The 21^st century is witnessing the victory of the visual sense among the five senses taking into consideration increased visualization of everyday life. In such an environment, inevitably, trade dress has become an important value for companies which want to gain advantage in the economic competition. Trade dress can be identified as “total image” and “overall appearance” of a product or its packaging.[1] It includes visual appearance, shape, packaging or even colour of a product and the decor of a restaurant.

Although the subject matter of trademark in the EU has previously been identified as relatively strict (especially compared with the US), recent Apple[2] case has triggered the expansion of the subject matter of trademark protection in a way including service dress. Under such an expansion, whether the law of passing-off and the law of designs have become redundant have been a highly debated issue which needs to be analyzed specifically. For this purpose, this paper will examine protection of trade dress regarding trademark law and designs law in the EU, and passing-off in the UK and it will reveal that there is still need for the law of designs and the law of passing-off regarding trade dress, so despite the overlapping of the protection provided to trade dress by designs law and passing-off, they have not become redundant.

First, trade dress protection under the EU trademark law will be analyzed. Then, designs law in the EU will be examined as another way of having trade dress protection. After that, law of passing-off will be explained as an alternative protection of trade dress in the absence of any registration. Finally, laws of trademark, designs and passing-off will be compared to draw attention to the advantages and disadvantages of each regime in terms of protecting trade dress. The paper will be concluded stating that the laws of trademark, designs and passing-off provide different kinds of protection to trade dress, and they have different advantages and disadvantages; so the law of passing-off and the law of designs have not become redundant considering the expansion of the subject matter of trademark.

 

Protection of Trade Dress under the EU Trademark Law

 

Trade dress is a judicially-made notion originally stemming from the US jurisdiction used to signify overall image of a product or service capable of identifying the source of them. In Europe, this notion does not appear neither in the statutory law nor in the jurisdiction explicitly; instead, the term “get-up” is used to identify the total look and feel of the product.

Although the statutory law in the EU does not use the term “trade dress” itself, the Regulation which establishes a unitary trademark (Community Trade Mark, CTM) throughout the EU specifies “signs of which a Community trade mark may consist” including shapes and packaging in Article 4 provided that they are capable of “distinguishing the goods or services of one undertaking from those of other undertakings”.[3] In Article 7, the Regulation puts forward necessary conditions for the signs to be registered as a CTM where distinctiveness has been one of the most crucial of them. According to the CJEU, a sign is regarded as distinctive if it “identif[ies] the product in respect of which registration is applied for as originating from a particular undertaking, and thus distinguish[es] that product from products of other undertakings”.[4] As a result of this definition, non-distinctive signs are excluded from protection since they refer “to the characteristics of goods or services in respect of which registration is sought”.[5] As those signs should be used by other competitors freely, they should be prevented “being reserved to one undertaking alone”.[6] As is seen, main rationale behind the requirement of distinctiveness is to prevent hampering of competition through giving monopolistic rights over freely used signs.

In the birth-place of trade dress, Two Pesos Inc v Taco Cabana[7] case, in which a Mexican style business venue was wanted to be protected as a trade dress, points out explicitly necessary criteria for trade dress protection in the US law. Accordingly, the two important factors are distinctiveness and non-functionality. Regarding the first requirement, the trade dress must identify the source of the product or the service and must distinguish it from other competitors.[8] However, not all trade dresses are inherently distinctive, but only ones which are “suggestive, arbitrary and fanciful” have been regarded as distinctive by the Supreme Court.[9] In that case, the Court mainly examined whether inherent distinctiveness was enough for trade dress to be protected under Section 43(a) of the Lanham Act[10] or secondary meaning was necessary for this protection. The Court held that the trade dress was inherently distinctive “because their intrinsic nature serve[d] to identify a particular source of a product” and it was neither descriptive nor functional, so there was no need to prove acquired distinctiveness through secondary meaning,[11] which manifests that a trademark can be regarded as distinctive either as a result of inherent distinctiveness or acquired distinctiveness.

On the other hand, in much recent Wal-Mart v Samara case, the Court distinguished product shapes from packaging and stated that the former was not capable of identifying the source of the product and required secondary meaning to be regarded as distinctive.[12] This decision of the Supreme Court shows that proving distinctiveness of a trade dress has become harder for companies due to the requirement of secondary meaning since then.[13]

On the other hand, regarding trade dress, the EU trademark law does not require acquired distinctiveness in all circumstances. In other words, the distinctiveness test in the EU regarding trade dress is not different from traditional trademarks such as words. Also, the trademark law does not set different eligibility criteria for shapes, packaging and graphically represented signs other than words to be eligible in the meaning of Article 7 of the Regulation. The CJEU has many times put forward this issue through stating that “the criteria for assessing the distinctive character of three-dimensional trademarks consisting of the appearance of the product itself are no different from those applicable to other categories of trade mark”.[14]

Non-functionality is the other main requirement for trade dress protection. In the US context, Sections 2(e)(5) and 43(a)(3) of the Lanham Act explicitly state that in order to benefit from trade dress protection, it must be non-functional.[15] In Traffix, the Supreme Court stated that a trademark is functional “when it is essential to the use or purpose of the device or when it affects the cost or quality of the device”.[16]

In the EU context, Article 7(1)(e) of the Regulation provides specific exclusions to registration of trade dress, which can be identified similar to the “functionality doctrine” in the US law. Accordingly, signs which consist exclusively of the shape, or another characteristic, which results from the nature of the goods themselves; which is necessary to obtain a technical result; and which gives substantial value to the goods are excluded from registration.[17] This exclusion of functional, natural or ornamental product shape marks distinguishes trademark from design. It is enough for an application to fall in the ambit of one of those three conditions to be rejected.[18]

In that context, Lego[19] case was resulted with the rejection of the application of toy brick according to this provision based on the reason of not to prevent competitors from using similar shapes. In other words, competitors should not be detained from using the applicant’s “technical solution” through giving the latter a monopoly.[20] In the Hauck case, the CJEU interpreted “shape which gives substantial value to the goods” provision broadly to include not only shapes with “artistic or ornamental value” but also “essential functional characteristics” of a shape in order not to give exclusive right to the applicant regarding the latter.[21] In this respect, it is reasonable to state that the courts have tried to establish a balance between competition and private reward when deciding on the protection of trade dress. For this purpose, Article 7(1)(e) of the Regulation plays a balancing function specific to trade dress besides other provisions under Article 7 of the Regulation.

Main rationale behind the Article 7(1)(e) is clearly put forward in Philips v Remington case through stating that the purpose is “to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors”.[22] In other words, the provision aims to confine the use of the shape with the function of identifying its source rather than stifling competition in a way which gives the exclusive right of the technical or functional form to one competitor.

The CJEU has stated many times in its decisions that there is no need to prove acquired distinctiveness through use but inherent distinctiveness is sufficient for registration of those shapes, packaging and signs, which differentiates the EU law from the US one on that point. However, the CJEU has asserted in Mag Instrument case that “consumers are not in the habit of making assumptions about the origin of goods based upon the shape of their packaging in the absence of any graphic or word element, and it could therefore prove more difficult to establish distinctiveness in the cases of such three-dimensional trademarks than in the case of a word or figurative mark”.[23] As a result of this “normative presumption”, the CJEU has made use of “departs significantly test” to determine whether the product shape is inherently distinctive or not.[24] According to this test, “[o]nly a mark which departs significantly from the norm or customs of the sector and thereby fulfils its essential function of indicating origin” can be identified as distinctive in the meaning of Article 7(1)(b) of the Regulation.[25] However, the ignorance of the CJEU to take into consideration the second step, the requirement of “fulfilling essential function”, in the Apple[26] case has opened the doors for trade dress protection to services.[27] While Apple’s trade dress was registered as a result of its acquired distinctiveness in the US, it was found inherently distinctive by the CJEU, which shows that the CJEU has interpreted the “departs significantly test” loosely. After that case, it has become possible to state that the scope of trademark has extended to include service dress.

This analysis shows that while the US treats trademarks differently and requires acquired distinctiveness for product shapes to be protected under the trademark law, there is not such differentiation in the EU law. As long as a trademark including trade dress satisfies the requirement of distinctiveness and non-functionality in the meaning of Article 7(1)(e) of the Regulation, it does not matter whether it is the result of inherent or acquired distinctiveness. On the other hand, what really lies at the very heart of the distinctiveness test in the EU is consumer perception which the CJEU has identified average consumer not in the habit of considering trade dress as the indicator of source. This “normative assumption” results with the requirement of high level of distinctiveness regarding trade dress in practice.

As the EU trademark law requires such a high level of distinctiveness, this can be a reason to analyze designs law to examine whether there is a room for trade dress protection. If it is, there appears a chance to protect trade dresses under design law which are failed from the scrutiny of Article 7 of the Regulation.

 

Protection of Trade Dress under the EU Designs Law

 

According to the definition given in the Designs Regulation which establishes a unitary design protection throughout the EU, namely Community Design (CD), “design means the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation”.[28] It is obvious from this definition that through referencing “the appearance of the whole or a part of a product” it includes trade dress.[29] Main difference between trademark and design is that the former identifies the source of the product or service and distinguishes them from other companies’ products or services whereas the purpose of the latter “is to make the product itself more useful and appealing”.[30]

Article 4(1) of the Designs Regulation puts forward “novelty” and “individual character” as the requirements of a design to be protected as a CD.[31] A design is regarded as new if it has not been made available to the public before the date of filing or priority date and it is “considered to have individual character if the overall impression it produces on the informed user differs from the overall impression produced on such a user by any design which has been made available to the public” before the date of filing or priority date.[32] Here, another important difference between trademark law and designs law appears regarding the term “informed user”. Whereas, trademark law refers to “average consumer” who is “reasonably well informed and reasonably observant and circumspect”,[33] designs law conceptualizes “informed user” which is defined as the “end user” who is an “ordinary people, lacking the knowledge of the ‘skilled designer’” but familiar with the existing designs.[34] In PepsiCo case, the CJEU identified informed user in between the trademark concept of “average consumer” and the “sectoral expert” to mean that “not to a user of average attention, but to a particularly observant one, either because of his personal experience or his extensive knowledge of the sector in question”.[35] In this respect, although it is difficult to distinguish them from each other, it is reasonable to assert that informed user can be deemed one step ahead of average consumer as the former is aware of existing designs.[36] This assumption shows that average consumer can be more disadvantageous to truly identify the origin of the trade dress since he barely “has the chance to make a direct comparison between the different signs” whereas informed user is supposed to be aware of the design corpus.[37]Under this assumption, trademark law requires a high level of distinctiveness test to protect only source-indicative signs.

Furthermore, as it has been pointed out above regarding the CTM, in the same way, the legislator provides certain provisions to exclude “features of appearance of a product which are solely dictated by its technical function”[38] from designs protection to prevent competition being endangered by the monopolization of certain features which should be, indeed, being left to the use of competitors freely. However, it is not always easy to specify which features of the design are technically functional. In this respect, “design freedom” is an important factor to be examined. In cases where there is only one way to  produce the design which requires the same appearance with the design of claimed registration, then it is appropriate to say that the appearance of the product is solely dictated by the function as there is very limited design freedom; hence cannot be protected as a design.

As article 3(2) of the Design Directive clearly puts that “a design shall be protected by a design right to the extent that it is new and has individual character”, meaning that there is no requirement for the design to be “distinctive” in order to be protected. This will give to design owner the opportunity to register his trade dress as a CD if he does not have a CTM protection because of the lack of distinctiveness of this trade dress in the meaning of Article 7 of the Trademark Regulation.

 

Protection of Trade Dress under the Law of Passing-Off

 

The law of passing-off, which has been developed in the UK jurisprudence, can be identified as a form of unfair competition specific to common law which aims to prevent deception.

The classic definition of passing-off was made in Jif Lemon[39] case since then “goodwill”, “misrepresentation”, and “damage” have been regarded as requirements of passing-off protection, the so-called “classical trinity”.[40] The first element of passing-off, namely goodwill, is a special concept to differentiate passing-off from trademark protection. It is goodwill, “the benefit and advantage of the good name […] attractive force which brings in custom”, that passing-off protects but not the trademark itself.[41] To illustrate, in Jif Lemon, it was not the trade dress (lemon-shaped-3D packaging) of the claimant being protected but his goodwill acquired in the course of time.

Misrepresentation is the second element required for passing-off action, which is different from confusion because in the former, deception is “material” and there is a real likelihood of damage towards claimant’s goodwill.[42] Accordingly, in Jif Lemon case, the defendant’s use of a different label on the same lemon-shaped-3D-trademark did not regarded sufficient enough to prevent customers from deceiving as they would probably think that the good was belong with the claimant.[43] Misrepresentation generally results with damage, which is the last element of passing-off, on the claimant’s goodwill in the form of loss of customer or loss of distinctiveness, especially in cases where passing-off was realized through inferior goods or services.[44] As the claimant argued in Henry the Hoover case, any breakdown in the copied version of the vacuum cleaner would be related with the claimant whose goodwill would be eventually affected negatively.[45]

In cases where trademark infringement is not actionable due to the lack of registration, passing-off provides protection. As it was in Lego case, although the registration of the shape of the Lego brick as a trademark was rejected due to its functional feature in the meaning of Article 7(1)(e) of the Regulation, it was protected against copying under the unfair competition law which can be seen as the EU version of passing-off. Two other important cases, Henry the Hoover and Puffin/Penguin, further proves that passing-off has been extended to offer protection to certain types of trade dress. In Henry the Hoover[46] case, the defendant copied the shape of the vacuum cleaner of the claimant but without the smiling face and the name “Henry” on it. The court sought whether the goodwill of the claimant on the small-man-like trade dress was sufficient enough to succeed in passing-off action.[47] The court found the shape of the vacuum cleaner distinctive and indicative of the origin of the product even in the absence of the word mark “Henry” and the smiling face and decided on passing-off[48], which shows that passing-off is flexible enough to provide protection to trade dress. In Puffin/Penguin[49] case, although the signs of “penguin” and “puffin” were not similar to find trademark infringement, an injunction was obtained by the claimant as a result of passing-off action due to the resemblance of the two trade dresses taking into consideration the colour and the birds used as a whole.

 

Comparative Analysis

 

After having analyzed the laws of trademark, designs and passing-off, it is proper to say that each of them provides different advantages as well as disadvantages to applicant of trade dress. It is obvious that the trademark law provides perpetual protection and gives exclusive right to the right-owner to prevent unauthorized use of identical/similar goods and services; therefore, protection under trademark law is highly desirable compared to the limited protection of the designs law and protection of the law of passing-off against copying. Also, there is no need for a trade dress to be “new” to be protected under the trademark law; even if it has been used in trade for many years, it is possible to register it as long as it satisfies the requirements set out in Article 7 of the Regulation. In fact, under such a situation it would be easier to register the trade dress based on acquired distinctiveness through use. Particularly, if the right-owner has a design protection, he can easily benefit from perpetual protection of trademark law based on its acquired distinctiveness after his design expired.

However, such kind of generous protection is not always easy to obtain especially in case of trade dress where proving distinctiveness has been harder as a result of the CJEU’s “normative presumption”. Although the scope of trademark protection has been extended since the Apple case in a way including service dress; nevertheless, there have been many cases that the CJEU rejected trademark protection regarding certain trade dress applications because of the lack of distinctiveness and/or due to their functional, natural and ornamental features. As the law of trademark provides perpetual protection, it has been more focused on the purpose of protecting competition to prevent signs, which should be open to use of competitors, become monopolized  in perpetuum; therefore, satisfying necessary conditions for registration of a trade dress as a trademark has been harder than registering it as a design. Even though a trade dress can pass the distinctiveness test successfully and being registered, it can be invalidated as a result of opposition, meaning that there is always a possibility of a trade dress to become invalid under the trademark law. Last but not least, the “inconsistency” in and among the decisions of EUIPO, the Boards of Appeal and the General Court resulting with lack of predictability, can be an important disincentive for applicants to register their trade dresses as CTM.[50]

In cases where a trade dress is not regarded as “distinctive” or cannot pass the Article 7 examination in the Regulation, it can be possible to register it as a design. It has been analyzed that whereas trademark law necessitates “distinctiveness” for registration, designs law requires “novelty” and “individual character” which are different from the trademark concept of “distinctiveness”. Therefore, in cases where it is difficult to prove distinctiveness of the trade dress no matter inherent or acquired, designs law appears as a savoir where it is easier to pass the test of “novelty” if the trade dress has not been made available to the public before. Indeed, there is no substantial examination and opposition processes in the Community designs law, which makes the registration process faster and easier than trademark.[51] Another remarkable feature of the designs law is it allows making multiple applications, meaning that it is possible to include more than one design to single CD application, which provides easiness in terms of both time and cost compared to CTM’s single sign requirement.[52] The protection is not limited with identical/similar goods or services in the designs law, which stands out as another advantage of it whereas, except well-known marks, the protection is only possible for identical/similar goods and services in the trademark law. Also, there is the right of deferment in CD which provides up to thirty months of deferment of publication from the date of filing/priority.[53]  Regarding such a longer list of advantages of the designs law compared to the trademark law, relatively shorter term of protection appears to be the most important disadvantage of the former.

If it is not possible to register the trade dress under the laws of trademark or designs, there is still a chance to have protection under the law of passing-off. It can be possible for trade dress owner to have protection against copying in the absence of any registered right if the “classical trinity” is fulfilled. Cases such as Jif Lemon, Puffin/Penguin and Henry the Hoover have proved that the scope of passing-off is flexible enough to provide protection to trade dress. However, it only protects against copying which is a disadvantage compared to the generous protection of the trademark law and the designs law. On the other hand, it is harder to prove acquired distinctiveness in trademark law compared to passing-off as the former gives monopoly power to the owner, which requires higher level of distinctiveness whereas the latter only enables the owner, without giving any property right, to prevent others using his trade dress in a deceptive way.[54] Passing-off also makes it easier for unregistered trade dress to be registered in the future through proving acquired distinctiveness by use. Regarding its relatively narrow scope of protection, passing-off can be considered as a last resort where, depending on the applicant’s aim, it is favourable to apply for design protection first as not to endanger the novelty requirement and later to try his chance on the trademark law.

As is seen, there is no single way of obtaining trade dress protection as it is possible to have cumulative protection. Since each regime has its own advantages and disadvantages, it depends on the purpose of the applicant to choose which type of protection he needs. To illustrate, if the trade dress owner has a small company and he is new in the sector, it is suitable for him to register his trade dress as a CD first, as this is quicker and less expensive than having a CTM, as well as does not require substantial examination and allows multiple applications. Then, he can register his trade dress as a CTM to benefit from its perpetual protection. If he misses the chance of registering his trade dress either as a CTM or as a CD, he can still protect it against copying based on the law of passing-off.

 

Conclusion

 

In conclusion, despite the expansion of the subject matter of the trademark law in the EU, this paper has shown that the law of passing-off and the law of designs have not become redundant as each law provides different advantages to trade dress owners, and registration of trade dress under one of them does not preclude the owner from other registrations or benefiting from the protection of passing-off. Instead of making them redundant, this overlapping of different type of protections provides freedom of choice and alternatives to trade dress owners as they are not mutually exclusive regimes. However, what has really been affected from this overlap resulting with the extension in the duration of the monopolistic rights and less competition is public domain, which exceeds the purposes of this paper.

 

Duygu Çampınarı

LLM Student in Intellectual Property Law

University of Leeds

duygucampinari@gmail.com

 

[1] Two Pesos Inc v Taco Cabana Inc 505 US 763 (1992).

[2] Case C-421/13 Apple Inc v Deutsches Patent-und Markenamt [2014].

[3] Council Regulation (EC) 207/2009 on the Community trade mark (codified version) [2009] OJ L78/1, art 4.

[4] Linde AG (C-53/01), Winward Industries Inc (C-54/01), and Rado Uhren AG (C-55/01) [2003] ECR I–3177.

[5] Case C-191/01 P OHIM v Wm Wrigley Jr Company [2003] ECR-I 12473.

[6] Case C-191/01 P OHIM v Wm Wrigley Jr Company [2003] ECR-I 12473.

[7] Two Pesos Inc v Taco Cabana Inc 505 US 763 (1992).

[8] Two Pesos Inc v Taco Cabana Inc 505 US 763 (1992).

[9] Two Pesos Inc v Taco Cabana Inc 505 US 763 (1992).

[10] 15 USC § 1125.

[11] Two Pesos Inc v Taco Cabana Inc 505 US 763 (1992).

[12] Wal-Mart Stores Inc v Samara Bros 529 US 205 (2000).

[13] Christina Platt Hillson, ‘Trade Dress Protection: When A Dress is Just A Dress According to the Supreme Court in Wal-Mart Stores, Inc. v Samara Brothers’(2001) 53 Baylor Law Review 461, 476.

[14] Case C-144/06 P Henkel v OHIM [2007] ECR I-8109.

[15] 15 USC § 1052 and § 1125.

[16] Traffix Devices Inc v Marketing Displays Inc 532 US 23 (2001).

[17] Regulation (EU) 2015/2424 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market  [2015] OJ L341/21, art 7(1)(e).

[18] Case C-205/13 Hauck GmbH & Co KG v Stokke A/S, Stokke Nederland BV, Peter Opsvik and Peter Opsvik A/S [2014].

[19] Case C-48/09 P Lego Juris A/S v OHIM [2010] ECR I-8403.

[20] Case C-48/09 P Lego Juris A/S v OHIM [2010] ECR I-8403.

[21] Case C-205/13 Hauck GmbH & Co KG v Stokke A/S, Stokke Nederland BV, Peter Opsvik and Peter Opsvik A/S [2014].

[22] Case C–299/99 Philips v Remington [2002] ECR I–5490, para 78.

[23] Case C–136/02 P Mag Instrument Inc v OHIM [2004] ECR I–9182.

[24]Cesar J Ramirez-Montes, ‘Protecting “Service” Dress in Europe’ (2015) <https://law.depaul.edu/about/centers-and-institutes/center-for-intellectual-property-law-and-information-technology/programs/ip-scholars-conference/Documents/ipsc_2015/abstracts-papers-presentation/RamirezMontesC_Paper.pdf&gt; accessed 29 November 2015. (Work in progress)

[25] Case C–136/02 P Mag Instrument Inc v OHIM [2004] ECR I–9182; Case C-144/06 P Henkel v OHIM [2007] ECR I-8109.

[26] Case C-421/13 Apple Inc v Deutsches Patent-und Markenamt [2014].

[27] Cesar J Ramirez-Montes, ‘Protecting “Service” Dress in Europe’ (2015) <https://law.depaul.edu/about/centers-and-institutes/center-for-intellectual-property-law-and-information-technology/programs/ip-scholars-conference/Documents/ipsc_2015/abstracts-papers-presentation/RamirezMontesC_Paper.pdf&gt; accessed 29 November 2015. (Work in progress)

[28] Council Regulation (EC) 6/2002 on Community designs (codified version) [2002] OJ L3/1, art 3(a).

[29] Council Regulation (EC) 6/2002 on Community designs (codified version) [2002] OJ L3/1, art 3(a).

[30] Susanna Monseau, ‘European Design Rights: A Model for the Protection of All Designers from Piracy’ (2011) 48 American Business Law Journal 27, 46 citing Wal-Mart Stores Inc v Samara Bros Inc 529 US 205 (2000).

[31] Council Regulation (EC) 6/2002 on Community designs (codified version) [2002] OJ L3/1, art 4(1).

[32] Council Regulation (EC) 6/2002 on Community designs (codified version) [2002] OJ L3/1, art 6(1)(b).

[33] Linde AG (C-53/01), Winward Industries Inc (C-54/01), and Rado Uhren AG (C-55/01) [2003] ECR I–3177.

[34] David C Musker, The Design Directive (UK, The Chartered Institute of Patent Agents) < http://www.jenkins.eu/downloads/the-design-directive-by-david-musker.pdf&gt; accessed 05 January 2016.

[35] Case C–281/10 P PepsiCo Inc v Grupo Promer Mon Graphic SA [2011] ECR I–10178.

[36] Anna Carboni, ‘The Overlap Between Registered Community Designs and Community Trade Marks’(2006) 4 Journal of IP Law & Practice 256, 262.

[37] Anna Carboni, ‘The Overlap Between Registered Community Designs and Community Trade Marks’(2006) 4 Journal of IP Law & Practice 256, 262.

[38] Council Regulation (EC) 6/2002 on Community designs (codified version) [2002] OJ L3/1, art 8.

[39] Reckitt & Colman Products Limited v Borden Limited [1990] 1 WLR 491.

[40] Jennifer Davis, Intellectual Property Law (3rd edn, OUP 2008)

[41] Jennifer Davis, Intellectual Property Law (3rd edn, OUP 2008) 149 citing IRC v Muller & Co’s Margarine Ltd (1901)

[42] Jennifer Davis, Intellectual Property Law (3rd edn, OUP 2008).

[43] Reckitt & Colman Products Limited v Borden Limited [1990] 1 WLR 491.

[44] Jennifer Davis, Intellectual Property Law (3rd edn, OUP 2008).

[45] Numantic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (Ch).

[46] Numantic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (Ch).

[47] Numantic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (Ch).

[48] Numantic International Ltd v Qualtex UK Ltd [2010] EWHC 1237 (Ch).

[49] United Biscuits UK Ltd v Asda Stores Ltd [1997] RPC 513.

[50] Anna Carboni, ‘The Overlap Between Registered Community Designs and Community Trade Marks’(2006) 4 Journal of IP Law & Practice 256, 260-261.

[51] Anna Carboni, ‘The Overlap Between Registered Community Designs and Community Trade Marks’(2006) 4 Journal of IP Law & Practice 256, 260.

[52] Council Regulation (EC) 6/2002 on Community designs (codified version) [2002] OJ L3/1, art 37.

[53] Council Regulation (EC) 6/2002 on Community designs (codified version) [2002] OJ L3/1, art 50.

[54] Jennifer Davis, Intellectual Property Law (3rd edn, OUP 2008) 170-171 (citation omitted).