Special marks: after 20 years, not so special after all?

摘要

At present, noting the sheer amount of legislative effort and time spent by courts, tribunals and offices in relation to special marks when set against the low levels of applications and registrations, it would not be unreasonable to say that they are not so special, not being worth the effort expended on them. However, without doubt, the relevant lobbyists will continue to lobby in the hope of getting a system more amenable to their clientele's interests. In terms of current developments, the most significant for present purposes is the proposed revision of the Trade Marks Directive and the CTM Regulation: following negotiation, on 21 April 2015, agreement was reached between the EU Commission, European Parliament and Council on the final form of the changes. Although the details are not known at the time of writing, as foreshadowed above, one significant change will be to the graphical representation requirements: based on previous drafts, it is likely that the definition of sign will be watered down in respect of representation to refer to: generally available technology being used ... [such that signs are capable of]... being represented ... in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor. In terms of future developments, noting the likely changes to the graphical representation rules for the EU as discussed below, the author confidently predicts that over the next few years, in what may be termed a 'flip-flop' move, lobbying will start towards removal of the 'inconvenient' description, representation and specimen rules that exist in the US and Australia, lobbyists doubtless pointing to the (by that stage) comparative ease of entering special marks on the register in the EU. Further or in the alternative, we can reasonably expect to see a push for new, more expansive subject-matter provisions pop up in international trade agreements; in this context, it is instructive that a leaked draft of the IP provisions of the otherwise currently secret Trans-Pacific Partnership trade agreement provides that: No Party may require, as a condition of registration, that a sign be visually perceptible, nor may a Party deny registration of a trademark solely on the grounds that the sign of which it is composed is a sound or a scent. In closing, it must be noted that the expansion of protec-table subject matter mirrors the introduction and expansion of trade mark dilution doctrine; in that latter area, despite initial claims that there were general economic benefits to anti-dilution rules, there are now serious arguments that: a because trade marks are actually mixed goods, with not all uses by third parties being rivalrous, overly broad protection is economically detrimental; b barring one case unlikely to be replicated under real-world conditions, anti-dilution measures do not show an overall public welfare benefit; and c over-broad protection can actually undermine the consumer information function of trade marks to the point that marks may actually themselves become deceptive. The author would argue that the first and third of these arguments also apply with some force in the present context of special marks as well. Ultimately, therefore, some fundamental questions need to be asked and answered: do the consuming public truly benefit from the existence and exercise of special marks? Do special marks truly promote competition or even prevent unfair competition? Do they benefit all potential applicants equally? If the answer to any one of these is 'no' or the only significant benefit of special marks is to narrow sectional interests, then it is surely time to think about imposing limitations on special mark protection rather than allowing or encouraging expansion.