Putting functions in context: reconceptualising the scope of trade mark infringement

Thesis

The functions theory developed by the CJEU continues to be one of the most contentious issues in contemporary European trade mark law. In this thesis, I propose a more coherent reading of the CJEU jurisprudence; the functions theory may deliver a more transparent process of reasoning, allowing infringement assessment to engage with normative choices (or internalise policy concerns), which a conventional industrial property model otherwise fails to grasp. But these benefits can be attained only if functions theory is assessed within a broader, more complex expansionary trajectory within trade mark law. I therefore argue that the development of the functions theory is intertwined with and most productively understood alongside the increasing role of context in trade mark infringement. It should be seen as a doctrinal device that, together with a more realistic (or hybrid) construction of the average consumer, enabled infringement assessment to be infused with market realities, in response to the problems of abstraction that an expansionary trade mark doctrine had created. This analysis is potentially useful in two ways. First, it indicates that the CJEU might be relocating the centre of gravity of trade mark law from the formal universe of the registrar to the everyday experience of the consumer; a proposition finding some support in recent decisions of national courts. Secondly, it argues that the origin function seemingly departed from a more conventional paper-based approach, with infringement becoming increasingly contextual. This further suggests that other trade mark functions took a different path, relying more on untested assumptions of consumer behaviour, producing inconsistencies in the case law that ought to be addressed. The emerging approach to the origin function has important lessons for how the other functions ought to be assessed during infringement analysis.

Authors: do Carmo Porangaba, L

• Type of award: DPhil
• Level of award: Doctoral
• Awarding institution: University of Oxford
• Keywords: UK law; European law; Trade mark law; Intellectual Property; Comparative law; German law; Trade mark functions
• Subjects: Intellectual Property; Trade Mark Law