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The Protection of Non-Traditional TrademarksCritical Perspectives$

Irene Calboli and Martin Senftleben

Print publication date: 2018

Print ISBN-13: 9780198826576

Published to Oxford Scholarship Online: February 2019

DOI: 10.1093/oso/9780198826576.001.0001

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Absolute Bans on the Registration of Product Shape Marks

Absolute Bans on the Registration of Product Shape Marks

A Breach of International Law?

Chapter:
(p.147) 7 Absolute Bans on the Registration of Product Shape Marks
Source:
The Protection of Non-Traditional Trademarks
Author(s):

Ng-Loy Wee Loon

Publisher:
Oxford University Press
DOI:10.1093/oso/9780198826576.003.0008

Abstract and Keywords

The trademark legislation of some countries explicitly and absolutely bans the registration of certain product shape marks, namely, the natural shape of the product, functional shapes, and/or aesthetically pleasing shapes. Some view these bans as being inconsistent with Article 6quinquies of the Paris Convention and Article 15 of the TRIPS Agreement. This chapter argues against this proposition. Its thesis is simple: product shape marks are outside the purview of the Paris Convention. Delving into the travaux préparatoires of the Paris Convention, it reveals that the Paris Union members could not agree on a definition of a “trademark,” particularly whether product shape marks could constitute trademarks. As for the TRIPS Agreement, whilst it achieved what eluded the Paris Convention and an international definition of “trademark” is now provided in Article 15(1) therein, there remains a real possibility that this definition does not extend to product shape marks.

Keywords:   products, shape marks, Article 6quinquies, Paris Convention, Article 15, TRIPS Agreement

I. Introduction

Amongst three-dimensional shape marks, there is one subcategory that can be especially controversial when protection is sought therefor under trademark law: marks comprising the three-dimensional shape of the product itself. The nature of the controversy is encapsulated in this question posed by Lord Justice Jacob in a passing off case involving the three-dimensional shape of a cushion: “[There can be] an intractable problem: how do you distinguish between a capricious addition and the article itself?”1

His point is that a mark is a “capricious addition”2 to the article, rather than the article itself, and if this distinction is not rigorously maintained, there is a risk that trademark protection will extend beyond the mark to the article itself or to the functional or aesthetically pleasing design features of the article; if there should be any protection for the article or these functional or aesthetically pleasing features, this protection more properly lies in the patents or designs regime where the rights conferred are of limited duration.3

Some countries have responded to this risk by enacting absolute bans on the registration of certain types of product shape marks. For example, Section 7(3) of Singapore’s Trade Marks Act provides as follows:

(p.148)

A sign shall not be registered as a trade mark if it consists exclusively of—

  1. (a) the shape which results from the nature of the goods themselves;

  2. (b) the shape of goods which is necessary to obtain a technical result; or

  3. (c) the shape which gives substantial value to the goods.4

The three grounds set out in (a), (b), and (c) shall be referred to in this chapter as “the Natural Shape Ban,” “the Functional Shape Ban,” and “the Aesthetic Shape Ban,” respectively.

Other jurisdictions that have enacted identical or similar bans in their trademark legislation include the following:5 China, the European Union (EU) and its Member States, Hong Kong, India, Japan, Korea, and South Africa. These bans were successfully activated as grounds to refuse or invalidate the registration of the shape of a chair,6 the shape of the head of a shaver,7 the shape of the LEGO brick,8 the shape of the KIT KAT bar of chocolate,9 the shape of a pharmaceutical tablet,10 and the shape of an automobile.11

The absolute nature of these legislative bans on registration merits another mention: a product shape mark that offends any of these bans cannot be registered, regardless of whether this shape mark has acquired distinctiveness as a result of prior use by its proprietor. It is precisely this absolute nature that has spawned criticism of these legislative bans.12 Why not leave the issue of registration of a product shape mark to be determined by the distinctiveness requirement? After all, distinctiveness is the critical criterion in the international definition of “trademark” found in Article 15(1) of the Agreement for Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement).13 These critics argue that, if a product shape mark has been (p.149) used and promoted to the extent that it has truly become distinctive of the goods of the trademark applicant—and we can impose an exacting standard of proof in this regard14—there seems to be no good reason to refuse registration and protection of this product shape mark.15

This chapter is concerned with a different objection to these absolute bans, namely, they are inconsistent with international law. Specifically, two provisions in international agreements have been cited. Section II examines the objection based on Article 6quinquies of the Paris Convention for the Protection of Industrial Property (the Paris Convention). Section III of this chapter examines the objection based on Article 15 of the TRIPS Agreement.

II. Article 6quinquies of the Paris Convention (1967)

Article 6quinquies A(1) of the Paris Convention (the Stockholm Act 1967) obliges a Paris Union member to accept for registration and protection “as is” (or, in French, “telle quelle”) a trademark that has been duly registered in the country of origin of its proprietor. This telle quelle principle is subject to the four (and only four) cases of exceptions set out in Article 6quinquies B, namely:

  • where this trademark conflicts with an earlier trademark or right of a third party in the country where registration is sought;

  • where this trademark lacks distinctiveness;

  • where this trademark is contrary to morality or public order; and

  • where Article 10bis of the Paris Convention (to give effective protection against unfair competition) applies.

It is further provided in Article 6quinquies C that, when determining whether a mark is eligible for registration, all factual circumstances must be taken into consideration, particularly the length of time the mark has been in use. The impact of this mandate is that a mark that is found to have acquired distinctiveness as a result of its use by its proprietor cannot be refused registration on the ground that it lacks distinctiveness (the second exception).

Some critics of the Natural Shape Ban, the Functional Shape Ban, and the Aesthetic Shape Ban have argued that a Paris Union member that enacts these bans (p.150) is in breach of the telle quelle principle.16 More specifically, they argue that these bans are inconsistent with the second exception relating to lack of distinctiveness because the absolute nature of these bans means that a product shape mark that offends one of these bans shall be denied registration even if it is found to have achieved distinctiveness as a result of prior use. This outcome conflicts with the mandate in Article 6quinquies C to have regard to prior use of the mark when determining whether the mark is eligible for registration.

Others have argued that there is no inconsistency with the telle quelle principle because these bans may be justified under the third exception relating to public order, especially in the case of the Functional Shape Ban, because registration and protection of purely functional shape marks as trademarks raises very serious competition concerns.17

I am also of the view that there is no inconsistency—but for a different reason. In my view, there is no need to resort to any of the four exceptions recognized by Article 6quinquies B to justify the enactment of those absolute bans. My argument is simply this: the Paris Convention in its entirety has no application whatsoever to product shape marks or, for that matter, to other types of non-traditional trademarks such as sound marks and smell marks. This proposition finds support in the travaux préparatoires of the Paris Convention,18 specifically those relating to the proceedings in the diplomatic conferences in Paris (1800–1883), Brussels (1897–1900), Washington (1911), and Lisbon (1958). These travaux préparatoires reveal that it was a big challenge to find a definition of a “trademark” that was acceptable to all the countries involved in the negotiations. In fact, it was an unsurmountable challenge. Objections were raised by various countries whenever there was a suggestion that the notion of a trademark included sound marks, smell marks, or three-dimensional marks such as the container for the product. The failure to reach a consensus on this issue means that every Paris Union member is free to determine for itself what type of sign is capable of constituting a trademark. When a Paris Union member enacts the Natural Shape Ban, the Functional Shape Ban, or the Aesthetic Shape Ban in its trademark legislation, it is merely exercising this freedom to declare that certain product shape marks do not qualify as trademarks. To put it in another way, these bans operate as a negative definition of a “trademark” in this Paris Union member.

The documents also reveal that the telle quelle principle in Article 6quinquies A(1) has a very limited application: to prevent countries from rejecting a mark on the ground that the mark is not represented in a particular script. For example, if China refuses to register a word mark represented in Latin script because of a requirement in its trademark law that the mark must be represented in kanji characters, that (p.151) would be a breach of the telle quelle principle. In this sense, the telle quelle principle is said to concern only the “form” of the mark. The “form” of the mark does not encompass the shape of the product. As noted above, the Paris Convention in its entirety has no application whatsoever to product shape marks. The absolute bans, being a negative definition of a “trademark,” relate to matters of substance, and such matters fall outside the ambit of Article 6quinquies A(1). Thus, there is no question of having to justify these bans under the exceptions recognized by Article 6quinquies B.

I will first refer to the parts of the travaux préparatoires of the Paris Convention, which provide the basis for my arguments. Thereafter, I will briefly refer to a WTO ruling on Article 6quinquies, which affirmed that the application of the telle quelle principle is limited to the “form” of the mark.

A. The Paris Conference 1880–1883

The problem that the telle quelle principle was intended to resolve was raised by France during the first meeting of the diplomatic conference in Paris in November 1880. France alerted the conference to the differences in national laws governing the registration of signs and emblems, and how this divergence resulted in some countries rejecting marks that had been registered in France.19 For example, Russia’s trademark legislation only registered marks that were denoted in Russian characters and hence no French trademark could be registered in Russia. This necessitated the two countries to enter into a treaty where it was agreed that marks duly deposited in France would be registered “telle quelle” and protected in Russia, even when these marks were denoted in French characters.20 Clearly, France wished for such bilateral agreements to be replaced by the international agreement that the diplomatic conference was convened to adopt. A draft of the article (designated as Article 5) was put up for consideration:

  1. 1. The character … of trademarks will be assessed in all the contracting parties of the Union according to the law of the country of origin.

  2. 2. The country in which the applicant is domiciled or has his principal establishment shall be considered as the country of origin.

  3. 3. The application can be refused if the subject-matter of the application is contrary to morality or public order.21

However, the effect of this draft article was that a Contracting Party would be giving up the freedom to determine for itself what type of signs could qualify as trademarks. This idea was rejected by various countries. For example, Austria noted that it did (p.152) not—and it would not—register numerical figures as trademarks, as was done in France.22 At one point, Belgium proposed that one of the future conferences should undertake the task of determining the signs that could be used as trademarks in all the states of the Union, a task that Belgium was optimistic would be resolved “sans peine” (“easily” or “without difficulty”).23 But as we shall see, Belgium’s proposition never materialized within the context of the Paris Convention.

In the meantime, the focus shifted to finding a solution to a more specific problem, namely, the requirement in some countries that the mark must be represented in a particular way or script. Eventually at the conclusion of the first meeting of the Paris Conference, all the countries present were able to agree on the following wording of the solution (designated as Article 6):

Article 6 (Paris text)

  1. 1. Every trademark duly filed in the country of origin shall be accepted for filing and protected as is [tele quelle] in all the other countries of the Union.

  2. 2.

  3. 3.

  4. 4. The filing may be refused if the subject-matter of this filing is considered as contrary to morality or public order.24

Thus, the “telle quelle” (“as is”) principle started off life in the Paris Convention as Article 6(1). The origins of the phrase “telle quelle” can be traced to the bilateral treaty between France and Russia. The choice of this phrase is unfortunate because a literal interpretation of Article 6(1) could extend the application of Article 6(1) beyond the very limited purpose for which it was conceived. It is for this reason that the article became the subject of revisions and attempted revisions in subsequent diplomatic conferences in Brussels (1897–1900), Washington (1911), and Lisbon (1958).

In fact, the ambiguity caused by the phrase “telle quelle” almost threatened the adoption of Article 6 at the second (and final) meeting of the Paris Conference in March 1883. At this second meeting, Spain (who was not present at the first meeting in 1880) objected to Article 6(1). Spain was made aware of the debates surrounding Article 6(1) in the first meeting of the Paris Conference in 1880, and the limited application of Article 6(1). Nevertheless, Spain noted that there was the possibility that one might insist on the literal interpretation of Article 6(1)—an interpretation which Spain could not accept.25 It wanted the true intent of Article 6(1) to be explicitly reflected in the text itself.

(p.153) Any amendment to Article 6(1) at this stage would have meant a resubmission of the Article to each and every one of the governments of countries represented at the Paris Conference for their consideration and approval. To avoid the delay an amendment would have caused and as a compromise, it was proposed that the true intent of Article 6(1) be inserted into the Final Protocol that would accompany the Paris Convention, which would be used in the interpretation of the articles of the Paris Convention. This proposal was acceptable to Spain. The end result was the adoption of the text of Article 6 without any modification, but with its ambit clarified by the following paragraph (designated as Paragraph 4) in the Final Protocol:

Paragraph 4 (Final Protocol):

  1. 1. Paragraph 1 of Article 6 should be understood in the sense that no trade mark may be excluded from protection in one of the States of the Union for the sole reason that it does not comply, with regard to the signs for which it is composed, with the conditions of the laws of that State; provided it complies on this point with the laws of the country of origin and that it has been properly filed there. Subject to this exception, which only concerns the form of the mark, and subject to the provisions of the other Articles of the Convention, each State shall apply its domestic law.

  2. 2. To avoid any misinterpretation, it is agreed that the use of public armorial bearings and decorations may be considered as contrary to morality or public order in the sense of the last paragraph of Article 6.26

The Final Protocol was made an integral part of the Paris Convention,27 and it was in this way that the telle quelle principle set out in Article 6(1) was explicitly limited by Paragraph 4(1) to “the form of the mark,” that is, the way in which the mark was represented. The telle quelle principle prohibited a Contracting Party from rejecting a mark duly registered in the country of origin on the ground that the mark was not represented in a particular format or script such as the Russian script or the Hiragana script or the Sanskrit script. That is the extent of the telle quelle principle.

The last sentence of Paragraph 4(1) of the Final Protocol had another objective when it explicitly stipulated that, in all other matters, “each State shall apply its domestic law.” This sentence addressed the concern that a Contracting Party had about giving up the freedom to determine for itself the substantive conditions for registration including the question of whether the subject matter of the application was a “trademark.” Thus, Paragraph 4(1) of the Final Protocol made it unequivocally clear that, while matters relating to the form of the mark were determined by the law of the applicant’s country of origin, matters relating to the substance of the mark were determined solely by the country where registration was sought. As we will see later, the desire to retain the freedom to determine the substantive conditions for registration was so important to Paris Union members that, at the diplomatic (p.154) conference in Lisbon (1958), this freedom was enshrined in a proper article in the Paris Convention.28

B. The Brussels Conference 1897–1900

The Brussels diplomatic conference set out to revise Article 6 to provide the “unity and clarity” that the article presently lacked.29 The objective of the revision was to integrate Paragraph 4(1) of the Final Protocol into Article 6(1) so that the limitation of the telle quelle principle to “the form of the mark” would be made explicit in Article 6(1) itself. A draft of the revised text of Article 6(1) was circulated before the conference. For our purposes, the critical aspect of this draft provided that a contracting country must apply the telle quelle principle “even if the form of the mark does not comply with the conditions prescribed by the domestic law of that country.”30 With this integration, Paragraph 4(1) would be deleted from the Final Protocol.

At the first meeting of the Brussels Conference in December 1897, Great Britain officially put forward another draft to revise Article 6. In this proposal, there would be no change to the text of Article 6(1) nor would Paragraph 4(1) of the Final Protocol be deleted. Instead, the British proposal sought to limit the application of the telle quelle principle in Article 6(1) by creating more exceptions than what was permitted in Article 6(4). The latter recognized only one exception: a contracting country could opt out of applying the telle quelle principle if the mark was contrary to morality or public order. The essence of the British proposal was to expand Article 6(4) to permit non-application of the telle quelle principle for the following marks:

  • names of persons or societies that were not presented in a distinctive manner as in a signature;

  • descriptive marks and geographical names; and

  • public armorial bearings and decorations.31

The proposal to make an exception for public armorial bearings and decorations was uncontroversial because Paragraph 4(2) of the Final Protocol already provided that the use of public armorial bearings and decorations was contrary to morality or public order.

It was the first two cases—descriptive marks and other non-distinctive marks—that baffled some countries. Austria reminded the conference that the telle quelle principle in Article 6(1) concerned only “the form and not the substance of the mark.”32 In its view, a Paris Union member was not obliged by the telle quelle (p.155) principle in Article 6(1) to register a non-distinctive mark since lack of distinctiveness was a matter that related to the substance of the mark and not to its form. Therefore, Austria did not see the need to carve out non-distinctive marks as exceptions to the telle quelle principle when this principle had no application to such marks in the first place. At the same time, Austria did not object to the British proposal because the British proposal made no difference; with or without the revision, a contracting country could refuse to register non-distinctive marks. In this sense, the British proposal was not contrary to Article 6(1) or Paragraph 4(1) of the Final Protocol. However, other countries thought differently. For example, Sweden took the position that the fact that the British proposal was not contrary to Article 6 was precisely why there was no good reason to proceed with this proposal. Sweden wanted to maintain the status quo, that is, retain the original text of Article 6(1) as well as Paragraph 4(1) of the Final Protocol.33

There was no unanimous support for the British proposal at the conclusion of the first meeting of the Brussels Conference in December 1897.34 The decision was to re-examine the issue at the second meeting of the conference together with the other unresolved issues. Meanwhile, Belgium (the host of the conference) was entrusted with the task of continuing diplomatic negotiations to pave the way for a unanimous agreement on all unresolved issues.

The further diplomatic negotiations facilitated by Belgium resulted in Great Britain agreeing to withdraw its proposal to revise Article 6.35 Critical to this concession by the British was Belgium’s assurance that the discussions at the first meeting in 1897 had clarified that Paris Union members were already permitted under the original text of Article 6 and Paragraph 4(1) of the Final Protocol to refuse registration of non-distinctive marks. Belgium even revealed that some delegates at the first meeting had remarked amongst themselves that the British proposal was “superfluous and an over-abundant commentary.”36 In light of this clarification of the ambit of Article 6, would Great Britain consider maintaining the original text of Article 6? The British response to this suggestion from Belgium was the following:

Her Majesty’s Government would be disposed in view of the exchange of opinion which took place at Brussels in 1897, to look upon favourably on the maintenance of the existing text of Article 6 of the Convention, and the paragraph relating to it in the Final Protocol, provided that it be clearly understood that Great Britain is at liberty to maintain her existing municipal law as touching this point.37

(p.156) It should be noted that the governing trademark legislation in Great Britain at that time (the Patents, Designs, and Trade Marks Act 1883, as amended in 188838) did not accept for registration product shape marks or, for that matter, other types of non-traditional marks like sound marks and smell marks.39

Belgium communicated to the other Paris Union members the terms of the British agreement to withdraw its proposal to revise Article 6,40 and it was on this basis that Article 6 was dropped from the agenda of the second (and final) meeting of the Brussels Conference in 1900. The result was that Article 6 and Paragraph 4(1) of the Final Protocol were left intact.

C. The Washington Conference 1911

At the Washington Diplomatic Conference in 1911, there was another attempt to revise Article 6(1) by integrating the text of Paragraph 4(1) of the Final Protocol into the Article itself. As at the Brussels Conference, this second attempt failed. Concerns were expressed that this integration would only perpetuate the confusion generated by the telle quelle formula.41

Accordingly, the goal of integration was abandoned. Instead, the countries participating in the Washington Conference considered another way of revising Article 6(1), namely, by expanding the range of exceptions (beyond the exception relating to morality and public order) to two other cases:

  • where the trademark conflicted with an earlier trademark or right of a third party in the country where registration is sought; and

  • where the trademark lacked distinctiveness.42

It should come as no surprise that these exceptions were proposed by Great Britain (along with Germany). The proposal was met with less resistance this time around—except that France would only agree to these two exceptions on the condition that Paragraph 4(1) of the Final Protocol be deleted.43 This suggestion alarmed the delegates from some other countries; these delegates were concerned that, because the original text of Article 6(1) would remain unchanged, the deletion of Paragraph 4(1)—and with it, the disappearance of the limitation of the telle quelle principle to the “form” of the mark—could be interpreted in a way to require them to accept (p.157) for registration certain objects, such as a bottle or a living animal, that could not be regarded as trademarks in their domestic law.44 For this reason, these countries wanted to retain Paragraph 4(1). Naturally, one of these countries was Great Britain.

Eventually, France got its way. However, Great Britain made a declaration that its vote in favor of deleting Paragraph 4(1) of the Final Protocol was on the condition that “one cannot ignore that there may exist in different countries of the Union divergences in the interpretation of the term ‘trademark.’ ”45

The United States and Portugal made similar declarations.46 This reservation suggests that these countries did not see the deletion of Paragraph 4(1) as restricting their freedom to interpret the term “trademark” as they wished. In fact, this suggestion finds support in the report of the British delegate to his government after the Washington Conference where he explained the reason for making the reservation:

The old “Protocole de Clôture” [Final Protocol], which in effect confined the meaning of “telle quelle” to the form of the mark was omitted after considerable debate. At the earlier stages of the Conference we felt it necessary to support the retention of this clause, in view of the opinion held by France, and apparently some other countries, that a Trade Mark may consist not only in some sign or trade mark affixed to goods or merchandise, but in the actual form or shape of the merchandise or article itself. It was not made clear how far this opinion was in fact adopted by the Courts or the legislation of France and other countries, but it constituted a certain difficulty in our accepting the Article [Article 6], even with the amendments already mentioned. We felt that it would not be possible to take upon ourselves any obligation to accept marks of such a character. Our views upon this point were clearly expressed in Committee, but it was pointed out in answer that it would obviously be open to every country to decide for itself what may or may not be admitted as a trade mark. We finally agreed to the excision of [Article 4] in the “Protocole de Clôture” as otherwise the new revision of [Article 6] would have been imperilled through the opposition of France. We felt it necessary however in agreeing to the proposal in the séance plénière to draw attention to the difference of view which might be held upon the interpretation of the expression “marque de fabrique.”47

It bears repeating the assurance that Great Britain received during the proceedings: if Paragraph 4(1) of the Final Protocol was deleted, “it would obviously be open to every country to decide for itself what may or may not be admitted as a trade mark.”48 This assurance is yet another confirmation of the agreement reached during the Paris Conference, namely, that the telle quelle principle in Article 6(1) was intended to apply only to the form of the mark, and the addition of Paragraph 4(1) into the Final Protocol did not add to or subtract from this intent. (The (p.158) reader will recall that Paragraph 4(1) was inserted into the Final Protocol to address Spain’s concern that this intent was not clear enough.) In short, the deletion of Paragraph 4(1) from the Final Protocol did not change the position. Thus, it remained open for Great Britain and any other Paris Union member to refuse to register a sign which its domestic law did not recognize as a trademark such as “the actual form or shape of the merchandise or article itself.”49

The material parts of the revised text of Article 6 adopted at the conclusion of the Washington Conference were the following:

  1. 1. Every trademark duly registered50 in the country of origin shall be accepted for filing and protected as is [telle quelle] in the other countries of the Union.

  2. 2. However, the following may be refused or invalidated:

    1. (i) Marks which are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed.

    2. (ii) Marks which are devoid of any distinctive character, or consist exclusively of signs or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, value, or place of origin, of the goods or time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed.

      In determining the distinctive character of a mark, all the factual circumstances must be taken into consideration, particularly the length of time the mark has been in use.

    3. (iii) Marks which are contrary to morality or public order.

  3. 3.

  4. 4.51

D. The Lisbon Conference 1958

There were further revisions to Article 6 at the Hague Conference in 1925 and at the London Conference in 1934, but these revisions are not material for our purposes. The important revision to Article 6 is the one made at the Lisbon Conference in 1958.

The proposal to revise Article 6 at the Lisbon Conference was accompanied by a very useful account of the background and history of the article.52 Two particular points in this account should be noted. First, it acknowledged that the telle quelle formula in Article 6(1) was a compromised solution to the problem of national laws (p.159) having different definitions as to what types of signs could constitute trademarks. Regret was expressed that the Paris Conference settled on the telle quelle formula—this was described as an “extremely bad choice”53—instead of pursuing the suggestion made by Belgium at the Paris Conference to work toward an international definition of a trademark.54 Even more importantly, it noted that such a definition was still missing.

Second, the account repeatedly noted that the telle quelle principle was concerned only with the form of the mark. There was a reminder that Great Britain was given the assurance at the Brussels Conference that there was no obligation to register a non-distinctive mark, as this was a matter concerning the substance of the mark. It also emphasized that this limitation to the form of the mark was inherent within the telle quelle principle itself and was not added by Paragraph 4(1) of the Final Protocol. Therefore, the deletion of Paragraph 4(1) at the Washington Conference was not meant to extend the ambit of the telle quelle principle. The latter point must surely lay to rest any remaining doubt that the reader may have about the effect of the deletion of Paragraph 4(1).

The Lisbon Conference set for itself the aim of revising the telle quelle formula in Article 6(1) to achieve the much-needed clarity. In the proposal put forward at this conference, the question of whether a sign constituted a trademark would be determined by the law of the applicant’s country of origin.55 This proposal was met with objections from some countries, which pointed out that it would mean that they had to register sound marks, smell marks, and moving image marks.56 Eventually, the majority voted against this proposal.57 This outcome clearly demonstrates that there was still no consensus in 1958 as to what signs could constitute trademarks. This is a matter relating to substantive conditions for registration, and not merely the form of the mark (how the mark is represented).

It should also be noted that the Lisbon Conference inserted a new article into the Paris Convention, one that governs the registration of “ordinary trademarks,” that is, trademarks that had not been duly registered in the applicant’s country of origin. For these “ordinary trademarks,” the new article declares that the conditions for filing and registration shall be determined by the country where registration is sought. In actual fact, this declaration is not new; it existed from the inception of the Paris Convention in 1883 in the last sentence of Paragraph 4(1) of the Final Protocol. The reader will recall that this last sentence stipulated that, in all matters not governed by the telle quelle principle, “each State shall apply its domestic law.”58 Thus, we see that whilst Paragraph 4(1) was deleted during the Washington Conference, its last sentence was deemed so important that it was resurrected by the Lisbon Conference—this time, seated within the Paris Convention itself in an (p.160) independent article. This was how important the Paris Union members saw their freedom to decide on substantive conditions for registration.

This new article was designated as Article 6, and the telle quelle principle was re-designated as Article 6quinquies. This remained unchanged in the Stockholm Act of the Paris Convention (1967). The material parts of these two articles are set forth below:

Article 6 (Lisbon text and Stockholm text)59

  1. (1) The conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation.

  2. (2)

  3. (3)

Article 6quinquies (Lisbon text and Stockholm text)60

  1. A. (1) Every trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, subject to the reservations indicated in this Article. …

    • (2) …

  2. B. Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases:

    1. (i) when they are of such a nature as to infringe rights acquired by third parties in the country where protection is claimed;

    2. (ii) when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin, of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed;

    3. (iii) when they are contrary to morality or public order and, in particular, of such a nature as to deceive the public. It is understood that a mark may not be considered contrary to public order for the sole reason that it does not conform to a provision of the legislation on marks, except if such provision itself relates to public order.

      This provision is subject, however, to the application of Article 10bis.61

  3. C.

  4. D.

  5. (p.161) E.

  6. F.

E. World Trade Organization jurisprudence

There is jurisprudence from the World Trade Organization (WTO) Dispute Settlement Body affirming that the telle quelle principle in Article 6quinquies of the Paris Convention is limited to the form of the mark. This WTO ruling arose in the context of Article 2(1) of the TRIPS Agreement, which requires all WTO members to comply with Articles 1 through 12 and Article 19 of the Paris Convention (the Stockholm Act 1967).

The subject of the complaint in United States—Section 211 Omnibus Appropriations Act of 1998 was Section 211 of the U.S. Omnibus Appropriate Act 1998. The effect of this U.S. provision was that a trademark that had been confiscated by the Cuban government could not be registered or renewed in the U.S. without the express consent of the original owner of the trademark (the victim of the confiscation). One of these confiscated trademarks was HAVANA CLUB (for rum), which was subsequently assigned by the Cuban government to a French company. The inability of this French company to get trademark protection for the mark HAVANA CLUB in the U.S. prompted the European Communities to bring a complaint against the U.S. on the ground that Section 211 was inconsistent with Article 6quinquies of the Paris Convention, and accordingly, Article 2(1) of the TRIPS Agreement.62 The complaint was dismissed by the WTO Panel,63 and this decision was upheld by the WTO Appellate Body.64 The WTO Appellate Body ruled that the telle quelle principle related only to the “form” of the trademark as registered in the applicant’s country of origin. Section 211 was not concerned with the “form” of the confiscated trademarks, but rather with the question of rightful ownership of these trademarks. Therefore, the telle quelle principle in Article 6quinquies A(1) had no application, and it was immaterial that Section 211 was outside the exceptions recognized in Article 6quinquies B.

Two reasons were given for this interpretation of the telle quelle principle. First, the WTO Appellate Body referred to Paragraph 4(1) of the Final Protocol. The WTO Appellate Body noted that, while this paragraph was omitted at the Washington Conference in 1911, “no delegation to that conference expressed the view at that time that this omission should change the meaning of [the telle quelle principle].”65 I would add that this was explicitly acknowledged at the Lisbon Conference when the point was repeatedly made that the role of Paragraph 4(1) was merely to clarify (p.162) what was inherent within the telle quelle principle, and hence its deletion at the Washington Conference did not extend the ambit of this principle.

Second, the WTO Appellate Body relied on Article 6(1):

We find that there is considerable contextual support for the view that the requirement to register a trademark “as is” under Article 6quinquies A(1) does not encompass all the features and aspects of that trademark. … Article 6(1) of the Paris Convention (1967) reserves to the countries of the Paris Union the right to determine the conditions for filing and registration of trademarks by their domestic legislation. Article 6(1) confirms that the countries of the Paris Union did not relinquish their right to determine the conditions for filing and registration of trademarks by entering into the Paris Convention (1967) – subject, of course, to the other obligations of Paris Union countries under the Paris Convention (1967). Clearly, if Article 6quinquies A(1) were interpreted too broadly, the legislative discretion reserved for Members under Article 6(1) would be significantly undermined.66

I would add that many delegations made it very clear at the Paris Conference, at the Brussels Conference, and at the Washington Conference that they were not giving up their freedom to determine for themselves the substantive conditions for registration, in particular the question of whether signs such as smell marks, sound marks, moving image marks, and three-dimensional shapes of products could constitute trademarks. To them, this was a matter concerning the substance of the mark and not merely its form. And on this matter of substance, there was no consensus. At the time of the Lisbon Conference in 1958, regret was expressed that an international definition of “trademark” was still missing. The conclusion must be that non-traditional trademarks, particularly product shape marks, are outside the purview of the telle quelle principle and more generally the entire Paris Convention.

III. Article 15 of the TRIPS Agreement

The material parts of Article 15 of the TRIPS Agreement are set out below:

Article 15: Protectable Subject Matter

  1. 1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark. Such signs, in particular words including personal names, letters, numerals, figurative elements and combinations of colours as well as any combination of such signs, shall be eligible for registration as trademarks. Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use. Members may require, as a condition of registration, that signs be visually perceptible.

  2. 2. Paragraph 1 shall not be understood to prevent a Member from denying registration of a trademark on other grounds, provided that they do not derogate from the provisions of the Paris Convention (1967).

  3. 3.67

(p.163) The argument that absolute bans on the registration of certain product shape marks are inconsistent with Article 15 may be summarized as follows. The scene has changed since the Paris Convention, and there is now an international definition of “trademark,” which exists in the form of Article 15(1) of the TRIPS Agreement. Article 15(1) explicitly preserves the freedom of WTO members to decide whether to register non-visually perceptible signs (e.g., sound marks and smell marks). However, when the sign is visually perceptible—as is the case for product shape marks—Article 15(1) provides that it is capable of constituting a trademark and shall be eligible for registration so long as it satisfies one and only one criterion, namely, it is “capable of distinguishing” the goods or services of one party from those of other parties. Because absolute bans on registration of certain product shape marks apply without regard to whether the product shape mark has such capacity to distinguish, they are inconsistent with Article 15(1).

One difficulty with this argument is that it runs counter to the ruling of the WTO Appellate Body in United States—Section 211 Omnibus Appropriations Act of 1998.68 It has been mentioned that in its complaint against the U.S., the European Communities cited Article 2(1) of the TRIPS Agreement.69 They also relied on Article 15(1) of the TRIPS Agreement, arguing that the effect of Article 15(1) was to oblige WTO countries to register any sign that fits the description set out in this article. The Appellate Body ruled against this interpretation, reasoning that:

Identifying certain signs that are capable of registration and imposing on WTO Members an obligation to make those signs eligible for registration in their domestic legislation is not the same as imposing on those Members an obligation to register automatically each and every sign or combination of signs that are capable of and eligible for registration under Article 15.1. This Article describes which trademarks are “capable of” registration. It does not say that all trademarks that are capable of registration “shall be registered.” This Article states that such signs or combinations of signs “shall be eligible for registration” as trademarks. It does not say that they “shall be registered[.]” To us, these are distinctions with a difference. And, as we have said, supporting these distinctions is the fact that the title of [Article 15] [viz. “Protectable Subject Matter”] … expresses the notion that the subject matter covered by the provision is subject matter that qualifies for, but is not necessarily entitled to, protection.70

There is also Article 15(2), which, the WTO Appellate Body noted, allows a WTO member to impose other conditions for registration, provided these other conditions do not derogate from the provisions of the Paris Convention.71 WTO members like Singapore, which have the Natural Shape Ban, the Functional Shape Ban, or the Aesthetic Shape Ban in their trademark legislation, are exercising their discretion under Article 15(2).72 These bans do not derogate from the provisions of the (p.164) Paris Convention because, as I have argued in Section II above, product shape marks are outside of the purview of the Paris Convention.

There may be another reason why these absolute bans are not inconsistent with Article 15. Although WTO members settled on an international definition of “trademark” as set out in Article 15(1), it is conceivable that they did not agree that product shape marks would come within this definition. This possibility exists because the list of signs in an earlier draft of Article 15(1) included “the shape of goods,”73 but this was dropped from the list in the final draft of Article 15(1) that was adopted by the WTO members. Some will argue that this omission is immaterial given that this final list is clearly only illustrative and not exhaustive. However, the fact of the matter, as one commentator has put it, is that this final list “reflects only those examples on which negotiators reached a consensus.”74

IV. Conclusion

Various countries have enacted absolute bans on the registration of product shape marks along the lines of the Natural Shape Ban, the Functional Shape Ban, or the Aesthetic Shape Ban, found in Singapore’s trademark legislation. This chapter is concerned with the proposition that these bans are inconsistent with international law, more specifically Article 6quinquies of the Paris Convention and Article 15 of the TRIPS Agreement.

I argue against this proposition. My argument is simply this: product shape marks are outside the purview of the Paris Convention. The travaux préparatoires of the Paris Convention reveal a total lack of consensus on the definition of a “trademark,” particularly, whether non-traditional marks such as smell marks, sound marks, moving image marks, and product shape marks could constitute trademarks. While it can be said that the TRIPS Agreement achieved what eluded the Paris Convention and an international definition of “trademark” is now provided by Article 15(1) of the TRIPS Agreement, there remains a real possibility that this definition does not extend to product shape marks.

Whether these bans are necessary or even desirable is a different question. That is the subject of discussion in the other chapters in this book.75

Notes:

(1) Hodgkinson Corby Ltd. v. Wards Mobility Servs. Ltd. [1995] F.S.R. 169, 177 (Ch. D). The shape of this cushion was designed to prevent the onset of decubitus ulcers (pressure sores). The cushion was typically used on wheelchairs by the permanently immobile. The passing off action failed in this case.

(2) This term “capricious addition” originated from J.B. Williams Co. v. H. Bronnley & Co. Ltd. (1909) 26 R.P.C. 765, 773 (C.A.). This case sets out the proposition that the common-law action for passing off may assist a plaintiff seeking to protect a distinctive “get-up” of his article. Fletcher Moulton LJ in this case defined “get-up” to mean a capricious addition “to the article itself,” such as the colour or the shape of the article. Id. at 773.

(3) See further Chapters 3, 4, 5, and 6 in this volume.

(4) Trade Marks Act, Rev. ed. 2005 Cap. 332, § 7(3) (2005) (Sing.).

(5) The relevant articles/sections in these countries’ trademark legislation are as follows: China [art. 12]; Hong Kong [§ 11(3)]; India [§ 9(3)]; Japan [art. 4(i)(xviii)]; Korea [art. 7(13)]; and South Africa [§ 10(5), (11)]. In the case of the EU Member States, see art. 3(1)(e) of the former EU Trade Marks Directive (2008/95/EC) and art. 4(1) the current EU Trade Marks Directive (2015/2436 of December 16, 2016), and art. 7(1)(e) of the Community Trademark Regulation (No. 207/2009), as amended by Regulation (2015/2424 of December 16, 2016).

(6) Hauck GmbH & Co. KG v. Stokke A/S [2014] E.T.M.R. 60. In this case from the Netherlands, the shape of the chair (specifically, a high chair for children) was found to offend the Natural Shape Ban.

(7) Philips Electronics NV v. Remington Consumer Products Ltd. [2003] R.P.C. 2. In this case from the UK, the shape of the head of shaver (which was the subject of a patent) was found to offend the Functional Shape Ban.

(8) Lego Juris A/S v. OHIM [2010] E.T.M.R. 63. In this case from the Office for the Harmonisation in the Internal Market (now known as the “European Union Intellectual Property Office”), the shape of the LEGO toy brick (which was the subject of a patent) was found to offend the Functional Shape Ban.

(9) Société des Produits Nestlé v. Petra Foods Ltd., [2017] 1 S.L.R. 35. In this case from Singapore, the shape of the KIT KAT bar of chocolates (a rectangular box shape with grooves arranged along the length of the rectangle) was found to offend the Functional Shape Ban.

(10) Triomed (Pty) Ltd v. Beecham Group Plc [2003] F.S.R. 27. In this case from South Africa, the shape of the pharmaceutical tablet (which allowed the tablet to be swallowed more easily) was found to offend the Functional Shape Ban. The shape was also refused registration because it was “likely to limit the development of the relevant art” (the equivalent to the Aesthetic Shape Ban).

(11) London Taxi Corp Ltd. v. Frazer-Nash Research Ltd. [2016] F.S.R. 20. In this case from the UK, the shape of the automobile (a taxi) was found to offend the Aesthetic Shape Ban.

(12) See Section II infra for details of this critique.

(13) The pertinent part of art. 15(1) is the following: “Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertaking, shall be capable of constituting a trademark. … Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use.” Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299 [hereinafter TRIPS Agreement]. There will be more discussion of art. 15(1) in Section III of this chapter.

(14) A more exacting standard of proof would require evidence that the relevant public relies exclusively on the shape of the product to locate the trademark applicant’s goods. This is the standard of distinctiveness adopted in Singapore. See Société des Produits Nestlé, supra note 9; see also Chapter 15 in this volume.

(15) See Section II infra for details of this critique.

(16) Qian Zhan, The International Registration of Non-Traditional Trademarks: Compliance with the TRIPS Agreement and the Paris Convention, 16 WORLD TRADE REV. 111 (2017).

(17) Annette Kur, Marks for Goods or Services (Trademarks), in RESEARCH HANDBOOK ON THE PROTECTION OF INTELLECTUAL PROPERTY UNDER WTO RULES 408, 416–17 & n.37 (Carlos M. Correa ed., 2010); Martin Senftleben, Public Domain Preservation in EU Trademark Law—A Model for Other Regions?, 103 TRADEMARK REP. 775, 785 (2013).

(18) Recourse to travaux préparatoires to interpret an article in an international treaty may be justified by the Vienna Convention on the Law of Treaties art. 32, May 23, 1969, 1155 U.N.T.S. 331, 340.

(19) See CONFÉRENCE INTERNATIONALE POUR LA PROTECTION DE LA PROPRIÉTÉ INDUSTRIELLE 70 (1880) [hereinafter PARIS CONFERENCE 1880] (minutes from the fourth session of the first meeting of the Paris Conference, held on Nov. 9, 1880).

(20) See id. at 140 (minutes from the tenth session from the first meeting of the Paris Conference, held on Nov. 18, 1880).

(21) See id. at 132 (minutes from the ninth session of the first meeting of the Paris Conference, held on Nov. 17, 1880). This is the author’s translation of the French version of this draft article. Note also that the paragraphing is added by the author.

(22) See id. at 70 (minutes from the fourth session of the first meeting of the Paris Conference, held on Nov. 9, 1880); id. at 133 (minutes from the ninth session of the first meeting of the Paris Conference, held on Nov. 17, 1880).

(23) See id. at 142 (minutes from the tenth session of the first meeting of the Paris Conference, held on Nov. 18, 1880).

(24) See id. at 164 (emphasis added) (minutes from the eleventh and last session of the first meeting of the Paris Conference, held on Nov. 20, 1880). Note that the sub-paragraphing within art. 6 is added by the author.

(25) See CONFÉRENCE INTERNATIONALE POUR LA PROTECTION DE LA PROPRIÉTÉ INDUSTRIELLE 24–25 (1883) (minutes from the second meeting of the Paris Conference).

(26) See Protocole de Clôture, CONVENTION DE PARIS POUR LA PROTECTION DE LA PROPRIÉTÉ INDUSTRIELLE 38 (1883) [hereinafter Final Protocol] (this is the author’s translation of the French text and both the sub-paragraphing within ¶ 4 and the emphasis are added by the author).

(27) See Final Protocol, id. art. 7.

(28) See infra note 58 and the accompanying main text.

(29) See ACTES DE LA CONFÉRENCE DE BRUXELLES: PREMIÈRE ET DEUXIÈME SESSIONS 1898 ET 1900, 43 (BIRPI 1901) [hereinafter CONFÉRENCE DE BRUXELLES] (This is the author’s translation of the French phrase “l’unité et la clarté.”).

(30) Id. (This is the author’s translation of the French sentence “même si elle ne répond pas, par sa forme, aux conditions prescrites par la législation intérieure de ces États.”).

(31) See id. at 281.

(32) Id. at 282 (This is the author’s translation of the French sentence “telle quelle ne se rapporte qu’à la forme et nullement au contenu de la marque.”).

(33) See id. at 286.

(34) There were eight countries (excluding Britain) that were in favor of the Britain proposal, five countries that were against this proposal, and one abstention. See id.

(35) These diplomatic negotiations between the two governments were made via exchange of letters. To find these letters, as well as letters amongst the different agencies in the British government concerned with intellectual property (such as the Board of Trade), see PAPERS AND CORRESPONDENCE RELATIVE TO THE RECENT MEETING AT BRUSSELS OF THE ADJOURNED CONFERENCE OF THE UNION FOR THE PROTECTION OF INDUSTRIAL PROPERTY, 1901, [Cd. 603], at 27 (Gr. Brit.).

(36) See id. at 10 (letter dated Apr. 19, 1898 from the Belgian Government to the British Government).

(37) See id. at 27–28 (emphasis added) (letter dated Aug. 20, 1898 from the British Foreign Office to the Board of Trade, and the latter’s reply dated Aug. 31, 1898); see also id. at 35 (letter dated May 6, 1899 from the Belgian Government to the British Government thanking the latter for not insisting on its proposal to revise art. 6, and advising that it would inform the other Paris Union members of the terms of the British agreement to withdraw its proposal).

(38) See Patents, Designs, and Trade Marks Act 1883, 46 & 47 Vict. c. 57 (Gr. Brit.).

(39) Only the following signs qualified as “trademarks”: (a) the names of persons or firms printed in a distinctive manner; (b) the signatures of the trademark applicant; (c) distinctive devices; (d) invented words; and (e) words, other than geographical names, which have no reference to the character or quality of the goods. See id. § 64 (as amended in 1888).

(40) See CONFÉRENCE DE BRUXELLES, supra note 29, at 356.

(41) See UNION INTERNATIONALE POUR LA PROTECTION DE LA PROPRIÉTÉ INDUSTRIELLE: CONFÉRENCE DE WASHINGTON DU 15 MAI AU 2 JUIN 1911, 296 (BIRPI 1911) [hereinafter CONFÉRENCE DE WASHINGTON].

(42) See id. at 252.

(43) See id. at 229–30.

(44) See id. at 308–09.

(45) See id. at 252 (This is the author’s translation of the French sentence “on n’ignore pas qu’il peut exister dans les différents pays de l’Union des divergences dans linterprétation de l’expression ‘marque de fabrique’.”).

(46) See id. at 252–53.

(47) See PAPERS AND CORRESPONDENCE RELATIVE TO THE RECENT CONFERENCE AT WASHINGTON FOR THE REVISION OF THE INTERNATIONAL CONVENTION FOR THE PROTECTION OF INDUSTRIAL PROPERTY AND THE ARRANGEMENT FOR THE PREVENTION OF FALSE INDICATIONS OF ORIGIN ON GOODS, 1911, [Cd. 5842] , at 98 (UK) (emphasis added).

(48) Id.

(49) Id.

(50) Cf. the Paris text of art. 6(1), which mandated the application of the telle quelle principle if the trademark was “duly filed” in the country of origin.

(51) See CONFÉRENCE DE WASHINGTON, supra note 41, at 300.

(52) See UNION INTERNATIONALE POUR LA PROTECTION DE LA PROPRIÉTÉ INDUSTRIELLE: ACTES DE LA CONFÉRENCE RÉUNIE A LISBONNE DU 6 AU 31 OCTOBRE 1958, 545–73 (BIRPI 1963) [hereinafter CONFÉRENCE DE LISBONNE].

(53) Id. at 567 (“fort mal choisie”).

(54) See supra note 23 and the accompanying main text.

(55) See CONFÉRENCE DE LISBONNE, supra note 52, at 580.

(56) These countries were Denmark, Finland, Japan, Norway, and Sweden. See id. at 586–93.

(57) The results of the vote: twenty-two against this proposal, seven for this proposal, and six abstinence. See id. at 601.

(58) See supra note 28 and the accompanying main text.

(59) See CONFÉRENCE DE LISBONNE, supra note 52, at 989, and the Paris Convention (Stockholm Act) 1967 at 1336.

(60) See CONFÉRENCE DE LISBONNE, supra note 52, at 989, and the Paris Convention (Stockholm Act) 1967 at 1340.

(61) Cf. the Washington text of art. 6(1)(B), which had only three exceptions. The fourth exception relating to art. 10bis (to give effective protection against unfair competition) was added at the Lisbon Conference.

(62) The European Communities also relied on other articles in the TRIPS Agreement, including art. 15. See infra Section III, note 69 the accompanying main text.

(63) See Panel Report, United States—Section 211 Omnibus Appropriation Act of 1998, WTO Doc. WT/DS176/R (Aug. 6, 2001).

(64) See Appellate Body Report, United States—Section 211 Omnibus Appropriation Act of 1998, ¶ 139, WTO Doc. WT/DS176/AB/R (Jan. 2, 2002) [hereinafter Appellate Body Report].

(65) See id. ¶ 146.

(66) See id. ¶ 139.

(67) TRIPS Agreement art. 15, supra note 13.

(68) See Appellate Body Report, supra note 64.

(69) See supra note 62 and the accompanying main text.

(70) See Appellate Body Report, supra note 64 ¶ 155.

(71) See Appellate Body Report, supra note 64 ¶¶ 157–59. See also ¶¶ 171–77 (The WTO Appellate Body opined that a condition for registration need not be expressly mentioned in the Paris Convention in order not to “derogate” from it.).

(72) Commentators on the TRIPS Agreement who take the position that such bans are permitted by art. 15(2) include Carlos Correa. See Carlos M. Correa, TRADE RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS: A COMMENTARY ON THE TRIPS AGREEMENT 177 (2007).

(73) See art. 1A.1 of § 2 (Trademarks) in the draft text annexed to Chairman’s Report, Negotiating Group on Trade-Related Aspects of Intellectual Property Rights, Including Trade in Counterfeit Goods, GATT Doc. MTN.GNG/NG11/W/76 (July 23, 1990).

(74) Nuno Pires de Carvalho, THE TRIPS REGIME OF TRADEMARKS AND DESIGNS § 15.37 (3d ed., 2014); see also Daniel Gervais, THE TRIPS AGREEMENT: DRAFTING HISTORY AND ANALYSIS § 2.151 (4th ed. 2012) (noting that “[i]t was difficult to agree on a common list, …, as each participant agreed on some of the terms but not all of them”).

(75) See, e.g., Chapter 5 in this volume.