Product
Perpetually Protect Product Designs and Aesthetic Product Features
What do Louboutin red soles, Gucci and Louis Vuitton monogrammed patterns, Gucci stripes, Louis Vuitton Check, and the Bottega Veneta in-trecciato have in common? These signs have been, with several others, protagonists of the rising trend of applications to register shapes and other non-traditional signs as trademarks in a variety of countries.33In some cases, these signs were found not to be suitable for registration as trademarks, at least at first.34Still, their owners managed to secure regis-trations after several rounds of office actions in several intellectual prop-erty offices, even though some of these registrations were later invali-dated because of litigation.35Ultimately, in several instances, the owners of these marks also relied on their acquired registrations to launch legal
(Three-Dimensional) Shape Trademarks and Its Implications for the Protection of Competition in: Irene Calboli/Martin Senftleben (eds.),The Protection of Non-Tra-ditional Marks, 203–16 (2018); see alsoGLYNN LUNNEY, Non-Traditional Trade-marks: The Error Costs of Making an Exception the Rule, in: Irene Calboli/Martin Senftleben (eds.), The Protection of Non-Traditional Marks, 217–34 (2018).
31 HEYMANN,supranote 21, at 247.
32 IRENECALBOLI, Hands Off «My» Colors, Patterns, and Shapes! How Non-Tradi-tional Trademarks Promote Standardization and May Negatively Impact Creativity and Innovation, in: Irene Calboli/Martin Senftleben (eds.), The Protection of Non-Traditional Marks, 287–308 (2018).
33 SeediscussioninfraPart III and Part IV.
34 Id.
35 Id.
proceedings against competitors who had used similar styles and aes-thetic features for their own products based on possible trademark or trade dress infringement, dilution, and unfair competition.36Certainly, the copier has used very similar, if not identical, colors and patterns for their products. But why should one company be allowed to monopolized patters, colors, and styles for a potentially unlimited period of time? As I mentioned above, how can this result be considered compatible with the traditional framework of intellectual property law, under which product designs should be protected when new and original to promote the pro-gress of artistic and design creations for a limited amount of time?
Courts addressing the case involving these NTTMs asked themselves the same question. As the cases recounted in the next several paragraphs in-dicate, in some instances courts ultimately ended up declaring that the NTTMs at issue in the cases they decided were invalid or reduced their scope. In other instances, the courts confirmed the validity of these marks–sometimes the same marks that other courts had found invalid.
Moreover, we all know that judicial proceedings only represent a handful of the litigation that effectively happens on the ground.Very possibly, due to the high cost of litigation,37several small competitors were challenged by the holders of NTTMs of infringing and/or diluting their marks and settled these challenges out-of-court with confidential agreements.38 But, how did we get here?
As I mentioned in Part II, the traditional function of a trademark is that of signaling commercial original and consistent quality to consumers in the marketplace. Upon these functions, trademark protection has been built on the notion of infringement and the standard to assess infringement based on consumer confusion. However, in the past decades, the domain of trademark law and the scope of trademark protection has grown expo-nentially. Today, any sign can be registered as a mark, including single col-ors, shapes, sounds, smells, video clips, holograms, and even gestures.39 The broadening of the subject matter of trademark protection is captured
36 Id.
37 JAMESGIBSON, Risk Aversion and Rights Accretion in Intellectual Property Law, 116 Yale L. J. 882, 913 (2007); STACEYL. DOGAN/MARKA. LEMLEY, The Merchandising Right: Fragile Theory or Fait Accompli?, 54 Emory L. J. 461, 485–87 (2005).
38 GIBSON,supranote 37, at 913.
39 LISARAMSEY, Non-Traditional Trademarks and Inherently Valuable Expression, in:
Irene Calboli/Martin Senftleben (eds.), The Protection of Non-Traditional Marks, 337–362 (2018).
in most definitions of «what can represent a mark» starting with the de-finition of Article 15 of the Agreement on Trade Related Aspects to In-tellectual Property Rights (TRIPS). Enacted in 1994, this provision paved the way for the possibility to protect all types of marks, including NTTMs.40Under TRIPS, protected signs do not even need to be «vi-sually perceptible»–even though TRIPS Member States can impose this requirement nationally.41 Two additional international agreements, the Trademark Law Treaty42and the Singapore Treaty on the Law of Trade-marks, both facilitate the registrability of NTTMs.43Recent bilateral and plurilateral international trade agreements have continued on the same path and have supported the registrability of NTTMs as part of their in-tellectual property chapters.44
In addition, as I elaborated above, the original notion of trademark dis-tinctiveness seems to have become looser in the recent decades. In parti-cular, the recent wave of registration of NTTMs, as well as many of the cases that have been litigated, seem to indicate that the interpretation of the notion of trademark distinctiveness has gradually shifted. From a strict interpretation of distinctiveness as a requirement that is necessary for a sign to be able to identify goods or services in the marketplace, trade-mark distinctiveness has become a concept that today means in practice little more than «recognizable» by the human senses–that is character-istic, typical, appealing, or just interesting to see. Again, this shift origi-nates from the legal definition of trademark itself.45In particular, TRIPS only requires that in order to be protected as a trademark, a sign be «cap-able of distinguishing» a product without even imposing a proof of ac-quired distinctiveness or secondary meaning of that sign before it is pro-tected and/or registered.46Even though some countries, such as the U. S., still require secondary meaning–that is, acquired distinctiveness–to reg-ister some of these signs, the bar to prove distinctiveness remains very
40 TRIPS Agreement, art. 15.
41 Id. at 15.1.
42 Trademark Law Treaty, Oct. 27, 1994, S. Treaty Doc. No. 105–35, 2037 U. N. T. S. 35.
43 Singapore Treaty on the Law of Trademarks, Mar. 27, 2006, S. Treaty Doc. No. 110–2.
44 See, e.g., BURTONONG,The Trademark Law Provisions of Bilateral Free Trade Agree-ments, in: Graeme B. Dinwoodie/Mark D. Janis (eds.), Research Handbook of Tra-demark law and Theory, 229 (2008) (providing a detailed overview of the post-TRIPS trademark provisions in FTAs).
45 TRIPS Agreement, art. 15.
46 Id.
low based on the actual cases on point.47As a result, anything that is in-teresting for the eyes, catchy and appealing can easily meet the bar for protection as NTTMs under most trademark laws.48
As I have supported before, the current interpretation of trademark dis-tinctiveness suffers from what I define as «circularity.»49Notably, the test to protect a sign as a mark is no longer that a sign necessarily needs to be distinctive of existing products. Instead, any sign that has a potential to be distinctive because it is original, interesting, and appealing to the hu-man eye and senses can be protected as a mark. Today this can include, not surprisingly, product designs and a variety of aesthetic product fea-tures, which are certainly distinctive under this looser and circular defini-tion.50Yet, these items are not (or not only) distinctive of products, they are integral parts of the products and their likeability for consumers. At times, and very problematically, these signs can be the entire products.51 In addition, the circularity between the notion of distinctiveness and tra-demark protectable subject matter couples with a weak system both in terms of absolute grounds to refuse trademark registration as well as tra-demark defenses across many jurisdictions.52For example, historically shape marks could not be registered at all in several countries.53These prohibitions are long gone and have been replaced with a list of absolute grounds that prevent trademark registration.54These include the exclu-sion from registration of signs are that «functional» in the U. S. Lanham Act55and «aesthetically functional» under U. S. case law,56or signs that
47 See, e.g., JAKELINFORD, A Linguistic Justification for Protecting «Generic» Trade-marks, 17 Yale J. L. & Tech. 110 (2015);Christian Faith Fellowship Church v. Adidas AG, 841 F.3d 986 (Fed. Cir. 2016).
48 Calboli,supranote 32, at 295.
49 Id.
50 Seethe judgment of the House of Lords inCoca Cola T. M.,1986, RPC, 421 (U. K.).
In that decision it was stated that in the case of liquids the form of the container must necessarily be deemed to be that of the product.Id. at 425 and d 449).
51 CALBOLI,supranote 32, at 295.
52 GRAEMEDINWOODIE, Lewis & Clark College of Law Ninth Distinguished IP Lec-ture: Developing Defenses in Trademark Law, 13 Lewis & Clark L. Rev. 99 (2009).
53 DEVGANGJEE, Paying the Price for Admission: Non-Traditional Marks Across Re-gistration and Enforcement, in: Irene Calboli/Martin Senftleben (eds.), The Protec-tion of Non-TradiProtec-tional Marks, 59–88 (2018).
54 Id.at 73.
55 Lanham Act § 21(a).
56 Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976);
Qua-comprise the «shape or another characteristic» of a product that either
«results from the nature of the goods» or «is necessary to obtain a tech-nical result» or «gives substantial value to the goods» under EU trade-mark law.57However, examiners do not seem to strictly enforce the exist-ing absolute grounds when tasked to assess the registrability of NTTMs, at least considering the proliferation of registrations, as highlighted by scholars and legal experts.58 Furthermore, several signs that were op-posed and contested at the time of their application were ultimately regis-tered by the trademark offices.59
Certainly, as the examples that I analyze below indicate, NTTMs are of-ten under challenge and many remain skeptical about their protection not only by academics but also by the courts and IP Offices, and at times law-yers, in particular litigators (who may defend defendants against claims of infringement and dilution from the holder of NTTMs). In particular, courts across several jurisdictions have increasingly expressed concerns towards the suitability of protecting these marks due to the relevant con-cerns for market competition and the overlaps with other forms of pro-tection, primarily design protection.60In some instances, IP offices have also expressed concerns, in particular following cancellations of previous granted NTTMs because of court proceedings. However, the lack of strong absolute grounds for refusing these registrations, coupled with the absence of a generalized requirement of acquired distinctives for these registrations, as well as the absence of specific guidelines regarding the examination of these marks remains problematic.
litex Co. v. Jacobson Prods. Co., 514 U. S. 159, 165 (1995);see also TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U. S. 23, 32 (2001) (quotingQualitex Co., 514 U. S. at 165).
57 TMD 2015, art. 4.
58 GANGJEE,supranote 53, at 73.
59 For example, Rubrik’s Cube,Trademark Registration No. 5,339,260 (later cancelled by the CJEU).
60 The London Taxi Corp. Ltd. v. Frazer-Nash Research Ltd. [2017] EWCA Civ 1729 (Eng.); Case C-371/02, Björnekulla Fruktindustrier AB v. Procordia Food, AB, [2004] EURLex ECLI:EU:C:2004:275; Case T-629/14Jaguar Land Rover Ltd v.
OHIM,[2015] EURLex ECLI:EU:T:2015:868 (denying the shape trademark to LandRover).