——=—-— HANOI UNIVERSITY OF LAW LUND UNIVERSITY LAW FACULTY VUONG THANH THUY THE ISSUE OF “FUNCTIONALITY” IN TRADEMARK LAW THEORY AND PRACTICES IN THE UNITED STATES, IN THE EUROPEAN UNION AND IN VIETNAM TRUNG TAM THONG TIN THU VIỆN TRUONG ĐẠI HỌC LUAT HA NỘI PHÒNG ĐỌC —AD 4G | Supervisors: 1. Phing Trung Tap (Vietnam) Table of contents Preface Abbreviations Introduction Chapter I Background 18 Li Overview of trademark history lò 12 Legislation regulating trademarks 20 12.1 The Paris Convention 21 115 Madrid Agreement and Madrid Protocol 21 Lok TRIPS Agreement 22 12.24 Trademark legislation in the United States 23 122 Trademark legislation in the European Union 25 12.23 Trademark legislation in Vietnam 27 is Main issues concerning trademarks 31 13.1 Trademarks’ functions 31 [32 Trademark protective requirements 33 [3.4 The first sight of the functionality issue within trademark law 37 1.1 Grounds for this issue a7 1.2 Convergence between the different intellectual property rights 4] 1.3 Initial identification of the functionality issue in trademark law 50 1.1 Potentially functional signs 50 1.32 Analysing policies in functionality issue regulations 51 1.33 Functionality kinds 4ã Chapter II The issue of the functionality of trademarks in the legislation 56 and practice of the United States 2A Overview of the issue in different courts in the United States 57 2.1 The early period 57 vi RP, The period from 1938 to 1981 59 2.3 The period from 1982 up to now 61 jaaÀ The issue of the functionality of trademarks 65 pe Utility functionality 65 2.1 Rationale for utility functionality 65 2.2 Analysing utility functionality 71 Dodd Aesthetic functionality 89 2221 Rationale for aesthetic functionality 89 pS Ree Analysing aesthetic functionality 9] 25,9 ẮC, Arguments regarding aesthetic functionality 99 Chapter IH The issue of the functionality of trademarks in the legislation 106 and practice of the European Union 3.1 Overview of trademark legislation and the functionality issue 107 3.2 The issue of the functionality of trademarks 113 32.1 Some general terms 113 32.2 The functionality issue in legislation and in practice 122 Be TÀI Ground for refusal in Article 7(1)(e) (or rationale for the 122 functionality issue in the European Union) ce a The shape is necessary to obtain a technical result (or utility 125 functionality in the European Union) 3.3 The shape which give substantial value to the goods (or aesthetic 136 functionality in the European Union) Chapter IV The issue of the functionality of trademarks in the legislation 143 and practice of Vietnam 4.3 Reasons linked to Vietnamese society 157 4.2 Reasons tied to the economic situation 16] 4.3 Reasons from legislation 163 Chapter V Conclusions 165 ah Comparison between the functionality issue in the United States 166 and in the European Union 5.1 Policies for intellectual property and competition protection 166 5.1 In the United States 166 2.2 In the European Union 168 - l3 D2 Different approaches to understanding the functionality issue in 171 the United States and in the European Union 3.1 The type of sign to which the functionality test can be applied 17] S22 Distinctiveness requirement and its relationship to functionality 173 3.4 Two functionality issues 175 3.1 Public interest in preserving competition (subject matter 179 protection) 5.2 Competitive need protection rationale 189 Si 1 Relationship between the two grounds in the application of 193 functionality 5.4 Distinctive and generic considerations and their relation to the 195 functionality issue ny a Functionality evidence 198 i From the product (sign) itself 198 k TP J0 2 ¿ From official’s implementation 199 5.3 Proposals for Vietnam 199 5.4 Applying general principles in intellectual property law 201 5.2 Future proposals 205 FP| General proposals 205 Diduded Proposals concerning the functionality issue 208 Table of cases 219 Bibliography 221 Appendix 226 Preface Trademarks always play very important roles In undertakings’ success and development. So to choice distinguish signs to register trademarks is necessary requirements for all undertakings. Almost successful trademarks are chose from valued signs since such signs will be linked to undertakings during their commercial life.
However, if registered signs are chose from high value source, for example utilitarian or aesthetic signs which attract consumers directly from such value, such signs are not appropriate for trademark protection. In case such signs are accepted as trademarks, fair competition in market will be harm. In these cases, we should consider such signs following issue of functionality in trademark law to have the best answers. Although the issue of functionality has been regulated and settled in many developed countries as the United States, the European Union, this one is still very vague and unsystematic issue.
In Vietnam, functionality is almost a novelty definition and paid not much intention in legislations and in fact. By this research, I hope this book will fulfill two purposes, including: first, to draw a whole picture of the issue of functionality in trademark law, especially in the United States and in the European Union; second, to introduce a new legal nomenclature into Vietnamese intellectual property law, then, from Vietnamese characteristics in society, economy and law system, to raise some proposals relating the issue of functionality toward purpose of completing Vietnamese legal system. This book is the main visible result of my PhD studies from the beginning of 2007 to the end of 2010 at Faculty of Law, Lund University, Sweden and Hanoi University of Law, Vietnam. It would have been impossible without the help, encouragement and inputs of others.
During all research time, I have been received many precious support, help and advice from Prof. Christina Moell, my Swedish supervisor. From discussions with her, I have studied not only many necessary knowledge for my research but also unlimited lessons of the best way to live and to behave between colleagues, friends and with students. I would like to express my heartfelt gratitude to Prof.
Christina Moell who has been and will be always my supervisor. I would like to thank very much Dr Phung Trung Tap, the Vietnamese supervisor from Hanoi University of Law. He provided me with insightful comments and feedbacks on the draft version of this book. Without his help, it would be terribly difficult for me to be able to finish my research, especially when | have implemented my research in Vietnam.
Be my first supervisor in Lund, from my master thesis, Prof. Hans Henrik Lidgard is the person who suggested me this interesting topic and have given me many precious advices, instructions for my research. From the bottom of my heart, I would like very much to express my sincerely thank to him. Implementing this research, ] have studied many fruitful knowledge from many countries in the world.
I want to thank very much the Hanoi University of Law for supporting me to take part in this program. And I want to thank the SIDA project “Strengthening of Legal Education in Vietnam” for giving me the precious occasion and for financing my research. I also would like to thank my professors, lecturers and colleagues at the Hanoi University of Law in Vietnam and at Faculty of Law, Lund University in Sweden and in the places where I did my research as well as my friends for all their help and support. I would like to give special thank to Asst.
Bengt Lundell for all unlimited and warmest support which he gave me during last time. More than four years of researching is a long way with many not easy experience in my private life, I would never reach the finish point without supports and sacrifices from my family. I would like to express my gratitude to my parents, my sister and my daughter for their unlimited, fullest and warmest support, care and love. All constructive comments and criticism on this book are welcome.
I can be reached at thuyvuong79@yahoo. Vương Thanh Thúy Abbreviations BC Before Christ BoA Board of Appeal CTMD Community Trade Mark Directive CTMR Community Trade Mark Regulation CTU Community Trademark CF. Court of First Instance EC European Community ECI European Court of Justice EU European Union IP Intellectual Property OHM Office for Harmonization in the Internal Market (Trademarks and Designs) UK United Kingdom US United States WPO World Intellectual Property Organization WTO World Trade Organization TRPS WTO Agreement on Trade-related Aspects of Intellectual Property Rights INTRODUCTION The subject Trademarks play an important role in an undertaking, since they can be seen as the undertaking’s ‘face’ in the market. The consumers will be aware of the undertaking as well as its goods mainly through its trade marks.
The choice and registration of one good, original and impressive trade mark is always one of the first requirements for an undertaking. From ‘traditional’ marks like words, letters and numbers, the class of signs which can be protected as a trademark is becoming more and more broad. Trademarks can now be shapes, colours, sounds or other more special signs. That means that many characteristics that can be perceived by the senses of human beings, can be registered as trade marks.
While sounds or smells are however not often accepted as registered trade marks, shapes are regulated and accepted as legal trade marks in almost countries in the world. The main requirement for such new signs is_ their distinctiveness. In other words, if such signs are able to show who manufactured the product bearing such signs, they will be accepted as trademarks. It is impossible to accept all signs that undertakings may wish to have registered as trade marks.
Certain conditions and requirements must be applied to test potentially registrable signs for trademark protection. As noted above, the requirements are related to distinctiveness. For example, a descriptive sign will not protected as a trademark because of its non-distinctiveness. That is the reason why, when trademark infringement issues are raised, the core problems are related to the distinctive ability of the signs.
Among the grounds for trademark refusal lies the functionality issue of trade marks. Although similar to the distinctiveness requirement, a non-functional test exists for different purposes and policies. Distinctiveness is considered as a compulsory characteristic that all trademarks must have. Non-functional evidence, however, is used to determin: that signs do not belong within the scope of other intellectual property rights’ ard that trademark law can be applied to it.
The functionality ssue is not a traditional issue in trademark law. When the only signs were two-dimensonal ones like words, letters and numbers it was unnecessary to apply this doctrin:. At the time of allowing such signs as shape marks, its existence has been wseful in balancing the claims of different intellectual property rights. The intellectual property system covers many different types of rights.
Each one has its specific characteristics demanding different kinds of protection. As Cornish says in his book: “Patents give temporary protection to technological inventions and design rights to the appearance of mass — produced goods; copyright gives longer — lasting rights in, for instance, literary, artistic and musical creations; trademarks are protected against imitation so long at least as they continue to be employed in trade”°.' To protect the new special subjects, there are potentially several regimes within the intellectual property system. Conflict occurs in such cases and the functional test appears as one solution in such circumstances. My thesis will deal with some issues concerning the theory, legislation and practice related to the functionality of trade marks in the United States, the European Union and Vietnam.
The doctrine of the functionality of trade marks has developed in trade mark law to avoid the otherwise irreconcilable conflict between the different regimes in the intellectual property system. So, the need to write law and pay attention to functionality case law are obvious requirements of intellectual property law. Since shapes are regular objects which accepted as trade marks, among the new special subjects, in my papers, the issue of functionality in trade mark law will be researched around the core which are shape marks.