The team is joined by Guest Kats Rosie Burbidge, Stephen Jones, Mathilde Parvis, and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Hayleigh Bosher, Tian Lu and Cecilia Sbrolli.

Tuesday, 25 October 2016

Meet the Trade Mark Judges (Part two)

London Taxi CTM
Following on from Meet the Trade Mark Judges (Part One) is the inevitable sequel.

The questions continued...

The shape of a London taxi was found not registrable on the basis that the shape added "substantial value"... but do not all famous names add substantial value to the goods?  Is this test destructive of TMs?

This English case was dissected by the IPKat here.   Carr J recalled that one of his concerns when he represented Philips in the Philips v Remington litigation was that three heads (on the Philips shaver) would be said to add substantial value.  In his view, this argument never surfaced because every shape that becomes famous adds substantial value.  Carr's paradigm example of shape adding value was a cut diamond where the value from the shape and the gemstone itself can be clearly distinguished.

There was some concern that shape trade marks may have gone too far and design, copyright and unfair competition law should be sufficient to protect shapes (although it was accepted that there is not complete consistency across the EU).

Oliver Morris thought that the questioner may have got wrong end of stick as the question suggests that substantial value test applies to standard trade marks such as words and logos. He noted that the brand name adds no value to intrinsic nature of goods. So this is not an issue for standard trade marks.

"But what about celebrity names"? cried someone from the audience... In those instances, the value comes from the celebrity's identity and not the trade mark name.  The panel deflected this question with some philosophical "mewsing" on the shape of the VW Beetle which was initially treated with ridicule but over time the public was educated to love it.  The panel may have shied away from this question but IPKat readers can fill this void.  Add a comment and let us know what you think.

Is a trade mark primarily there to protect consumers or the businesses which owns the registered mark? Have you seen a shift in recent years and which way would you prefer the law to develop in the future?

All panelists considered that trade marks successfully protected both groups but identified a shift from a consumer-centric approach to more trade mark owner orientated focus over time.  The original raison d'etre for a trade mark was to help consumers by indicating the origin of goods and preventing consumers from being confused into purchasing the wrong product.  This was then extended to cover situations where there was no confusion (e.g. due to a prominent disclaimer that goods were not official) but there was nevertheless infringement (e.g. Arsenal v Reed).  This trend shows a move toward the interests of business rather than simply avoiding consumer confusion.

Some of the panel considered that dilution and tarnishment could be solved with other causes of action such as unfair competition.  Carr J agreed and identified a philosophical move from consumer protection to protecting an asset of a business by preventing blurring and tarnishment.  He saw these issues as closer in nature to competition and would prefer the use of blurring etc to be limited to situations where actual damage occurs.  He gave the example of Mercedes which, many moons ago, was in a dispute with a clothing brand called "Merc". At that time, the clothing brand's website linked to Neo-Nazi sites: clear evidence of potential tarnishment to the Mercedes brand.

Oliver Morris explained that although there has been a move toward a more business focus, the essential distinguishing function is all about protecting the consumer as well.  He saw the interests of the consumer and trade mark owner as working hand in hand reasonably well because if more power is given to a brand owner they are more likely to protect and avoid confusion because they are empowered. In his view, generally speaking brand owners having more power has not negatively impacted consumer opinion.

Judge Vadja queried the rationale for stopping parallel imports using trade mark rights.  These goods are  sold under and by the same brand so there is no consumer protection issue (aside from any regulatory issues between countries).  He therefore considered that the ability to stop parallel imports is a particularly good example of the general view that business interest now dominates over the interests of the consumer.

Are references to the CJEU "a force for good"? 

Judge Vadja noted that the way a CJEU reference is formulated is crucial.  It is like a pleading in that it sets parameters for the case.  It is therefore important to be as clear and straightforward as possible.  For example, complicated questions with several sub-questions do not tend to be well received by the court.  In Carr J's opinion, referring courts should keep questions short and this is normally fairly straightforward as the reference tends to be on a discrete legal point with two alternatives.

Will English remain a CJEU language post-Brexit?

Almost certainly.  Not only are Malta and Ireland not going anywhere but Judge Vadja noted that over 90% of hits on the Curia website are for the English version of a judgment or opinion.  Suggesting that regardless of nationality, everyone wants to see the English version.  Therefore it would be very strange if judgments are not in English.

Are trade mark disclaimers useful? 

Olive Morris noted that this is only an issue on a few cases and whilst he could see the benefit there was not enough time to carve up distinctive elements at the time of filing.  Also what is and isn't distinctive can change over time and may be different when any infringement arises. Had suggested volunteering a disclaimer when a borderline mark.

Robin Jacob noted that they can be useful in some circumstances and referred to the Kitchenaid case (an image of the mark is to the left).  In that case, registration of the mark was granted on the basis that it included the name Kitchenaid (regardless of the fact that the mark also included a shape), the trade mark owner subsequently used the mark to take action against a third party with a similar shaped product but who had not used the name.

Is it fair to characterise trade marks, designs and copyright as "soft IP" compared to patents as "hard IP"? 

The general view was that the artificial distinction was not accurate.  Paolo Catallozi noted that with the move toward digital technologies, copyright is growing in importance.  There was no consensus as to which right was the most valuable on an economic basis (one for Nicola Searle to investigate!).

Henry Carr suggested a rebranding exercise: "creative" vs "inventive" IP but noted that even that isn't strictly accurate and is only a very broad brush distinction.  Oliver Morris suggested that, again broadly speaking, patent cases may be harder factually but easier from a legal perspective (and vice versa for trade marks etc).

Should there be a parody defence for trade mark infringement?

Given the substantial investment that many trade mark holders make into their marks it is unsurprising that many trade mark holders fail to retain a sense of humour when presented with parodic use.  Parodic use can be funny, a political tool, a cash cow or all of the above.  But where should the line be drawn?

In Italy, parody is often deployed as a defence to infringement (both for trade marks and otherwise).  Catalozzi noted that this trend was increasing over time.  It can be difficult to balance the legitimate interest of the trade mark owner (particularly to avoid blurring or tarnishment) whilst allowing freedom of expression.

Henry Carr reminded the room of the South African Carling Black Labour case (Laugh it Off v South African Breweries).  In his view, this was a good example of where trade mark law was rightly compromised in favour of making a political point regarding the practices of the company.

In Carr's view, this shows why some sort of parody defence is necessary. Although, this line of defence is already available under the European Convention of Human Rights (and Human Rights Act).

Paolo Catalozzi agreed that it was a question of balancing constitutional rights and property rights. In other words it all comes down to a question of balancing the various freedoms.

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