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Maniatis, Spyros --- "Post Sale Effects of a Trade Mark: Conceptual Necessity or a Gift to Trade Mark Proprietors?" [2007] ELECD 278; in Westkamp, Guido (ed), "Emerging Issues in Intellectual Property" (Edward Elgar Publishing, 2007)

Book Title: Emerging Issues in Intellectual Property

Editor(s): Westkamp, Guido

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781845427757

Section: Chapter 9

Section Title: Post Sale Effects of a Trade Mark: Conceptual Necessity or a Gift to Trade Mark Proprietors?

Author(s): Maniatis, Spyros

Number of pages: 13

Extract:

9. Post sale effects of a trade mark:
Conceptual necessity or a gift to
trade mark proprietors?
Spyros Maniatis

1. INTRODUCTION
Arsenal's adventure before the law courts introduced the concept of `post sale
effects' of a trade mark into European registered trade mark law and poten-
tially into the common law tort of passing off. In the United States, following
an initial period of uncertainty, post sale confusion now falls within the main-
stream of trade mark law.
Ultimately, confusion is a correlation of the answers provided to three ques-
tions: `who' is confused, `when', and `as to what'? The post sale effect is
directly relevant to the question of `when'. It might also influence `who' and
`as to what' must be confused. It is argued that in Europe the acknowledgment
of post sale effects into infringement considerations should not change the
rationale for protection.


2. POST SALE EFFECTS IN THE USA
The relevant case law shows that post sale confusion has been applied at the
boundaries of traditional trade mark law. According to Tichane,1 it has
contributed in the protection of product features and design falling outside the
scope of copyright and patents and in cases where the `reverse passing off'
doctrine had to be fortified. It has also played a part in business reputation and
counterfeit cases.
Viennetta,2 an English case that exemplifies Tichane's thesis, brings
together a number of issues, linked with the function of the shape of an ice


1 See D. ...