a narrow interpretation will complicate
Before analyzing the infringement issue,
Firstly, ban on brand stretching and
the whole trademark system. Third, the
it is noteworthy that there are conceptually
sharing is well in line with the trademark
requirement of use in the course of trade
two categories of products or services
principles of preventing consumers’
is designed to distinguish those uses of
that might be affected by a ban on brand
confusion over the product or service a
trademark in private capacity or in a non-
stretching and sharing, i.e., the original and
trademark represents. For a trademark being
commercial manner that won’t necessitate
new products or services. While the use of a
of commercial value, it can make products
the protection of trademark laws. While
trademark on original products or services is
or services recognizable for consumers
such narrow interpretation may help a
unlikely to trigger legal concern over Article
attributing the product or service to
quick examination on the legality of brand
20, attaching the original trademark to a
certain manufacturers or service providers.
stretching or sharing, it will generate more
new product or service becomes the major
Trademarks also help consumer distinguishing
implications than expected on the integrity
issue over the potential violation of Article
the goods or services of one undertaking
of whole trademark system. Therefore,
20. Given that a ban on brand sharing will
from those of other undertakings. The
this article prefers to a broader approach
prevent any new tobacco product from
trademark law has been designed to protect
interpreting the term “in the course of trade”.
bearing the brand or trademark of existing
not only the effort taken by the owner to
In sum, as brand stretching and brand
non-tobacco products or services, a ban on
increase the value of its trademark, but also
sharing involves the use of brand or trademark
brand stretching will prevent any new non-
the consumers from confusing the given
of either tobacco or non-tobacco products or
tobacco products or services from bearing
goods or services with others. If a tobacco
services, and such brand or trademark has
the brand or trademark of existing tobacco
brand or trademark is “likely” associated
been used in the ordinary course of business,
products. The question lies at whether
with non-tobacco products or services or
Article 20 should be triggered to further
preventing the original trademark from using
vice versa, it would create more confusion
examine if the right to use trademark has
on new products or services, despite being
for consumers to make a meaningful and
been infringed or “encumbered”.
registered, constitutes an infringement of the
genuine connection between the trademark
Infringement of Right to Use a Trademark
right to use a trademark.
and the corresponding products or services.
The next question turns to examine
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Secondly, brand extension has the implications to dilute the value of a trademark.
trademark may be used” rather than governing
Given the unclear scope of right under Article 20 due to different interpretative approaches, it is useful to examine whether there are any plausible causes to justify a government measure banning brand stretching and brand sharing of tobacco products within the TRIPS Agreement.
those regulating “whether a trademark can be
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on brand stretching and sharing, despite
used in certain circumstances”.54 Along the
This article offers following reasons for
restricting the freedom of the owner’s use of
same line of argument, a ban brand stretching
holding a view that a ban on brand stretching
trademark, is pretty much in line with the
and sharing is also consistent with Article 20
and sharing is not incontinent with Article
principle of trademark laws to prevent the
as such ban only restrict a trademark being
20 of TRIPS Agreement as there is no
value of trademark being diluted.
used in certain circumstances.
infringement of right to use a trademark.
whether the right to use trademark has been infringed or encumbered under Article 20. The outcome may vary largely depending on different views on a broad or narrow interpretation of Article 20. It has been argued that plain packaging and health warning requirements are consistent with Article 20 by narrowly interpreting Article 20 as prohibiting governmental measures restricting “how a
70
Currents 24.2 2021
The commercial value of a trademark may be depreciated if a brand or trademark has been applied to various products or services. Unless the value of certain trademark is declining or direct marketing of certain product or service is prohibited, extending brand name or trademark to other products or services would have the likely effect of impeding the owner’s efforts to enhance the commercial value of its trademark. The ban
