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Griffiths, Andrew --- "An Economic Perspective on Shared Name Issues in Trade Mark Law" [2009] ELECD 269; in Simon Fhima, IIanah (ed), "Trade Mark Law and Sharing Names" (Edward Elgar Publishing, 2009)

Book Title: Trade Mark Law and Sharing Names

Editor(s): Simon Fhima, IIanah

Publisher: Edward Elgar Publishing

ISBN (hard cover): 9781847202796

Section: Chapter 2

Section Title: An Economic Perspective on Shared Name Issues in Trade Mark Law

Author(s): Griffiths, Andrew

Number of pages: 16

Extract:

2. An economic perspective on shared
name issues in trade mark law
Andrew Griffiths

1. INTRODUCTION
In the European Trade Mark Directive (`the EC Directive')1, a trade mark is
defined as a sign that is `capable of distinguishing the goods or services of one
undertaking from those of other undertakings'.2 The European Court of Justice
(`the ECJ') has stated that the essential function of a trade mark is to `guaran-
tee the identity of origin of the marked goods or services to the consumer or
end user by enabling him, without any possibility of confusion, to distinguish
the goods or services from others which have another origin'.3 It might be
inferred from this that a trade mark must relate exclusively to one particular
undertaking and that every undertaking should therefore use a separate trade
mark to identify the goods it produces or the services it provides. However,
this oversimplifies the basis of the differentiation that trade marks achieve and
their economic role.
This book explores a number of scenarios in which two or more undertak-
ings use the same trade mark to identify their output when it is marketed and


1 First Council Directive of 21 December 1988 to approximate the laws of the
Member States relating to trade marks; 89/104/EEC. The EC Directive has substan-
tially harmonized Trade Mark Law throughout the European Union and was imple-
mented in the United Kingdom by the Trade Marks Act 1994 (`the 1994 Act').
2 The EC ...