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Abstract

Few issues have raised as much controversy in trade mark law and policy as the case law of the Court of Justice (CJEU) on trade mark functions. Enthusiastically greeted by some, others consider it disastrous in regards of reasoning and effect. The EU Commission has stepped in, first by filing a brief with the CJEU, then by way of proposed legislation that is supposed to push the genie back in the bottle: Protection under the double identity clause shall be available only for use of a sign that affects or is likely to affect the origin function. Unsurprisingly, that proposal met with antagonistic reactions from the opposite camps; and according to the reactions so far available from the legislative bodies, it is most unlikely to succeed. This article tries to add nuance to the discussion by pinpointing the dilemma underlying the CJEU’s jurisprudence – the Court is no more to blame than the legislator who failed to articulate more clearly whether and how the protection granted in double identity cases should be limited. Furthermore it is argued that neither accepting the Commission’s proposal nor blindly continuing the current path will yield satisfactory results. More important than arguing about the contents of various trade mark functions and their place in determining the scope of protection is to observe the way in which trade mark law absorbs ways of reasoning typically found in unfair competition law. While that adds flexibility and may in the longer run lead to more substantive harmonization, the space for independent evaluation of unfair conduct under national law is narrowed accordingly. The effects of that process appear manageable where the scope of rights is concerned; however, the results are more hazardous on the level of enforcement, as was highlighted in the recent CJEU decision C-661/11 – Martin Y Paz.