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Professors debate nontraditional marks

Companies are increasingly looking beyond word trademarks to distinguish their goods and services in the marketplace. Sound, shape and color are some of the nontraditional signs that are now accepted as trademarks in many jurisdictions. Does this stifle lawful competition and communication in the marketplace?

A panel of academics debated this subject at a session yesterday titled “Nontraditional Trademarks, Innovation, and Competition: Friends or Foes?” The session was moderated by Lisa Ramsey of University of San Diego School of Law.

“The doors to trademark protection are wide open in the EU,” said Martin R.F. Senftleben of VU University Amsterdam, who opened the debate. “EU law does not exclude any sign, provided they’re distinguishing in character,” he added. His view was that shape and color marks can deprive others from entering into meaningful competition. Senftleben offered three solutions to deal with this concern: exclude the marks from registrability, which he called “a radical solution;” accept them on a condition of acquired distinctiveness; or register them and review the scope of protection later.

Senftleben told registrants that EU courts are alive to the point that colors and shapes need to be kept free for the benefit of consumers and competition. This is why there are hurdles in place, such as the prohibition on functional signs. He argued that by allowing these signs to be registered the courts are giving industry an incentive to invest in obtaining more of them. Senftleben concluded that functionality exclusion is a better tool to deal with the anticompetitive concern than acquired distinctiveness.

“People’s eyes process colors differently,” argued the next speaker, Ann Bartow of University of New Hampshire School of Law, whose argument focused on color marks. “Getting judges to make the right decision on colors is quite difficult,” she said, noting that it may be tricky when dilution comes into play. She said it is hard to see a company using a color mark alone. “There is text or symbol on it with the color,” she explained. Bartow argued that colors are always functional even where this is unintended. She argued that there are only a handful of colors which are appealing to be used on a particular good or service and that these must be left free for all in commerce to use. “Aesthetic function and color exhaustion are both underappreciated,” she warned.

Michael Handler of University of New South Wales said nontraditional signs are easier to obtain in Australia than in the U.S. or EU. However, Australian courts are aware of the competition issues, especially regarding shapes. He said there is no ground of refusal in law for functional trademarks and functional shapes, and that you can get a mark registered if you can show future acquired distinctiveness. He suggested that there should be a functionality exclusion in law.

Panelists were of the view that shapes and colors raise more concerns than other nontraditional signs. “Sound marks don’t strike me as too far away from slogan; I’m less troubled by that,” said Handler. They also agreed that trademarks should not be used to protect cultural symbols where copyright protection has expired.

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