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Trademark law and the public domain

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Trademark Law and the Public Domain

Martin Senftleben

1. The Conceptual Contours of the Public Domain

To clarify the notion of the public domain in relation to the trademark system, several
definitions can be considered that have arisen in scholarly literature from reflections on the
meaning and function of the public domain.1 Providing an overview of different approaches,
Professor Samuelson distinguishes between definitions based on the legal status of public
domain material, definitions including freedoms to use protected intellectual creations, and
definitions focusing on the accessibility of information resources.2

Legal status definitions, typically, require public domain material to be unencumbered by

intellectual property rights. They focus on material that is ineligible for protection, or that no
longer enjoys protection after the expiry of protection. As the rationales underlying trademark
law necessitate registration to be renewable indefinitely, legal status definitions shed light on
a particular problem: the risk of trademark rights being used as a vehicle to re-monopolize
material, in respect of which other forms of intellectual property with a limited term of
protection have already expired (1.1).

Public domain definitions focusing on freedom of use, by contrast, allow the development of
a broader concept of the public domain. Instead of asking whether material is free from
trademark rights altogether, they pose the question whether material can be used freely. The
public domain is thus understood to encompass user freedoms resulting from limitations and
exceptions. Following this more flexible approach, public domain material need not be
entirely free from trademark rights. The public domain also includes those user freedoms that
remain irrespective of the acquisition of trademark protection. This approach offers the
opportunity to take into account the various limits set to trademark rights – inherent limits
following from the confinement of protection to use in trade and use as a trademark, and
limits following from the adoption of exceptions (1.2).

1
For a discussion of different conceptions of the public domain, see the contributions to L.M.C.R. Guibault and
P.B. Hugenholtz (eds.), The Future of the Public Domain – Identifying the Commons in Information Law, The
Hague (NL)/London (UK)/New York (USA), Kluwer Law International, 2006; and J. Boyle (ed.), The Public
Domain, L. and Contemporary Problems, 2003, Vol. 66, available at:
http://scholarship.law.duke.edu/lcp/vol66/iss1/. With regard to the foundations of the debate on the public
domain, see D. Lange, Recognizing the Public Domain, L. and Contemporary Problems, 1981, Vol. 44, p. 147; J.
Litman, The Public Domain, Emory L. J., 1990. Vol. 39, p. 965. As to the debate on the freedom of speech
underpinning, see D.L. Zimmerman, Is There a Right to Have Something to Say? One View of the Public
Domain, Fordham L. Rev.. 2004, Vol. 73, p. 297; Y. Benkler, Through the Looking Glass: Alice and the
Constitutional Foundations of the Public Domain, L. and Contemporary Problems, 2003, Vol. 66, p. 173. For an
overview of different aspects of the public domain in relation to trademark law, see A. Peukert, Die
Gemeinfreiheit, Tübingen, Mohr Siebeck, 2012, pp. 18-37.
2
P. Samuelson, Enriching Discourse on Public Domains, Duke L. J., 2006, Vol. 55, pp. 101, 145-154. As to
problems in tracing the conceptual contours of the public domain, see P. Samuelson, Challenges in Mapping the
Public Domain, in: L.M.C.R. Guibault and P.B. Hugenholtz, supra note 4, pp. 7, 13-17.

– 1 –
While the choice between a legal status definition and a definition based on freedom of use is
central to the development of a public domain concept with regard to trademark law, it seems
that accessibility issues – the third category of approaches identified by Professor Samuelson
– play a crucial role when it comes to the recommendation of measures for the preservation of
the public domain. When accessibility is understood in the sense of a need to keep certain
signs free for other traders or the public at large, it can offer strong justifications for excluding
signs from protection or setting limits to trademark rights.

The present attempt to describe the relationship between trademark law and the public
domain, however, focuses on differences between legal status definitions requiring material to
be unencumbered by trademark rights, and freedom of use definitions including breathing
space for unauthorized use. Two hypotheses play a central role in this context. Firstly, it can
be hypothesized that the adoption of a freedom of use perspective in the area of trademark law
is adequate because this perspective recognizes that exclusive rights granted in trademark law
have a less absolute character than the exclusive rights awarded in other fields, such as
copyright and patent law. The potentially limited impact of trademark rights on the
availability of trademarked material can be factored into the equation. Secondly, a freedom of
use approach may be important in the light of current initiatives at the international level. It
broadens the debate. Besides eligibility criteria and limited terms of protection, limitations
and exceptions enter the picture.

1.1 Definitions Based on Legal Status

The most common legal status definitions require public domain material to be unencumbered
by intellectual property rights. Inevitably, this approach confines the debate on trademark law
and the public domain to eligibility criteria and normal use requirements. In contrast to other
intellectual property regimes, such as copyright and patent law,3 the term of protection is not
limited in trademark law. Trademark law does not draw a fixed temporal boundary line
between that which is private and subject to individual ownership, and that which is public
and part of the intellectual commons. In principle, protection can be maintained as long as the
trademark owner continues using the protected sign in trade.4

Trademark law is thus incapable of contributing to the enrichment of the public domain
through a limited term of protection (1.1.1). However, it leaves signs unaffected that do not
satisfy the basic protection requirement of distinctiveness (1.1.2). Moreover, certain signs are
generally excluded from registration and protection as trademarks (1.1.3). Considering these
safeguards, it is still to be concluded that trademark law can be employed as a verhicle to re-
appropriate material that has fallen into the public domain (1.1.4).

1.1.1 No Contribution on the Basis of a Limited Term of Protection

The fact that trademark protection can be renewed indefinitely does not mean that trademark
law fails to provide mechanisms for the preservation of the public domain. Unlike copyright

3
Article 7(1) Berne Convention provides for a general minimum term of copyright protection of life of the
author and 50 years after his death. Article 33 TRIPS provides for a term of patent protection of 20 years counted
from the filing date.
4
See Article 18 TRIPS: “Initial registration, and each renewal of registration, of a trademark shall be for a term
of no less than seven years. The registration of a trademark shall be renewable indefinitely.” The requirement of
use follows from Article 19 TRIPS.

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and patent law, however, trademark law is incapable of contributing to the constant
enrichment of the public domain through a limited term of protection. Instruments for the
preservation of the public domain can only be offered in accordance with the objectives
underlying the protection regime. Trademark law seeks to ensure market transparency. In a
transparent market where distinctive signs are exclusively linked with the goods or services
stemming from one individual commercial source, enterprises can clearly identify their offer
in the marketplace, and consumers can easily individualize different offers and express their
preference by selecting one specific product or service.5 This, in turn, will help the public’s
preferred suppliers, products and services to prevail in the marketplace. Contributing to the
regulation of supply and demand in this way, trademark law supports the proper functioning
of markets. The guarantee of market transparency through trademark protection ensures fair
competition between market participants, the protection of consumers against confusion and
the efficient functioning of markets.

Trademark law could not realize these objectives, if the term of trademark protection was
limited. A temporal limitation would have the effect that, after the expiry of protection, the
trademark could freely be used by all market participants. In consequence, consumers could
no longer rely on the trademark as an indicator of commercial source. The trademark could no
longer contribute to market transparency and fair competition. It would lose its identifying
function and the capacity to support the proper functioning of the market. For this reason, the
trademark owner can renew the registration of the trademark indefinitely.6 The rule of
indefinite renewal allows an enterprise to uphold the exclusive link with its trademarks as
long as it keeps using them in trade.7 The distinctiveness of trademarks used on the market
can thus be preserved, and consumers and the public at large are not misled.

Copyright and patent law, by contrast, seek to offer an incentive and reward for the creation
of intellectual property, and support its disclosure and dissemination. In contrast to protection
under the trademark regime, protection in these systems expires after a limited period of time
that is deemed sufficient to secure the intended incentive and reward.8 After expiry, protected
subject matter falls into the public domain and can be used freely. The constant enrichment of
the public domain can thus be regarded as a corollary of the grant of protection.9 The public
domain of cultural expressions comprises formerly copyrighted material that is no longer

5
Cf. D. Gervais, The TRIPS Agreement: Drafting History and Analysis, 3rd ed., London, Sweet & Maxwell,
2008, p. 266. With regard to the economic search costs argument that is related to this function of trademarks,
see J. Griffiths, A Law-and-Economic Perspective on Trade Marks, in: L. Bently, J. Davis and J.C. Ginsburg
(eds.), Trade Marks and Brands – An Interdisciplinary Critique, Cambridge, Cambridge University Press, 2008,
p. 241; M. Strasser, The Rational Basis of Trademark Protection Revisited: Putting the Dilution Doctrine into
Context, Fordham Intell. Prop., Media & Entertainment L. J., 2000, Vol. 10, pp. 375, 379-382. With regard to
questions arising in the digital environment, see S.L. Dogan and M.A. Lemley, Trademarks and Consumer
Search Costs on the Internet, Houston L. Rev., 2004, Vol. 41, p. 777.
6
Article 18 TRIPS.
7
As Article 19 of the TRIPS Agreement indicates, use may be required to maintain a trademark’s registration.
The registration may be cancelled after an uninterrupted period of at least three years of non-use, unless valid
reasons based on the existence of obstacles to such use are shown by the trademark owner.
8
See Article 7 Berne Convention and Article 33 TRIPS with regard to the international minimum terms of
protection in the field of copyright and patent law.
9
See M.D. Birnhack, More or Better? Shaping the Public Domain, in: L.M.C.R. Guibault and P.B. Hugenholtz,
supra note 4, pp. 59 et seq.: “…at least under an instrumentalist view of copyright law, the public domain is not
merely – or rather should not be – an unintended byproduct, or ‘graveyard’ of copyrighted works, but its very
goal.”

– 3 –
protected.10 The public domain of technical knowledge comprises formerly patented know-
how, in respect of which protection has expired.11

As trademark law aims at a stable distribution of identifiers of commercial source among

market participants to safeguard market transparency, signs enjoying trademark protection are
not subject to a similar rule of inescapable expiry of protection. Admittedly, protection need
not last forever. The registration of a sign that is no longer used in the marketplace may be
cancelled after an uninterrupted period of at least three years of non-use.12 As a result, the
sign concerned becomes available anew for other market participants. The cancellation action,
however, will normally be brought by another market participant who wishes to use an
identical or similar sign.13 Cancellation on the grounds that the trademark is no longer used by
the proprietor, therefore, is unlikely to mean that the sign becomes freely available for all.
Signs that have become generic, by contrast, become generally available for the public at
large. Constituting generic expressions, they can be invalidated on the grounds that they have
become customary in current language.14 In particular circumstances, a sign that is protected
as a trademark may thus become available again.

Nonetheless, it is to be conceded that trademark law, being incapable of providing for a

limited term of protection, does not seem to offer much support for the public domain.15

10
Cf. Dussolier, supra note 3, pp. 6 et seq., for a discussion of different notions of public domain in the field of
copyright and related rights. For an analysis focusing on the furtherance of creativity, see J.E. Cohen,
“Copyright, Commodification, and Culture: Locating the Public Domain”, in: L.M.C.R. Guibault and P.B.
Hugenholtz, supra note 4, pp. 121, 157-164.
11
For an overview of issues concerning the relationship between patent protection and the public domain, see J.
Phillips, supra note 3, pp. 32-37. With regard to concerns about a shrinking public domain of science and
potential remedies, see G.B. Dinwoodie and R. Cooper Dreyfuss, Patenting Science: Protecting the Domain of
Accessible Knowledge, in: L.M.C.R. Guibault and P.B. Hugenholtz, supra note 4, pp. 191, 209-221.
12
Cf. Article 19 TRIPS Agreement which also clarifies that cancellation does not take place where the trademark
owner had valid reasons based on the existence of obstacles to genuine use.
13
For instance, see the situation underlying CJEU, 11 March 2003, case C-40/01, Ajax/Ansul, available at:
www.curia.eu.
14
At the international level, Article 6quinquies(B) No. 2 Paris Convention reflects genericism as a ground for
refusing telle quelle registration and protection of trademarks stemming from other Paris Union Members. In
national legislation, trademarks may not be invalidated automatically on the grounds that they have become
generic. In the Benelux, for instance, Article 2.26(2)(b) of the Benelux Treaty on Intellectual Property allows the
invalidation only in cases where the trademark owner contributed to the process rendering the trademark generic
or omitted to take measures against this development. A trademark, therefore, does not necessarily fall into the
public domain automatically when it becomes a customary expression in current language.
15
This conclusion may be nuanced by considering the interplay between property rights and the enrichment of
the public domain described by E.M. Salzberger, Economic Analysis of the Public Domain, in: L.M.C.R.
Guibault and P.B. Hugenholtz, supra note 4, pp. 27, 55: “Let us assume that the government changes the
designation of particular common land into private property, this piece of land is subsequently purchased by an
individual on which she builds an architectural masterpiece. This new building is privately owned in the sense
that no one can enter the building, use it, sell it, or eliminate it save its private owner or under her permission.
But the pleasure of viewing the building for the rest of the community, the inspiration it creates, its contribution
to future architectural plans can be regarded as an enlargement of the public domain.” In this vein, it might be
argued that trademark protection – even though being potentially renewed indefinitely – still enlarges the public
domain by adding complex meanings to a formerly undeveloped sign in the public domain. Nonetheless, the fact
remains that, in contrast to creations protected by copyright or patent law, trademarked signs with rich
connotations do not automatically fall into the public domain after a limited period of time. Moreover, the
question arises whether the diverse meanings attached to a trademark primarily stem from the trademark owner.
Cf. D.R. Gerhardt, Consumer Investment in Trademarks, North Carolina L. Rev., 2010, Vol. 88, p. 101; J.
Litman, Breakfast with Batman: The Public Interest in the Advertising Age, Yale L. J., 1999, Vol. 108, pp. 1, 15

– 4 –
Regardless of potentially indefinite renewal, however, trademark law leaves signs unaffected
that are not eligible for, or excluded from, protection. Hence, the criteria regulating eligibility
for trademark protection become particularly relevant when public domain material is
required to be free from intellectual property rights.

1.1.2 Relative Exclusion Following From the Requirement of Distinctiveness

Ineligibility for trademark protection can follow from the fact that a sign is incapable of
serving as a trademark. Article 15(1) TRIPS states that

“[a]ny sign, or any combination of signs, capable of distinguishing the goods or

services of one undertaking from those of other undertakings, shall be capable of
constituting a trademark.”

This, in turn, indicates that signs are ineligible for protection when they lack the distinctive
character necessary to identify the commercial origin of goods and services in the
marketplace.16 The obligation of Paris Union Members to accept for filing and protection
trademarks duly registered in another country of the Union, for instance, does not concern
trademarks that

“are devoid of any distinctive character, or consist exclusively of signs or indications

which may serve, in trade, to designate the kind, quality, quantity, intended purpose,
value, place of origin, of the goods, or the time of production, or have become
customary in the current language or in the bona fide and established practices of the
trade of the country where protection is claimed.”17

Non-distinctive, descriptive and generic signs, therefore, need not be accepted for registration
and protection under the international regulation of telle quelle protection.18 In many national
trademark systems, this rule is reflected in absolute grounds for refusal. A non-distinctive sign

et seq.; S. Wilf, Who Authors Trademarks?, Cardozo Arts and Entertainment L. J., 1999, Vol. 17, p. 1; A.
Kozinski, Trademarks Unplugged, New York University L. Rev., 1993, Vol. 68, p. 960.
16
As to the question whether Article 15(1) TRIPS requires WTO Members to automatically accept each and
every sign or combination of signs capable of distinguishing goods or services for trademark registration and
protection, see C.M. Correa, Trade-Related Aspects of Intellectual Property Rights: A Commentary on the
TRIPS Agreement, Oxford, Oxford University Press, 2007, pp. 179 et seq., referring to the WTO Appellate
Body decision in United States – Section 211 Omnibus Appropriations Act of 1998, WTO Document
WT/DS176/AB/R, dated 2 January 2002, para. 155: “Identifying certain signs that are capable of registration and
imposing on WTO Members an obligation to make those signs eligible for registration in their domestic
legislation is not the same as imposing on those Members an obligation to register automatically each and every
sign or combination of signs that are capable of and eligible for registration under Article 15.1. This Article
describes which trademarks are ‘capable of’ registration. It does not say that all trademarks that are capable of
registration ‘shall be registered’.”
17
Article 6quinquies(B) No. 2 Paris Convention.
18
Article 6quinquies(A)(1) Paris Convention. Cf. M. Pflüger, PC, Article 6quinquies, in: T. Cottier and P. Véron
(eds.), Concise International and European IP Law, 2nd ed., Alphen aan den Rijn, Kluwer Law International,
2011, pp. 235-241; H.P. Kunz-Hallstein, Article 6quinquies PVÜ – Grundlage einer einheitlichen
Eintragungspraxis von Marken in der Gemeinschaft?” Markenrecht, 2006, p. 487; F.K. Beier,
Unterscheidungskraft und Freihaltebedürfnis – Zur Markenschutzfähigkeit individueller Herkunftsangaben nach
§ 4 WZG und Article 6quinquies PVÜ, GRUR Int, 1992, p. 243; S.P. Ladas, Patents, Trademarks, and Related
Rights – National and International Protection, Vol. II, Cambridge, MA, Harvard University Press, 1975, pp.
1211-1240; G.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the Protection of
Industrial Property, WIPO publication No. 611, Geneva: BIRPI 1969,pp. 113-119.

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simply cannot serve as a trademark. It is incapable of distinguishing the goods or services of
one undertaking from those of other undertakings. The same may be said about descriptive
and generic signs that are unlikely to be perceived and understood as an indication of
commercial origin by consumers.

From a normative perspective, it can be added that signs describing product characteristics
should remain at the disposal of all traders dealing with the products concerned. By the same
token, generic signs constituting customary indications of goods or services in current
language must necessarily remain freely available for other traders and the public at large.
There is a need to keep descriptive and generic signs free.19 Trademark law satisfies this need
by leaving non-distinctive, descriptive and generic signs unaffected as long as they are
incapable of serving as an identifier of commercial source in trade.

However, a sign that is not inherently distinctive may acquire the capacity to distinguish
goods or services as a result of use in trade. This is also reflected in Article 15(1) TRIPS:

“Where signs are not inherently capable of distinguishing the relevant goods or
services, Members may make registrability depend on distinctiveness acquired
through use.”

A non-distinctive, descriptive or generic sign may thus become a trademark – and be removed
from the public domain – the moment it acquires the necessary distinctiveness as a
consequence of use in trade. This additional rule can be understood to make inroads into the
public domain: trademark protection relating to signs that belonged to the public domain can
result from marketing efforts that educate consumers to perceive a formerly non-distinctive,
descriptive or generic sign as a reference to one particular commercial source. Once the
required link is established in the minds of consumers, the sign can be protected as a
trademark.

Considering the rationales underlying trademark law, it becomes evident that trademark law
seeks to protect consumers against confusion by providing for the possibility of acquiring
distinctiveness through use in trade. The moment a non-distinctive, descriptive or generic sign
is perceived as a reference to one particular commercial source, it becomes necessary, from
the perspective of consumer protection, to inhibit other traders from using that particular
sign.20 As the sign is perceived as an indicator of one particular commercial source but used
by several traders, consumers will be misled into believing that all products to which the sign
is attached have the same commercial origin.

19
Cf. A. Peukert, supra note 4, pp. 26 et seq.; T. Sambuc, Das Freihaltebedürfnis an beschreibenden Angaben
und der Ware selbst nach dem Markengesetz, GRUR, 1997, p. 403. For a critical comment on the doctrine of a
need to keep free, see J. Phillips, Trade Mark Law and the Need to Keep Free – Intellectual Property Monopolies
Have Their Limits, Intern. Rev. of Intell. Prop. and Competition L., 2005, Vol. 36, p. 389.
20
However, it is to be noted that there is a circularity in this line of argument. See L.P. Ramsey, Descriptive
Trademarks and the First Amendment, Tennessee L. Rev., 2003, Vol. 70, pp. 1095, 1150: “…circular reasoning
underlies the argument that confusing use of a descriptive term as a mark is misleading and can therefore be
restricted to protect consumers. By granting and enforcing exclusive rights in descriptive marks, the government
helps to make those marks source-identifying, which leads to the possibility of consumer confusion in the first
place.” Cf. also R.C. Denicola, Trademarks as Speech: Constitutional Implications of the Emerging Rationales
for the Protection of Trade Symbols, Wisconsin L. Rev., 1982, Vol. 158, pp. 158, 170.

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Nonetheless, the fact remains that the exclusion of signs from trademark protection that
results from the basic protection requirement of distinctiveness is not absolute. A sign that
lacks inherent distinctiveness may acquire the necessary capacity to distinguish goods or
services as a result of use in trade. In this case, the boundary line between trademark
protection and the public domain thus depends on the requirements established by trademark
offices and the courts to determine whether distinctive character has been acquired with
regard to a given non-distinctive, descriptive or generic sign.21

1.1.3 Absolute Exclusion from Trademark Protection

The exclusion of signs from trademark protection can be stricter when it is based on the
fundamental distinction between a trademark and the product or service to which it is
attached. A trademark, by definition, is a source identifier attached to goods or services. It is
not the product or service as such. For instance, a shape that is required to obtain a particular
technical result may be held to be ineligible for trademark protection because it constitutes an
indispensable feature of the product itself rather than serving as a mere badge of origin. The
same rationale can be invoked with regard to esthetic features affecting a product’s value or
quality: rather than constituting mere identifiers of commercial source, these essential features
define the product itself. Accordingly, the view may be held that they cannot be regarded as
trademarks.22

In the case of technical or esthetic functionality, the exclusion from trademark protection may
be applied more strictly than in the case of non-distinctive, descriptive or generic signs. In
national legislation, signs necessary to obtain a technical result or adding substantial value or
quality to the product may generally be excluded from protection as a trademark, even if the
sign concerned has acquired distinctive character as a result of the use made of it in trade. The
exclusion from trademark protection, in other words, may be absolute in the sense that even
distinctive signs of this nature cannot be removed from the public domain through the
acquisition of trademark rights.23

Further instances of an absolute bar to trademark registration and protection are reflected in
international trademark law. In the context of the regulation of telle quelle protection in
Article 6quinquies PC, it is pointed out that Paris Union countries are not obliged to accept for
registration and protection signs duly registered in other countries of the Union

21
National law may also exclude the acquisition of trademark rights with regard to certain types of these signs
altogether. US trademark law, for instance, does not offer the possibility of acquiring distinctive character
through use in the case of generic signs. Cf. L.P. Ramsey, supra note 23, pp. 1121 et seq.; B. Beebe, Report on
Canada and the United States of America, in: M.R.F. Senftleben, supra note 2, pp. 69, 82 et seq.
22
In this sense, Supreme Court of Canada, 17 November 2005, Kirkbi AG/Ritvik Holdings Inc., 2005 S.C.C. 65,
para. 46. As to the different lines of argument developed in this case, see B.W. Stratton and H. Lue, Lego v.
Mega Bloks in the Supreme Court of Canada: Ephemeral Rights in Toy Bricks, Trademark Reporter, 2006, Vol.
96, p. 587; R.S. Levy, The Lego Case: The Supreme Court of Canada Makes it Harder to Protect Product Shapes
as Trademarks, Trademark Reporter, 2006, Vol. 96, p. 596; R.H.C. MacFarlane and C.M. Pallotta, Kirkbi Ag
and Lego Canada Inc. v. Ritvik Holdings Inc.: A Review of the Canadian Decisions, Trademark Reporter, 2006,
Vol. 96, p. 575. See also A. Peukert, supra note 4, pp. 23-25, recognizing the distinction between trademark and
trademarked product as a basis for exclusions from protection.
23
For instance, see Supreme Court of Canada, supra note 25, para. 40 and 46; CJEU, 14 September 2010, case
C-48/09 P, Lego/Mega Brands, para. 40 and 47.

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 “when they are contrary to morality or public order and, in particular, of such a
nature as to deceive the public.”24

Furthermore, Article 6ter PC excludes from registration and use as trademarks, or elements of
trademarks,

“armorial bearings, flags, and other State emblems, of the countries of the Union,
official signs and hallmarks indicating control and warranty adopted by them, and any
imitation from a heraldic point of view.”25

The same rule applies to armorial bearings, flags, other emblems, abbreviations, and names,
of international intergovernmental organizations.26

Therefore, international trademark law recognizes the need to exclude certain official signs
from trademark protection. It also leaves discretion to national authorities with regard to the
identification of signs that are inappropriate for trademark registration and protection because
of a conflict with morality or public order or their deceptive nature. On this basis, signs can
generally be excluded from trademark protection, irrespective of whether the sign concerned
is distinctive.27

At the international level, the need to keep certain signs free has also been recognized with
regard to international nonproprietary names for pharmaceutical substances (INNs). In 1993,
the World Health Assembly endorsed resolution WHA46.19 which states that trademarks
should not be derived from INNs and INN stems should not be used as trademarks. It was
recognized in this context that use of INNs should remain free and in the public domain. A
practice of using INNs as trademarks could frustrate the rational selection of INNs and
ultimately compromise the safety of patients by promoting confusion in drug nomenclature.
Lists of Proposed and Recommended INNs are published regularly following meetings of the
World Health Organization INN Expert Group.28

24
Article 6quinquies(B) No. 3 PC.
25
Article 6ter(1)(a) PC.
26
Article 6ter(1)(b) PC. See WIPO Document SCT/15/3, dated 14 October 2005, Article 6ter of the Paris
Convention: Legal and Administrative Aspects, available at: www.wipo.int/sct. For commentary, see Cf. M.
Pflüger, PC, Article 6quinquies, in: T. Cottier and P. Véron (eds.), Concise International and European IP Law,
2nd ed., Alphen aan den Rijn, Kluwer Law International, 2011, pp. 229-233; G. Pacek, Marks as Imitations of
State Emblems ‘From a Heraldic Point of View’, J. of Intell. Prop. L. & Practice, 2009, p. 673; S.P. Ladas, supra
note 21, pp. 1240-1247; G.H.C. Bodenhausen, Guide to the Application of the Paris Convention for the
Protection of Industrial Property, WIPO publication No. 611, Geneva: BIRPI 1969, pp. 94-99; G. Ronga, Der
Schutz von Kennzeichen zwischenstaatlicher Organisationen nach der Pariser Verbandsübereinkunft, GRUR Int,
1966, p. 148.
27
With regard to the question whether an exclusion from registration and use as a trademark because of a
“cultural offence”, or the grant of trademark protection in a defensive sense, might also be appropriate in the area
of signs and emblems of indigenous peoples, see S.R. Frankel, Third-Party Trade Marks as a Violation of
Indigenous Cultural Property – A New Statutory Safeguard, J. of World Intell. Prop., 2005, p. 83; S.R. Frankel,
Trademarks and Traditional Knowledge and Cultural Intellectual Property Rights”, in: G.B. Dinwoodie and
M.D. Janis (eds.), Trademark Law and Theory: a Handbook of Contemporary Research, Cheltenham
(UK)/Northampton, MA (USA), Edward Elgar, 2008, p. 433.
28
With regard to trademarks and INNs, see WIPO Documents SCT/24/5, dated 31 August 2010, SCT/19/4,
dated 27 May 2008, and SCT/18/6, dated 12 September 2007. These documents are available at:
www.wipo.int/sct. Lists of Recommended and Proposed INNs are available at:
www.who.int/medicines/publications/druginformation/ innlists/en/index.html. For a discussion of the impact of
brand names on therapeutic standards, see J.A. Greene, What’s in a Name? Generics and the Persistence of the

– 8 –
An exclusion from trademark registration may also follow from practical requirements
concerning the trademark register. For a sign to be entered in traditional analogue registers, it
must be capable of graphical representation. In line with Article 15(1) TRIPS, national law
may also require, as a condition of registration, that signs be visually perceptible. These
registration requirements become particularly relevant in the case of non-traditional
trademarks. A smell or sound mark, for instance, is not visually perceptible. A smell mark
may also be held not to be capable of graphical representation.29 As a result, smell and/or
sound may remain outside the trademark protection system altogether.

1.1.4 Instruments for Preserving the Public Domain

An analysis of trademark law in the light of legal status definitions requiring public domain
material to be unencumbered by intellectual property rights yields important insights into the
protection system. Due to the underlying rationales of protection, trademark law is incapable
of contributing to the constant enrichment of the public domain by providing for a limited
term of protection. Nonetheless, the legal status approach brings to light two mechanisms that
can be used to preserve the public domain: the relative exclusion of signs following from the
basic protection requirement of distinctiveness and absolute exclusions that are applied to
certain types of signs.

However, it must not be overlooked that the relative exclusion based on a lack of
distinctiveness may be an unreliable safeguard. With sufficient investment in advertising,
traders may succeed in establishing a link between their enterprise and public domain material
in the minds of consumers. The bar to trademark protection resulting from the requirement of
distinctiveness can thus be overcome and the legal status of affected public domain material
can be changed. As a result, the material will be removed from the public domain.

1.2 Definitions Based on Freedom of Use

Definitions focusing on freedom to use intellectual creations offer a more expansive view of
the public domain. Besides material that is unencumbered by intellectual property rights, this
broader approach allows the inclusion of forms of use that, even though an intellectual
creation enjoys protection, fall outside the scope of the exclusive rights of the rights owner.30
In the context of trademark law, this broader perspective is of particular interest. Inherent
limits of trademark rights (1.2.1) and the freedom of national law makers to adopt limited
exceptions (1.2.2) can lead to the exemption of several forms of use from the control of the
trademark owner. In this way, trademark law can offer breathing space for the unauthorized
use of protected signs (1.2.3).

1.2.1 Inherent Limits of Exclusive Rights

Pharmaceutical Brand in American Medicine, J. of the History of Medicine and Allied Sciences, 2011, Vol. 66,
p. 468.
29
This is the position taken by the Court of Justice of the European Union (CJEU). See CJEU, 12 December
2002, case C-273/00, R. Sieckmann, available at: www.curia.eu.
30
For a public domain conception of this type, see Y. Benkler, Free as the Air to Common Use: First
Amendment Constraints on Enclosure of the Public Domain, New York University L. Rev., 1999, Vol. 74, pp.
354, 361 et seq., where Benkler argues for including “use generally considered permissible, absent peculiar facts
to the contrary.” Cf. also the similar approach developed by R.P. Merges, A New Dynamism in the Public
Domain, University of Chicago L. Rev., 2004, Vol. 71, pp. 183 et seq.

– 9 –
The exclusive rights of trademark owners are inherently limited in several respects. In
contrast to copyright law, trademark law does not grant a general right of “reproduction” or a
general right of “communication to the public”.31 In contrast to patent law, trademark law
does not grant a general right of “making” and “using”.32 Instead, Article 16(1) TRIPS
describes the exclusive right of trademark owners as follows:

“The owner of a registered trademark shall have the exclusive right to prevent all
third parties not having the owner’s consent from using in the course of trade identical
or similar signs for goods or services which are identical or similar to those in respect
of which the trademark is registered where such use would result in a likelihood of
confusion.”

Hence, trademark protection against confusion can only be invoked with regard to those
goods or services for which the trademark is registered. Use in the course of trade is a
prerequisite for protection. In many national systems, this basic infringement criterion is
accompanied by a further requirement of use “as a trademark”. Because of this additional
requirement, use may not be actionable, if it is unlikely to be perceived as an indication of
commercial origin by consumers.33 Furthermore, a claim based on protection against
confusion requires a showing of likelihood of confusion. The existence of a likelihood of
confusion shall be presumed only in double identity cases where a sign identical to the
trademark is used for identical goods or services.34

With regard to the aim to preserve the public domain, these inherent limits of trademark rights
in the field of protection against confusion are of particular importance. Even if trademark
protection is acquired, exclusive trademark rights in this field do not enable the trademark
owner to exert general control over the use of the sign concerned. Use of the sign remains
unaffected in areas of the market that are unrelated to the market segments in which the
trademark owner is active. Use outside the realm of trade, such as non-commercial use for
private, religious, cultural, educational or political purposes, may fall outside the scope of the
exclusive right because it does not constitute use in the course of trade. Mere references to the
protected trademark, for instance in the context of news reporting, criticism, review or parody,
may not be actionable as long as the reference is not understood as an indication of
commercial source. It may be found not to constitute use as a trademark under these
circumstances. Finally, use is actionable only if it is likely to cause confusion. In the field of
trademark protection against confusion several forms of use may thus remain free even after
the acquisition of trademark rights.

However, the trademark rights awarded to ensure protection against confusion establish an
exclusive link between a sign and an enterprise at least with regard to those goods or services,

31
See Article 9(2) Berne Convention and Article 8 WIPO Copyright Treaty.
32
Article 28(1)(a) TRIPS. However, see also J. Moskin, Victoria’s Big Secret: Whither Dilution Under the
Federal Dilution Act?, Trademark Reporter, 2004, Vol. 93, pp. 842, 856 et seq., who insists on “a property right
similar to copyright or patent.”
33
As to the influence of the requirement of use as a trademark on the infringement analysis in trademark law, see
A. Kur, Confusion Over Use? Die Benutzung “als Marke” im Lichte der EuGH-Rechtsprechung, GRUR Int,
2008, p. 1; P.L. Loughlan, Protecting Culturally Significant Uses of Trade Marks (Without a First Amendment),
Europ. Intell. Prop. Rev., 2000, p. 328; I. Simon Fhima, How Does “Essential Function” Doctrine Drive
European Trade Mark Law?, Intern. Rev. of Intell. Prop. and Competition L., 2005, Vol. 36, p. 401.
34
Article 16(1) TRIPS.

– 10 –
in respect of which the sign is registered as a trademark. This exclusive link offers legal
security for substantial investment in the sign concerned. Through investment in advertising,
an enterprise can educate consumers to associate a particular lifestyle or attitude with the
trademark. In consequence, the trademark becomes a channel of communication which the
enterprise, provided that its marketing strategy is successful, can use to raise certain pictures,
associations and expectations in the minds of consumers.35 The process of adding these
additional meanings to the trademark can result in the creation of a valuable brand image.36
However, the free “independent” meaning which the sign had prior to the acquisition of
trademark rights may be blurred by these marketing efforts.

When, for instance, a sign of cultural significance is protected as a trademark, the sign’s
original cultural meaning may gradually be superseded by commercial messages conveyed by
the trademark owner. Even though use of the sign for private, educational and cultural
purposes does not necessarily fall within the scope of exclusive trademark rights, these forms
of use outside the context of trade may still be influenced by the meanings and connotations
attached to the sign by the trademark owner in the course of trade.37 In the case of a sign of
cultural significance enjoying cumulative copyright and trademark protection, trademark
rights that are renewed after the expiry of copyright protection may also influence the
perception and use of the sign in a cultural context. Even though being no longer copyrighted,
the material does not fall into the public domain in its entirety.38

35
Cf. R. Cooper Dreyfuss, Expressive Genericity: Trademarks as Language in the Pepsi Generation, Notre Dame
L. Rev., 1990, Vol 65, pp. 397, 397-399; J. Griffiths, A Law-and-Economic Perspective on Trade Marks, in: L.
Bently, J. Davis and J.C. Ginsburg (eds.), Trade Marks and Brands – An Interdisciplinary Critique, Cambridge,
Cambridge University Press, 2008, pp. 241, 255; R.S. Brown, Advertising and the Public Interest: Legal
Protection of Trade Symbols, Yale L. J., 1999, Vol. 108, pp. 1619, 1619 et seq.; K.H. Fezer, Entwicklungslinien
und Prinzipien des Markenrechts in Europa – Auf dem Weg zur Marke als einem immaterialgüterrechtlichen
Kommunikationszeichen, GRUR, 2003, pp. 457, 461 et seq.; S. Casparie-Kerdel, Dilution Disguised: Has the
Concept of Trade Mark Dilution Made its Way into the Laws of Europe?, Europ. Intell. Prop. Rev., 2001, pp.
185 et seq.; M. Lehmann, Die wettbewerbswidrige Ausnutzung und Beeinträchtigung des guten Rufs bekannter
Marken, Namen und Herkunftsangaben – Die Rechtslage in der Bundesrepublik Deutschland, GRUR Int, 1986,
pp. 6, 14-17.
36
See J.E. Schroeder, Brand Culture: Trade marks, Marketing and Consumption, in: L. Bently, J. Davis and J.C.
Ginsburg (eds.), Trade Marks and Brands – An Interdisciplinary Critique, Cambridge, Cambridge University
Press, 2008, p. 161.
37
Cf. K. Assaf, Der Markenschutz und seine kulturelle Bedeutung, GRUR Int, 2009, p. 1; M.R.F. Senftleben,
Der kulturelle Imperativ des Urheberrechts, in: M. Weller, N.B. Kemle and Th. Dreier (eds.), Kunst im Markt –
Kunst im Recht, Baden-Baden, Nomos, 2010, p. 75.
38
With regard to the discussion on cumulative copyright and trademark protection, see M. Leistner and E.
Derclaye, Intellectual Property Overlaps – A European Perspective, Oxford (UK)/Portland, OR (USA), Hart
Publishing, 2011, pp. 12-15, 47-60, 130-138, 200-205 and 237-254; S. Carre, Marques et droit d’auteur:
Métaphore d’une belle rencontre, in: C. Geiger and J. Schmidt-Szalewski (eds.), Les défis du droit des marques
au XXIe siècle, Strasbourg, Litec, 2010, p. 25; V. Vanovermeire, Inschrijving als merk van een in het openbaar
domein gevallen werk, in: A. Cruquenaire and S. Dusollier (eds.), Le cumul des droits intellectuels, Brussels,
Larcier, 2009, p. 177; A. Ohly, Areas of Overlap Between Trade Mark Rights, Copyright and Design Rights in
German Law, GRUR Int, 2007, p. 704; M.R.F. Senftleben, De samenloop van auteurs- en merkenrecht – een
internationaal perspectief, Tijdschrift voor auteurs-, media- en informatierecht, 2007, p. 67; G. Dinwoodie,
Trademark and Copyright: Complements or Competitors?, in: J.C. Ginsburg and J.M. Besek (eds.), ALAI 2001
USA – Proceedings of the ALAI Congress June 13-17, 2001, New York: ALAI-USA 2002, p. 498; P.B.
Hugenholtz, Over cumulatie gesproken, Bijblad bij de industriële eigendom, 2000, p. 240; D.W.F. Verkade, The
Cumulative Effect of Copyright Law and Trademark Law: Which Takes Precedence?, in: J.J.C. Kabel and
G.J.H.M. Mom (eds.), Intellectual Property and Information Law – Essays in Honour of Herman Cohen
Jehoram, The Hague (NL)/London (UK)/Boston, MA (USA), Kluwer, 1998, p. 69; J.H. Spoor, De gestage groei
van merk, werk en uitvinding, Zwolle, Tjeenk Willink, 1990.

– 11 –
Besides protection against confusion in the area of identical or similar signs and identical or
similar goods or services, international trademark law provides for additional protection in the
case of well-known marks. In line with Article 16(3) TRIPS, protection against the
registration and use of a reproduction, imitation or translation of a well-known mark is to be
offered also with regard to

“goods or services which are not similar to those in respect of which a trademark is
registered, provided that use of that trademark in relation to those goods or services
would indicate a connection between those goods or services and the owner of the
registered trademark and provided that the interests of the owner of the registered
trademark are likely to be damaged by such use.”39

In addition, the WIPO Joint Recommendation Concerning Provisions on the Protection of

Well-Known Marks reflects protection, irrespective of the goods or services for which the
well-known mark is used or registered, against use that is likely to impair or dilute in an
unfair manner the distinctive character of the well-known mark, or would take unfair
advantage of the distinctive character of the well-known mark.40

These additional layers of trademark protection broaden the exclusive rights of trademark
owners and their potential impact on the public domain. Depending on the scope of the
protection of well-known marks against dilution in national law,41 the trademark owner may
be able to bring a lawsuit against unauthorized use of a competing sign that harms the highly
distinctive character (blurring) or the reputation of the well-known mark (tarnishment), or
unfairly exploits the mark’s distinctiveness or reputation (unfair free-riding).42 Anti-dilution
protection of this type is not limited to the goods or services for which the trademark is
registered. It does not necessarily require a showing of likely confusion. The requirement of
use as a trademark – in the sense that the allegedly infringing use must be perceived as an

39
With regard to the question whether Article 16(3) TRIPS sets forth an obligation to adopt anti-dilution
legislation at the national level, see particularly M. Handler, Trademark Dilution in Australia?, Europ. Intell.
Prop. Rev., 2007, p. 307. For further commentary, see N. Pires de Carvalho, The TRIPS Regime of Trademarks
and Designs, Austin/Boston/Chicago/New York, Wolters Kluwer, 2011, pp. 343-382; D. Gervais, The TRIPS
Agreement: Drafting History and Analysis, 3rd ed., London, Sweet & Maxwell, 2008, pp. 274-279; C.M. Correa,
Trade-Related Aspects of Intellectual Property Rights: A Commentary on the TRIPS Agreement, Oxford,
Oxford University Press, 2007, pp. 188-193; A. Kur, TRIPs and Trademark Law, in: F.K. Beier and G. Schricker
(eds.), From GATT to TRIPs – The Agreement on Trade-Related Aspects of Intellectual Property Rights,
Weinheim, Wiley-VCH, 1996, pp. 93, 107et seq.
40
Article 4(b)(ii) and (iii) WIPO Joint Recommendation Concerning Provisions on the Protection of Well-
Known Marks, WIPO publication No. 833, Geneva, 2000, available at: www.wipo.int/about-
ip/en/development_iplaw/. For commentary, see A. Kur, Die WIPO-Vorschläge zum Schutz bekannter und
berühmter Marken, GRUR, 1999, p. 866.
41
With regard to the debate on the dilution doctrine in trademark law, see F.I. Schechter, The Rational Basis of
Trademark Protection, Harvard L. Rev., 1927, Vol. 40, p. 813; K.H. Fezer, Entwicklungslinien und Prinzipien
des Markenrechts in Europa – Auf dem Weg zur Marke als einem immaterialgüterrechtlichen
Kommunikationszeichen, GRUR, 2003, pp. 457, 464, 467; S. Casparie-Kerdel, Dilution Disguised: Has the
Concept of Trade Mark Dilution Made its Way into the Laws of Europe?, Europ. Intell. Prop. Rev., 2001, pp.
185, 188; R.S. Brown, Advertising and the Public Interest: Legal Protection of Trade Symbols, Yale L. J., 1999,
Vol. 108, pp. 1619 et seq.; B. Beebe, A Defense of the New Federal Trademark Antidilution Law, Fordham
Intell. Prop., Media & Entertainment L. J., 2006, Vol. 16, pp. 1143, 1146 et seq., 1174; G.B. Dinwoodie and
M.D. Janis, Dilution’s (Still) Uncertain Future, Michigan L. Rev. First Impressions, 2006, Vol. 105, p. 98.
42
Cf. The overview given by I. Simon Fhima, The Actual Dilution Requirement in the United States, United
Kingdom and European Union: A Comparative Analysis, Boston University J. of Science and Technology L.,
2006, Vol. 12.

– 12 –
indication of commercial source by consumers – may be relaxed as well.43 To the extent that
the specific infringement criteria to be fulfilled in anti-dilution cases, such as a showing of
likely dilution and the establishment of the status of a well-known mark, do not constitute
substantial hurdles under national law, the scope of trademark protection will thus be
broadened considerably.44

In national systems providing for broad anti-dilution protection, concerns have been raised
about adverse effects on freedom of expression.45 Culturally and socially valuable forms of
use, such as use for the purposes of news reporting, criticism, review and parody, may fall
within the ambit of protection against dilution. Against this background, it has been proposed
to keep expressive use of the associations and meanings triggered by a well-known mark free
as long as it does not encroach upon the mark’s function of signalling the commercial origin
of goods or services.46 It has also been pointed out that the richness of associations and
meanings attached to a trademark is the result of a joint effort of trademark owners and
consumers alike. It is the consuming public that frequently imbues trademarks with
connotations distinct from and sometimes unrelated to the advertising messages conveyed by
the trademark owner.47 As a result, trademarks become metaphors with complex meanings
that are needed for social and cultural discourse.
43
As to the debate on the requirement of use as a trademark, see S.L. Dogan and M.A. Lemley, The Trademark
Use Requirement in Dilution Cases, Santa Clara Computer & High Technology L. J., 2008, Vol. 24, pp. 541 et
seq.: “By maintaining the law’s focus on misleading branding, the trademark use doctrine keeps trademark law
true to its ultimate goal of promoting competitive markets.” However, see also G.B. Dinwoodie and M.D. Janis,
Confusion Over Use: Contextualism in Trademark Law, Iowa L. Rev., 2007, Vol. 92, pp. 1597, 1657 et seq.:
“Trademark use is simply too blunt a concept, no matter how defined, to capture the full range of values at play
in these debates.” For a summary of the debate, see M. Davison and F. Di Giantomasso, Use as a Trade Mark:
Avoiding Confusion When Considering Dilution, Europ. Intell. Prop. Rev., 2009, p. 443.
44
For a more detailed explanation of this point, see M.R.F. Senftleben, Keyword Advertising in Europe – How
the Internet Challenges Recent Expansions of EU Trademark Protection, Connecticut J. of Intern. L., 2011, Vol.
27, p. 39. For a discussion of different concepts of protection against dilution, see J.T. McCarthy, Dilution of a
Trademark: European and United States Law Compared, Trademark Reporter, 2004, Vol. 94, p. 1163; M.R.F.
Senftleben, The Trademark Tower of Babel – Dilution Concepts in International, US and EC Law, Intern. Rev.
of Intell. Prop. and Competition L., 2009, Vol. 40, p. 45, available at: http://ssrn.com/abstract=1723903.
45
Cf. W. Sakulin, Trademark Protection and Freedom of Expression – An Inquiry into the Conflict between
Trademark Rights and Freedom of Expression under European Law, The Hague (NL)/London (UK)/New York
(USA), Kluwer Law International, 2010; C. Geiger, supra note 41, p. 163; R. Burrel and D. Gangjee, Trade
Marks and Freedom of Expression: A Call for Caution, University of Queensland, TC Beirne School of Law,
Research Paper No. 10-05, 2010, available at: http://ssrn.com/abstract=1593258; W. McGeveran, Four Free
Speech Goals for Trademark Law, Fordham Intell. Prop., Media and Entertainment L. J., 2008, Vol. 18, p. 1205;
P. Gulasekaram, Policing the Border Between Trademarks and Free Speech: Protecting Unauthorized Trademark
Use in Expressive Works, Washington L. Rev., 2005, Vol. 80, p. 887; P.N. Leval, Trademark: Champion of Free
Speech, Columbia J. of L. and the Arts, 2004, Vol. 27, p. 187; L. Timbers and J. Huston, The “Artistic
Relevance Test” Just Became Relevant: the Increasing Strength of the First Amendment as a Defense to
Trademark Infringement and Dilution, Trademark Reporter, 2003, Vol. 93, p. 1278; R. Cooper Dreyfuss,
Reconciling Trademark Rights and Expressive Values: How to Stop Worrying and Learn to Love Ambiguity, in:
G.B. Dinwoodie and M.D. Janis (eds.), Trademark Law and Theory: a Handbook of Contemporary Research,
Cheltenham (UK)/Northampton, MA (USA), Edward Elgar, 2008, p. 261; K. Aoki, How the World Dreams
Itself to be American: Reflections on the Relationship Between the Expanding Scope of Trademark Protection
and Free Speech Norms, Loyola of Los Angeles Entertainment L. J., 1997, Vol. 17, p. 523.
46
R. Cooper Dreyfuss, supra note 38, p. 397.
47
Cf. D.R. Gerhardt, Consumer Investment in Trademarks, North Carolina L. Rev., 2010, Vol. 88, p. 101; J.
Litman, supra note 18, pp. 1, 15 et seq.; S. Wilf, supra note 18, p. 1; A. Kozinski, supra note 18, p. 960. With
regard to social media, cf. L.P Ramsey, “Brandjacking on Social Networks: Trademark Infringement by
Impersonation of Markholders”, Buffalo L. Rev., 2010, Vol. 58, p. 851. Moreover, see the critical comments on
the limitation of trademark rights made by M. Richardson, Trade Marks and Language, Sydney L. Rev., 2004,
Vol. 26, p. 193.

– 13 –
The impact of trademark protection on the public domain thus depends on the different layers
of trademark protection at the national level. The acquisition of trademark rights does not
afford the trademark owner general control over the use of the protected sign. The various
infringement criteria, ranging from use in the course of trade to a likelihood of confusion or
dilution, constitute inherent limits of trademark rights. Because of these inherent limits,
protection against confusion may leave non-commercial use for private, cultural, religious,
educational or political purposes largely unaffected. Protection against dilution, however, may
give the trademark owner more general control over the use of the trademark that may
interfere with socially and culturally valuable use, such as use for news reporting, criticism,
review and parody.

1.2.2 Limited Exceptions

In addition to the outlined inherent limits of exclusive rights, trademark law also offers room
for exceptions that exempt certain forms of use from the control of the trademark owner. At
the international level, Article 17 TRIPS allows WTO Members to

“...provide limited exceptions to the rights conferred by a trademark, such as fair use
of descriptive terms, provided that such exceptions take account of the legitimate
interests of the owner of the trademark and of third parties.”

This international basis for the introduction of exceptions at the national level has been
interpreted in the framework of WTO dispute settlement in the case EC – Protection of
Trademarks and Geographical Indications for Agricultural Products and Foodstuffs.48 The
WTO Panel dealing with Article 17 followed the approach taken previously in the patent case
Canada – Protection of Pharmaceutical Products where the expression “limited exceptions”
– also appearing in the patent section of TRIPS49 – had already been discussed.50 Interpreting
the meaning of the requirement of limited exceptions, the Panel in the Canada patent case had
clarified that the word “limited” had to be given a meaning separate from the limitation
implicit in the word “exception” itself. It had to be read to “connote a narrow exception – one
which makes only a small diminution of the rights in question.”51 The reference point for
determining limited exceptions was the curtailment of exclusive rights.52

48
See WTO Document WT/DS174/R, para. 7.650-7.651, based on a complaint by the US and the twin report
WTO Document WT/DS290/R dealing with a parallel complaint by Australia. As to the interpretation of Article
17 TRIPS, the reports are identical in substance. Following references concern the report on the US complaint.
49
Article 30 TRIPS.
50
See WTO Document WT/DS114/R, available at: www.wto.org. For comments on the WTO panel reports in
the area of exceptions to intellectual property rights, see M.R.F. Senftleben, Towards a Horizontal Standard for
Limiting Intellectual Property Rights? – WTO Panel Reports Shed Light on the Three-Step Test in Copyright
Law and Related Tests in Patent and Trademark Law, Intern. Rev. of Intell. Prop. and Competition L., 2006,
Vol. 37, p. 407; M. Ficsor, How Much of What? The Three-Step Test and Its Application in Two Recent WTO
Dispute Settlement Cases, Revue internationale du droit d’auteur, 2002, Vol. 192, p. 111; J. Oliver, Copyright in
the WTO: The Panel Decision on the Three-Step Test, Columbia J. of L. & the Arts, 2002, Vol. 25, p. 119; D.J.
Brennan, The Three-Step Test Frenzy – Why the TRIPS Panel Decision might be considered Per Incuriam,
Intell. Prop. Quarterly, 2002, p. 213; J. Ginsburg, Toward Supranational Copyright Law? - The WTO Panel
Decision and the “Three-Step Test” for Copyright Exceptions, Revue internationale du droit d’auteur, 2001, p.
13; P.B. Hugenholtz, De wettelijke beperkingen beperkt. De WTO geeft de driestappentoets tanden, Tijdschrift
voor auteurs-, media- en informatierecht, 2000, p. 197.
51
See WTO Panel – Patents, WTO Document WT/DS114/R, para. 7.30.
52
See WTO Panel – Patents, WTO Document WT/DS114/R, para. 7.31.

– 14 –
The WTO Panel in the EC trademarks case agreed on this reading53 of the provision and
embarked on the measurement of the extent to which a curtailment of exclusive trademark
rights resulted from the exception at issue – EC legislation requiring prior trademarks, in
specific circumstances, to coexist with later geographical indications. Referring to the fair use
example given in Article 17 TRIPS itself, the Panel noted that fair use of descriptive terms
was not limited in terms of the number of third parties who may benefit from the limited
exception, nor in terms of the quantity of goods or services exempted under the limited
exception.54 Against this background, the Panel held that the EC coexistence regime kept
within these conceptual contours and could pass the limited exceptions test.55

With regard to the remaining “legitimate interests” test of Article 17, the Panel lent weight to
the fact that the prohibition of an unreasonable prejudice to be found in corresponding tests in
Articles 13 and 30 TRIPS had been omitted in the trademark provision. The Panel inferred
from this omission “a lesser standard of regard for the legitimate interests of the owner of the
trademark.”56 However, every trademark owner had a legitimate interest in preserving the
distinctiveness, or capacity to distinguish, of her trademark.57 Similarly, consumers had a
legitimate interest in being able to distinguish the goods or services of one undertaking from
those of another, and to avoid confusion.58 The EC coexistence regime at issue allowed the
refusal of the registration of a geographical indication in the light of the reputation and
renown of a prior trademark, and the length of time that a prior trademark had been used.
Moreover, it expressly addressed consumers by providing for the refusal of the registration of
a geographical indication where the registration was liable to mislead consumers as to the true
identity of the product. For these reasons, the Panel was satisfied that the legitimate interests
of the trademark owner and consumers had been taken into account.59

International trademark law, therefore, offers breathing space for the adoption of exceptions
to the exclusive rights of trademark owners. This additional flexibility can be used to exempt
forms of use that are deemed particularly important for other traders or the public at large.60
The reference to fair use of descriptive terms in Article 17 TRIPS shows that, for instance,
trademark protection relating to a descriptive sign can be counterbalanced by exempting use
of the sign that is necessary to indicate the characteristics of goods or services.

1.2.3 Instruments for Preserving the Public Domain

The analysis of trademark law from the broader perspective of public domain definitions
focusing on freedom of use sheds light on two additional preservation tools in trademark law:
firstly, inherent limits of exclusive rights that may render the trademark owner incapable of

53
Doubts as to the adoption of this interpretation in a trademark context are raised by C.M. Correa, Trade-
Related Aspects of Intellectual Property Rights: A Commentary on the TRIPS Agreement, Oxford, Oxford
University Press, 2007, p. 194.
54
See WTO Panel – Trademarks, WTO Document WT/DS174/R, para. 7.654.
55
See WTO Panel – Trademarks, WTO Document WT/DS174/R, para. 7.659.
56
See WTO Panel – Trademarks, WTO Document WT/DS174/R, para. 7.671.
57
See WTO Panel – Trademarks, WTO Document WT/DS174/R, para. 7.664.
58
See WTO Panel – Trademarks, WTO Document WT/DS174/R, para. 7.676.
59
See WTO Panel – Trademarks, WTO Document WT/DS174/R, para. 7.666 and 7.677.
60
As to the necessity of adopting appropriate exceptions to trademark rights in trademark systems offering broad
protection, cf. G.B. Dinwoodie, Lewis & Clark Law School Ninth Distinguished IP Lecture: Developing
Defenses in Trademark Law, Lewis and Clark L. Rev., 2009, Vol. 13, No. 1, p. 99.

– 15 –
exerting control over use for private, religious, cultural, educational or political purposes;
secondly, limited exceptions that can be adopted to exempt certain forms of use from the
control of the trademark owner.

With regard to both preservation mechanisms, it is to be noted that regardless of resulting user
freedoms, the signs concerned enjoy protection as trademarks. The legal security arising from
trademark protection is likely to encourage investment in advertising that aims to attach
commercial meanings to affected signs. These meanings may reduce the sign’s value for
privileged forms of use, in particular use for cultural or religious purposes. Hence, there is a
qualitative difference between inherent limits of exclusive rights and limited exceptions on
the one hand, and the above-described absolute and relative exclusions from protection on the
other. An effective exclusion keeps signs free from trademark protection and does not provide
an incentive for the attachment of marketing messages. This incentive is offered, however,
when trademark protection is granted.

Inherent limits of, and limited exceptions to, the exclusive rights of trademark owners may
thus safeguard the freedom to use protected signs in several respects. However, these
preservation tools are incapable of preserving signs as part of an information commons that
can freely be shaped and defined in the course of an open communication process. Due to the
grant of exclusive rights, the trademark owner is likely to seize the opportunity to influence or
even dictate the communication process surrounding the protected sign.61 The contribution of
inherent limits and limited exceptions to the preservation of the public domain is thus limited
in comparison with an effective exclusion from trademark protection.

With regard to inherent limits of protection, it is moreover to be noted that their ambit of
operation will be reduced gradually with the expansion of trademark rights. They are the
reverse of the grant of protection. The more extensive and flexible the exclusive rights of
trademark owners, the less efficient will be the safe harbour function which inherent limits of
protection have with regard to forms of socially and culturally valuable use. In a national
trademark system that only provides for traditional protection against confusion, the inherent
limits of exclusive rights – the confinement to specific goods and services, use in the course
of trade, use as a trademark and use likely to cause confusion – can function as effective
safeguards that exempt references to the protected mark in non-confusing contexts from the
control of the trademark owner. In a national system offering protection of more extravagant
proportions, including broad protection against dilution, the aforementioned inherent limits
are likely to lose that safeguarding function to a large extent.62

2. The Public Domain in Relation to Trademark Law

An analysis of trademark law on the basis of different conceptions of the public domain – the
legal status approach and the freedom of use approach – leads to divergent results. If the
public domain is confined to material that is unencumbered by intellectual property rights,
then trademark law scores relatively low. With no clear temporal limit of protection,
trademark law fails to contribute to the constant enrichment of the public domain. Moreover,
exclusions from protection based on the requirement of distinctiveness may be overcome

61
With regard to the question of the extent to which the trademark owner is capable of shaping the perception of
the consuming public, see the literature references supra note 50.
62
For a critical analysis of this process against the background of EU trademark law, see M.R.F. Senftleben,
supra note 47, pp. 48-57; A. Peukert, supra note 4, pp. 96-107.

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through use in trade. Besides the missing expiry of protection after a fixed period of time, the
central criterion for obtaining protection is thus elastic as well. From the perspective of a legal
status approach, trademark protection may therefore be understood to make broader inroads
into the public domain than other protection regimes with a different configuration, such as
copyright and patent law.63

However, trademark law may score relatively high when the public domain is understood to
encompass user freedoms that remain after the acquisition of protection. Because of several
inherent limits – the confinement to specific goods and services, use in the course of trade,
use as a trademark and use likely to cause confusion –, the exclusive rights awarded in
trademark law are less absolute than the exclusive rights conferred by a copyright or patent.
The impact of protection on the freedom to use protected material is more limited than the
impact of protection in several other fields of intellectual property law. This is true at least
with regard to trademark systems that refrain from expanding protection against dilution to
such an extent that trademark rights come close to the scope of the exploitation rights granted
in copyright or patent law.64

Considering this mixed result – a low score from a legal status perspective, a potentially high
score from a freedom of use perspective –, it is advisable to factor both approaches into the
equation. Otherwise, the description of the relationship between trademark law and the public
domain will be incomplete and imbalanced because it focuses on the formal removal from the
public domain in the sense of a legal status approach without taking into account the
potentially limited impact of resulting protection in the sense of a freedom of use approach.

In the light of current initiatives at the international level, this synthetic approach also makes
sense because it broadens the debate. Besides a choice between black and white (public
domain preservation in the case of excluded signs, encroachment upon the public domain in
the case of protected signs), the inclusion of user freedoms following from limitations and
exceptions allows the consideration of shades of grey (public domain preservation to a certain
extent in the case of protected signs that remain usable in several respects). When including
limitations and exceptions, however, it must be considered that the trademark owner, as a
result of the grant of protection, may be able to influence the perception of the protected sign
by adding commercial connotations that blur or even supersede a sign’s original cultural or
religious meaning.

63
However, see the critical comments on the elasticity of eligibility criteria in the area of copyright and patent
protection by G.J. Maier and R.C. Mattson, State Street Bank ist kein Ausreißer: Die Geschichte der
Softwarepatentierung im US-amerikanischen Recht, GRUR Int, 2001, p. 677; R.P. Merges, As Many as Six
Impossible Patents Before Breakfast: Property Rights for Business Concepts and Patent System Reform,
Berkeley Technology L. J., 1999, Vol. 14, p. 577; L.L. Weinreb, Copyright for Functional Expression, Harvard
L. Rev., 1998, Vol. 111, p. 1150; S.E. Gordon, The Very Idea! Why Copyright is an Inappropriate Way to
Protect Computer Programs, Europ. Intell. Prop. Rev., 1998, p. 10; A.A. Quaedvlieg, Auteursrecht op techniek,
Zwolle, Tjeenk Willink, 1987; A. Dietz, Copyright Protection for Computer Programs: Trojan Horse or Stimulus
for the Future Copyright System?, Archiv für Urheber-, Film-, Funk- und Theaterrecht, 1985, Vol. 110, p. 57.
64
With regard to this tendency in advanced trademark systems, see M.R.F. Senftleben, supra note 47, p. 45; J.
Moskin, Victoria’s Big Secret: Whither Dilution Under the Federal Dilution Act?, The Trademark Reporter,
2004, Vol. 93, p. 842; K.H. Fezer, Entwicklungslinien und Prinzipien des Markenrechts in Europa – Auf dem
Weg zur Marke als einem immaterialgüterrechtlichen Kommunikationszeichen, GRUR, 2003, p. 457; F.
Pollaud-Dulian, Marques de renommée – Histoire de la dénaturation d’un concept, Propriétés intellectuelles,
2001, p. 43; Strasser, supra note 8, p. 375; R.S. Brown, Advertising and the Public Interest: Legal Protection of
Trade Symbols, Yale L. J., 1999, Vol. 108, p. 1619; R. Cooper Dreyfuss, supra note 38, p. 397.

– 17 –
 In sum, the public domain can be understood to encompass in a trademark context all signs
that are not protected as trademarks and all forms of using protected signs that fall outside the
scope of the exclusive rights of the trademark owner. This notion includes, in particular,

all signs that are generally excluded from trademark protection (absolute exclusion);

all signs that do not satisfy the basic protection requirement of distinctiveness (relative
exclusion);

all forms of use that cannot be controlled by the trademark owner because of inherent
limits of exclusive rights (relative freedom of use); and

all forms of use that cannot be controlled by the trademark owner because of the
adoption of limited exceptions (absolute freedom of use).

This synthetic conception of the public domain reflects preservation mechanisms that differ in
terms of effectiveness. An absolute exclusion from protection implies that the signs concerned
cannot be removed from the public domain through the acquisition of trademark rights (highly
effective absolute exclusion). By contrast, ineligibility for trademark protection due to a lack
of distinctiveness is less absolute. The moment the obstacle to the acquisition of trademark
protection is overcome through use in trade, the sign concerned will be removed from the
public domain to the extent to which trademark protection is provided (less effective relative
exclusion). Similarly, forms of using protected signs may explicitly be exempted from the
control of the trademark owner on the basis of a limited exception (highly effective provision
of absolute freedom of use). User freedoms that are implicitly derived from inherent limits of
trademark rights, by contrast, will become less reliable safeguards with every expansion of
protection, in particular in the area of protection against dilution (less effective provision of
relative freedom of use).

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