Non-traditional trademarks as barriers to competition, innovation, and creativity: what if their protection could be effectively limited in practice?

Document Type

Book Section

Publication Date



978 1 80392 224 9




The protection of non-traditional trademarks ('NTTMs') should be, theoretically speaking, prohibited in some ways or, at least limited, especially the three-dimensional (3D) and colour marks and when these "signs" were previously or are concurrently protected as industrial designs. The protection of NTTMs have turned out to cause severe negatives externalities on both legal and economic system. This protection chills global competition because competitors are no longer able to copy NTTM-protected products after the expiration of design rights and it also chills product innovation because it leads to a "lock-in" effect for the beneficiaries of such protection. My main criticism regarding the protection of NTTMs is twofold. First, granting exclusive rights to these signs can lead to foreclosing market competition with respect to product design and aesthetic features such as colors, patterns, and shapes. Second, protecting product design and aesthetic features as marks –thus potentially forever – can lead to a system promoting repetitiveness and standardization in product development, rather than creativity and innovation. Moreover, my criticism is based on the observation that the current system, under which design and other product features are protected (also) as NTTMs, profoundly distorts the function and scope of protection of both trademark and design law. In order to limit the potentially negative impact of NTTMs on competition, innovation, and creativity, current trademark laws include a list of grounds the presence of which prevents the possibility of protecting a sign as a mark. The list of these grounds includes signs that are generic, descriptive, and functional. A second, alternative solution may be to strictly and seriously enforce the existing absolute grounds barring the registrability as marks of elements that "add substantial value" to the products. the protection of NTTMs is inherently contrary to the traditional and respective functions of trademarks and designs, especially because this protection can create a potentially perpetual trademark monopoly on shapes, colors, and the like, to the detriment not only of market competition, but also of product innovation. Simply put, I argue that the protection of NTTMs raises serious competition-related concerns. Therefore, I support the need to limit if not prohibit the protection of these signs, which are often nothing else than product features or marketing techniques to sell the products.

First Page


Last Page


Num Pages



Edward Elgar


Gustavo Ghidini & Valeria Falce

Book Title

Reforming Intellectual Property

Buy this Book