The Promise and Perils of Non-Traditional Trademarks

Date: November 27, 2015

Time: 12:30pm – 1:30pm

Venue: Academic Conference Room, 11/F, Cheng Yu Tung Tower, HKU

Speaker: Prof. Dr. Irene Calboli, Singapore Management University School of Law  and Texas A&M University School of Law

In the past decades, the scope of trademark protection has exponentially expanded. Today, a growing list of product features—including colors, shapes, smells, gestures, and even video clips—can be protected as trademarks based on the assertion that these signs are capable of distinguishing products in the marketplace. However, the protection of these non-traditional marks has often been met with controversy, particularly by the courts in several countries. In her presentation, Dr. Calboli will address the “promise and perils” of protecting non-traditional trademarks—for trademark owners, competitors, and the public—in light of some of the most controversial cases litigated in recent years with particular attention to the fashion industry. Specifically, she will note that courts across several jurisdictions have resorted, or have considered resorting, to the doctrine of aesthetic functionality to counter the trend of expansive trademark protection and prevent granting trademark rights in aesthetically appealing product features that could put competitors at a significant disadvantage in the marketplace.


Irene Calboli is the Deputy Director of the Applied Research Centre for Intellectual Assets and the Law in Asia (ARCIALA), School of Law, Singapore Management University, where she is a Visiting Professor and Lee Kong Chian Fellow. She is also a Professor of Law at Texas A&M University School of Law, and a Transatlantic Technology Law Forum Fellow at Stanford Law School. She teaches and writes in the areas of intellectual property and international trade law. Her recent publications include the books, THE LAW AND PRACTICE OF TRADEMARK TRANSACTIONS (forthcoming 2016, with J. de Werra) and DIVERSITY IN INTELLECTUAL PROPERTY (2015, with S. Ragavan).