Trade Marks At The Limit

‘. . . the book differs from the norm in addressing issues not conventionally found in the more standard trade mark works and in dealing with the subject not in the traditional textbook manner but in a series of contributions from a panel of distinguished international experts. . . While there will always be a need for the detailed and comprehensive academic and practitioner tomes, books such as this give the reader access to the cutting-edge minds of a number of leading experts in their fields. Books of this nature encourage the reader to question and challenge the current status of the law – the only way law can evolve. In both its structure and its content this book is highly commended.’
– Colin R. Davies, European Intellectual Property Review

Trade Marks at the Limit is a collection of current, informed and original essays on different aspects of a topic that unites trade mark owners, practitioners and potential infringers alike – the fine borderline that separates permitted use of another business’s trade mark from a use that constitutes trade mark infringement.

This important and groundbreaking book first examines the international legal framework for regulating unauthorised use of the trade marks of others. Then writers from both sides of the Atlantic and from Australia look at the practical problems and conceptual issues that the courts face in striking a balance between the needs of trade mark owners, their competitors, businesses that provide downstream services, and also consumers.

The authors address industry–specific issues involving the financial services sector and consumer goods as well as problems raised by comparative advertising, the need to protect free speech, the problems faced when dealing with non-traditional trade marks and the special case of multilingual jurisdictions. Authored by leading legal practitioners and consultants in related sectors, Trade Marks at the Limit is the first book to bring these issues together under the banner of permitted but unauthorised trade mark use.

Contents:

Preface

Introduction: Permitted But Unauthorised Use
Jeremy Phillips

PART I: THE LEGAL BACKGROUND
1. Permitted Use Under International Law
Nicolas Dontas

2. Permitted Use Under European Law: The Framework
Susie Middlemiss

3. Comparative Advertising in the United States
Charles H. Googe, Jr and Lewis Clayton

4. A Contrast With Trade Mark Law: The Permitted Use of Geographical Indications
Lasse A. Søndergaard Christensen and Janne Britt Hansen

PART II: SPECIFIC ISSUES
5. Comparative Advertising in Europe
Philippe de Jong

6. Use of Trade Marks on Repackaged and Relabelled Pharmaceutical Goods
Christian Schumacher

7. Controlling Third Party Use at the Border
Luca Giove

8. Compatibility of Products: The ECJ’s Gillette Ruling
Rainer Hilli

9. Repairs and other Specialist Services in the Light of the ECJ’s BMW Ruling
Montiano Monteagudo and Núria Porxas

10. Refills, Recharged Batteries and Recycled Products
Wolfgang Kellenter

11. Honest Commercial Use in Light of the ECJ’s Gerolsteiner Ruling
Grace Smith

12. ‘Descriptivess’ in American Trade Mark Law
David W. Quinto and Anthony P. Alden

13. Interim Relief, Final Injunctions and Freedom of Speech: The French Greenpeace and Danone Litigation
Grégoire Triet

14. Trade Mark Issues in the Financial Services Industry
Steven Weiner and Frank Azzopardi

15. The Impact of Permitted Use on Trade Mark Valuation
Mark Bezant

16. Unauthorised Use of Trade Marks: A Trade Mark Proprietor’s Perspective
Bruce Proctor

17. Unauthorised Permitted Use in a Multilingual Jurisdiction
Thierry Calame

18. Unauthorised Use of Another’s Trade Mark: A View from Australia
Jackie O’Brien

PART III: LOOKING TO THE FUTURE
19. Why is it Better to Brand so as not to Rely on Third Party Use?
Dawn Franklin

20. Legal Strategies for Coping With Unwanted Third Party Use
Steven Warner

21. Non-traditional Trade Marks: Unauthorised but Permitted Use
Karin Cederlund and Petra Hansson

Conclusion: Where Do We Go From Here?
Jeremy Phillips

Index