Browsing by Author "Scott, Rasheka Edwina"

This thesis focuses on the concept of ‘due cause’ in trademark opposition, cancellation and infringement proceedings in the European Union. The exploration of what constitutes ‘due cause’ is done through the case law of the European Union Intellectual Property Office and the Court of Justice of the European Union leading up to and including the CJEU’s decision in Case C-65/12 Leidseplein v Red Bull in early 2014. ‘Due cause’ can be defined broadly as a legitimate reason for a defendant to use a sign, which may render an otherwise free-riding or detrimental use fair and justified. ‘Due cause’ has not been otherwise defined in European trademark legislation and until the Red Bull decision it largely took on the shape of the deciding court and the particular facts of the case. A lack of ‘due cause’ is generally presumed and it is for the defendant to invoke legitimate reasons for using a sign that could cause harm to or take unfair advantage of a reputed mark. The meaning of ‘due cause’ has developed from the restrictive view as ‘an indispensable need to use a particular sign’ or ‘the existence of a prior right’ in the Dutch case Claeryn/Klarein. However, ‘due cause’ is not a word mark’s particular suitability to be used as a trademark although for a device mark suitability has been considered ‘due cause’. ‘Due cause’ was not established where a reputed trademark owner sought to expand the use of its sign into another business sector in Spain where the marks of another proprietor enjoyed a reputation despite brand extensions being commonplace among superbrands. In Red Bull, where the issue was whether prior use in good faith constitutes ‘due cause’, the CJEU listed a set of factors to be assessed by the referring Dutch court. The factors included both objective and subjective reasons and reflect the CJEU’s focus on the trend of healthy competition that is in line with the Court’s approach in the Interflora keyword advertising case. ‘Without due cause’ in an inbuilt limitation on the excessive exploitation of trademark rights granted to proprietors of reputed marks. It is not a trademark defense in the traditional sense although it may function like one. Some have argued that it cannot be divorced from the harm or unfair advantage assessment. The definition given in Red Bull emphasizes that ultimately the inclusion of ‘without due cause’ is intended to balance underlying competition concerns, consumer interests and public policy. ‘Due cause’ works in conjunction with other statutory limitations to curb proprietary excesses by reputed trademark owners. With the balancing of all interests, it is proposed that the CJEU embraces the open-endedness of the balancing act required in the discourse on reputed trademarks and openly frames its reasoning, for example, in terms of competition concerns and consumer interests when assessing whether there is ‘due cause’. Although the Red Bull decision has been criticized as prompting more questions than it answers, its usefulness is that the list of factors makes it possible for national courts charged with the factual assessments to contribute to the further development of a robust ‘due cause’ concept. Until now, it has been buried beneath the case law on reputation, harm, detriment and unfair advantage. Cue should be taken from it being left unchanged in the shake up of the trademark legislation. Developing general limitations such as ‘due cause’ into true trademark defenses is unwarranted within the current European legal framework. Instead focus should remain on capitalizing on already existing legal tools –namely, statutory limitations and fair use in Article 12 EUTMR, the ‘due cause’ notion in Article 8(5) and Article 9(2)(c) EUTMR and a more deliberate ‘need to keep free’ principle - to guide the discourse to produce commercially sound decisions.