IP and Retail Conference: session 1

Today's conference on IP and Retail, organised by CLT and held in the elegant venue of London's Holborn Bars (right), opened with a paper by Abida Chaudri (Baker & McKenzie LLP), speaking on the protection of shop names and trade dress.  After running through the basic statutory provisions governing registration -- and non-registration -- of shop names as trade marks, focusing initially on the registration of surnames since they are so commonly used as shop names, Abida took the registrants through the Court of Justice litigation in a forename case, Case C-17/06 Céline SARL v Céline SA and, then, moving on to honest commercial practices regarding the use of one's own name, explained the recent litigation over control of the Cipriani surname in relation to restaurants.  This case raises an interesting discussion point: to what extent should a court allow itself to be influenced, when deciding whether a name was confusingly similar or a dishonest, by the way in which customers themsellves used the name.

Next to speak was former guest Kat Robert Cumming (Walker Morris), who addressed three techniques for bricks-and-mortar shops to raise their profiles online: (i) flagship domain names, (ii) search engine optimisation (SEO) and (iii) keyword advertising. High Street businesses had a head-start over online-only businesses, but many failed to capitalise on their goodwill in time, by adjusting to online conditions: a good example is the late British Woolworths chain. If shops don't get their act together, consumers just take advantage of them: "show-rooming" results in customers trying out or inspecting goods, then scanning the barcode and finding out where else they can buy them more cheaply.

Which is better value for money? Flagship urls are all very well, said Robert, and can be highly memorable -- but the days of people typing them in full into their browsers are over and SEO can be expensive and its results unpredictable. However, not everyone trusts paid-for search results and ad-blindness often kicks in among consumers.

Robert then launched into a critical review of the CJEU's Google France litigation, in which that court was asked to massage a pre-internet trade mark law to fit circumstances that were not foreseen by it. Since Google's advertising revenue last year was some US$ 38 billion and brand owners get none of this, it's not surprising that there have been rumblings of discontent concerning the unlicensed use of trade marks as search terms in a paid-for keyword service. This was followed by an analysis of Case C-324/09 L'Oréal v eBay, and the extent to which an online host of goods sold by third party traders can be required to monitor or take down infringing sites. Robert then tackled Case C-323/09 Interflora Inc and Interflora British Unit v Marks & Spencer plc and Flowers Direct Online Limited, in which the CJEU viewed the impression of the average internet user as being an essential element of the test of whether the use of another's brand as a keyword conveys an impression that the use of that brand suggests that the user's business is connected with that of the brand owner.