Conference call: A good year for brand owners

“The year 2014 was a good one for brand owners in the English courts,” David Rose, partner at King & Wood Mallesons, tells WIPR. Rose’s comments follow the firm’s annual conference on trademark and copyright court cases from the EU and UK.

The January 21 seminar, A Year in Review: Trade Marks, Designs & Copyright, brought together a collection of speakers who generally agreed it had been a good year for brand owners.

The first speaker, Michael Silverleaf QC, a barrister at 11 South Square, applauded the “finely balanced” decision in Richemont v BSkyB, BT, EE et al from last October at the English High Court. It was notable because it was the first time a trademark owner (Richemont) obtained an injunction in the UK forcing an internet service provider to block a website selling trademark-infringing goods. Previously, injunctions had been obtained only on copyright infringement grounds.

Silverleaf said the “decision is a significant remedy for brand owners to deal with counterfeit goods because it enables them to hit individual websites”. Rose concurred with Silverleaf’s assessment later on, stating that “such orders provide a cost-effective and efficacious route to stopping counterfeit activity—but questions do remain over whether they are a proportionate response”.

The dispute centred on whether the “average consumer” would be confused by Marks & Spencer advertisements that appeared when someone typed ‘Interflora’ into Google. Moody-Stuart pointed out that the definition of the average consumer as “a hypothetical person who represents an appropriate normative standard” that is used by the courts, or as he put it succinctly, a “normal norm”, is a tautology that may mean more headaches for brand owners in interpreting the tests for infringement.Brand owners and trademark lawyers continue to face challenges when protecting their intellectual property. Tom Moody-Stuart, a barrister at 8 New Square, assessed some of the implications of the recent Interflora v Marks & Spencer decision.

Finding ways of demonstrating the reputation of a brand can be tricky for trademark lawyers, who may be dealing with a judge unfamiliar with their client. Moody-Stuart took issue with “courts carrying out the task of defining the average consumer without evidence from consumers, experts or survey”.

Silverleaf went on to discuss surveys as well, noting that judges tend to dismiss survey evidence that shows how well-known a brand is to the average consumer, unless it has “real value”. What “real value” means is an uncertain question when brand owners want to bring trademark infringement claims to court, he added.

"FINDING WAYS OF DEMONSTRATING THE REPUTATION OF A BRAND CAN BE TRICKY FOR TRADEMARK LAWYERS, WHO MAY BE DEALING WITH A JUDGE UNFAMILIAR WITH THEIR CLIENT."

He also tackled the definition of the “average consumer”, which is used by judges as one of the benchmarks for  deciding how popular a brand is. “By average consumer they mean the ordinary consumer,” he said, but this is also not particularly helped by the fact UK and EU courts refer to it in both the singular and plural, an additional challenge for brand owners.

Silverleaf then highlighted the increasing use of non-specialist judges in trademark disputes, which he predicts may create inconsistency in Court of Justice of the European Union (CJEU) trademark decisions. For him, it is important to recognise that “trademarks are complicated” and that if more non-specialist judges take trademark cases, this has to be understood “if we want litigation results to improve and have less uncertainty and unpredictability” in the system.

A busy 2015

Brand owners and trademark lawyers will be hoping for another year like 2014, and Rose says there is plenty to look forward to. He tells WIPR: “A number of interesting decisions are expected in 2015. One case to look out for is the UK Court of Appeal’s decision in Comic Enterprises v 20th Century Fox, which will consider whether ‘wrong way round’ confusion is a legitimate concept in trademark cases.

“At the EU level, the CJEU is likely to hear a reference from Justice Arnold concerning the shape of Nestle’s Kit Kat product and the proper test for assessing acquired distinctiveness,” he adds.

Brand owners can also look forward to the revised Community Trademark Regulation and Trademarks Directive being finalised this year which, Rose says, is “based on a desire to modernise and streamline EU trademark law”. These changes include a reduction in fees for trademark applications covering just one class rather than three, and new powers for customs authorities to seize certain counterfeit goods in transit through the EU.