Proving Inherent Distinctiveness of Trade Dress Marks: Does European Union Law Depart Significantly from the Norm? Part 2

摘要

This two-part article explores the limits that European law places around registration of product trade dress as source-identifying brands through the general requirement of distinctiveness,namely the”departs significantly”criterion.Despite extensive case law around attempts to register shapes,the criterion remains a poorly understood and under-explored aspect of European trade mark law.Its importance however extends beyond the physical aspects of product and packaging trade dress as its application now covers less conventional subject-matter such as business decor and interactive trade dress brands.The aim of this article is to undertake a deeper contextual examination of the criterion in order to confront the widely held view that its threshold remains unclear,and challenge deep-seated misconceptions about its meaning and purposes.In particular,the article contests the increasingly popular criticism of the alleged arbitrariness and lack of scientific basis of the empirical rule regarding consumer habits which crucially underpins the analytical core of the”departs significantly”criterion.It also demystifies common criticisms about the settled doctrinal principles such as the equal treatment of all marks and the public-interest aim pursued by distinctiveness.One of the arguments offered is that it is wrong to collapse the”departs significantly”criterion into a single question about the extent of the trade dress mark’s unusualness and conveniently bypassing any contextual examination into manufacturer branding practices that influence consumer expectations and habits.Another argument is that the European concept of distinctiveness has been under strenuous and unnecessary pressure as it is being stretched to assume the competition protection role of other doctrinal tools such as the functionality doctrine.These are legacy issues that remain firmly entrenched in the case law.Overall,this article demonstrates that distinctiveness can and does play an important but limited role in preserving competition;other statutory obstacles such as functionality,descriptiveness and customariness have a much greater role and a complementary purpose within the structure of EU law.