Speaking About Trade Marks: Ready My Lips?

This Kat recently had the pleasure of speaking in Chicago at the INTA-sponsored conference on "Trademarks on Transactions". Having spent an oversized number of his higher education years in Chicago, it was great to return there for three days of glorious autumn weather along the shores of Lake Michigan.

Back home in the blogging saddle and reflecting once again on the conference, one topic particularly grabbed this Kat's attention. As part of the session on "Legal, Business and Tax Issues Involving Related-Party Transactions," discussion was had on the pros and cons of consolidating all trade mark registrations in a single company within a larger corporate group. One claim made in favour of such a move is that, in so doing, the trade mark owner is in a more sound position to support a claim that the mark is well-known.

If a given mark is held by a number of related entities, it might be more difficult, so it was asserted, to prove that the mark has become well-known, even if the mark is used widely and enjoys recognition on a world-wide basis. The thinking expressed was that, because ownership is split, no single entity can presumably claim the world-wide fame of the mark, thereby weakening any argument that such the mark is well-known. For that reason, from the point of view of establishing that a mark has acquired well-known status, unitary ownership of the mark across multiple jurisdictions is the way to go.

This Kat pondered this assertion but he felt a sense of unease about it. He took advantage of the Q&A to ask: "Was anyone on the panel aware of any case law that had addressed this question?" In particular, did anyone of them know of a judgment in which well-known mark status was rejected because the mark in question was not held by a single entity but rather by a number of related companies, despite the fact that the mark itself enjoyed a substantial reputation in a large number of countries across the world? None of the panelists could point to any such decision. Nevertheless, it was argued, a consideration of whether or not the mark was held by a single or multiple entities impacted on claiming well-known mark status. In other words, the situation seems to be that, while there is no specific legal authority for the position, as matter of practice the position has obtained a measure of acceptance. With that, the issue rested.

The exchange above was interesting not only for the legal question raised, but for raising a fundamental question in connection with the mores of a professional presentation. How much leeway does a speaker have when he advances an unsettled legal assertion without being aware of any supporting case authority? This Kat is not naive (he hopes)--when one speaks, one may seek to advance a proposition, even in the absence of any known legal authority. Such suggestions are often the most tantalizing part of a presentation.

But, in so doing, does the speaker have an obligation to clarify the context in which the suggestion is being made? Should the speaker state whether his proposition is supported by case law and or accepted practice or whether the speaker has even checked the legal position? Or perhaps not: a presentation is not a published professional article. Perhaps the purpose of an assertion in a presentation, such as the suggestion that the potential risk to a claim of well-known status of a mark in the event of split ownership of a mark across various jurisdictions, is to challenge the audience to pursue the matter further if interested? Even here, however, should there not be at least a minimum check about the legal plausibility of the claim? As this Kat already prepares for his next public presentation, he is considering these questions anew. .