Hays, Thomas --- "The free movement (or not) of trademark protected goods in Europe" [2008] ELECD 167; in Dinwoodie, B. Graeme; Janis, D. Mark (eds), "Trademark Law and Theory" (Edward Elgar Publishing, 2008)

Book Title: Trademark Law and Theory

Editor(s): Dinwoodie, B. Graeme; Janis, D. Mark

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845426026

Section: Chapter 8

Section Title: The free movement (or not) of trademark protected goods in Europe

Author(s): Hays, Thomas

Number of pages: 25

Extract:

7 Substantive trademark law harmonization:
on the emerging coherence between the
jurisprudence of the WTO Appellate Body
and the European Court of Justice
Gail. E. Evans*



I. Introduction
The conclusion of the Agreement on Trade-Related Aspects of Intellectual
Property Rights (TRIPS)1 in 1994 presaged the advent of a global epoch in
trademark rights. The TRIPS Agreement not only provides substantive stan-
dards for the eligibility and protection of trademarks, but also mandates that
"effective" enforcement procedures are available under national legal systems.
It does so by establishing a global network of "coordinate" national courts to
enforce the substantive trademark provisions of the Agreement.2 Without
replacing the national, territorially-based trademarks of Member States,
TRIPS is based on principles of territoriality requiring independent trademark
applications and actions for the enforcement of rights in each Member State of
the World Trade Organization (WTO).
Despite the fact that domestic trademark laws have been duly amended in
accordance with the TRIPS Agreement throughout the 151 Member States of the
WTO,3 multi-jurisdictional actions for trademark infringement indicate that

* Reader in International Trade and Intellectual Property Law, Queen Mary,
University of London. For an elaborated version of this chapter see Substantive Trade
Mark Law Harmonization by Means of the WTO Appellate Body and the European
Court of Justice: The Case of Trade Name Protection, JOURNAL OF WORLD TRADE
LAW, Vol. 41, 6, 1127­62 (2007).
1 Final Act Embodying the Results of the Uruguay Round of Multilateral Trade
Negotiations, Marrakesh Agreement ...