The event was chaired by IBIL’s The Rt Hon Professor Sir Robin Jacob and included a panel of distinguished judges:
Paolo Catallozzi (Judge of the Enterprise Court of Rome)- The Hon Mr Justice Carr (High Court of England and Wales)
- Judge Sir Christopher Vajda (Court of Justice of the European Union)
- Oliver Morris (UK Intellectual Property Office Senior Hearing Officer)
Proceedings started with Taylor Wessing’s Roland Mallinson giving a brief welcome on behalf of MARQUES and making his annual plea to the audience to contact the MARQUES Amicus Curiae Team about interesting cases that might benefit from an amicus intervention by MARQUES.
Over the course of the next hour and a half, the judges answered a variety of questions in a lively discussion moderated by Sir Robin Jacob. As ever, their answers were both enlightening and entertaining. This was followed by a drinks reception in the UCL main building.
The questions asked and answers given are reported below:
Question 1: Can you think of a case in which you have seen advocacy style triumph over substance? Or put another way, if a case is finely balanced, how influential to the outcome is the oratorical skill of one advocate over their adversary?
All of the judges felt that, while they had seen many skilled advocates in action over the years, they had rarely seen style triumph over substance. In particular, they considered it unlikely that even the most skilled advocate could turn a losing case into a winning case (although poor advocacy could potentially turn a winning case into a losing one). Where skilled advocacy could make more of a difference was in a finely balanced case, since such cases inevitably turn on fine margins.
Judge Vajda also made the point that written advocacy continues to be very important in the CJEU. He explained that, in cases where the Court has requested an Advocate General Opinion, the judges do not discuss the case until after the AG Opinion has been issued. Therefore, there can be a long gap between the hearing date and the date on which the judges of the Court consider the merits of the case. In such cases, the AG Opinion and the parties’ written submissions can take on more significance than the oral submissions made at the hearing.
Question 2: Can a maximum of 15 minutes of oral submission in the highest courts to which anyone can appeal (in Luxembourg) really allow justice to be done fairly? Should the English courts take a leaf out of the CJEU book on this, or vice versa?
It was generally agreed that what works for the General Court and CJEU would not necessarily work for the English courts in all cases. In particular, while short, focused hearings worked very well when considering discrete points of law, this would not necessarily work at first instance when national courts had to deal with questions of fact. Cross-examination of witnesses, for example, often plays an important role in establishing questions of fact at trial, which is something that the CJEU does not have to deal with.
That said, the judges were in favour of courts taking an active role, where possible, in ensuring that neither oral nor written submissions were excessive in length. Mr Catallozzi explained that written submissions in Italian IP cases can be extremely lengthy, and that there had been recent efforts to keep such submissions to no more than 20 pages in length.
In the particular context of the General Court and CJEU, it was agreed that the time limits were helpful in keeping the oral hearings focused, particularly since those courts see a variety of advocates of differing styles from different EU member states. The fact that judges in those courts also direct the oral hearings by asking questions of the advocates was also considered to be a positive feature of those proceedings.
Question 3: Does the panel agree there is merit in having a judicial recruitment policy in Luxembourg - for at least the General Court - that values pre-existing trade mark expertise? This is bearing in mind that, for almost 20 years, more than 30% of the cases handled by the General Court are trade mark cases (in fact 44% in 2015) and yet none of the 75 General Court and CJEU judges or 11 Advocates General appear to have had any material professional background in trade marks.
The panel agreed that there were pros and cons of having specialist judges for trade mark cases.
On one hand, given the volume of trade mark cases heard by the General Court, it would be helpful to have specialist judges. The panel also thought it was worth considering whether more General Court and CJEU judges should have litigation experience, as most English judges do. The prevailing view was that having IP specialist judges would increase the efficiency of the process, since they would already be familiar with the relevant principles of law that needed to be considered.
On the other hand, the panel felt that there was value in having non-specialist IP judges involved in trade mark cases. They agreed that trade mark cases were not the same as patents cases, where it was more important for judges to have the requisite technical knowledge. Mr Justice Carr pointed out that, from a UK perspective, many of the best trade mark judgments had been made by non-specialists. Therefore, efficiency aside, looking at it qualitatively there may be value in having trade mark cases decided by judges with a variety of backgrounds.
Judge Vajda explained that it was likely that the General Court would soon have more specialist IP judges, since each member state would soon be able to nominate two judges (rather than one) to the General Court. The likely effect of having more judges was that there would be some degree of specialisation, and there could one day be one or two chambers of the General Court with greater trade mark experience than others. This would depend on which particular judges were nominated by the member states and the level of interest in specialisation.
Question 4: The shape of a London taxi was recently held to be an invalid trade mark because the shape added substantial value to the goods. Now that this adding-value rule has been extended to any characteristic of a mark, how do the judges see this working in practice? Don’t all famous brand names add “substantial value” to their goods? Isn’t that what all brand managers strive for with their massive advertising spends? If so, aren’t all iconic brands in jeopardy from this amendment?
It was felt that the courts had been consistent in the message that they do not want to protect the value of the shape of goods by means of trade mark law. The growing focus on design rights and copyright all suggested a move away from trade mark protection.
This was not necessarily inconsistent with the expansion of the “adding value” rule to extend to characteristics other than shape. The panel all recognised the concern that, if the principle was taken too far, many characteristics could be considered to “add value” to a recognised trade mark. The difficulty was in deciding whether a shape or other characteristic actually added value to the goods – in which case the mark may be invalid – or whether it was simply the case that a particular trade mark had become a famous brand. For example, the shape of a cut diamond (as opposed to an unpolished, uncut diamond) clearly “added value” to those goods, but that did not mean the shape was famous as a brand.
On balance, the panel agreed that the extension of the “adding value” rule would not necessarily affect huge numbers of trade marks. In most cases, word marks for example would not add any intrinsic “value” to goods to which they were applied. Even where the trade marks had become well-known, they would only add to the “trade mark value” of the goods and not the intrinsic value of the goods themselves.
The difficulties would come in borderline cases. For example, a member of the audience suggested that it could be difficult to assess whether the use of a celebrity name as a trade mark “added value” to the goods to which it was applied, since the name would appear to have inherent value given its association with a particular celebrity. Mr Morris also used the shape of the Volkswagen Beetle as an example of a shape that was originally considered unattractive (at which point, it could not have been said to be adding value to the car) but which, over the years, became iconic. The difficulty in these kind of cases would be disentangling the trade mark value from the way a product looked.
Question 5: Do you see trade mark law as primarily a protector of consumer interests or of business interests? Has the balance changed during your judicial career? If you could, would you like to steer a change to that balance either way?
It was agreed that there had been a shift in trade mark law towards the protection of business interests in recent years. This was because of the way that trade mark law had developed. A trade mark was originally considered to be an indicator of origin and the protection of trade mark rights ultimately prevented consumer confusion.
However, trade mark rights can now be relied upon in cases of double identity (use of identical mark for identical goods/services) where there is no need to show a likelihood of confusion. Rights holders could also take advantage of the extended protection for marks with a reputation – again, where there was no need to show a likelihood of confusion. These “unfair advantage” type cases were only justified from the perspective or protection the economic value of the trade mark as an asset.
Some members of the panel had difficulty with the extended protection cases; Mr Justice Carr, for example, questioned whether tarnishment or blurring of a mark with a reputation could really exist if there was no likelihood of confusion. He discussed whether such cases should be limited to situations where the trade mark owner could show actual damage.
Ultimately, though, although the panel felt that there had been a shift towards the interests of businesses, they did not feel that the issue was binary, or that there had been a huge negative impact on consumers. All trade mark cases were a question of balance and, in many cases, the protection of business interests was not bad for consumers since it prevented confusion and free-riding in the marketplace.
Question 6: Have the references from the UK courts and the involvement of UK advocates been a force for good in Luxembourg or a complicating factor?
The panel felt that references from UK courts had been a force for good. Judge Vajda in particular stated that his colleagues in Luxembourg always considered English references to be extremely well done. He noted that this input from the English courts would be missed post-Brexit.
It was generally felt that the way a reference is put together was very important; the panel had a preference for keeping questions short and focused in order to make the most of a reference to Luxembourg. There was no doubt that in some cases, references could be lengthy and have multiple parts, at which point they were likely to be a complicating factor as well as a force for good.
Question 7: Ireland’s official EU language is Irish and Malta’s is Maltese, so it seems there may be a risk that, post-Brexit, English will be dropped as a working language for the EUIPO and CJEU. Do the judges consider that not having EU decisions readily accessible in English would be detrimental to the future development of UK law?
The panel thought it would be a pity if EU decisions were no longer readily accessible in English. However, since the majority of hits (as much as 90%) on the Curia website are currently for the English-language versions of decisions, they felt it was unlikely that English would disappear.
Question 8: One of the least heralded of this year’s reforms was the abolition of the EUIPO’s power to require a disclaimer. In reality, the power has hardly ever been used. Can a disclaimer not serve a useful purpose of discouraging registrants from bringing clearly hopeless infringement claims relating to purely descriptive elements within complex marks? Is it not helpful for those seeking to clear marks to know what they cannot be sued for?
The panellists could see the benefit in having a disclaimer, but recognised that there may be practical difficulties if they became widespread. Reviewing hundreds or thousands of disclaimers (some of which would be complex) could significantly impede the efficiency of the examination process. If disclaimers were to be adopted, there needed to be a way to have a balance between the burden on the office and on the registrant.
Question 9: Is it a misnomer for trade mark, designs and copyright law to be referred to as soft IP? Can you think of a better collective term? Which is the hardest IP area, including patents?!
It was felt that soft IP was a bit of a misnomer, to the extent it suggested that trade mark, designs and copyright law was not complex or difficult. The panel agreed that trade mark law could look easy, likely because it often concerned consumer brands which people had heard of, but in reality it could be very complex. Indeed, the legal issues could be “harder” in trade mark and copyright cases than in patent cases – many of the legal issues in patent law were settled, and it was the technical issues that made the cases complex.
Ultimately the panel were not convinced that it was necessary to have particular labels for the two “types” of IP law. However, if we were to label them at all, then soft versus hard could be quite misleading. It might be preferable to go with something like “creative” versus “inventive” or “innovative”, although of course there would always be overlap between the two.
Question 10: Given that many brands benefit from copyright protection (for which there is now such a defence), should there also be a parody defence to a trade mark infringement claim?
The judges thought that issues of parody were coming up in growing number of trade mark cases. For example, Mr Catallozzi noted that there had been a number of such cases in Italy. The courts had a difficult balance to strike here, between the rights of the trade mark owner and freedom of expression and the freedom to carry on a business.
The other panellists also discussed the application of such fundamental rights. They referred as an example to the South African trade mark case where the mark CARLING BLACK LABEL was replaced with BLACK LABOUR on a t-shirt. The Constitutional Court in that case had ultimately ruled against the trade mark owner on freedom of expression grounds. Therefore, even without a specific parody defence there was scope to find in favour of those using third party trade marks for parodic purposes.
By Josephine Curry, an associate in the London office of Taylor Wessing
Issue 070
Start planning for the 2017 and 2018 Annual Conferences, and other MARQUES events
