That question, posed by Roland Mallinson of Taylor Wessing, sparked considerable debate at the 26th annual MARQUES conference, held in Athens last week.
Speaking in a panel on “Exceptional Signs”, Mallinson discussed referential use of trade marks, in particular where the same mark and same goods/services are concerned.
Citing cases such as Adam Opel, Interflora and Bellure, he suggested that the infringement test established by the Court of Justice of the EU (CJEU) has become too complex. A better approach might be to make the infringement test clearer and then clarify the defences available.
This would be in line with suggestions made in the Max Planck report, said Mallinson.
That report is now being considered by the European Commission as it prepares recommendations for changes to the Trade Mark Directive and Trade Mark Regulation. However, the proposals have been delayed and now may not be public until next year.
The MARQUES conference attracted over 600 attendees and the theme of the educational sessions was “Sign of the Times”.
Other panels addressed the challenges posed by technological developments such as augmented reality-based advertising and Google Goggles; non-traditional marks; enforcement, particularly online; domain name developments; and recent CJEU case law.
There were also presentations from WIPO and OHIM and workshops on topics including traditional knowledge and plain packaging, as well as excursions and receptions featuring Greek food and culture.
Detailed reports from the conference are available on the MARQUES Class 46 blog.