Trademark functions and trademark rights in the European Union

Abstract

This research examines the role of the “essential function” in European trademark law, reflecting on where it originated, how it is currently utilised and its future expectations. The essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling them, without any possibility of confusion, to distinguish the goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality. This statement which has been reiterated by the CJEU on numerous occasions will be torn apart and analysed. The thesis will go on to evaluate how trademark functions feature in different aspects of EU trademark law including those of registrability, revocation and infringement. The CJEU has accepted that “trademark use” exists not only where the mark is used in connection with the function of origin, but also when it is used in relation to additional trademark functions. Therefore, in certain circumstances, a trademark owner can prevent a third-party use if it is liable to affect other functions of the mark, such as those of quality, communication, investment or advertising. Case law of the CJEU has developed the concept of the different “functions” of a trademark, mainly in relation to the so-called “double identity” provisions of the Trademarks Directive, and has defined the scope of such functions to varying degrees. At present, infringements falling under the double identity rule are considered as “absolute” under the law, implying that no likelihood of confusion needs to be established. However, when examining the Court’s case law, it becomes evident that the absolute nature of the “double identity” provisions of the Directive may be jeopardized.