(Burrell, R; Gangjee D) ‘Trade Marks and Freedom
of Expression: A Call for Caution’ (2010) 41(5) International
Review of Intellectual Property and Competition Law 544-569
Over recent years there has been
growing interest in the relationship between trade marks
and free speech. United States academics have argued
that we should look to freedom of expression principles
to curb the expansion of trade mark rights and this
suggestion is being taken increasingly seriously in
other jurisdictions. While sharing concerns about the
overreach of trade mark law, we express caution about
the advisability of looking to freedom of expression to
solve the problem. Specifically, we argue that this
focus concedes too much in terms of the reach of trade
mark law, is unlikely to prove effective (at least
outside of the United States) and carries with it the
danger that the relationship between trade marks and
speech will become overly simplified.
Working draft available at SSRN:
http://ssrn.com/abstract=1604886
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(Higgins, D; Gangjee D) ‘"Trick or
Treat?" The Misrepresentation of American Beef Exports
in Britain during the Late Nineteenth Century’ (2010) 11
Enterprise and Society 203-241
This article examines the
misrepresentation of American beef in the British market
between c. 1890 and c. 1913. We examine the complaints
voiced by British consumers, producers, and retailers
and we discuss the response of the British government
and the United States Department of Agriculture. A new
dataset is employed to calculate the price premiums that
could be earned from the misrepresentation of beef
according to geographic origin. While considerable
premiums could be earned by "passing-off" American beef
as British in the 1890s, these premiums declined during
the 1900s. Particular emphasis is placed on the
inability of the British government to act unilaterally
on meat marking. This article also considers origin as a
means of distinguishing between categories of nonbranded
goods. Yet "origin" has many dimensions. Not only does
it indicate provenance, it sometimes signals quality
associated with provenance while also serving as the
basis for protectionist responses. This article
therefore contributes to the broader debates surrounding
origin marking as a commercial and legal phenomenon.
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‘Non-Conventional Trade Marks in India’
(2010) 22 National Law School of India Review
67-96
In recent years, trade mark registries
and courts have grappled with trade mark applications
for silhouettes, shapes, scents, textures and tastes, as
well as short cartoons, single colours, body movements
and Tarzan’s yell. This invasion of the unconventional
is due to the open ended definition of a trade mark. On
the one hand, trade mark law has embraced a definition
that emphasises the functional, rather than the
ontological, status of a sign. Anything which does the
communicative work of a trade mark, by distinguishing
goods on the basis of trade origin, can be registered as
one. On the other hand registration systems have
historically developed around paradigmatic subject
matter: a conventional or traditional trade mark that is
visual and consists of words and/or figurative devices.
The need to reconcile these conflicting imperatives –
the system is open to all categories of signs and it’s
apparently ‘business as usual,’ yet the registration
system was designed with only words and figurative
devices in mind – requires a careful reconsideration of
certain basic assumptions in this area. The Indian Trade
Mark Registry's Draft Manual of Trade Mark Practice and
Procedure provides the contextual framework for this
reappraisal and this article endorses its cautious
approach to accommodating such signs.
Draft available at SSRN:
http://ssrn.com/abstract=1555807
(Gangjee, D.; Burrell, R.) 'Because You're Worth
It: L'Oreal and the Prohibition on Free Riding' Modern Law
Review 73 (2) 2010 pp. 282-295
Assesses the European Court of Justice (ECJ) ruling in L'Oreal SA v Bellure NV (C-487/07) on whether the use of the trade mark brand names of luxury perfume products on "smell-alike" price comparison lists produced by a budget perfume producer was permissible under Directive 89/104 (Trade Marks Directive) art.5(1)(a) or took unfair advantage of the marks within the meaning of art.5(2) by "free-riding" on their reputation. Criticises the reasoning of the court, arguing that the ruling is counter to Directive 84/450 and previous ECJ rulings.
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‘The Polymorphism of Trademark Dilution in India’
(2008) 17 Transnational Law & Contemporary Problems 611-630.
This article begins with a puzzle. Statutory
provisions relating to trademark dilution were introduced for the
first time into Indian law with the Trade Mark Act of 1999, which
came into effect in 2003. Yet since their inception, these
provisions have remained on the shelf, largely untouched for half a
decade. By contrast, dilution features prominently in litigation
based upon the common law tort of passing off. It thus exists in
both favoured and relatively ignored forms. In Part II, this Article
offers an explanation for why this polymorphism for dilution exists
in India. Under passing off, dilution is a newly recognised species
of harm, which flows from a misrepresentation. It is not the basis
for an independent cause of action. Its recognition can be traced to
prior doctrinal developments within the Indian law of passing off,
concerning the abolition of the common field of activity requirement
and the sufficiency of a transborder or 'spillover' reputation.
Dilution is thus qualified as a new type of injury within a familiar
tort geared towards preventing consumer confusion. However under the
Act of 1999, dilution, in its aspect of blurring or 'detriment to
distinctive character', is the basis for an independent action. This
article suggests that the statutory provisions require a more
narrowly defined harm in order to be triggered and differ in
important ways from dilution under passing off, making precedents
for the latter unsuitable for the former. Part III concludes by
selectively considering the extent to which E.U. and U.S.
experiences with dilution could meaningfully inform the future
development of the Indian statutory regime.
available
at SSRN: http://ssrn.com/abstract=1273711
‘The Business End of Collective and Certification Marks’ in I
Simon Fhima (ed) Trade Mark Law and Sharing Names: Exploring Use of the Same
Mark by Multiple Undertakings (Edward Elgar, Cheltenham 2009)
‘Geographical Indications and Human
Rights’ in Paul Torremans (ed) Intellectual Property and Human
Rights (Kluwer, The Hague 2008)
‘(Re)Locating Geographical
Indications: A Response to Bronwyn Parry’ in L Bently, J Davis and J
Ginsburg (eds) Trade Marks and Brands: An Interdisciplinary
Critique (CUP, Cambridge 2008)
Recent developments in trade
marks law have called into question a variety of basic
features, as well as bolder extensions, of legal protection.
Other disciplines can help us think about fundamental issues
such as: What is a trade mark? What does it do? What should
be the scope of its protection? This volume assembles essays
examining trade marks and brands from a multiplicity of
fields: from business history, marketing, linguistics, legal
history, philosophy, sociology and geography. Each chapter
pairs lawyers’ and non-lawyers’ perspectives, so that each
commentator addresses and critiques his or her counterpart’s
analysis. The perspectives of non-legal fields are intended
to enrich legal academics’ and practitioners’ reflections
about trade marks, and to expose lawyers, judges and
policy-makers to ideas, concepts and methods that could
prove to be of particular importance in the development of
positive law.
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'Quibbling Siblings: Conflicts between
Trade Marks and GIs’ (2007) 82 Chicago-Kent Law Review 1253
The relationship between
Trademarks and Geographical Indications (GIs) has
historically been tempestuous. Each of these quibbling
siblings, members of the broader family of Unfair
Competition law, entitles registrants to the exclusive use
of a sign. So what happens when a GI collective and a
trademark proprietor lay claim to the same sign within a
single jurisdiction? As part of the renewed interest in
TRIPs flexibilities and attempts at accommodating or
reconciling differences between national laws, this paper
explores a newly emerging space that may just be big enough
for the both of them. The analysis draws on a recent World
Trade Organization (WTO) Panel Report, which identifies the
legal foundations for cohabitation. The Report coincides
with doctrinal developments at the national and regional
level which initially identified this zone of compromise:
the geographical 'descriptive use' defence in trademark law.
Coexistence is significant as it alters the dynamic of a
venerable conflict between trademark and GI regimes, which
has been locked in the language of trumps for several
decades. Accordingly, this paper introduces the players and
describes the game of one-upmanship prior to this
development in Part I; outlines the WTO decision in Part II
and then draws parallels with doctrinal developments in the
EU and US which presaged the possibility of coexistence in
Part III. It concludes with an endorsement of coexistence as
an equitable solution.
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'Say Cheese: A Sharper Image of
Generic Use through the Lens of Feta’ [2007] European
Intellectual Property Review 172.
The generic use of
geographical product names has persisted as the single most
controversial issue in Geographical Indications (GI) law for
over a century. The controversy is compounded by political
compromises at international trade negotiations, with
judicial resolutions in multilateral disputes being the
exception. One such exceptional case was the recent Feta
dispute, where the European Court of Justice (ECJ)
considered the test for generic status under the
pan-European registered GI regime. The ECJ ultimately upheld
the European Commission's finding that Feta was not a
commonly used expression for a type of white cheese in
brine, instead designating cheese with a specific Greek
origin. In the process, the litigation generated an
extensive unpacking of the test for genericide. A puzzle
posed here was that Feta had been produced in Germany,
Denmark and France for several decades. This article
revisits the reasons for why this initially significant
evidentiary finding was subsequently overshadowed. While
generic status is based on a factual enquiry the threshold
to be established, the categories of admissible evidence and
the hierarchies of their importance all reflect the
competing interests at stake. This in turn highlights
unresolved tensions in the Unfair Competition heritage of
this shadowy branch of Intellectual Property law.
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'Melton Mowbray and the GI Pie in the
Sky: Exploring Cartographies of Protection' (2006) 3 Intellectual
Property Quarterly 291
The Melton Mowbray Pork
Pie litigation provides an invaluable opportunity to revisit
the foundations of registered Geographical Indications
(GIs), one of the more obscure intellectual property rights
in existence today. An association of pie producers sought
to register the name as a Protected Geographical Indication
(PGI) under EC Regulation 2081/92, thereby gaining exclusive
rights to the term. The application was challenged and one
of the key issues was the controversial boundary drawing
process to delimit the authorised production area. The
dispute is presently on hold, pending a reference to the ECJ.
Regulation 2081/92 is a compromise informed by two sets of
national experiences. It exists at the intersection of
French commitments to GI protection based on the registered
Appellation d'Origine Controlee, which emerges from the
history of wine regulation and the German regime, which is
unregistered and grounded predominantly in Unfair
Competition Law. This paper argues that the incomplete
reconciliation results in a serious structural gap in the
Regulation and Melton Mowbray falls into it. It concludes by
suggesting ways in which to more appropriately reconcile
these two approaches.
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‘Cyberporn and the Indian Legal
Response’ in NV Kamath (ed) The Law Relating to Computers,
Internet and E-commerce: A Guide to Cyberlaws and the Information
Technology Act 2nd edn. (Universal Law Publishing Co; New Delhi
2004).
‘The New Trademark Dilution Provisions
- Would a Brand Still Sell as Sweetly?’ Law Review of the
National Law School of India (Spring 2004).