Reconfiguring Trade Mark Law
| DOI | 10.1093/jiplp/jpt021 |
| Date | 09 May 2013 |
| Pages | 546-560 |
| Year | 2013 |
| Published By | Oxford University Press |
Reconfiguring trade mark law
Matthew J. Elsmore*
A warning
In any system it is all too easy to assume that what one is
doing now is right unless and until someone comes along
and proves otherwise.
1
It is ominous to begin an article with a warning, but
this article is lengthy and a little unorthodox. The
reader is urged to invest in the article nonetheless
because its length and approach reflect a potentially
fruitful exploration of a largely unchartered path
within European trade mark law. Along the way, the
reader is invited to navigate creative theory and prac-
ticable proposals.
The article first argues for approaching trade mark law
in a supplementary way: called reconfiguration.Secondly,
the article hosts such a reconfiguration of trade mark
law by exploring the interplay of trade marks and service
transactions in the Single Market, with the cross-border
setting, small business and consumers particularly in
mind. The article’s overall output is to argue for a
rethink of received wisdom suggesting trade marks as
effective trade-enabling devices. The case is made for
reassessing how we think about trade mark law.
The core questions driving this article are: Do trade
marks facilitate trade in the Single Market setting? Do
trade marks remain relevant? I do not pretend to
‘answer’ these questions directly or fully (that would be
premature and short-sighted). Rather, the article sets up
a preliminary approach and analysis to begin addressing
these questions by drawing on existing theory and
evidence, and demanding future input. By adding new
methodology and new thinking to the literature, the
objective of reconfiguration is to improve our collective
insight into the real context of trade marks.
The long-term aim of this article, part of a process
already begun, is to improve the design and implemen-
tation of trade mark law.
2
I hope to generate sufficient
follow-up discussion and interest that justifies making
a proper attempt at reconfiguration, with resources and
expertise cooperating in a coordinated manner; much
like resources have been allocated to analysis of trade
mark law as part of a technical legal analysis on the
overall functioning of the system in place.
3
The article is timely for several reasons. First,
the day before I submitted it online for peer-review,
the IPKat posted a blog entry promoting a more
integrated, scientific-based approach to trade mark law
and policy.
4
That feeling is precisely what this article
is about. Encouragingly, several references in that blog
entry are to services, including provocatively that:
‘Trade marks seem to be particularly important
indicators of innovation in the service sector.’ This is a
* Email: mels@asb.dk. Thanks to Valdemar Smith, Andrew Griffiths and
Graeme Dinwoodie for comments on ideas behind this article. The usual
disclaimer applies.
1 Sir Hugh Laddie ‘National IP Rights: A Moribund Anachronism in a
Federal Europe?’ (2001) 23 EIPR 402.
2 This article draws on many sources, progressing from previous works by
the author, notably: Matthew J Elsmore ‘Intangible assets for intangible
deliverables——trade marks at your service’ (2008) 3(9) JIPLP 580; and
Matthew J Elsmore With particular reference to the Community Trademark
and the scope of trademark rights, to what extent has the registration and
use of trademarks in Europe facilitated the proper functioning of the
internal market for trademarked goods and services? PhD Thesis (2003)
(awarded by Nottingham Trent University,UK).
3 Max Planck Institute ‘Study on the Overall Functioning of the Trade
Mark System in Europe’ 2011. Available at http://www.ip.mpg.de/en/pub/
news/trade_mark_study.cfm#i24475 (accessed 10 February 2013).
4 ‘Measuring TradeMarks’ IPKitten (13 December 2001). Available at http
://ipkitten.blogspot.dk/2012/12/measuring-trade-marks.html (accessed 10
February 2013).
546 ARTICLE Journal of Intellectual Property Law & Practice, 2013, Vol. 8, No. 7
#The Author (2013). Published by Oxford University Press. All rights reserved. doi:10.1093/jiplp/jpt021
Advance Access publication on 9 May 2013
The author
†Matthew Elsmore is Associate Professor at the
University of Aarhus in Denmark.
This article
†First, this article argues that trade mark law
should be approached in a supplementary way,
called reconfiguration.
†Second, the article investigates such a reconfigur-
ation of trade mark law by exploring the inter-
play of trade marks and service transactions in
the Single Market, in the cross-border setting,
with a particular focus on small business and
consumers.
†The article’s overall message is to call for a
rethink of received wisdom suggesting that trade
marks are effective trade-enabling devices. The
case is made for reassessing how we think about
European trade mark law.
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