Bucerius Law School, Hamburg, Germany
October 11, 2013

Professor Dr. Dr. h.c. Annette Kur (Max Planck Institute for Intellectual Property and Competition Law)
Openness in Trademark Law: A Viable Paradigm?

Open source, open innovation and open access are models discussed in connection with patent and copyright law (as well as in adjacent fields such as database protection). Considering "openness" as a possible way forward in trademark law appears absurd at first glance. While reducing exclusivity might be beneficial for the public at large when it comes to inventions and creations, the opposite seems to be true in regards of source-identifiers: they must necessarily be exclusive in order to ensure that the message conveyed is actually reliable. This also appears to mean that the scope of protection as fixed by trademark law must be respected by everyone, including the proprietor himself, meaning that this is not an issue for bargaining. Nevertheless, any practitioner is well-aware of the frequency and importance of covenants concluded among proprietors of potentially conflicting signs delineating the respective areas of protection. The issue was also addressed several times in jurisprudence and the literature, with the general result being that there is no reason for concern. While that may be true, the issue deserves a second look in the light of the recent Commission proposals for amendment of the Community Trade Mark Regulation and the Trade Mark Directive. Following those plans, the future of European trademark law would be characterized by two tendencies which together might lead to a considerable increase in the number and impact of such covenants. First, national registrations will become even less attractive than to-date vis-à-vis Community Trade Mark applications, thus bolstering the current shift towards the CTM and thereby aggravating the problem usually referred to as "cluttering". Second, by prohibiting Member States from carrying out ex-officio examination for prior rights, and by abolishing any kind of searches, European trademark law becomes entirely "privatized" in the sense that it is left to the parties alone to monitor and handle potential conflicts. In combination with the expected increase in trademark "cluttering" OHIM – which inevitably translates into a higher potential for conflicts to arise – this will most likely lead to a higher demand for contract-based solutions among proprietors of marks that are at least arguably close to infringing. Without questioning the general legitimacy of such forms of private ordering in the trademark field, the presentation will line out certain issues that might arise from such practices, such as how competition among different kinds of firms might be impacted, and how the transparency of the system would be affected.