2. Methodology

For a distinction between “methodology” and “methods” see Watkins, Dawn, and Mandy Burton, ‘Introduction’, in Watkins, Dawn and Mandy Burton eds., Research Methods in Law (1st edn, Routledge, 2013), 1, p. 2-3 and Crotty, Michael, ‘The Foundations of Social Research: Meaning and Perspective in the Research Process’, (1st edn, Sage, 1998), pp. 2 and Gestel, Rob Van, Micklitz, Hans-W and Maduro, Miguel Poiares, ‘Methodology in the New Legal World’, EUI Working Papers, (2012/13), pp. 1, p. 2-3.

EU law with its multitude of different sources could tentatively be compared to Common Law that in Posner’s words “is more often inferred than positive,” inferred from “scattered, sometimes inconsistent, and often ambiguous, incomplete, or poorly informed materials, mainly judicial opinions.” Although Posner’s analysis is aimed at US Common Law this point applies more generally to common law. The process of synthesising scattered legal materials has been described by Posner as the main task for legal scholars. Posner, Richard A., ‘How Judges Think’, (1st edn, Harvard University Press, 2008), p. 210.

See below, Sect. 2.2.

Legal science is also an ambiguous term. See Pattaro, Enrico, A Treatise of Legal Philosophy and General Jurisprudence: Volume 4: Scientia Juris, Legal Doctrine as Knowledge of Law, (1st edn, Springer, 2005), p. 1-2, Vaquero, Álvaro Núñez, ‘Five Models of Legal Science’, Revus, vol. 19 (2013), pp. 53 and Hesselink, Martijn W., ‘A European Legal Method?: On European Private Law and Scientific Method’, European Law Journal, vol. 15/no. 1, (2009), pp. 20, p. 21-22. Legal science is understood as referring more broadly to science dealing with law i.e. encompassing relevant to this book the methodological aspects of comparative law.

See below Sect. 2.2.3.

Hesselink, Martijn W., ‘A European Legal Method?: On European Private Law and Scientific Method’, European Law Journal, vol. 15/no. 1, (2009), pp. 20, p. 33. See also Gestel, Rob Van, and Micklitz, Hans-W, ‘Revitalising Doctrinal Legal Research in Europe: What about Methodology?’, in Neergaard, Ulla, Nielsen, Ruth and Roseberry, Lynn M. eds., European Legal Method – Paradoxes and Revitalisation (1st edn, Djøf Publishing, 2011), 25, p. 65-66.

For the historical account of the average consumer, see Chap. 8. Economic theory is used in Chap. 1, Sect. 1.​3.​2 and Chap. 12, Sect. 12.​6.

See below Sect. 2.2.3.

Ross, Alf, ‘On Law and Justice’, (1st edn, University of California Press, 1959), p. 46. There is no clear definition of these terms in particular due to discussions on the level of normativity vested in the different approaches. Peczenik has termed the distinction between de lege lata and de lege ferenda as a “cognitive inquiry” and held that “every legal scholar knows the distinction is difficult to consistently apply in the practice of legal research.” That the terms used in legal argumentation are “ideal types” and not opposite to each other. Peczenik, Aleksander, ‘Atheoryoflegaldoctrine’, Ratio Juris, vol. 14/no. 14, (2001), pp. 75, p. 79. There seems to be no one attacking the conclusion that de lege lata is the most descriptive of the three terms. In this book though, it is at the same time acknowledged and made explicit that there is normativity vested in the de lege lata analysis in terms of choice of methods preceding the description and the clear normative elements vested in the analytical part of describing. In addition, Peczenik held that the result of an analytical description will be infused with normativity due to the choices made before and in reaching the result. Ibid. See also Pattaro, Enrico, A Treatise of Legal Philosophy and General Jurisprudence: Volume 4: Scientia Juris, Legal Doctrine as Knowledge of Law, (1st edn, Springer, 2005), p. 5 and Nielsen, Ruth, ‘New European Legal Realism – New Problems, New Solutions?’, in Neergaard, Ulla and Nielsen, Ruth eds., European Legal Method: Towards a New European Legal Realism? (1st edn, Djøf Publishing, 2013), 75, p. 99.

Thus seeking to meet the invitation of doing so from Micklitz and Maduro who argue the importance of having a methodological debate in European legal scholarship. See e.g. Gestel, Rob Van, Micklitz, Hans-W and Maduro, Miguel Poiares, ‘Methodology in the New Legal World’, EUI Working Papers, (2012/13), pp. 1, p. 23.

Gestel, Rob Van, and Micklitz, Hans-W, ‘Revitalising Doctrinal Legal Research in Europe: What about Methodology?’, in Neergaard, Ulla, Nielsen, Ruth and Roseberry, Lynn M. eds., European Legal Method – Paradoxes and Revitalisation (1st edn, Djøf Publishing, 2011), 25, p. 65.

For a comparison of Scandinavian Legal Realism and American Legal Realism, see Alexander, Gregory S, ‘Comparing the Two Legal Realisms-American and Scandinavian’, the American Journal of Comparative Law, vol. 50/no. 1, (2002), pp. 131, p. 132. For a further historic account of Scandinavian Legal Realism, see Tuori, Kaarlo, ‘Ratio and Voluntas: the Tension between Reason and Will in Law’, (1st edn, Ashgate, 2010), p. 124-125, Tvarnø, Christina D., and Nielsen, Ruth, ‘Retskilder Og Retsteorier’, (5th edn, Jurist- og Økonomforbundets Forlag, 2017), p. 371 and more broadly on the theory of the sources of law in a Nordic perspective, Evald, Jens, ‘Juridisk Teori, Metode og Videnskab’, (1st edn, Jurist- og Økonomforbundets Forlag, 2016), p. 27–33.

Westerman emphasises the difference between “ordering” and “understanding” and emphasises the role of “understanding” to doctrinal legal research – i.e. moving beyond “arriving at a coherent order” is more than merely “ordering.” “Ordering” is similar to the term “systematisation” used in this book. Westerman, Pauline C., ‘Open or Autonomous? The Debate on Legal Methodology as a Reflection of the Debate on Law’, in van Hoecke, Mark ed., Methodologies of Legal Research: What Kind of Method for what Kind of Discipline? (1st edn, Hart, 2011), 87, p. 91.

Hesselink, Martijn W., ‘A European Legal Method?: On European Private Law and Scientific Method’, European Law Journal, vol. 15/no. 1, (2009), pp. 20, p. 20, the European Legal Method trilogy from 2009, 2011 and 2013 edited by Nielsen and Neergaard; Gestel, Rob Van, Micklitz, Hans-W and Maduro, Miguel Poiares, ‘Methodology in the New Legal World’, EUI Working Papers, (2012/13), pp. 1 and Pila, Justine, ‘A Constitutionalized Doctrine of Precedent and the Marleasing Principle as Bases for a European Legal Methodology’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 227, p. 230-231.

Hesselink, Martijn W., ‘A European Legal Method?: On European Private Law and Scientific Method’, European Law Journal, vol. 15/no. 1, (2009), pp. 20, p. 36-37, 42 and 44. See also Pila, Justine, ‘A Constitutionalized Doctrine of Precedent and the Marleasing Principle as Bases for a European Legal Methodology’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 227, referring to Hesselink 2009.

Nielsen, Ruth, ‘New European Legal Realism – New Problems, New Solutions?’, in Neergaard, Ulla and Nielsen, Ruth eds., European Legal Method: Towards a New European Legal Realism? (1st edn, Djøf Publishing, 2013), 75, p. 84.

Tuori, Kaarlo, ‘Law and Beyond the Nation-State’, in Modéer, Kjell Å and Diestelkamp, Bernhard eds., Liber Amicorum Kjell Å Modéer (1st edn, Juristförlaget, 2007), 691, p. 697 similar to Dinwoodie below who refers specifically to trademark law. See footnote 21.

Gestel, Rob Van, Micklitz, Hans-W and Maduro, Miguel Poiares, ‘Methodology in the New Legal World’, EUI Working Papers, (2012/13), pp. 1, p. 15.

See Chap. 4.

Dinwoodie, Graeme B, ‘The Europeanization of Trade Mark Law’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 72, p. 75-76. The dynamic legal development, in which the average consumer is set in European trademark law, is addressed in Chap. 4.

Recital 3 of the TM Regulation and recital 2 of the TM Directive 2008. A further analysis of the purpose of EU trademark law was given in Chap. 1, Sect. 1.​3.

Dinwoodie, Graeme B, ‘The Europeanization of Trade Mark Law’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 72, p. 76, including footnote 1 of the text. In a US context, Grynberg has advocated in favour of a broader debate of the effectiveness of trademark law reaching “some consensus about what the courts or legislators are trying to maximize.” Grynberg, Michael, ‘The Judicial Role in Trademark Law’, Boston College Law Review, vol. 52, (2011), pp. 1283, p. 1299.

See below Sect. 2.3 and Siems, Mathias, ‘Comparative Law’, (1st edn, Cambridge University Press, 2014), p. 79.

This leaves aside the discussion on legal fictions as a combination of normativity and facts addressed in Chap. 5.

Del Mar, Maksymilian, ‘Legal Fictions and Legal Change in the Common Law Tradition’, in Del Mar, Maksymilian and Twining, William eds., Legal Fictions in Theory and Practice (1st edn, Springer, 2015), 225, p. 226.

Jääskinen, Niilo, ‘Back to the Begriffshimmel? A Plea for an Analytical Perspective in European Law’, in Prechal, Sacha and van Roermund, G. eds., The Coherence of EU Law: The Search for Unity in Divergent Concepts (1st edn, Oxford University Press, 2008), 451, p. 453.

Ross, Alf, ‘On Law and Justice’, (1st edn, University of California Press, 1959), preface p. x.

Nielsen, Ruth, ‘New European Legal Realism – New Problems, New Solutions?’, in Neergaard, Ulla and Nielsen, Ruth eds., European Legal Method: Towards a New European Legal Realism? (1st edn, Djøf Publishing, 2013), 75, p. 94. See also Tvarnø, Christina D., and Nielsen, Ruth, ‘Retskilder Og Retsteorier’, (5th edn, Jurist- og Økonomforbundets Forlag, 2017), p. 377-379.

Ross, Alf, ‘On Law and Justice’, (1st edn, University of California Press, 1959), p. 75. For a discussion on other scholars with a significant influence on developing of Scandinavian Legal Realism see Alexander, Gregory S, ‘Comparing the Two Legal Realisms-American and Scandinavian’, the American Journal of Comparative Law, vol. 50/no. 1, (2002), pp. 131, p. 148-149.

Ross, Alf, ‘On Law and Justice’, (1st edn, University of California Press, 1959), p. 34-38.

Dalberg-Larsen, Jørgen, ‘Perspektiver på ret & retsvidenskab – Retssociologiske og retsteoretiske artikler’, (1st edn, Jurist- og Økonomforbundets Forlag, 2009), p. 121. Similarly, Evald has held that the issue with Ross’ theory is, that it is left for the courts to decide what weight to attach to different legal sources. Evald, Jens, ‘Juridisk Teori, Metode og Videnskab’, (1st edn, Jurist- og Økonomforbundets Forlag, 2016), p. 29-30.

Ross, Alf, ‘On Law and Justice’, (1st edn, University of California Press, 1959), p. 49.

Ibid, p. 147-148. Expanding on what is pragmatic interpretation, Ross stated that “[p]ragmatic interpretation might consider not only foreseeable social effects, but also the technical acuity of the interpretation and its harmony with the legal system and the cultural ideas on which the system is built.” Ibid, p. 146.

See Calboli, Irene, ‘The Role of Comparative Legal Analysis in Intellectual Property: From Good to Great?’, in Dinwoodie, Graeme B. ed., Methods and Perspectives in Intellectual Property (1st edn, Edward Elgar, 2013), 3, p. 20.

This is at least true for the decisions of the Court of Justice relevant to the substantial analysis of the book, i.e. preliminary rulings under art. 265 of the TFEU, and when the court acts as appeal court to the General Court in disputes on registration of EU trademarks. Nielsen, Ruth, ‘New European Legal Realism – New Problems, New Solutions?’, in Neergaard, Ulla and Nielsen, Ruth eds., European Legal Method: Towards a New European Legal Realism? (1st edn, Djøf Publishing, 2013), 75, p. 112. It seems that Nielsen is referring to the Court of Justice, and not to the CJEU as a whole. For a discussion of the CJEU term, see Chap. 1, footnote 11. See also Nielsen, Ruth, ‘Legal Realism and EU Law’, in Koch, Henning et al eds., Europe: The New Legal Realism: Essays in Honour of Hjalte Rasmussen (1st edn, Djøf Publishing, 2010), 545, p. 545.

These findings are made by Jääskinen before he was appointed Advocate General of the Court of Justice in October 2009. A position he held until October 2015.

Jääskinen, Niilo, ‘Back to the Begriffshimmel? A Plea for an Analytical Perspective in European Law’, in Prechal, Sacha and van Roermund, G. eds., The Coherence of EU Law: The Search for Unity in Divergent Concepts (1st edn, Oxford University Press, 2008), 451, p. 452.

Jääskinen, Niilo, ‘Back to the Begriffshimmel? A Plea for an Analytical Perspective in European Law’, in Prechal, Sacha and van Roermund, G. eds., The Coherence of EU Law: The Search for Unity in Divergent Concepts (1st edn, Oxford University Press, 2008), 451, p. 459.

Ibid, p. 460, in Coherence of EU Law. A successful example of a legal concept not suffering this fate is according to Jääskinen “undertaking” under European competition law. Ibid, footnote 12 of the text.

As per above for Ross’ understanding of teleological interpretation. Ross, Alf, ‘On Law and Justice’, (1st edn, University of California Press, 1959), p. 147. It will be recalled that “valid law” according to Ross has to be made visible in national court decisions, e.g. through teleological interpretation by the court. With the focus on the role of national case law, what is then the role of judges? Comparing judges and academics Schlag has stated that “[c]ourts have dockets. Legal academics have time. Given this asymmetry, the academics could always outdo the courts in the intricacy of their analysis.” Schlag, Pierre, ‘Essay and Responses – Spam Jurisprudence, Air Law, and the Rank Anxiety of Nothing Happening (A Report on the State of the Art)’, Geo. L.J., vol. 97/no. 3, (2009), pp. 803, p. 822. Although the statement brings the qualifications of academics and judges to a head it is true to say that judges and private practitioners focus on specific decisions based on specific facts and only if it is necessary for the case at hand do they regard the law with the same intricacy and coherency as academics. This argument could be true of the trial court judges whereas appeal court judges assess points of law only. For practitioners, the key purpose of a dogmatic analysis is to preserve the interests of the client and hence an assessment of the facts in a subjective light. See Pattaro, Enrico, A Treatise of Legal Philosophy and General Jurisprudence: Volume 4: Scientia Juris, Legal Doctrine as Knowledge of Law, (1st edn, Springer, 2005), p. 4.

See Jääskinen, Niilo, ‘Back to the Begriffshimmel? A Plea for an Analytical Perspective in European Law’, in Prechal, Sacha and van Roermund, G. eds., The Coherence of EU Law: The Search for Unity in Divergent Concepts (1st edn, Oxford University Press, 2008), 451, p. 456.

Tuori, Kaarlo, ‘Ratio and Voluntas: the Tension between Reason and Will in Law’, (1st edn, Ashgate, 2010), p. 7. On the connection between the different layers of law Tuori states that “[n]ew regulations, new decisions by the courts and new ideas from legal scholars contain seeds which can grow into new components of the deep structure. There is a constant tension between established and emerging elements within the deep structure, and it is this tension that clears space for a reconstructive legal philosophy which maintains the attitude of normative criticism.” Tuori, Kaarlo, ‘Critical Legal Positivism’, (1st edn, Ashgate, 2002), p. 321. See also Olsen, Henrik Palmer, ‘Nyere Nordisk Retsfilosofi’, in Hammerslev, Ole and Olsen, Henrik Palmer eds., Retsfilosofi: Centrale Tekster og Temaer (1st edn, Hans Reitzels Forlag, 2011), 571, p. 587.

Tuori, Kaarlo, ‘Critical Legal Positivism’, (1st edn, Ashgate, 2002), p. 288.

Ibid, p. 293. Tuori has also stated more generally that “[l]egal science without any normative commitments and implications, and approaching the law from an external observer’s position, is and remains an illusion”. Ibid, p. 295.

Tuori, Kaarlo, ‘Ratio and Voluntas: the Tension between Reason and Will in Law’, (1st edn, Ashgate, 2010), p. 287.

Tuori, Kaarlo, ‘Can we Still Speak of the Coherence of Law?’, in Modéer, Kjell Å ed., Aleksander Peczenik Memorial Seminar: Pufendorf Seminar, Lund, March 10, 2006 (1st edn, Corpus Iuris, 2007), pp. 56, p. 67.

Tuori, Kaarlo, ‘Ratio and Voluntas: the Tension between Reason and Will in Law’, (1st edn, Ashgate, 2010), p. 306.

Besides coherence and consistency, other measures could have been brought in for the legal dogmatic analysis. For instance, in terms of the functions of legal fictions it is argued that they serve as “dynamic resources that allow courts, over time, to balance flexibility and responsiveness with stability and predictability.” Del Mar, Maksymilian, ‘Legal Fictions and Legal Change in the Common Law Tradition’, in Del Mar, Maksymilian and Twining, William eds., Legal Fictions in Theory and Practice (1st edn, Springer, 2015), 225, p. 227 (italics added) and see Chap. 5. Arguably stability and predictability are criteria overlapping with coherence and consistency.

Prechal, Sacha, ‘Binding Unity in EU Legal Order: An Introduction’, in Prechal, Sacha and Roermund, G. van eds., The Coherence of EU Law: The Search for Unity in Divergent Concepts (1st edn, Oxford University Press, 2008), 1, p. 1. In fact, Prechal argues that European legal order requires “a special kind of coherence, namely convergence.”

Westerman, Pauline C., ‘Open or Autonomous? The Debate on Legal Methodology as a Reflection of the Debate on Law’, in van Hoecke, Mark ed., Methodologies of Legal Research: What Kind of Method for what Kind of Discipline? (1st edn, Hart, 2011), 87, p. 93.

For an in depth discussion on the differences between the terms see Hillion, Christophe, ‘Tous Pour Un, Un Pour Tous! Coherence in the External Relations of the European Union’, in Cremona, Marise ed., Developments in EU External Relations Law (1st edn, Oxford University Press, 2008), 10, p. 13, including the sources in footnote 18 of the text. The lexical meaning adds to this unclarity, i.e. a “coherent” “argument, theory, or policy” is thus stated to be “logical and consistent” and “consistency” is referred to as being synonymous with “coherence.” Oxford Dictionary of English online version.

Missiroli, Antonio, ‘European Security Policy: The Challenge of Coherence’, European Foreign Affairs Review, vol. 6/(2001), pp. 177, p. 182.

MacCormick, Neil, ‘Legal Reasoning and Legal Theory’, (1st edn, Oxford University Press, 1978), p. 107. See also Adams, Maurice, ‘Doing what Doesn’t Come Naturally on the Distinctiveness of Comparative Law’, in van Hoecke, Mark ed., Methodologies of Legal Research: What Kind of Method for what Kind of Discipline? (1st edn, Hart, 2011), 229, p. 229, Tuori, Kaarlo, ‘Ratio and Voluntas: the Tension between Reason and Will in Law’, (1st edn, Ashgate, 2010), p. 314 and in similar to Adams Tuori, Kaarlo, ‘Can we Still Speak of the Coherence of Law?’, in Modéer, Kjell Å ed., Aleksander Peczenik Memorial Seminar: Pufendorf Seminar, Lund, March 10, 2006 (1st edn, Corpus Iuris, 2007), pp. 56, p. 72.

Peczenik, Aleksander, ‘Atheoryoflegaldoctrine’, Ratio Juris, vol. 14/no. 14, (2001), pp. 75, p. 79.

Missiroli, Antonio, ‘European Security Policy: The Challenge of Coherence’, European Foreign Affairs Review, vol. 6/(2001), pp. 177, p. 182.

MacCormick, Neil, ‘Legal Reasoning and Legal Theory’, (1st edn, Oxford University Press, 1978), p. 106.

Missiroli, Antonio, ‘European Security Policy: The Challenge of Coherence’, European Foreign Affairs Review, vol. 6/(2001), pp. 177, p. 182. See also Hillion who calls the deciding of coherence “a matter of degree” and consistency a “static notion.” Hillion, Christophe, ‘Tous Pour Un, Un Pour Tous! Coherence in the External Relations of the European Union’, in Cremona, Marise ed., Developments in EU External Relations Law (1st edn, Oxford University Press, 2008), 10, p. 14.

Thus, a memorandum preceding the TM Regulation 1994 stated that it was “consistent with one of the main objectives of the European Economic Community that steps should be taken to remove wherever possible national barriers created by the existence of different industrial property laws.” The TM Memorandum 1976, para 26 p. 20. In addition, it was stated in the memorandum that it was “consistent with the majority of the views expressed by commercial interests.” Ibid, para 61 p. 18 (italics added). As for the TM Directive, the Commission stated in its proposal for the TM Directive 1989 that “[t]he current case-law in several of the Member States affords to trade marks a degree of protection which is to some extent inconsistent with the specific purpose of trade marks law.” Commission Proposal for a first Council Directive to approximate the laws of the Member States relating to trade marks of 31 December 1980, [1980] OJ C 351/1 (the “TM Directive Proposal 1980”), p. 2. For other usages of consistency terminology in similar ways, see the TM Memorandum 1976, para 114 and 116, p. 29 and EESC opinion on the proposal for a first Council Directive to approximate the laws of the Member States relating to trade marks and the proposal for a Council Regulation on Community trade marks of 30 November 1981, [1981] OJ C 310/22, p. 22.

In the above references from preparatory texts of EU trademark law consistency is used in the theoretical meaning of “coherence” laid out above in that reference is made to consistency, given the purpose of the legislative acts. According to this book and the above theory, this line of analysis is a matter of coherence (a matter of degree) if a legislative act or decision is in accordance with its underlying policy.

Study on the Overall Functioning of the European Trade Mark System presented by Max Planck Institute for Intellectual Property and Competition Law Munich 15 February 2011.

I.e. the TM Directive 2008 and 2009 TM Regulation respectively.

The Max Planck TM Report para 1.19, p. 49.

McCormick described the “operative facts” as the “requite” facts and circumstances for the “legal consequences (…) to follow.” MacCormick, Neil, ‘Legal Reasoning and Legal Theory’, (1st edn, Oxford University Press, 1978), p. 45.

On this development, see Chap. 8.

Bridge has stated that the tradition of the EU legal system very much stands on the shoulders of the Civil Law legal tradition. Bridge, John, ‘National Legal Tradition and Community Law: Legislative Drafting and Judicial Interpretation in England and the European Community’, Journal of Common Market Studies, vol. XIX/no. 4, (1981), pp. 351, p. 352-353 and p. 361-362. See also Levitsky, Jonathan E., ‘The Europeanization of the British Legal Style’, Am. J. Comp. L., vol. 42/no. 2, (1994), pp. 347, p. 351, Conway, Gerard, ‘The Limits of Legal Reasoning and the European Court of Justice’, (1st edn, Cambridge University Press, 2012), p. 162, Arnull, Anthony, ‘The European Union and its Court of Justice’, (2nd edn, Oxford University Press, 2006), p. 11. See also the discussion in Chap. 4, Sect. 4.​3 on the role of the CJEU. The understanding of ratio decidendi is addressed below in Chap. 4, Sect. 4.​3.​3.

Pila, Justine, ‘A Constitutionalized Doctrine of Precedent and the Marleasing Principle as Bases for a European Legal Methodology’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 227, p. 232. Pila’s quote refers more generally to European intellectual property law. However, her statement applies equally to European trademark law.

This theory is partly developed by Tuori, who stresses the importance of different layers of law. Aspects of how European law develops between different levels (EU, national and international) is addressed in Chap. 4.

The Court of Justice in Tritton et al’s words, may provide ““helpful guidance” applying its interpretation to a particular set of facts!” Davis, Richard, St Quintin, Thomas and Tritton, Guy, ‘Tritton on Intellectual Property in Europe’, (5th edn, Sweet & Maxwell, 2018), p. 23, footnote 95. See also Chap. 4, Sect. 4.​3.

Geiger, Christophe, ‘The Construction of Intellectual Property in the European Union: Searching for Coherence’, in Geiger, Christophe ed., Constructing European Intellectual Property: Achievements and New Perspectives (1st edn, Edward Elgar, 2013), 5, p. 13.

As explained in Chap. 1, it is not the main purpose to analyse case law related to registration disputes, however, for completion, these cases will be included in the analysis.

An example of lack of consistency is the vertical development – the interplay between the Court of Justice and the national infringement courts – and the horizontal development – the influence from the UCPD. Another variable is the level of normativity vested in the average consumer as a legal fiction. See Chap. 5. In general, the inherent conceptual divergence as explained by Prechal is also a significant variable. It is thus stated by Prechal that EU “prima facie (…) in particular seems to be jeopardized by conceptual divergence: [i] Multi-lingualism in EC legislation leads to incorrect, at times impossible, translations. These may incite lawyers to ‘walk on the wild side’ in advising or representing clients. [ii] EU law has its own terminology, different from Member States’, jurisdictions. To a certain extent, it has developed outside of the system of checks and balance built into national legal traditions. [iii] While the law is enacted at the supra-national level, powers of application and enforcement are delegated to national authorities. [iv] Common education and common culture with respect to EU law are in statu nascendi, if not embryonic. They are certainly not part of the acquis communautaire. [v] Socio-political constellations, aspirations, and ideologies differ greatly from one Member State to another.” Prechal, Sacha, ‘Binding Unity in EU Legal Order: An Introduction’, in Prechal, Sacha and Roermund, G. van eds., The Coherence of EU Law: The Search for Unity in Divergent Concepts (1st edn, Oxford University Press, 2008), 1, p. 1. As a general observation, Hoecke has stated, that too much “(…) legal data are too indefinite to enable us to conceive legal doctrine as a purely logical discipline. (…) Anyway, logical coherence is a characteristic of scientific research in any discipline and not just typical for the legal sciences.” Van Hoecke, Mark, ‘Legal Doctrine: Which Method(s) for what Kind of Discipline?’, in van Hoecke, Mark ed., Methodologies of Legal Research: What Kind of Method for what Kind of Discipline? (1st edn, Hart, 2011), 1, p. 9.

Prechal, Sacha, ‘Binding Unity in EU Legal Order: An Introduction’, in Prechal, Sacha and Roermund, G. van eds., The Coherence of EU Law: The Search for Unity in Divergent Concepts (1st edn, Oxford University Press, 2008), 1, p. 31. When the General Court (previously the Court of First Instance (“CFI”)) was given jurisdiction to decide certain matters under the TM Regulation 1994, Prechal explains that “the judges of one of the chambers of the CFI decided to write a brief note about ‘their’ national system of intellectual property rights protection, inter alia, in order to make their legal background in these matters more explicit.” This shows a very simple and none-theoretical importance of comparative law and specifically referring to European trademark law. See also Jacob, Marc A., ‘Precedents and Case-Based Reasoning in the European Court of Justice: Unfinished Business’, (1st edn, Cambridge University Press, 2014), p. 16, including the sources in footnote 28 of the text.

Calboli, Irene, ‘The Role of Comparative Legal Analysis in Intellectual Property: From Good to Great?’, in Dinwoodie, Graeme B. ed., Methods and Perspectives in Intellectual Property (1st edn, Edward Elgar, 2013), 3, p. 26.

Siems, Mathias, ‘Comparative Law’, (1st edn, Cambridge University Press, 2014), p. 3.

The role of the Court of Justice as a lawmaker is addressed in Chap. 4, Sect. 4.​3.

Also, this involves looking into the mirror of this provision in registration matters, art. 5(1)(b) of the TM Directive.

As per the general role of regulation in the EC Treaty Art. 249. For a recent account of the EU trademark system, see among others, Firth, Alison, Lea, Gary R. and Cornford, Peter, ‘Trade Marks: Law and Practice’, (4th edn, Jordans, 2016), chapter 14, in particular p. 322-330.

In this perspective, e.g. a Danish preliminary reference to the Court of Justice may affect how the average consumer is developed not only in Denmark but also in other EU jurisdictions.

See among others, Siemns referring to scholars measuring the “foreign influence related to academic research.” Siems, Mathias, ‘Comparative Law’, (1st edn, Cambridge University Press, 2014), p. 154-155.

A recent example is Pangea Property Partners v. Klagenemnda, HR-2016-01993-A, [2016], NOSC, paras 52-53. Here the court referred to the go-to textbook on Norwegian trademark law by Lassen and Stenvik and a recent book on EU trademark law edited by Hasselblatt. Respectively, Lassen, Birger Stuevold and Stenvik, Are, ‘Kjennetegnsrett’, (3rd edn, Universitetsforlaget, 2011) and Hasselblatt, Gordian N., ‘Community Trade Mark Regulation (EC) no 207/2009: A Commentary’, (1st edn, Beck/Hart, 2015).

See Chap. 10, Sect. 10.​2.​2. Also, the clear resemblance (almost identity) between the wording of the relevant provisions in the TM Regulation and the TM Directive, and the way the average consumer has been developed under these secondary legislative acts.

This comparative method is also called the “länderbericht” method. See Lando, Ole, ‘Kort Indføring i Komparativ Ret’, (3rd edn, Jurist- og Økonomforbundets Forlag, 2009), p. 206-207.

See Chap. 1, Sect. 1.​5.​4.

Merryman, John Henry, ‘The Civil Law Tradition: An Introduction to the Legal Systems of Western Europe and Latin America’, (1st edn, Stanford University Press, 1985), p. 321-322.

Cornish, William R., Llewelyn, David, and Alpin, Tanya, ‘Intellectual Property: Patents, Copyright, Trademarks and Allied Rights’, (8th edn, Sweet & Maxwell, 2013), p. 25-26. See also Merryman, John Henry, ‘The Civil Law Tradition: An Introduction to the Legal Systems of Western Europe and Latin America’, (1st edn, Stanford University Press, 1985), p. 22, David, René, and Brierley, John EC, ‘Major Legal Systems in the World Today’, (3rd edn, Free Press, 1985), p. 376-382 and Lundmark, Thomas, ‘Charting the Divide between Common and Civil Law’, (1st edn, Oxford University Press, 2012), p. 371-374.

Bridge, John, ‘National Legal Tradition and Community Law: Legislative Drafting and Judicial Interpretation in England and the European Community’, Journal of Common Market Studies, vol. XIX/no. 4, (1981), pp. 351, p. 363.

Merryman, John Henry, ‘The Civil Law Tradition: An Introduction to the Legal Systems of Western Europe and Latin America’, (1st edn, Stanford University Press, 1985), p. 333-334, with reference to the principle laid down in Pepper Hart.

Van Hoecke, Mark, and Ost, Francois, ‘Legal Doctrine in Crisis: Towards a European Legal Science, Legal Studies, vol. 18 (1998), pp. 197, p. 201.

Craig, Paul, ‘Report on the United Kingdom’, in Slaughter, Anne-Marie, Stone, Alec and Weiler, Joseph H. eds., The European Court and National Courts: Doctrine & Jurisprudence: Legal Change in its Social Context (1st edn, Hart, 1998), 195, p. 221.

Bridge, John, ‘National Legal Tradition and Community Law: Legislative Drafting and Judicial Interpretation in England and the European Community’, Journal of Common Market Studies, vol. XIX/no. 4, (1981), pp. 351, p. 372.

Reference is made to Scandinavia, which however is a term used interchangeably with “Nordic” by Zweigert and Kötz. “Nordic” as referring to “Northern Europe” covers Denmark, Finland, Iceland, Norway and Sweden, whereas Scandinavia in the geographical sense does not cover Iceland and Denmark. Zweigert, Konrad, and Kötz, Hein, ‘Introduction to Comparative Law’, (3rd edn, Oxford University Press, 1998), p. 277 and p. 284.

Husa, Jaakko, Nuotio, Kimmo and Pihlajamäki, Heikki, ‘Nordic Law – between Tradition and Dynamism’, in Jaakko, Husa, Nuotio, Kimmo and Pihlajamäki, Heikki eds., Nordic Law – between Tradition and Dynamism (1st edn, Intersentia, 2007), pp. 1, p. 8.

Smiths, Jan M., ‘Nordic Law in a European Context: Some Comparative Observations’, in Husa, Jaakko, Nuotio, Kimmo and Pihlajamäki, Heikki eds., Nordic Law – between Tradition and Dynamism (1st edn, Intersentia, 2007), 55, p. 61.

Husa only refers specifically to the “Roman-German” legal family, however, the role of the preparatory works is even less prominent in the Common Law legal family. Husa, Jaakko, Nuotio, Kimmo and Pihlajamäki, Heikki, ‘Nordic Law – between Tradition and Dynamism’, in Jaakko, Husa, Nuotio, Kimmo and Pihlajamäki, Heikki eds., Nordic Law – between Tradition and Dynamism (1st edn, Intersentia, 2007), pp. 1, p. 34.

Zweigert, Konrad, and Kötz, Hein, ‘Introduction to Comparative Law’, (3rd edn, Oxford University Press, 1998), p. 34.

Markesinis, Basil S., ‘Foreign Law and Comparative Methodology: A Subject and a Thesis’, (1st edn, Hart, 1997), p. 365 and 382.

Legrand, Pierre, ‘European Legal Systems are Not Converging’, ICLQ, vol. 45 no. 1, (1996), pp. 52. See also Siems, Mathias, ‘Comparative Law’, (1st edn, Cambridge University Press, 2014), p. 37-38 and Samuel, Geoffrey, ‘An Introduction to Comparative Law – Theory and Method’, (1st edn, Hart, 2014), p. 79-80 with references.

Samuel, Geoffrey, ‘An Introduction to Comparative Law – Theory and Method’, (1st edn, Hart, 2014), p. 81.

See Chap. 3, Sect. 3.​2.​2.​1.

Sabel v. Puma, Case C-251/95, [1997] ECR I-6191, para 22.

Zweigert, Konrad, and Kötz, Hein, ‘Introduction to Comparative Law’, (3rd edn, Oxford University Press, 1998), p. 17 and p. 26-27.

Siems, Mathias, ‘Comparative Law’, (1st edn, Cambridge University Press, 2014), p. 13-14.

McEvoy, Sebastian, ‘Descriptive and Purposive Categories of Comparative Law’, in Monateri, P. G. ed., Methods of Comparative Law (1st edn, Edward Elgar, 2012), 144, p. 145.

See Chap. 6.

Gut Springenheide and Tusky, Case C-210/96, [1998] ECR I-4657.

On the UCPD, see Chap. 7.

As already mentioned the UCPD refers to the average consumer – not only in the recitals but also in the main text, which is in contrast with EU trademark legislation. Siemns has referred to the comparison of the content of legal rules as the “formal dimension.” Siems, Mathias, ‘Comparative Law’, (1st edn, Cambridge University Press, 2014), p. 20.