Cederlund, Karin; Hansson, Petra --- "Non-traditional Trade Marks: Unauthorised but Permitted Use" [2006] ELECD 249; in Phillips, Jeremy (ed), "Trade Marks at the Limit" (Edward Elgar Publishing, 2006)

Book Title: Trade Marks at the Limit

Editor(s): Phillips, Jeremy

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845427382

Section: Chapter 21

Section Title: Non-traditional Trade Marks: Unauthorised but Permitted Use

Author(s): Cederlund, Karin; Hansson, Petra

Number of pages: 12

Extract:

21. Non-traditional trade marks:
unauthorised but permitted use
Karin Cederlund and Petra Hansson

1. INTRODUCTION
This chapter considers, from the perspective of the proprietor, the issue of non-
traditional trade marks and how they are affected by unauthorised but permit-
ted use in Europe. Although a number of issues relating to unauthorised but
permitted use of a trade mark have been clarified through the emerging case
law of the ECJ,1 the extent to which that case law affects non-traditional trade
marks remains unclear.


2. NON-TRADITIONAL TRADE MARKS
Words and logos have long been seen and accepted as trade marks by the
public, registration authorities and courts throughout Europe and beyond.
However, innovative brand creation and an increasingly competitive market-
place have created new types of trade marks that no longer consist of words or
logos or a combination of both, but of features such as colours, shapes, sounds,
scents, tastes and sometimes entire concepts. These new types of trade marks
are often referred to as `unconventional' or `non-traditional' trade marks.
A difficulty with non-traditional trade marks is that, as a genre, they
normally lack inherent distinctiveness.2 The average customer is simply not


1 See for example Bayerische Motorenwerke AG (BMW) and BMW Nederland
BV v Ronald Darel Deenik, Case C-63/97[1999] ETMR 339, [1999] ECR I-905;
Gillette Company, Gillette Group Finland Oy v LA-Laboratoires Ltd Oy, Case C-
228/03 [2005] ETMR 67; Gerolsteiner Brunnen GmbH & Co v Putsch ...