The expansion in subject matter of copyright, design and trade marks has made cumulation of protection a more common occurrence, even if the problem has long been recognised as a challenge for intellectual property law. EU law has no consistent approach to overlapping subject matter. In some cases, cumulation is permitted (and perhaps even mandatory). In others, it is looked upon with disfavour. However, it is clear that when regimes clash and cumulation rejected, trade mark law appears the one most likely to be regarded as pre-empted. This chapter considers reasons why this might be so, and finds most possible reasons wanting. However, this analysis does offer some important insights into the nature and challenges of trade mark law in Europe.

It is generally assumed that a single theoretical account is sufficient to explain why we protect both registered and unregistered trade marks. Specifically, the need to protect against consumer confusion is said to explain the protection that is afforded to trade marks through both the registration system and through passing off/unfair competition law. Drawing on recent scholarship that sets out to re-examine the role of trade mark registration, this chapter argues that we need to think more seriously about embracing a bifurcated model of trade mark protection, with the two modes of protection underpinned by different justifications and perform different functions. This would allow us to have a clearer idea of how the two systems should interact and when we should prioritise the operation of one over the other.

To the elemental question of what is the nature of intellectual property, the conventional answer is that it is ‘intangible’ and hence has no physical existence. This is because, it is said, there is a fundamental dichotomy between the immaterial subject matter that is protected by an IP right and its embodiment in some material object. This chapter revisits the elemental question and comes to the conclusion that the conventional view mis-states the position. In particular, while it is true that IP laws recognise something like the tangible/intangible duality, properly understood the rights granted by those laws do not attach to the immaterial subject matter; rather, they attach to the material object in which the subject matter is embodied. More specifically, while the class of things in respect of which IP protection may be granted includes intangibles, it also includes tangibles. Moreover, the things in that class are material – in that they are perceptible by a human sense.