Functions of a Trademark- a way of seeing life?

Nina Barzey, IP lawyer, Sandvik Intellectual Property AB

In certain situations, the trademark owner cannot base a claim against an infringer on the fact that the essential function of the trademark has been impaired. There are situations as we shall see where a defendant is using an identical trademark on identical goods but where there is no confusion as to the commercial origin of the goods. Traditionally, it has been thought that it is only the essential function indicating commercial origin that deserves protection. Hence, if the defendant is successful in a defence that such essential function has not been affected, the trademark owner is left with no remedy. Where the earlier trademark also has an extended protection as a reputed trademark, it is especially pertinent to find a way of ensuring protection to prevent dilution of such reputed trademark. The significance of creating a legal system that recognises the purposes of a trademark is of paramount importance in today’s ever expanding global commercial environment. The Commission has recognised this and has declared that “Europe depends on powerful brands. This requires strong trade mark protection that is effective against improper licensing, non-use, or infringements”. This article will explore the possibilities of protecting reputed trademarks in light of developments in case law. The focus of this article is on the legal provisions on double identity and the protection afforded to trademarks with extended protection as they are related in that they both seek to safeguard the investment in promotion and neither require proof of likelihood of confusion under the legal provisions. In deed, in the Google decision, the Attorney General (“AG”) arranged the protection concerned with promotion, innovation and investment on a sliding scale giving the protection for reputed marks under Article 5(2) of the Trademark Directive (the “Directive”) the highest rank as the best protection. The double identity provision under Article 5(1)(a) secured a good second place and 5(1)(b) in the last place with the weakest protection having to prove likelihood of confusion. Further, recitals 2 and 4 of the Directive explain that the intention of the Directive is to ensure the harmonisation of the functioning of the internal market in respect of the substantive law.