IP and Retail Conference: Part III

The afternoon session of today's IP and Retail Conference started with a blow-by-blow account of Antony Gold (HGF) of the battle between SpecSavers and Asda for the heart and soul of the former's trade mark (the details of which are so vast that they have not been repeated at length here: readers who are not familiar with the case, its background and its outcome are referred to earlier Katposts here). Antony gave a graphic account not only of the legal issues involving the comparison of the parties' marks and the issues relating to colour, but also of the highly entertaining evidence on which the decision was based.  Antony described the way the concepts of likelihood of confusion, unfair advantage and detriment without due cause have affected the litigation (the fall-out of which is still being felt, since SpecSavers' "wordless logo", right, is waiting patiently to be readmitted to the trade mark register in the United Kingdom.

In terms of practical lessons learned, said Antony, we should consider the following:

1. Don't be put off trying to get together a passing-off claim, even if you are also running a trade mark infringement action. Passing off does reach areas that trade mark registrations can't touch.

2. Remember that consumer survey are either dead or nearly dead. In either event they do not appear to be particularly popular with the judiciary.

3. Trust your own judgement: your hunches are as good as counsel's.

4. Even with a brainy judge, litigation is still a gamble.

Antony was succeeded by Christopher Stothers (Arnold & Porter (UK) LLP), who addressed "Importation and Sale of Third Party Brands: Issues involving Grey Goods". Christopher reminded us all that free movement of goods and the regulation of anticompetitive practices, which are often lumped together under the same heading, are different bodies of law and affect intellectual property in different ways.  He then gave a broad review of the principal CJEU decisions as they relate to the sale and importation of goods from one country to another within the EU and from outside it.

Chris addressed the issue of "unequivocal consent" on the part of a brand owner to the importation of goods into the EU and the case law which this concept has generated.  He also discussed, among other topics, the recent Oracle v M-Tech litigation, in which the defendants raised a competition-based defence which, the Court of Appeal had said, would be sufficient ground on which to refuse an application for interim injunctive relief. The Supreme Court however held otherwise.

As for problems faced by retailers and how to avoid them, the main issues relate to depressed prices and lost sales, as parallel imported goods squeeze sales and profits. Anticompetitive agreements with suppliers may leave retailers who enter them in the firing line, with risk of being fined.  Parallel traders may try to trap retailers into revealing that they have entered into anticompetitive agreements.

Closing the day was Alex Carter-Silk (Speechly Bircham LLP), on heuristics and lookalike products. Essentially, how do you prove confusion, particularly when the British judiciary have set their faces against survey evidence and against the use of surveys in order to select witnesses? You can't litigate confusion unless you know what confusion means, he said, and this is where heuristic triggers come in. For example, Alex asked the registrants to name an airline associated with the colour red: immediately a host of voices called out "Virgin!"  This, he explained, was a learned response -- the sort of response that consumers can be trained to make, and what both branding and the hijacking of the consumer's subconscious are all about.

Judges like to make decisions based on their own knowledge and, therefore, with their own cognitive bias. We all have such biases, Alex demonstrated, and our heuristic triggers have been trained accordingly. That is why we have to look at comparisons of goods through the eyes of the informed consumer -- and informed consumers react differently in different situations and environments (for example, the same consumer will judge things differently depending on whether he is in an upmarket supermarket like Sainsbury's or a downmarket one like Aldi?)  Alex then mentioned his research on lookalikes with the British Brands Group, the curious notion that lookalikes can actually emphasise the value of the brand they emulate and the annoying reality that the government seems to view lookalikes as a non-damaging addition to consumer choice, while the truth is that it is products that you can distinguish from one another that facility choice, it being the fact that they can be differentiated that enables consumers to select between them.