Date post: | 21-Dec-2015 |
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Issues Considered Consumer perception - historical basis
for TM infringement1. Are consumer interests still relevant for
keyword based TM infringement? Do other interests get priority?
2. Where consumer interests are relevant, what is law’s constitutive role in building up the average consumer?
3. Does keyword litigation illustrate a broader shift away from the consumer in TM law?
3. Ads and Revenue Model Aim is for unbiased search: ‘Google's
mission is to organise the world's information and make it universally accessible and useful.’
Yet they sell advertising e.g. Google 97%-99% of revenue from Adwords and Adsense programmes
SEOs ‘game’ search factors Google responds by changing the criteria
for search and ranking (interventions)
4. TM Proprietor’s Objections Likelihood of Confusion Free Riding on image/effort Loss of Sales
Unfair free riding or pro-competitive side by side comparisons? Parallels with real world retail?
How do consumers interpret the presentation of sponsored results along with ‘natural’ search results?
Can we assume keyword ads/sponsored results to be inherently misleading (concepts such as initial interest confusion)?
5. Importance of Search Engines Shift to search model of navigation Free (Ad revenue) Indexing the web; getting better at it –
evolution of search engines Useful for searchers (consumers), TM
proprietors Regulatory concerns do surround search
engines, but TM law may be a blunt instrument
How does TM law organise its proprietary rights?
6a. Origin Function Rationale: Preserve Communicative
Function of TM Infringement of (narrow) rights to
exclusivity where D’s use of same/similar sign results in LoC
Co-incidence of Proprietor and Consumer (Public) interest; Uncluttered Information in the marketplace
Landes & Posner’s law & economics theory – encourages marketplace efficiency
6b. Origin cont. Arsenal v Reed (C-206/01)
The ‘essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin. For the trade mark to be able to fulfil its essential role in the system of undistorted competition which the [EC] Treaty seeks to establish and maintain, it must offer a guarantee that all the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality..’
6c. Quality HAG II (C-10/89) (AG Jacobs)
‘Trade marks… act as a guarantee, to the consumer, that all goods bearing a particular mark have been produced by, or under the control of, the same manufacturer and are therefore likely to be of similar quality. The guarantee of quality offered by a trade mark is not of course absolute, for the manufacturer is at liberty to vary the quality; however, he does so at his own risk…’
6d. Communication/Advertising Intel v CPM (C-252/07) Jun ‘08 (AG
Sharpston)Well known ‘marks frequently perform functions which go beyond linking goods or services to a uniform source. They present a powerful image of quality, exclusivity, youth… or other reputedly desirable lifestyle attributes, not necessarily associated with specific products but capable of presenting a strong marketing message in itself.’
Image generates and retains custom
6e. Advertising cont. L'Oreal SA v Bellure NV (C-487/07) Feb
‘09 (AG Mengozzi) The ‘“communication”, investment, or
advertising functions’, which ‘arise from the fact that the investment in the promotion of a product is built around the mark’ and are, therefore, ‘values which deserve protection as such, even when there is no abuse arising from misrepresentations about either origin or quality’.”
Investment is required for this image
7. Origin Quality ImageSo what?
What is this new intangible object being created? What are the content and contours of ‘image’?
Who creates it? (Public authorship?) How plastic/fragile? (Lehman Bros.?) Image protection is good for the proprietor; but
what is the consumer or general public interest? Changes in market practice insufficient (ought
from is); Exclusivity for some takes away rights from others; affects freedoms and interest
No boundaries to ‘free riding on image’ Functions are layered but
3 protected independently; boosted by 1, 2 and ‘takes off’
8a. Four+ References
1. France: Google v Louis Vuitton Malletier (C-236/08); Similar references in (C-237/08); (C-238/08)
2. Austria: Die BergSpechte Outdoor Reisen v Günter Guni (C-278/08)
3. Netherlands: Portakabin v Primakabin (C-558/08)
4. Germany: Eis.de GmbH v BBY Vertriebsgesellschaft mbH (C-91/09) (BANANABAY)
5. Potentially UK: Interflora Inc v Marks and Spencer plc [2009] EWHC 1095 (Ch)
8b. Six sets of Issues
1. Threshold question: Is D’s use, ‘use as a TM’/’use likely to affect the functions of a TM’? (Invisible use etc)
2. Double Identity infringement3. LoC infringement4. ‘Dilution’ infringement (Unfair Advantage)5. Defences (TM Law; ISP host safe harbour)6. Residual Role for Unfair Competition Law,
or full harmonisation via TM Law?
9. Double Identity
Art 5(1)(a) TMD. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade:
any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered;
9a. Purpose of this Provision? Advantage: no need to prove confusion Aimed at counterfeiters; presumed
confusion? (e.g. TRIPs) Or ‘absolute’ protection? (e.g. Benelux)
References: Invisible use, so is this ‘use of an
identical sign’ at all? If use is visible but under sponsored
links section, is confusion still presumed?
10. Likelihood of Confusion Test in Art 5(1)(b) TMD: (i) Same/similar
signs; (ii) same/similar g/s; (iii) LoC factors (distinctiveness, consumer sophistication etc)
Reference: Sponsored link context excludes LoC?
Online search behaviour (Goldman etc) Real world supermarket behaviour Initial Interest Confusion; Formalistic, box
ticking to presume confusion? Or continue to anchor the test on contextual
consumer interests and behaviour?
10a. Search: A Complex Process
Goldman ‘Deregulating Relevancy’ (2005)
Stage 1: Objective Formulation (buy something, weather?) Stage 2: Search Provider Selection (search, DNS, click link) Stage 3: Keyword Selection (poor, domain expertise) Stage 4: Search Stage 5: Results Evaluation (preview of filtering content; judging
relevancy is complex; topicality; used to some sorting; educative feedback)
Stage 6: Decision (explore results v new search/engine) Stage 7: Investigation (iterative; on track?; associative learning; ltd.
retracing costs) Stage 8: Objective Satisfaction
NB: Searchers can change provider/keyword at various stages
10b. Inferring Searcher’s Objectives from Keywords - Complex1. Searchers do a poor job of selecting keywords2. Furthermore, Objective Opaqueness – need
contextual clues for meaning (linguistics) e.g. ‘Orange’ or ‘culture’
3. Assuming TM used as signifier for a product, search = request for Pre-purchase (reviews, competitors’ products), Purchase (best price including 3P vendors), Post-Purchase (support, repair, accessories) or Community (clubs) info?
4. Or seeking news on company – employment; investor info; supplier info; general news.
5. Or seeking a 3P with the same TM; dictionary use; place name; typo etc
6. Or using TM as proxy for products
So a range of uses of the trade mark
11. Dilution – Unfair Advantage Cluster of 3 actions in Art 5(2) TMD: detrimental to
distinctive character (blurring); detrimental to repute (tarnishment); takes unfair advantage of DC or R (free riding/unfair advantage)
We live in a world of borrowing & copying So is any advantage/benefit caused by referential
use unfair, or does the advantage have to be harmful to P’s well known mark?
References: Does sale of keywords by search engine violate these provisions? Both search engine and advertiser are benefiting, but is this unfair?
Does purchase of keyword by advertiser constitute UA or are other factors required?
What about purchasing deliberate misspelling keywords? (Do you mean…)
12a. The facts Bellure legitimately
manufactured smell-alike perfumes
Used (a) comparison lists and (b) allusive names and packaging for its products
No LoC – different brackets of consumers; vast difference in prices
Attempt: signal qualitative equivalence of scents
Comparison lists and double identity
Packaging and UA
12b. Double Identity
Provision not based on presumed confusion
Any use which affects the functions of a trade mark (whether humble or renowned) is caught by double identity
When is the image/advertising function affected?
How does an average TM have an ‘image’?
12c. Unfair Advantage Regarding the use of allusive packaging and
names by D, mere free riding is sufficient. No need for identifiable harm.
Advantage: transference of an attractive image (assumed from existence of image and link between two signs)
Unfair: Free riding on P’s investment
So protecting investment in image, to the exclusion of any analysis of consumer interest
Today the EU, tomorrow…? Cautionary tale? Editing out the consumer
from TM law
Why the more extreme Functional approach? Ahistorical reboot of EU TM law in 1989
(a) political compromises in legislative drafting; (b) compromises in adjudication (single opinion; no dissents); (c) History – Civil law interpretative method
Geographical scope of EU TM law (CTM, TMD & 27 members)