Territorial Overlaps in Trademark Law: The Evolving European Model

Graeme B. Dinwoodie*

Trademark law has to address “overlapping” rights in a number of contexts. Thus, both the United States Supreme Court and the Court of Justice of the European Union have in recent years tackled the prospect that trademark rights in product shapes might effectively extend the life of patented inventions,¹ or the concern that limits in copyright law might be evaded through assertion of trademark-like claims as regards copyrightable subject matter.² In Europe, where design law is a more prominent part of intellectual property disputes, the relationship between trademark law and design law is also heavily contested.³

And disputes about the overlap of rights under trademark and unfair competition law are also on the horizon on both sides of the Atlantic: the European debate implicates allocation of authority between EU and national law,⁴ while in the United States, resolution of the constitutionality of the exclusion from registration of disparaging marks might force the courts to confront in a new context the character of residual use-based rights in a system where such rights have been overlaid by a federal registration scheme.⁵ The overlap tackled in this Article—the territorial overlap of competing trademark rights—might be viewed in part through the registration/use prism. Certainly, one of the contexts where territorial disputes are most acute is where the reach of a registration is not closely coextensive with the area of trademark use. But this Article seeks to explore the territorial overlap problem more broadly.

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© 2017 Graeme B. Dinwoodie. Individuals and nonprofit institutions may reproduce and distribute copies of this Article in any format at or below cost, for educational purposes, so long as each copy identifies the author, provides a citation to the Notre Dame Law Review, and includes this provision in the copyright notice.

*Professor of Intellectual Property and Information Technology Law, University of Oxford; Director, Oxford Intellectual Property Research Centre; Professorial Fellow, St. Peter’s College; University Professor, IIT-Chicago Kent College of Law. Thanks to Michael Handler, Brian Havel, Tim Holbrook, Mark Lemley, Mark McKenna, Luis Porangaba, Martin Senftleben, and participants in a faculty workshop at Chicago Kent College of Law for comments on a prior draft, and to Alvaro Fernandez de la Mora Hernandez for research assistance and the creation of the charts found in the Annex to this Article.

1 See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001); Joined Cases C337/12P–C-340/12P, Pi-Design AG v. Yoshida Metal Indus. Co., EU:C:2014:129; Case C48/09, Lego Juris v. OHIM, 2010 E.C.R. I-8403; Case C-299/99, Koninklijke Philips Elecs. NV v. Remington Consumer Prods. Ltd., 2002 E.C.R I-5475. This debate is not new. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989); Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225 (1964); Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249 (1945); Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111 (1938); Singer Mfg. Co. v. June Mfg. Co., 163 U.S. 169, 185 (1896).

2 See Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003); Case C205/13, Hauck GmbH v. Stokke, EU:C:2014:2233. For a pending case in Europe, see Case E-5/16, Municipality of Oslo, 2016 EFTA Ct. (a challenge to the trademark registration of iconic sculptural works in which copyright had expired). See generally Martin Senftleben, Public Domain Preservation in EU Trademark Law—A Model for Other Regions?, 103 Trademark Rep. 775 (2013).

3 See, e.g., London Taxi Corp. v Frazer-Nash & Anor [2016] EWHC (Ch) 52 (Eng.).

4 See Case C-661/11, Martin Y Paz Diffusion SA v. Depuydt, 2013 E.C.R. 577, ¶ 61; Lego Juris, 2010 E.C.R. I-8403, ¶ 61; Joined Cases C-236/08–C-238/08, Google France SARL v. Louis Vuitton Malletier SA, 2010 E.C.R. I-2417, ¶ 57; Phillip Johnson & Johanna Gibson, The “New” Tort of Passing Off, 131 L.Q. Rev. 476 (2015).

5 See In re Tam, 808 F.3d 1321 (Fed. Cir. 2015) (en banc), cert. granted sub nom. Lee v. Tam, 137 S. Ct. 30 (2016) (mem.); Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439 (E.D. Va. 2015); see also Renna v. Cty. of Union, 88 F. Supp. 3d 310 (D.N.J. 2014). See generally Rebecca Tushnet, Registering Disagreement: Registration in Modern American Trademark Law, 130 Harv. L. Rev. 867 (2017).