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Warner, Steven --- "Legal Strategies for Coping With Unwanted Third Party Use" [2006] ELECD 248; in Phillips, Jeremy (ed), "Trade Marks at the Limit" (Edward Elgar Publishing, 2006)

Book Title: Trade Marks at the Limit

Editor(s): Phillips, Jeremy

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845427382

Section: Chapter 20

Section Title: Legal Strategies for Coping With Unwanted Third Party Use

Author(s): Warner, Steven

Number of pages: 11

Extract:

20. Legal strategies for coping with
unwanted third party use
Steven Warner
Every species of intellectual property confers a monopoly. The intellectual
property owner is entitled to prevent third parties from encroaching on the
sphere protected by that monopoly. It is equally true that all monopolies
conferred by intellectual property are limited. In a competitive economy, the
monopolies created by intellectual property rights are anomalous and will be
tolerated only within certain boundaries. Trade mark rights in particular are
circumscribed in a number of ways described in detail in preceding chapters
and these limitations cannot be avoided.
Nevertheless, trade mark owners can use a variety of strategies to minimise
the effect of these limitations on the trade mark monopoly. Some are obvious
(but not necessarily simple), such as selecting inherently distinctive signs to
serve as trade marks; others are, at least in theory, simple (but not necessarily
obvious), such as relying on alternative intellectual property rights where trade
mark rights cannot succeed. This chapter briefly considers some of the most
important steps a brand owner can take to maximise its ability to prevent third
parties from making unauthorised and unwanted use of its trade marks.


1. DEPLOY ALTERNATIVE INTELLECTUAL PROPERTY
RIGHTS
A sign protected by a trade mark registration may also be protected by other
intellectual property rights. This is because a trade mark may also be a copy-
right work1 or a design that qualifies for protection.2 Even a sign that merely


1 For example, a logo trade ...