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  • L H Porangaba, 'A Contextual Account of the Trade Mark Functions Theory' (2018) Intellectual Property Quarterly 230
    The functions theory continues to be one of the most contentious issues in contemporary European trade mark law. In this article, I propose a reading of the CJEU jurisprudence by emphasising the theoretical distinction between trade mark use doctrine, as a defensive theory of immunisation, and functions theory operating through a contextual assessment. By focusing on confusion-based claims, I argue that the development of the functions theory is intertwined with and most productively understood alongside the increasing role of context in trade mark infringement. It should be seen as a doctrinal device that, together with a more realistic (or hybrid) construction of the average consumer, enabled infringement assessment to be infused with market realities, in response to the problems of abstraction that an expansionary trade mark doctrine had created. The emerging approach to the origin function has important lessons for how other functions ought to be assessed during infringement analysis.
  • L H Porangaba, Actavis v Eli Lilly – Has Equivalence Lost Its Purpose?, paper presented at Oxford Intellectual Property Discussion Group, Apr 2018
    Until recently, the question of infringement in UK patent law had been one of purposive construction of the claim. Whether the underlying invention was a lintel used in construction, a handheld epilator or a method for the production of a hormone, scope of protection would ultimately turn on ‘what the person skilled in the art would have understood the patentee to be using the language of the claim to mean.’ Although such an approach promised to deliver a simpler, more predictable assessment, it attracted heavy criticism for providing only limited protection against infringement by equivalent means. In order to be infringing, immaterial variants – that is, modifications with no significant effect on how the invention works – still had to fall within the language of the claim. Hence extending vertically could mean something other than a 90-degree angle, but a helical spring would never be a rubber rod in the eyes of the skilled reader. This limiting character of purposive construction led a commentator to define it as ‘contextual literalism’, and many decried the UK approach as being inconsistent with the Article 69 Protocol to the European Patent Convention. In Actavis v Eli Lilly, the UK Supreme Court parted ways with tradition to embrace a self-standing doctrine of equivalents. Following a doctrinal distinction between the issues of (1) interpretation of patent claims and (2) scope of protection, infringement now unfolds into a two-stage assessment which notionally suggests a closer alignment with other European jurisdictions. But what may be seen as a methodological shift to ensure compliance with international obligations – and a laudable harmonisation effort in itself – may bring about a more significant change to the law of infringement. This paper attempts to investigate the potential impact of the Supreme Court’s decision on patent policy and, in particular, the extent to which some of the normative propositions injected into this new equivalence regime are justified.
  • P Mysoor, 'Exhaustion, Non-Exhaustion and Implied Licence' (2018) International Review of Intellectual Property and Competition Law 656
    DOI: 10.1007/s40319-018-0721-3
    This article explores how exhaustion and non-exhaustion of certain rights can be more coherently explained using the common law doctrine of implied licence. Exhaustion, as the name suggests, only focuses on the effect of the first sale or other transfer of ownership of the original or the copy of the work on the copyright owner, namely the consumption of the distribution right. Although the consumption is distinctly for the benefit of the transferee of the original or the copy, the provisions in the directives on exhaustion do not reveal the effect of exhaustion on these transferees, nor the policy justifications that drive such consumption. These provisions only provide simplistically that the distribution of goods exhausts, but the provision of services does not. This leads to certain misconceptions that exhaustion cannot occur if the copy of the work is not in a tangible medium and that for all provision of services authorisation is required. The doctrine of implied licence can help address these concerns. Instead of regarding exhaustion as a statutory phenomenon, reframing it as a licence implied by statute changes the focus from the right lost by the copyright owner to the permission gained by the transferee. Further, the doctrine of implied licence is sensitive to the justifications that drive the implication of the licence, addressing the question as to why exhaustion must occur. Therefore, a framework called the Implied Licence Framework for Exhaustion is proposed here, which not only offers a better explanation for exhaustion and nonexhaustion, but also dispels the misconceptions.
  • L Bently, B Sherman, D S Gangjee and P Johnson, Intellectual Property Law (5th edn OUP 2018)
    Intellectual Property Law is the definitive textbook on this subject - an all-embracing and detailed guide to intellectual property law. It clearly sets out the law in relation to copyright, patents, trade marks, passing off and confidentiality, whilst enlivening the text with illustrations and diagrams. (NB: Dev Gangjee has taken responsibility for Section IV: Trade Marks and Passing Off from the 5th ed.)
  • D S Gangjee, 'Paying the Price for Admission: Non-Traditional Marks across Registration and Enforcement' in I Calboli and M Senftleben (eds), Non-Conventional Marks: Critical Perspectives (OUP 2018) (forthcoming)
    This chapter makes the case for joined-up thinking when approaching non-traditional signs in trademark law. Over the past three decades, trade mark registration has moved from up-front exclusions for certain categories of signs (no shapes, no colours) towards cautious and incremental acceptance. However the policy concerns generated by the grant of legal monopolies in such signs remain equally relevant today. The grant of an abstract colour mark to one trader closes off a part of the colour spectrum to others. Can we therefore allow such signs in to the system while successfully managing the tensions generated by their admission? Responding to this challenge, this chapter explores two potential responses. First, when permitting such marks to be registered, should we correlate the mark as characterised at the time of registration—agreeably modest in its scope and ambitions—with the mark as deployed in an enforcement context, where it otherwise tends to be read more generously? Second, when it comes to regulating non-traditional marks, should we move beyond historic upstream solutions—in the form of exclusions from registrability—and proactively consider additional scope limitation mechanisms when applying infringement tests and defences? Drawing on a range of EU and US decisions across various categories of non-traditional marks, the chapter argues that both questions should be answered affirmatively. Section II reviews the manner in which non-traditional marks came to be accommodated within trademark registration systems. Section III focuses closely on the characterisation of the mark at the time of registration. Trademark registration calls for a non-traditional mark to be depicted or represented (always), described (often) and classified according to type (where possible). This characterisation has profound consequences, as the ongoing Louboutin (C-163/16) red-soled shoes litigation before the Court of Justice demonstrates. Once characterised, the mark is then channelled into the relevant stream of substantive examination analysis. Since characterisation matters, applicants have learned to adapt, in order to overcome obstacles to registration. However where characterisation techniques have been used to subvert substantive criteria, registries and courts have responded by overriding the applicant’s own preferred characterisation with an objective assessment of the mark’s content. Section IV outlines the importance of consciously connecting the scope of the mark as characterised for the purposes of registration with its scope for the purposes of infringement. Section V concludes.
  • P Mysoor, 'Proprietary Estoppel and Copyright Law' (2018) King's Law Journal (forthcoming)
  • I Simon Fhima and D S Gangjee, The Confusion Test in European Trade Mark Law (OUP 2018) (forthcoming)
    Historically, likelihood of confusion has been the core infringement test for trade mark law, and it remains the most frequently applied test in infringement actions by far. However, there are noticeable differences in how it is applied by the Court of Justice of the European Union (CJEU), the General Court, and national courts; and questionable outcomes when it is applied in novel situations. This book is the first comprehensive and systematic account of the confusion test within the harmonised European trade mark system. It considers how the test is applied by national trade mark registries across EU member states, by the European Union Intellectual Property Office, by national courts, and by the CJEU. It offers practical guidance, while also evaluating more recent developments such as initial-interest confusion, post-sale confusion, the infringement of non-traditional marks and consumer responses to uses of trade marks on the internet.
  • D S Gangjee, 'Trade Marks and Allied Rights' in R Dreyfuss and J Pila (eds), The Oxford Handbook of Intellectual Property Law (OUP 2018)
    This chapter outlines the principal features of trade mark protection regimes, drawing primarily on EU and US materials to illustrate the underlying legal issues. It includes an outline of the principal allied rights; namely (i) unfair competition, (ii) passing off, (iii) publicity rights, (iv) geographical indications, and (v) domain names. The overview traces the incremental re-orientation of trade mark regimes in recent decades as they have moved beyond their traditional remit of origin-indication protection in response to claims that brand image needs to be better accommodated. In some cases, the ensuing broader scope of protection can have a detrimental impact on speech and inhibit marketplace competition. A draft is available at:
  • G Dinwoodie and RC Dreyfuss, 'Brexit and IP: The Great Unraveling?,' (2017) 39 Cardozo L Rev (forthcoming)
    In theory, exit from Brexit will free the United Kingdom from the constraints and burdens of EU membership. It will transfer sovereignty back to the people from the technocratic rule of Brussels; replace the jurisprudence of the Court of Justice with the adjudicative power of national courts; and allow the UK to tailor its market regulation in the particular exigencies of the UK economy. Whether, as a general matter, the restoration of a classic Westphalian state enhances value either nationally or globally is an issue we leave to others to debate. We ask a different question: we explore how well the rhetoric of Brexit comports with the reality and the institutional economics of nation-state lawmaking in an era of global trade and digital communication technologies. We use intellectual property law as a concrete example. We think it a good place to consider, with potentially broad significance. Copyrights are deeply intertwined with culture and education; patents have significant implications for health and safety; and trademark law sets the rules of the road for the marketplace in products and services. Since the critique of one-size-fits-all intellectual property regimes is well-known and widely accepted, some might think that this were an area where the United Kingdom would quickly move to restore self-rule. And yet global intellectual property rights are intimately associated with the incentive system of the Knowledge Economy writ large. Moreover, intellectual property mediates the infrastructure of the modern—global—business environment. We conclude that, not only are some of the supposed sovereignty gains of Brexit unlikely to be realized by the United Kingdom (because of the web of international, regional and bilateral obligations that exist in the field) but that many of the efficiency gains of harmonization that flowed from EU membership have been vitally important to the climate for innovation in the United Kingdom. If wholly jettisoned, they would adversely affect that climate in the EU. Thus, we explore how such gains might be reconstructed in a post-Brexit environment. We foresee some room for national experimentation. But we also predict an increased importance of transnational private ordering as means of efficiency gains, the rise of “technocratic” harmonisation, and the development of different forms of political convergence. While our study is limited to Intellectual Property, we believe that many of the features that we discuss are true of other areas of law as well.
  • G Dinwoodie, 'A Comparative Analysis of the Secondary Liability of Online Service Providers' in G Dinwoodie (ed), Secondary Liability of Internet Service Providers (Springer 2017)
    This Chapter analyzes the secondary liability of online service providers from a comparative perspective, drawing on national reports on the question submitted to the Annual Congress of the International Academy of Comparative Law. The Chapter highlights two different approaches to establishing the circumstances when an intermediary might be liable: a “positive” or “negative” definition of the scope of liability. The former flows from the standards for establishing liability; the latter grows out of the different safe harbour provisions that immunize intermediaries operating in particular ways, although there can obviously be connections between the standard for liability and the conditions for immunity. The Chapter also considers the mechanism (“Notice and Takedown”) that in practice has come in many countries to mediate the responsibilities of right owners and service providers for a range of unlawful conduct that occurs using the facilities of the service providers. This mechanism typically reflects OSP responses to potential secondary liability, and have developed both in contexts when that liability is defined positively and when it is framed in negative terms. But regardless of the varying impetus for the mechanisms, they are largely implemented through private ordering (with some of the concerns that attends any such activity) that is subject to differing level of public structuring and scrutiny. The Chapter also addresses the concept of (judicially-enforceable) “responsibility without liability”, a growing feature of the landscape in this area, especially but not exclusively in the EU. Service providers in several fields, most notably intellectual property law, are being required actively to assist in preventing wrongdoing by third parties regardless of their own fault (but for example, engaging in so-called “web-blocking” of allegedly infringing sites). These mechanisms, found in several legislative instruments but developed in greater detail by courts through applications in private litigation, operate to create a quasi-regulatory network of obligations without imposition of full monetary liability. The Chapter concludes by considering briefly whether generally applicable principles can be derived from, and extended beyond, the specific context in which they first arose. This analysis leads to two central propositions, which it is argued hold true descriptively and warrant endorsement prescriptively. First, an assessment of secondary liability cannot be divorced from (and indeed must be informed by) the scope of primary liability or other legal devices by which the conduct of service providers or their customers is regulated. And, second, despite the claims that secondary liability is simply the application of general principles of tort law, secondary liability is rarely a subject-neutral allocation of responsibility among different potential defendants according to autonomous principles of fault; rather, it maps in part to the policy objectives of the different bodies of law where the claim of (secondary) liability arises.
    ISBN: 978-3-319-55030-5
  • D S Gangjee, 'From Geography to History: Geographical Indications and the Reputational Link' in I Calboli and WL Ng-Loy (eds), Geographical Indications at the Crossroads of Trade, Development, and Culture in the Asia-Pacific (CUP 2017)
    For well over a century, the notion of a distinctive link between regional products and their places of origin has been articulated in the language of terroir. This type of causal relationship – where the physical geography factors within a region leave their distinctive traces upon the end product – is reflected in the definition of a geographical indication (GI) found in Article 22.1 of TRIPS. However this chapter focuses on the underdeveloped, yet increasingly utilised possibility of a link between product and place resting on a ‘reputation… that is essentially attributable to its geographic origin’. As GI subject matter expands beyond wines, spirits and agricultural products to encompass confectionaries, charcuterie, cheese and crafts, a deterministic ‘physical geography’ explanation loses traction. This chapter proposes that historical evidence can complement that of geography, allowing us to more meaningfully answer the question of when a product’s reputation can be said to be essentially attributable to its geographical origin.
  • D S Gangjee, 'GIs beyond Wine: Time to Rethink the Link' (2017) International Review of Intellectual Property and Competition Law 129
    The prototype of wine has undeniably shaped the norms, form and substance of sui generis GI systems. In epistemological terms, it has been ‘‘in vino veritas’’ for some time. A question which remains (strategically) neglected is this: to what extent can a regime designed around the particularities of wine be adapted to accommodate cheese, charcuterie, coffee as well as crafts and textiles? With exquisite irony, GI law lacks a reliable map when it comes to appropriate subject matter. This essay explores some of the tensions this generates.
  • L H Porangaba, Product Design and Trade Mark Use, paper presented at Indiana University Maurer School of Law, Mar 2017
  • D S Gangjee, 'Proving Provenance? Geographical Indications Certification and its Ambiguities' (2017) World Development 12
    With their historic links to a specific region, GIs are increasingly valued for their endogenous development potential. But precisely what does legal recognition as a GI guarantee? Drawing on the EU's registration system as a model, this paper investigates the certification of provenance and authenticity by public authorities. Recent empirical findings reveal that considerable flexibility exists within the certification process, which permits the loosening of linkages to a region and dilutes the certification guarantee. The present over-reliance on the system’s ability to certify could be usefully remedied if greater attention is paid to the individual product specification design.
  • G Dinwoodie and M Richardson, 'Publicity Right, Personality Right, or Just Confusion?' in M Richardson and S Ricketson (eds), Research Handbook on Intellectual Property in Media and Entertainment (Edward Elgar 2017)
    There is little consensus internationally as to whether and how the law should respond when celebrities find themselves subjected to unwanted public discussions of their private lives in the media (increasingly on a global basis online), and when their personal attributes are referenced without their consent in certain kinds of advertising and trade. A number of commentators have characterized such intrusions on a celebrity’s personal dignity or autonomy as simply falling among the minor inconveniences of being a celebrity, insufficient to warrant legal protection given important social values such as freedom of speech and cultural pluralism. The lack of consensus is reflected in the uncertain shifting legal lines drawn around celebrity protection, especially in common law jurisdictions which, unlike many civil law jurisdictions, do not adhere to the idea of a full-scale personality right. In this chapter, we canvass the diverse devices that the common law courts have deployed to deal with the grant of celebrity rights. We note and support the messy multivalence we find recognised in common law approaches given the range of dynamic interests that are at play. Such heterogeneity of values might also be relevant to the curtailment of celebrity rights. Thus, we equally support a flexible approach to the limitations, defences and other points at which discretion may be exercised by judges to find a balance between the interests/rights that may be claimed for celebrities (human and otherwise) in controlling the uses of their personal attributes in advertising and trade, and the countervailing interests/rights that others may seek to maintain including in freedom of speech and cultural pluralism.
  • G Dinwoodie, 'Territorial Overlaps in Trademark Law: The Evolving European Model' (2017) 92 Notre Dame Law review 1669
    This is a contribution to a symposium on overlapping intellectual property rights. Trademark law has to address “overlapping” rights in a number of contexts. This Article tackles the territorial overlap of competing trademark rights. One cause of the increasing conflict between overlapping trademark rights is the trend in international trademark law to develop (mostly, but not entirely, administrative) mechanisms designed to extend rights more easily and more quickly beyond the borders of a single nation state. These efforts reflect pressures caused by global trade and digital commerce. But these mechanisms, purportedly prompted by and designed to further international trade, can cause problems that both hinder trade and arguably undermine competing social and economic norms (especially as the normative effects of unthinking internationalisation are increasingly questioned). The difficulties caused are particularly acute when rights have been granted in systems that do not require use in order to secure a trademark registration, and where registrations are of ever greater reach. This is true of the European Union Trade Mark system, which is one such mechanism designed to extend the geographic scope of rights beyond the nation-state. Under that arrangement, a single application can secure a right valid throughout the entire territory of the European Union and that can be enforced in one proceeding via the grant of an EU-wide injunction even without the plaintiff having used its mark. The application can be filed without even an intent to use the mark in question and the territorial scope of the resulting European Union Trade Mark (or EUTM, formerly called a Community Trade Mark or CTM) is defined by the external political boundaries of the EU, which now encompasses twenty-eight member states. Despite this, courts in the European Union have in a number of recent cases resisted some of the innovations of the EU system and have affirmed the enduring pull of a different conception of territoriality. This Article defends many of these acts of resistance, and supports further modifications of the EU model, in part because of the increased problem of overlapping rights. That increased overlap requires a critical reading of these innovative mechanisms and attention to a broader range of values in implementing the model. These propositions are supported both by a more theoretically complex conception of trademark territoriality and a richer normative account of the European project. The Article endorses the role of national (or at least sub-Union) rights not simply as a necessary irritant flowing from the nature of trademarks. Rather, they should perhaps be embraced normatively as part of a trademark agenda that blends regard for economic expansion, free movement of goods, consumer protection, and economic efficiency (encompassing transaction costs) as well as the maintenance of diverse social, cultural, and linguistic traditions within Europe.
  • G Dinwoodie, L Bently, R Arnold and E Derclaye, 'The Legal Consequences of Brexit Through the Lens of IP Law' (2017) 101 Judicature 64
    This paper discusses the consequences on the main intellectual property rights (patent, copyright, trade marks and designs) as well as on trade secrets of a hard Brexit, namely an exit of the United Kingdom from the European Union which means that it will not longer be bound by EU law.
  • D S Gangjee, 'Trade Mark Dilution in India' in Daniel Bereskin (ed), International Trademark Dilution (Thomson Reuters 2017)
    Reviews the statutory provisions and case law on the detriment to distinctiveness (blurring), detriment to repute (tarnishment) and unfair advantage (free riding) claims in India.
  • G Dinwoodie, 'Diversifying Perspectives of the International Intellectual Property System' in C Geiger (ed), The Intellectual Property System in a Time of Change: European and International Perspectives (Lexis Nexis 2016)
    The Essay is a contribution to the volume celebrating the 50th Anniversary of CEIPI. It considers the future to development of the international intellectual property system by looking at how intellectual property is framed in international debates. The Essay contemplates the role of economics, trade, development, culture and human rights, and highlights the different approaches to the relationship between intellectual property and these different fields of knowledge. It argues that we must be pluralistic about the ways in which these five frames or bodies of knowledge interact with intellectual property law. That is because these different frames possess varying characteristics, and will operate effectively in different institutional settings. Indeed, we might not expect or want each frame to have equal weight in every setting.
  • D S Gangjee, 'Genericide: The Death of a Geographical Indication?' in D S Gangjee (ed), Research Handbook on Intellectual Property and Geographical Indications (Edward Elgar 2016)
    This chapter provides a legal framework for deciding when a geographical indication (GI) has crossed over the line into generic usage, as the common name for a type of product (such as cheddar cheese). Genericide is a process and one that is highly controversial. While Art 24.6 of TRIPS has emerged as the international reference point, it is remarkably underdeveloped. The question of whether a designation has become the ‘common name’ for a type of product requires an empirically informed answer. However, when setting out the test for genericide, there are opportunities for normative inflections to be introduced. Section 2 sets out the history of this controversial area and the commercial stakes which influence legal determinations. Section 3 identifies the four main structural issues to be addressed (which regime to opt for; who bears the burden of proof; what is the threshold or tipping point for genericide; and how the factors should interact). Section 4 proceeds to analyse the categories of evidence, drawing on comparative experiences with such categories in operation. Here the perception of the target audience (consumers or the general public, as informed by trade and expert opinion) must be gauged against the contextual backdrop of market conditions, legislative or bureaucratic classifications of the term and the actions of the rights holder. Section 5 concludes with a review of the options for preventing generic use in sui generis GI regimes, while also suggesting the avenues for reviving terms that were formerly GIs but have been declared generic. The comparative analysis is offered as a practical resource for decision makers, while also serving as a reminder that the overarching enquiry should remain focused on the public perception of the term, as opposed to the competing commercial interests at stake.
  • L H Porangaba, 'Cartier v British Sky e as Ordens de Bloqueio Dirigidas a Provedores de Acesso à Internet – Uma Lição a Ser Aprendida? (Cartier v British Sky and ISP Blocking Injunctions – Is There a Lesson to Be Learned?)' (2015) 135 Revista da Associação Brasileira da Propriedade Intelectual 39
    Available in Portuguese only.
  • D S Gangjee, 'Geographical Indications and Cultural Rights: The Intangible Cultural Heritage Connection?' in Christophe Geiger (ed), Research Handbook on Human Rights and Intellectual Property (Edward Elgar 2015)
    Can the protection of Geographical Indications (GIs) – signs which indicate the regional provenance of products such as Prosciutto di Parma, Darjeeling and Cognac – be integrated within a cultural rights framework? Since there has been recent interest in GIs as a potential vector for achieving cultural heritage goals, this suggests an affinity with cultural rights. To develop this line of enquiry, this chapter focuses on two threshold issues: (1) To what extent can the notion of cultural heritage act as a bridge or link between GI and cultural rights protection paradigms? (2) Alternatively, moving beyond a conventional human rights framework, are there parallels between GIs and the notion of intangible cultural heritage (ICH) – as recognised in international legal instruments by UNESCO in particular – which could be more fruitfully developed?
  • G Dinwoodie (ed), Intellectual Property And General Legal Principles: Is IP A Lex Specialis? (Edward Elgar Publishing 2015)