Dev Gangjee is Professor of Intellectual Property Law within the Law Faculty and a Tutorial Fellow at St Hilda's College. Prior to joining Oxford, he was a senior lecturer at the London School of Economics. Dev is a graduate of the National Law School of India and Oxford, where he was a Rhodes Scholar.
Dev's research focuses on Intellectual Property (IP), with a special emphasis on Branding and Trade Marks, Geographical Indications and Copyright law. Thematic research interests include the history and political economy of IP, collective and open innovation, and the significance of registration for intangibles. He has acted in an advisory capacity for national governments, law firms, international organisations and the European Commission on IP issues.
Besides IP, Dev has teaching interests across private law, including contract, land and tort law. He has won teaching prizes (LSE) and a student welfare award (Oxford). He is a visiting professor at the Munich Intellectual Property Law Centre, having taught on their LLM programme since 2010. He has held visiting fellowships at the Institute of Intellectual Property in Tokyo (2005), the IP Research Institute of Australia at UNSW (2010) and Hong Kong University (2018). At Oxford, Dev was previously Director of the Oxford Diploma in IP Law and Practice as well as a former Director of the Oxford IP Research Centre (OIPRC). He is an Academic Member of the OIPRC as well as a research Affiliate with IP Osgoode, Canada. Dev serves on the Editorial Boards of the Modern Law Review and the open access journal Laws.
Displaying 1 - 35 of 35. Sorted by year, then title.
D S Gangjee, 'Trade Marks and Innovation?' in Graeme Dinwoodie and Mark Janis (eds), Trademark Law and Theory II: Reform of Trademark Law (Edward Elgar 2021) (forthcoming)
Until relatively recently, there was a stable consensus: trade mark law had no necessary connection with innovation. This consensus was based on the origin indicating function of trade marks. There is no requirement for either the sign or the underlying product to be innovative and many protected marks consist of pre-existing words or images, such as the surnames Ford or McDonald.Trade mark law has therefore not only been historically indifferent to innovation, it has also actively policed this boundary with patent law.
However cracks are beginning to appear in the consensus, for three inter-related reasons.
(1) It has been suggested that successful branding generates a feedback cycle, which helps firms to recoup investments in R&D, while also encouraging such investments in the future.
(2) Trade mark registrations are analysed as indirect and complementary indicators of innovation. They help to identify patterns of innovation, which can be useful for policy formulation.
(3) Trade marks also help to protect and reward forms of innovation which cannot be accommodated in other fields of IP, such as service or marketing innovation.
This chapter critically engages with these claims, to assess their normative implications (if any).
Trade mark registration systems exist to provide useful information. Registers tell us who owns what. Until recently, it was axiomatic that registers for marks were directed at human readers – an applicant for a trade mark, trade mark registry examiners, vigilant competitors, employees of search and watching agencies as well as the occasional judge. This list now has a new entrant. What are the implications for the registered trade mark ecosystem, when algorithms begin to efficiently and comprehensively read trade mark registers? This chapter outlines the adoption of AI-enabled similarity assessment technology by search agencies, trade mark registries and watching agencies. Building on recent improvements in semantic and image searches, these algorithms identify conflicts between marks at the registry level. They provide a heuristically helpful (upstream) snapshot of conflict risks, based on two dimensions of similarity: marks and goods. However this simplified assessment may unintentionally edge out the more complex multi-factor likelihood of confusion test in a wider range of situations, including trade mark infringement analysis. The limits of these algorithms must be borne in mind.
Building on developments at the national level, WIPO has played a key role in creating Geographical Indications (GIs) as a contemporary field of intellectual property (IP). Three main initiatives of WIPO have been influential in this regard. First, WIPO served as the forum for refining the GI concept eventually incorporated into Article 22.1 of the TRIPS Agreement, where it remains the international reference point. Secondly, commencing in 1988, dedicated WIPO symposia have identified topics which both reflect and inform the grammar and structure of international GI negotiations. These symposia form part of a broader pattern of activity, alongside reports for the Standing Committee on Trademarks (SCT), technical assistance programmes and the development of informational resources. Thirdly, WIPO is responsible for the operation of the Lisbon system for the international registration and protection of appellations of origin. The recent expansion of this system, culminating in the Geneva Act of 2015, exposed fundamental tensions relating to who has a say in multilateral law making and the extent to which specialized interests can be cross-subsidized by WIPO’s general membership. Disputes relating to the reform of Lisbon go to the heart of WIPO’s constitutional framework.
Geographical indications (GIs) signal provenance for regional products and function as valuable collective brands. They are increasingly protected by 'sui generis' or independent protection systems, which require the registration of a product specification. Over several decades the functions and features of these independent regimes have stabilized, forming recognizable patterns. This chapter unpacks what we mean by sui generis protection for GIs. It argues that sui generis GI registration and protection systems are important sites where GI theory meets GI practice. Traces of the distinctive, foundational normative commitments of GI protection can be seen in the architecture of sui generis GI protection.
D S Gangjee, 'Champagne' in Claudy Op Den Kamp and Dan Hunter (eds), A History of Intellectual Property in 50 Objects (CUP 2019)
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.
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.)
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.
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:
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.
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.
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 systems ability to certify could be usefully remedied if greater attention is paid to the individual product specification design.
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.
This chapter contributes to a book on the image of the consumer in EU law by exploring the role of the average consumer in European trade mark law. There is in fact a variable concept of the consumer within European trade mark law and the chapter first sets itself the task of mapping these variations. We suggest that for structural reasons European trade mark law may be compelled to work with a differentiated concept of the consumer. However these variations should be approached relationally, with an awareness of the points of difference and their basis. In particular, we suggest that most efforts by courts to identify or construct consumers and the marketplace they inhabit are blended exercises that are part-empirical and part-normative. Explicitly recognising this blend will, we believe, enable a richer debate about the role played by the consumer in European trade mark law and the evidence or considerations to which courts might have regard. It also allows us to explore whether trade mark law in Europe ought either to achieve its own objectives or to contribute to the broader European project to adopt an approach to the consumer that is more empirically or normatively grounded as required by the legal context and whether different national courts are (despite different methodological traditions that survive European harmonisation) converging on a common approach to the trade mark consumer.
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?
D S Gangjee, 'Spanish Champagne: An Unfair Competition Approach to GI Protection' in R.C. Dreyfuss & J. C. Ginsburg (ed), Intellectual Property at the Edge: The Contested Contours of IP (CUP, Cambridge 2014)
This paper traces the emergence of a new res or object of protection within European trade mark law. Proprietary rights in trade marks have conventionally been premised upon the mark’s ability to communicate useful information; namely, indicating the commercial source of goods or services. Granting exclusive rights to control the use of a mark preserves its ability to reliably signal origin. Contemporary EU trade mark law goes further and protects the more expansive brand dimension associated with a successful trade mark. The Court of Justice of the European Union (ECJ) has enabled this by recognising not only the origin indication function of marks, but also their advertising, investment and communication functions as well. The brand is a remarkably elusive and protean, yet undeniably valuable, intangible. So what are the doctrinal tools and techniques available to courts, registrars and legal practitioners, enabling them to work with such elusive subject matter? What are the corresponding assumptions about brand creation and sustenance that reinforce these techniques? And can they be reconciled with recent conceptualisations of branding emerging from marketing and consumer studies research? Since brand protection is a controversial development within European trade mark law, this paper unpacks the manner in which the brand is conceived of within European legal doctrine. The ECJ situates branding within a one-way broadcast model, while contemporary marketing research emphasises that brand formation is dialogic and iterative. The ECJ’s approach to brand propertization is therefore not only inaccurate in presuming single author brand creation, but also deeply troubling since it marginalizes consumer agency and reinforces the exploitation of their immaterial labour through the instrumentality of trade mark law.
D S Gangjee, 'Copyright: India' in P E Geller (ed), International Copyright Law and Practice (Lexis: Matthew Bender- 2012)
[Annual contribution] Formerly by S. Ramiah
D S Gangjee, 'Cultural Heritage and Geographical Indications ' (2012) 4 WIPO Journal 92
D S Gangjee, 'Overlaps between Trade Marks and Geographical Indications' in N. Wilkoff and S. Basheer (eds), Overlapping Intellectual Property Rights (OUP, Oxford 2012)
D S Gangjee, 'Demerara Sugar: A Bitter Pill to Swallow? ' (2011) 24 Intellectual Property Journal 1
D S Gangjee and Robert Burrell, 'Because Youre Worth It: LOreal and the Prohibition on Free Riding ' (2010) 71 Modern Law Review 282
D S Gangjee, 'Non-Conventional Trade Marks in India' (2010) 22 National Law School of India Review 67
D S Gangjee and Robert Burrell, 'Trade Marks and Freedom of Expression: A Call for Caution ' (2010) 41 International Review of Intellectual Property and Competition Law 544
D S Gangjee and David Higgins, 'Trick or Treat? The Misrepresentation of American Beef Exports to Britain in the Late Nineteenth Century ' (2010) 11 Enterprise and Society 203
D S Gangjee, 'The Business End of Collective and Certification Marks' in I Simon (ed), Trade Mark Law and Sharing Names: Exploring Use of the Same Mark by Multiple Undertakings (Edward Elgar, Cheltenham 2009)
D S Gangjee, '(Re)Locating Geographical Indications: A Response to Bronwyn Parry' in L. Bently, J. Davis and J. Ginsburg (eds), Trade Marks and Brands: An Interdisciplinary Critique (CUP, Cambridge 2008)
D S Gangjee, 'Geographical Indications and Human Rights' in Paul Torremans (ed), Intellectual Property and Human Rights (Kluwer, The Hague 2008)
D S Gangjee, 'The Polymorphism of Trade Mark Dilution in India ' (2008) 17 Journal of Transnational Law and Contemporary Problems 611
D S Gangjee, 'Quibbling Siblings: Conflicts between Trade Marks and GIs ' (2007) 82 Chicago-Kent Law Review 1253
D S Gangjee, 'Say Cheese: A Sharper Image of Generic Use through the Lens of Feta' (2007) European Intellectual Property Review 172
D S Gangjee, 'Melton Mowbray and the GI Pie in the Sky: Exploring Cartographies of Protection' (2006) Intellectual Property Quarterly 291