They recommend that: “In order to keep pace with technological developments and to allow the adaptation of the law to changing circumstances, an open-ended clause should be added to the provision on limitations which allows courts to develop appropriate new defences [to infringement] on a case-by-case basis in circumstances where the purposes, objectives and fundamental principles underlying the existing legislation warrant permitting third party use notwithstanding the lack of an express limitation.”

In was also cited that a reformed trademark law would introduce new rights, allowing ‘free use’ of trademarks in circumstances such as works of parody.

Furthermore, everyone should have free use of trademarks in situations where brand owners would obtain a “monopoly on functional product characteristics of a technical or aesthetic nature which consumers are likely to seek in the products of competitors” from relying on said trademark protection.

But would it be wrong to reform EU trademark law in such a way?

Pinset Masons trademark law specialist Iain Connor, calls it a “recipe for disaster”.

He continued: “The development of the Community Trade Mark law has already been hijacked by the Court of Justice of the EU (CJEU), interpreting the Directive in ways never anticipated by the legislators by, for example, gold-plating the test for infringement, diluting the absolute protection afforded to identical marks used on identical goods and services and by introducing different tests for online and offline infringement. 

“No court should be given discretion to move away from the unvarnished tests set out in the Directive and that should include the CJEU when interpreting the law.”

By Shané Schutte