The nature and content of intellectual property law, which is heavily contingent on the state of technology and on social and market developments, have always been subject to ongoing transitions. How those transitions are effected and the shape they take is crucial to the ability of intellectual property (IP) to achieve its stated goals and to provide the necessary climate for investment in creativity, innovation and brand differentiation. The first half of this book explored those questions, as discussed more fully below in section 42.2.

In recent years, as well explained by Annette Kur,1 an assessment of the function of trademarks has become a direct doctrinal mechanism used by courts in the European Union to determine the scope of trademark protection in a number of contexts. In the United States, no equivalent doctrinal mechanism has developed, at least not in those precise terms; US courts do not speak the language of “functions” as the Court of Justice has now done for two decades. However, features of US trademark law have clearly been shaped with a similar awareness of the importance of the functions of marks. In particular, US courts have for over a century referenced the core function of a trademark to identify the source or origin of the product on which it is affixed. And litigants and scholars seeking to expand the scope of protection have sought to emphasize that marks do much more than identify source, often tendering explanations that hint at the advertising and investment functions of marks (without using those terms).

The expansion in subject matter of copyright, design and trade marks has made cumulation of protection a more common occurrence, even if the problem has long been recognised as a challenge for intellectual property law. EU law has no consistent approach to overlapping subject matter. In some cases, cumulation is permitted (and perhaps even mandatory). In others, it is looked upon with disfavour. However, it is clear that when regimes clash and cumulation rejected, trade mark law appears the one most likely to be regarded as pre-empted. This chapter considers reasons why this might be so, and finds most possible reasons wanting. However, this analysis does offer some important insights into the nature and challenges of trade mark law in Europe.

Introduction

The distinction between unprotectable ideas and copyrighted expression is one of the most fundamental principles of copyright law. It is a ubiquitous principle of national copyright law, and may even be the international ceiling on the subject matter capable of protection under national law. But no principle has been so frequently repeated and yet so badly understood. Indeed, commentators and courts have not been slow to comment on how difficult it is to grasp the distinction between idea and expression – or, perhaps more accurately, how difficult it is to articulate the distinction, or to draw it in practice.

Some of the most intractable problems in applying the distinction (and hence of making overall determinations of infringement) have arisen in the context of applying copyright law to new technologies. Protection of software, in particular, has generated difficult decisions for courts seeking to sustain and apply the distinction. This is in part because computer programs ‘hover more closely to the elusive boundary line between idea and expression’ and hence repeatedly test the resilience of the distinction. Likewise, musical copyright cases, even more so of late, have presented courts with similarly hard questions (possibly because of a felt lack of judicial expertise, and perhaps also with an eye to the ‘functional’ aspects of certain parts of the musical work). In both types of cases, courts as a result appear more comfortable with an expansive role for expert testimony to aid judicial resolution of the dispute.

Introduction

In his contribution to this volume, Alan Durant provides legal scholars with both a rich understanding of how linguists view terms that are part of the basic argot of trademark law and a potentially vital explanation of the different social functions that word marks might serve. Both aspects of his analysis introduce the complex variable of reality into trademark law. Trademark law must decide whether and when to take account of that complex reality, and what weight to afford such reality, no matter how enriched an account linguists offer about the actual meaning of signs. In this response, I suggest that, while trademark law should not become beholden to linguistics, the lessons of Durant's linguistic analysis are to some extent already accommodated in the practice of trademark law, and could be important guides in the further development of a number of legal principles.

Section 1 of this chapter explains why linguistics should matter to trademark law. Traditionally, and still most typically, words comprise the largest group of trademark subject matter. Trademark law is structured around protecting the meanings of those words, at least as understood by consumers, in order (classically) to prevent consumer confusion. I suggest some reasons why trademark law might ignore the precise reality of consumer understanding. However, the starting point (if not always the end point) of trademark law in many contexts is an understanding of how signs actually work in context, and linguistics is one way of establishing that starting point for words.