The topics will be:
(i) Distinctiveness. In EU parlance, the essential function of marks is to ‘indicate trade origin.’ What does this mean? How does it differ from being new, creative or attractive? From whose perspective is it assessed? Is it possible to say when trade marks do function to indicate origin? What kind of evidence is relevant? To what extent are policy considerations relevant? If a mark loses distinctiveness can it be maintained? Should it matter whether the trade mark owner was at fault?
(ii) Functionality. Even if marks are distinctive, many systems preclude protection of marks that are ‘funtional’? Why should we tolerate confusion in such cases? What is meant by functionality? How is it assessed?
(iii) Registration. Many – most – trade mark systems are premised on registration. What are the goals of registration? How does registration work? What are its effects?
(iv) Use. Some systems premise protection on use rather than registration; most systems, even registration systems, allow marks to be revoked absent use. Why is use important? What does it mean? Should protection ever be afforded to marks that are not used? Does a trade mark owner have a right to use?
(v) Territory. Both use based and registration based systems link protection to territory – the territory of use, or that of registration. What are the implications for international marketing? What mechanisms are available to enable traders to secure foreign markets in advance of expansion? What mechanisms prevent opportunistic behaviour?
(vi) Confusion. What is confusion? Why is it thought problematic? From whose perspective is it assessed? What types of confusion might be identified? How can the existence of confusion be proved?
(vii) Dilution, Tarnishment and Free Riding. Some trade mark systems give some mark holders protection other than against confusion. In what other ways may their interests be prejudiced? Are there good reasons for affording protection? How might third party interests be accommodated?
(viii) Third Party Interests. How are third party rights and interests incorporated into the system? What is the relationship with (a) freedom of speech; (b) personal rights eg to use ones name; (c) cultural values? Are these best accommodated by refusing protection, by providing exceptions to rights, or in some other manner?