Dr Dev Gangjee, NAB 6.20

This course is primarily intended for students enrolled on the LLM. Students enrolled on MSc Law and Accounting and MSc Law, Anthropology and Society may take the course subject to the approval of the course coordinator.

This course examines key issues in the UK/EU law of trade marks against the backdrop of global and comparative developments. The subject matter of trade mark protection now includes sounds, scents, shapes, movements and even textures. This is accompanied by an expanding scope of protection, while the very basis for such protection remains contested. Therefore this course aims to develop a critical overview of trade mark registration systems, drawing upon the rapidly developing body of UK and European case law to examine puzzles and conflicting interests. It reconsiders the rationale as well as architecture of registered trademark protection from various interdisciplinary vantage points such as economics, branding and marketing, semiotics and the freedom of expression. The syllabus extends to related areas where rights to signs are invoked, such as the tort of passing off and broader unfair competition law, internet domain names, publicity rights and geographical indications protection.

The course is structured around the legal regulation of commercial signs. Topics will include: the legal basis for trade mark protection and its relationship with changing social perceptions of marks; the protection of unregistered signs through unfair competition law, including passing off; the UK, European and international registration systems; related regimes including domain name protection, geographical indications and celebrity/publicity rights; the interface between trade marks and competition law as well as human rights; limitations upon the scope of protection; comparative advertising; parallel importation (grey market goods); the construction of the consumer as the subject of trade mark law; trade marks on the internet, including search engines and online auction sites.

A two-hour seminar each week, with an occasional guest lecturer.

Students will be asked to submit termly non-assessed essays on which they will receive feedback.

Core Textbook –

L Bently and B Sherman Intellectual Property Law 3rd edn. (OUP Oxford 2008)

Students will be expected to read widely in designated journals and books. Extensive use of trade mark registry materials is made such as references to live registrations as test cases, examiners’ decisions, registry works manuals and practice notices. Most of the recommended cases and journal articles are available online on subscription databases. Electronic copies of this material will be made available on the Moodle website which supports this course.

A detailed reading list will be provided for the course, but the following are recommended:

Available in the Library: L Bently, J Davis, J Ginsburg (eds) Trade Marks & Brands: An Interdisciplinary Critique (CUP, Cambridge 2008); G Dinwoodie & M Janis (eds) Trade Mark Law and Theory: A Handbook of Contemporary Research (Edward Elgar, Cheltenham 2008); S Maniatis Trade Marks in Europe: A Practical Jurisprudence (Sweet & Maxwell, London 2006); Kerly’s Law of Trademarks and Trade Names 14th edn. (Sweet and Maxwell, London 2005) [Also available online on Westlaw]; N Klein No Logo: Taking Aim at the Brand Bullies (Picador, NY 1999); C Lury Brands: The Logos of the Global Economy (Routledge, London 2004).

A three-hour written examination paper (100%).