When Trademarks Overlap With Other IP Rights: conference report 3

The session which bridged coffee break and lunch was dedicated to a panel discussion on the issues raised in the previous session. in which the panellists worked their way through a matrix of topics in which trade marks and copyright were differently treated.  Michael Ritscher (Meyerlustenberger Lachenal) opened by challenging the assumption that, while copyright costs nothing, trade marks are expensive.  Max Kinkelday (Gruneker) agreed: copyright comes without proof of title and with so much more effort when it comes to litigating. Did this mean that Max favoured a registration regime for copyright? He wasn't actually saying this, but he recognised its advantages. However, as Andrew Bridges reminded the panel, the Berne Convention does not mandate copyright registration and it would take a Berne Revision Convention to change things.

Incontestability of trade mark rights was also discussed. Trade mark incontestability is a somewhat overstated concept in the US, Andrew said, and Max agreed that, to the extent it existed in Germany, it was little relied upon.

Moving on through the matrix of topics, the panellists next looked at the legal parameters of protectability, in terms of distinctiveness, originality and individuality. In general, it seems to this blogger that there is something of a rush towards whichever body of law has the lowest criteria for protection.  At present, there is no common standard for copyright protection within the EU, so little prospect of pan-European relief for copyright infringement, whereas trade mark law offers far better prospects of such relief,

Functionality of protectable subject matter came next, with discussion focusing on the ruling of the Court of Justice ruling in the TRIPP TRAPP case [Case C-205/13 Hauck v Stokke, noted by the IPKat here]. Here design protection had expired and, if you subtract the design from the product itself, all you are left with is the functional product, This seems fine except that, if other manufacturers can market it, there is a risk that consumers will be confused.  The term "aesthetic functionality" came in for some criticism as providing a criterion on which protection of an attractive but functional product should turn, and reference was also made to the position in the United States, where trade mark protection was far less likely to be available.

Who is the object of the law's protection, asked Michael? Is it the author of the work or is it the consumer? Depending on your objective, your view of protectable subject matter and how its protection works will be very different.  This is a practical issue, answered Max: if the goods are consumer goods, we'd go for a low level of protectability and focus on the average European consumer -- but if we were to take the case from the perspective of an author's work, we'd have to ask if this was a work of the author's original creativity, as in the Court of Justice ruling in Case C-5/08 Infopaq.  In the US, however, there is less of a dichotomy in approach because of the broad public benefit purpose that runs through both copyright and trade mark law.

Moving on to scope of protection, in the EU more protection is given to strong marks than to weak ones.  While this is not obviously so for copyright, the scope of protection does shift, being broad for eg chairs that are new and creative but narrow once the design itself is no longer unique but one member of a class category. German case law has shown this to to be the case in litigation over cantilevered chairs such as that illustrated on the left,  In the Netherlands too, the scope of protection of the TRIPP TRAPP chair appears to have been whittled down over time.  In the United States, there would be little protection against look-alike cantilever chairs if it is plain that what has been emulated is the idea -- which is not protected at all by copyright.

Regarding levels of abstraction, should one compare an allegedly infringing use with a trade mark as registered, with the trade mark as used, or on any other basis? The Lindt chocolate bunny case [on which see the IPKat here] was a case in point: if it had been a copyright infringement case, the comparison would have been between the original work as it was and the infringement as it was, while for trade mark purposes the comparison would have no ignore the fact that the claimant's product, protected by a three dimensional shape mark, also had the word LINDT on it.  Have things now changed? The recent Specsavers case [on which see the IPKat here] suggests that the way the mark is used in reality cannot be ignored.

Enforcement, evidence and defences came next. Market survey evidence is controversial but still used in trade mark law, but has little applicability to copyright. If trade mark infringement is a matter of law, not of fact, said Max, there should be no need for it, but it would be advantageous to introduce it more widely in Germany. Michael speculated that survey evidence might be handy in patent law, providing empirical and objective evidence regarding inventive step.  Andrew was dubious as to whether survey evidence had any application at all outside trade mark law, since the trade mark survey had a predictive value with regard to actual likelihood of confusion and consumer behaviour in the future.

The panel then posted five discussable propositions (these being learnings that we can take from recent case law and panellists' experience) on-screen:

• Assume everything is copyright-protected (following Infopaq and some recent German cases)
• Have every eventual copyright assigned
• Make sure you have proof for establishing chain of title
• Always clear third party trade mark registrations
• Don't rely on 3D trade marks alone when protecting product shapes: think more broadly
• Always register design rights
• Keep unregistered design rights in mind
• Consider claims based on unfair competition

The session then eased into the Question and Answer session, which then eased into lunch via a discussion as to whether trade mark law protects creativity or not and some delightful speculation as to the existence of a doctrine of dilution of copyright ...