European Trademark Law: Should National Courts Have a Greater Role?

by jakecarberry

The harmonising of trademark law is a long-standing issue that has been fiercely debated by scholars and policy-makers alike. For advocates of greater harmonisation, on a global scale, EU trademark law is one of the most frequently cited success stories. European trademark law is by no means perfect though, and questions remain about the European Court of Justice (ECJ) and the pivotal role it has adopted in trade mark law dispute resolution. This entry will explore these questions and suggest that ultimately, the strain placed on the ECJ could be alleviated by national courts.

While the Trade Mark Directive and the Community Trade Mark provided the foundations, it is the preliminary ruling procedure which ensures a “unified interpretation” of harmonised trademark laws throughout the European Union.(1) Given the prominence of this procedure, it is perhaps unsurprising that the ECJ has found itself heavily burdened by its critical role in the development of harmonised European trademark law. In this regard, due to the complex and ever-changing nature of trademark law, the efficiency and responsiveness of European trademark system could be increased by allowing and encouraging greater participation of national courts in resolving trademark issues, rather than immediately involving the ECJ.

While this may at first seem contrary to the objectives and paradigm underpinning trademark harmonisation, there are several advantages that could be realised if national courts in Europe were given greater opportunity to consider resolutions in trademark issues. Firstly, it is important to note that trademark disputes are very fact-specific and, as such, national courts seem far better placed than the somewhat over-reached ECJ to examine the particular facts of a case. As national courts reflected upon more trademark disputes over time, it is likely that legal norms and principles would develop from those disputes with similar facts, ultimately leading to more sophisticated, specialised trademark law. (2)

The most significant advantage, however, which again stems from the possibility of specialisation, is based on the fact that in European national courts, trademark disputes are resolved by specialist judges with vast experience. This, I would argue, is a distinct advantage over the ECJ, wherein trademark disputes are resolved by lawyers with little to no trademark experience or expertise. Moreover, the value of past decisions and rulings within the broad field of trademark law should not be understated; when faced with complex new issues in trademark law, the ECJ does not possess such tradition whereas national courts can draw upon past experience. (3)

To conclude, national courts can be seen to possess a number of distinct advantages over the ECJ. That is not to question the importance of the preliminary ruling procedure but rather to suggest that, if national courts were given greater influence within the development of trademark law, the system would benefit from the expertise and specialisation that exists at the national level. In this regard then, the benefits that would arise from such a relationship would be akin to that of the Supreme Court and the lower courts in the United States. (4)

(1) Graeme B Dinwoodie, ‘Trade mark harmonisation – national courts and the European Court of Justice’, International Review of Intellectual Property and Competition Law, (2010)
(2) ibid.
(3) Michael Handler, ‘The distinctive problem of European trade mark law’, European Intellectual Property Review, (2005)
(4) Dinwoodie, (2010)