Hardback
Research Handbook on Trademark Law Reform
This far-reaching Research Handbook is a follow-up to Graeme B. Dinwoodie and Mark D. Janis’s successful book Trademark Law and Theory. It examines reform of trademark law from a number of perspectives and across many jurisdictions, and contains insights from a stellar cast of trademark scholars.
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Critical Acclaim
Contributors
Contents
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This follow-up to Graeme B. Dinwoodie and Mark D. Janis’s successful book Trademark Law and Theory examines reform of trademark law from a number of perspectives and across many jurisdictions. In so doing, it analyses the most important current and future issues in the field, both providing normative frameworks for the development of trademark law and concrete proposals for reform.
This Research Handbook is organized into three thematic parts discussing different areas of reform: the trademark registration process; subject matter boundaries and trademark protectability; and trademark scope and enforcement. Leading trademark law scholars from across the globe investigate important topics such as intermediary liability, trademark protection for product design, conceptions of the hypothetical “average consumer”, and trademark depletion and congestion.
Scholars and students of intellectual property law will find the provocative and insightful thinking in this Research Handbook stimulating and valuable. The practical suggestions for future reform will also be of interest to trademark lawyers, policymakers, brand managers and other marketing professionals.
This Research Handbook is organized into three thematic parts discussing different areas of reform: the trademark registration process; subject matter boundaries and trademark protectability; and trademark scope and enforcement. Leading trademark law scholars from across the globe investigate important topics such as intermediary liability, trademark protection for product design, conceptions of the hypothetical “average consumer”, and trademark depletion and congestion.
Scholars and students of intellectual property law will find the provocative and insightful thinking in this Research Handbook stimulating and valuable. The practical suggestions for future reform will also be of interest to trademark lawyers, policymakers, brand managers and other marketing professionals.
Critical Acclaim
‘I recommend the Research Handbook on Trademark Law Reform to any reformers and researchers looking to challenge their ideas on trade mark law and practice.’
– Jane Rawlings, Intellectual Property Forum
‘Behind the cover is a veritable treasure trove of thought-provoking scholarship. The reader will gather that the book packs a lot of punch for its weight. The book will be a great resource for any academic interested in trade mark law. It will accommodate both students searching for a thesis topic and veteran academics interested in how their colleagues have brought their seminal papers “up to date”.’
– Léon Dijkman, The IPKat
‘This thought provoking book aims at describing problem areas in contemporary trademark law, offering solutions for improvement. The inspiration for this very high-level work comes from eminent scholars Graeme B. Dinwoodie and Mark D. Janis. There are 3 parts, one containing articles on the work of registration authorities, the next one dealing with protectability as well as the relation with other IP rights and the last one with scope of protection and enforcement. The great value of this book is that internationally renowned scholars in the field wrote the articles. A must read for those who are interested in, or deal with issues of contemporary trademark law.’
– Prof. Charles Gielen, NautaDutilh, Amsterdam, the Netherlands
‘This book draws together many of the most influential trademark scholars in the world with a series of interesting recommendations for how we can make trademark law better. Well worth reading.’
– Mark A. Lemley, Stanford Law School, US
– Jane Rawlings, Intellectual Property Forum
‘Behind the cover is a veritable treasure trove of thought-provoking scholarship. The reader will gather that the book packs a lot of punch for its weight. The book will be a great resource for any academic interested in trade mark law. It will accommodate both students searching for a thesis topic and veteran academics interested in how their colleagues have brought their seminal papers “up to date”.’
– Léon Dijkman, The IPKat
‘This thought provoking book aims at describing problem areas in contemporary trademark law, offering solutions for improvement. The inspiration for this very high-level work comes from eminent scholars Graeme B. Dinwoodie and Mark D. Janis. There are 3 parts, one containing articles on the work of registration authorities, the next one dealing with protectability as well as the relation with other IP rights and the last one with scope of protection and enforcement. The great value of this book is that internationally renowned scholars in the field wrote the articles. A must read for those who are interested in, or deal with issues of contemporary trademark law.’
– Prof. Charles Gielen, NautaDutilh, Amsterdam, the Netherlands
‘This book draws together many of the most influential trademark scholars in the world with a series of interesting recommendations for how we can make trademark law better. Well worth reading.’
– Mark A. Lemley, Stanford Law School, US
Contributors
Contributors: B. Beebe, R.G. Bone, R. Burrell, C. Canahai, J. Davis, G.B. Dinwoodie, S. Dogan, J.C. Fromer, D. Gangjee, M. Grynberg, M. Handler, L.A. Heymann, M.D. Janis, A. Kur, J. Linford, M.P. McKenna, A. Ohly, M. Senftleben, J.N. Sheff, R. Tushnet
Contents
Contents:
1 The drivers of trademark law reform: perspectives from the Academy 1
Graeme B. Dinwoodie and Mark D. Janis
PART I REFORMING THE REGISTRATION PROCESS
2 The problems of trademark depletion and congestion: some
possible reforms 17
Barton Beebe and Jeanne C. Fromer
3 (Re)claiming trade mark protection 51
Robert Burrell and Michael Handler
4 Reforming trademark registration 77
Rebecca Tushnet
PART II REFORMING SUBJECT MATTER BOUNDARIES
AND PROTECTABILITY
5 Towards a new copyright/trademark interface—why (and
how) signs with cultural significance should be kept outside
trademark law 100
Martin Senftleben
6 The case against product configuration trade dress 137
Caitlin Canahai and Mark P. McKenna
7 Aesthetic functionality in EU law—should it be deleted? 168
Annette Kur
8 Trade marks and innovation? 192
Dev Gangjee
9 Democratizing access to survey evidence of distinctiveness 225
Jake Linford
10 What is the meaning of a trademark? 250
Laura A. Heymann
PART III REFORMING THE RULES OF SCOPE AND ENFORCEMENT
11 Likelihood of confusion and trademark infringement:
a constructively critical analysis 278
Robert G. Bone
12 Exiling the unwary consumer from unregistered trade mark
law in the UK: the case for change 306
Jennifer Davis
13 The consumer’s duty of care in trademark law 326
Michael Grynberg
14 Finding dilution 351
Jeremy N. Sheff
15 Reforming trademark law’s approach to intermediary liability 370
Stacey Dogan
16 The liability of intermediaries for trade mark infringement 396
Ansgar Ohly
Index
1 The drivers of trademark law reform: perspectives from the Academy 1
Graeme B. Dinwoodie and Mark D. Janis
PART I REFORMING THE REGISTRATION PROCESS
2 The problems of trademark depletion and congestion: some
possible reforms 17
Barton Beebe and Jeanne C. Fromer
3 (Re)claiming trade mark protection 51
Robert Burrell and Michael Handler
4 Reforming trademark registration 77
Rebecca Tushnet
PART II REFORMING SUBJECT MATTER BOUNDARIES
AND PROTECTABILITY
5 Towards a new copyright/trademark interface—why (and
how) signs with cultural significance should be kept outside
trademark law 100
Martin Senftleben
6 The case against product configuration trade dress 137
Caitlin Canahai and Mark P. McKenna
7 Aesthetic functionality in EU law—should it be deleted? 168
Annette Kur
8 Trade marks and innovation? 192
Dev Gangjee
9 Democratizing access to survey evidence of distinctiveness 225
Jake Linford
10 What is the meaning of a trademark? 250
Laura A. Heymann
PART III REFORMING THE RULES OF SCOPE AND ENFORCEMENT
11 Likelihood of confusion and trademark infringement:
a constructively critical analysis 278
Robert G. Bone
12 Exiling the unwary consumer from unregistered trade mark
law in the UK: the case for change 306
Jennifer Davis
13 The consumer’s duty of care in trademark law 326
Michael Grynberg
14 Finding dilution 351
Jeremy N. Sheff
15 Reforming trademark law’s approach to intermediary liability 370
Stacey Dogan
16 The liability of intermediaries for trade mark infringement 396
Ansgar Ohly
Index
