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Friday, 9 April 2010

Trade marks at Fordham: some thoughts

One strand of this afternoon's programme at the Fordham IP Conference was dedicated to trade marks -- starting with premium products and the brands with which they are associated.


Speaking first, Monika Tomczak-Górlikowska (Miller Canfield, Warsaw) contrasted bricks & mortar shopping with internet commerce within the context of vertical sales restraints in the European Union. She cited former EU Commissioner Neelie Kroes's call for changes in vertical restraints in order to meet the needs of the new order brought about by internet trade. A new draft Regulation has been tabled, since the existing Regulation expires in May 2010. At present, the internet is considered internet sales as 'passive', but brand owners would like to be able to control or restrict online sales by retailers. Premium brand owners are also anxious to reduce or prevent piracy, for which the internet is a convenient trade medium. The reputation and feel-good factor for luxury brands is also at stake: can websites replicate the luxury aura of an up-market shop?

Dr Joseph Fesenmair (Bird & Bird, Munich) then gave an explanation of the Court of Justice of the European Union's ruling last year in Case C-487/07 L'Oréal v Bellure. Note: the decision of the Court of Appeal in the underlying dispute that led to this reference is expected later this month and will be the subject of an AIPPI UK meeting on 29 April starring Henry Carr QC and Willem Hoyng of Howrey -- please mark your diaries). Following this, Professor Marshall Leaffer (Indiana Uni Maurer School of Law) was up next, tackling the grey (or gray) market; this, he observed, seems to be an insoluble problem. Marshall discussed the sale of genuine goods with the barcoded data removed constituted a trade mark infringement in the US, reviewing Davidoff's successful COOL WATER action against CVS (here) and the bizarre manner of its expression.

Dr Peter Ruess (International School of Management, Frankfurt) then examined the Court of Justice of the European Union ruling in Court C-57/08 COPAD v Dior. This ruling gave heart to trade mark owners by clarifying that an action of trade mark infringement can be brought where breach of a 'channel of sale' obligation in a contract leads to the entry of luxury goods into the market without the brand owner's consent and thus puts the goods' aura at risk. Peter asked some highly pertinent questions: can a brand owner define its brands into achieving the status of being prestige or luxurious, or does it depend on objectively verifiable criteria? And has the consequence of parallel risk of trade mark infringement and breach of contract been fully considered?

After moderator Professor Susan Scafidi (Brooklyn Uni, NY) opened the topic for discussion, the panellists added their contributions. Professor Ann Bartow (Uni of South Carolina), questioned the practice of pixillating trade marks on garments worn by persons arrested for various offences. Paul Maier (President of the Boards of Appeals, OHIM), with whom Professor David Llewelyn (Kings/Singapore) agreed, said that the current state of European case law represented the high point of recognition of protection of reputation of trade marks in Europe -- but, David said, it is important to understand how these ruling, arguably justified in themselves, are used by lawyers in seeking unjustifiably to press for wider protection than that countenanced by the courts. Professor Sheldon Halpern (Albany Law School) deprecated the metamorphasis of the term "free rider" from a neutral and descriptive term for a person carrying out an activity which may or may not be acceptable and into a pejorative term. Professor Spyros Maniatis (QMIPRI) reminded the participants that the rulings of the European Court of Justice should not be divorced from the circumstances of their specific facts: the court could easily go back on its generous interpretation of trade mark law in instances where extra factors, such as comparative advertising issues, were not additionally present.

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