Browsing by Subject "functions theory"

Trademark functions have acquired a central part of EU trademark law during the last few decades along with the development of the so-called adverse effects doctrine, also known as the functions theory. It has been established by the Court of Justice of the European Union (CJEU) in its case law concerning the interpretation of the double-identity rule found in EU trademarks directive. A corresponding provision is also contained in the EU trademarks regulation. The provision entitles the trademark holder to prevent unauthorised use of a sign which an average consumer perceives as being identical with the trademark where it is also used in relation to goods and services which are identical with goods and services covered by the trademark (double-identity). It is however established case law that the trademark holder can oppose the use of an identical sign on the basis of the double-identity rule only where it also affects or is liable to affect one of the functions of the trademark. The scope of legally protected functions is not limited to the trademark´s essential function of indicating origin (origin function) but covers the functions of quality-guarantee, communication, investment and advertising (additional functions). This thesis examines the role of the adverse effects doctrine in current EU trademark law. The topic is relevant since the exact content of the doctrine has previously been considered unclear, especially insofar the additional functions are concerned. In this respect, the discussion is mostly attributable to the case L´Oréal v. Bellure where the CJEU held that adverse effect on the additional functions, even in the absence of harm to the origin function, could be invoked as a ground for infringement action based on the double-identity rule. Although double-identity situations may encompass different types of unauthorised use, this thesis is mainly focused on referential uses. The most typical (and important) form of referential use is the use of a competitor´s trademark in the context of comparative advertising, which is also governed by the EU Directive on Misleading and Comparative Advertising (MCAD). While comparative advertising can be considered as one form of referential use, not all referential uses contain an element of comparison. For this reason, this thesis divides the concept of “referential use” into three different categories: (1) use in comparative advertising, (2) use to indicate the intended use of goods and services, and (3) use for purposes other than indicating the intended purpose of goods and services. The double-identity rule is formulated and has been interpreted by the CJEU so that most often these modes of use fall within its scope. EU trademark law underwent a comprehensive reform during the second half of 2010s with the previous Directive 2008/95/EC having been repealed with effect from 15 January 2019. In addition to introducing a number of other amendments and clarifications to the old directive, the recast Directive (EU) 2015/2436 also brought changes to the articles concerning the content of the rights conferred by a trademark and limitation of the effects of a trademark. The transposition period for the recast directive expired on 14 January 2019. In Finland, the necessary changes were transposed into national law as part of the overall reform of the Finnish Trademarks Act. For one, the reform broadened the narrow spare parts exemption under the old directive so that the new Art. 14(1)(c) TMD now also covers use of the trademark for the purpose of identifying or referring to goods or services as those of the trademark holder. Furthermore, the use of a competitor´s trademark in unlawful comparative advertising has been added to the nonexhaustive list of uses in Art. 10(3) TMD which the trademark holder may, in particular, prohibit if the conditions for infringement are met. Unlike before, the preamble to the directive now also refers explicitly to the respect of fundamental rights and freedoms, as well as the freedom of expression. The legislative debate that took place at EU level is however more complex than the minor amendments to the old directive would seem to suggest. Most importantly, the content of the adverse effects doctrine and the scope of legally protected functions under the double identity rule was not changed, despite the Commission´s proposal to that effect. This means that the requirement of adverse effect on the trademark functions remains as an unwritten a requirement of double identity infringement even after the reform. With the updated trademark framework now in place, this thesis examines whether the adverse effect doctrine still has practical relevance after the reform, and if so, to what extent. First, it examines the development of the doctrine in the CJEU´s case law as well as the various approaches offered by recent literature to understanding its role in EU trademark law. Secondly, this thesis examines in more detail the effect which the amendments introduced by the reform have on the practical relevance of the adverse effects requirement through comparison and contrast between the manner in which certain types of referential use were assessed before and after the reform. The question is approached from the perspective of the different mechanisms for limiting the effect of the exclusive trademark rights from within and outside trademark law. This thesis concludes that the adverse effects doctrine still has a role in the post-reform EU trademark law, although a slightly more limited one. Referential use in the context of lawful comparative advertising is covered by the “comparative advertising exception” that follows indirectly from Art. 10(3)(f) TMD; whereas use of a competitor´s trademark in unlawful comparative advertising may be found infringing if it adversely affects one of the mark´s functions. To this end, this revision clarifies the dynamic between comparative advertising and trademark infringement in accordance with the principles established already in the CJEU´s case law pre-dating the reform. The second category of referential uses, on the other hand, was already captured by the narrow spare parts exception in the old directive. After the reform, referential use for indicating the intended purpose the goods and services, such as spare parts or accessories, forms one of the main areas of application of the broadened exception in Art. 14(1)(c) TMD. The third category of referential uses can be perceived as the “new” part of Art. 14(1)(c) TMD or, alternatively, as the extension to the old spare parts exception. As regard the latter, the new directive however seems to leave room for interpretation, and consequently room for applying the adverse effects doctrine.