Intellectual Property Law
Trademark remedies in cases of reverse confusion are economically inefficient. Junior users in the best position to take economic advantage of marks are sometimes unable to do so due to prior use of a mark by a much smaller, remote senior user. This creates economic inefficiencies and leaves market share unutilized. For this reason, TRIPS needs to be revised to allow for a limited system of compulsory licensing for trademarks in reverse confusion cases. A system of compulsory licensing for trademarks would allow the person or company in the best position to use and gain market share from a trademark, to have access to it. It would accelerate competition, one of the goals of intellectual property law. A well-written remedial scheme, including compulsory licensing, can maximize the economic value of trademarks, while still avoiding consumer confusion. Compulsory licensing can be found in both patent and copyright law, and thus can logically be extended to trademark law. A hypothetical “Trademark Panel,” similar to the Copyright Royalty Judges Program, could use a set of criteria to decide when a compulsory license would be appropriate in trademark law, and how to establish an appropriate licensing fee.
Straight, Lauren, "A Case for Compulsory Licensing in Instances of Reverse Trademark Confusion" (2021). Connecticut Law Review. 464.