The use of trade dress provisions under trade mark law and its implications for design, creation and competition in design-intensive industries #epip2015

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Chair: Beth Webster (Swinburne University of Technology)

Graeme Dinwoodie (University of Oxford)
Alan Marco (US Patent and Trademark Office)
Dan Hunter (Swinburne University of Technology)
Estelle Derclaye (University of Nottingham)

Abstract of paper by Estelle Derclaye (Shape(shame)less? Using trademark law to protect trade dress in the EU)

According to OHIM and the EPO, IP-intensive industries are those which use a lot of IP-protected material to make their products. How do design-intensive industries cope with using shapes of products and/or their packaging protected by trademark rights belonging to others? Both follow-on innovation and competition can potentially be hampered by such protection as designers cannot reuse those shapes as they are trademark-protected and trademark protection, contrary to other IPR, can last forever.

This paper examines EU trademark statutory and case law in relation to shapes and specifically packaging and its consequences for competition and follow-on design innovation including if, and if so how, trademark law makes design law redundant when undertakings choose to trademark a shape rather than protect it via design law. Owing to time constraints, the paper does not consider colour marks.