Trademark protection threatens a shift to circular business models

Under trademark law, problems arise due to the uncertainty surrounding the conditions under which repaired, refurbished, or upcycled products, still bearing their original trademarks, can be commercialised.14 One could think of the replacement of automotive or IT equipment components, refilling of empty containers, repair of electronics, jewellery, watches, and more. In most such cases, the items to be refurbished or repaired would still carry their original makers’ trademarks. Analogously, in the sphere of upcycling, especially with fashion items, old pieces of clothing, bags, or jewellery reworked into new ones might still retain their original trademarks. The primary infringement criterion in trademark law, use ‘‘in the course of trade’’,15 automatically captures such activities, provided that they occur in the commercial sphere and not as a purely private matter.16 Effectively, this brings all business models based on the sale of repaired, enhanced, or upcycled goods within the ambit of the use ‘‘in the course of trade’’. Another trademark law’s primary infringement criterion of the use ‘‘in relation to goods or services’’17 is likewise unable to immunize the business models at issue, as this criterion had been consistently interpreted by the CJEU as requiring as little as establishment of a ‘‘link’’ or ‘‘association’’ with goods or services, rather than necessitating the use of another’s trademark as an identifier of the user’s own commercial source.18 Consequently, trademark proprietors are well positioned to assert that repair, refurbishment, and upcycling amount to prima facie trademark infringement– by giving rise to either consumer confusion (including post-sale confusion19) or by blurring, tarnishment, or unfair freeriding on a trademark with a reputation.20