The participants were:
Introduction: Roland Mallinson – Taylor Wessing/MARQUES
Chair: The Right Honourable Professor Sir Robin Jacob – IBIL
Panel: The Right Honourable Sir John Mummery – former Court of Appeal judge; Amanda Michaels – Appointed Person and Deputy Enterprise Judge in the Intellectual Property Enterprise Court; David Keeling – former Member of the EUIPO Boards of Appeal; Camille Lignieres – Judge at the Tribunal de Grande Instance de Paris
The 2017 MARQUES/IBIL Question the UK Trade Mark Judges event took place on Wednesday 18th October 2017, once again kindly hosted by UCL's Institute of Brand and Innovation Law. There were approximately 130 attendees who listened to the judges' discussion for just over an hour, followed by a drinks reception.
Roland Mallinson opened proceedings with a brief introduction to MARQUES and a mention of the work of the MARQUES Amicus Curiae Team. He invited practitioners to bring cases to the attention of the Team that might merit an intervention from MARQUES whose aim is to defend the interests of brand owners generally. He referred to the intervention made in support of Red Bull before the General Court relating to the registration of its blue/silver two-colour per se combination mark (decision awaited) and that an application for leave to intervene had just been made to the General Court in support of adidas and its three stripe trade mark. The team may also be about to intervene in another case before the CJEU relating to three-dimensional trade marks.
The following questions were put to the panel by Sir Robin. The answers are not attributed to any specific judge in partial application of Chatham House rules.
1. European case law tells us that the more famous a trade mark is, the more likely it is that a variant of that mark will be confused with it. However, some would say confusion is then less likely in practice because the consumer is better able to recall the well-known mark in their mind and so will more readily remark on the differences. Is this another case of the law being divorced from reality?
One judge thought that, like all trade mark questions, this is entirely a question of fact and degree. However, another judge said that this is a counter-intuitive proposition, because the question is not about confusion, what really matters is the question of scope of protection. Genuinely unique, invented and non-descriptive marks – for example KODAK– deserve a greater degree of protection than weak descriptive marks. To this judge, the question boils down to this simple fact: “strong marks deserve a higher scope of protection and weaker marks deserve lesser”. The issue is whether there is a likelihood of confusion that the owner of an earlier right is entitled to complain about. One judge did not wish to engage in this question – he thought that a generalisation of this kind was not helpful, agreeing with the view expressed earlier, that any case in trade mark law, especially when it comes to a likelihood of confusion, is entirely fact sensitive. The judges then discussed the issue of how one can prove likelihood of confusion, particularly in relation to the use of survey evidence, and the fact that neither the UK nor French courts allow this evidence to be taken into consideration.
2. Is there a case for the UK adopting European practices in appointing judges much earlier in their career and allowing them to specialise more?
The judges had a bit of fun with this question, and a debate ensued about age, wisdom and experience. One judge simply said he is not in favour of young judges. He considered that young judges write overly long judgments, often starting from obvious first principles: “young judges are a bit of a pest”. He said they often create work for themselves and others and would be better spent practising law and advocacy and gaining experience rather than creating unnecessary work for older people. Another judge had a different perspective, noting that judges in France start their career much earlier and have broader practice area experience. The judges then turned to the issue of specialisation. Some judges were sceptical about specialisation in trade mark law and expressed the view that “you either have a feel for it or you don’t”. Trade mark law is about common sense and also life experience, although “a bit of shopping” also helps. Another judge agreed and said that competence in more than one area of law can only ever be a good thing.
3. Was it a good thing for the recent EU reforms to limit the own name defence to natural persons and not companies?
One judge said they could think of circumstances when the own name defence was applicable for a company and noted that this could be unfair to a very well-known company that would now be deprived of this defence. All judges seemed to agree that it is reasonable for an individual given a name at birth to be able to use that name, but that it is also reasonable for companies that have been around for a long time doing legal activities to also be granted some sort of acquired rights in that name. An important qualification was that any use of the name must be bona fide.
4. The SLANTS case in the US is resetting the boundaries there on the registrability of offensive trade marks based on freedom of speech grounds. Should we do likewise and abandon absolute grounds of objection based on subjective views on morality and just let the market decide which marks should survive and die in trade?
The SLANTS case concerned disparaging trade marks and whether a registry can and should be refusing to register marks based on public policy grounds. One of the judges remarked that for this case, it was more of a US constitutional law point than a trade mark issue, but also noted that, in principle, why should one be allowed to register an offensive trade mark? What purpose does it serve? It will only cause offence to others, so where is the public benefit in allowing this to happen? Further, some of the judges noted that depriving an applicant of the right to register their seemingly offensive mark does not deprive them of the right to use it, so arguably there is no loss. Therefore, there is no limit to freedom of speech.
One judge recounted a memorable example of this issue occurring in practice in France, not long after the terrorist attacks in 2015, when the slogan “Je suis Charlie” became a national token of solidarity. When an applicant later tried to register this slogan as a trade mark, the French Trade Mark Office refused to register it, on public policy grounds, deeming it inappropriate to allow this phrase to be monopolised, considering the circumstances in which it arose.
One judge recalled an anecdote about Donald Trump, who apparently recently tried to register a trade mark for “Make America Great Again”. This was a phrase that had incidentally also been used by Ronald Reagan some years earlier. Would this mark be deemed offensive?! Another judge shared his experiences involving an attempt to register the phrase “Screw You” on clothing, which was refused for t-shirts aimed at the wider public, but allowed for goods sold in adult-only shops, on account of the fact that customers who frequented adult-only shops were less likely to be offended. This only reinforces the subjectivity of what causes offence. Nevertheless, another judge pointed out that judges are not “moral arbiters” - all that they can do is say to an applicant “you cannot have a trade mark for that good or service”, with full knowledge that the applicant can still go on to use the offensive symbol or phrase in any event.
5. Which judge has most influenced or inspired you and why?
Judges approached this question in different ways, some taking it rather more tongue-in-cheek than others. One judge had no qualms in answering “myself”, whilst others recounted their early role models who helped to guide and shape their careers. One judge praised Lord Bingham as a brilliant advocate, who changed the way he argued his cases, calling him “the greatest judge this country has ever produced”. He was “endlessly courteous” and used the “replay” technique, which this judge now uses. This involves succinctly summarising an advocate’s argument and seeking confirmation that this was their case. To another judge, the most important lesson learned had been to strive for every person they preside over to come away saying that they had received a “fair hearing”. Mr Justice Gray and Lord Atkin were also mentioned. The common thread was that “it is not what a judge decides, but the way the judge goes about it”. The behaviour of a judge in dispensing justice - that's what really counts.
6. To what extent, if ever, could a combination of artificial intelligence (AI) and technology replace judges deciding trade mark cases, perhaps in more “simple” cases?
A common theme discussed by the judges was the fact that a computer cannot take into account the context of the market in relation to the likelihood of confusion on the consumer; nor can it make a comparison of marks on a phonetic, visual and conceptual basis. Perhaps a computer could be programmed to measure differences in phonetic or visual similarity, but surely conceptual comparison is an area that only human judgement can serve? Fundamentally, the judges were in agreement that AI cannot replace the subjective perception of the consumer. Another interesting angle raised by one judge is the decision as to whether or not to grant permission to appeal in the Court of Appeal, which they argued needs human input in determining whether the test “has the appeal a reasonable chance of success?” is met. They claimed that no computer can do this, and so “the human factor is an essential part of the judicial process”.
7. When there is a panel of judges deciding a case, what makes for better quality of justice: where all the judges sign off on one judgment, or where each judge can give their own judgment, with the potential for dissenting opinions?
One judge discussed the position in France, where, as a “prisoner of the system”, there is no choice but to agree with the fellow judges, as there is only one judgment, and no dissenting judgment. Apparently this harks back to the French constitution, where the judiciary is seen as a “mouthpiece of the law”, and must necessarily speak with one voice. Another judge recounted his experiences sitting in the Court of Appeal as a panel of three judges. To this judge, it is better to have a system of law where there is only one judgment, purely in the interests of time and efficiency. After all, as a function of the common law, it is only the judgment that becomes law. Any dissenting judgment is not law, and so what is the point in it? However, another judge pointed out that sometimes the dissenting judgment is later vindicated as being “right”, and becomes law, if it is taken to a higher court on appeal. Another pointed out that, for advocates, dissenting judgments are often helpful to support an argument. An example cited was the strongly persuasive and well-reasoned dissenting judgment of Lord Reed in the Supreme Court Brexit case. Therefore, whilst not necessarily serving any direct purpose in making law, dissenting judgments can have a powerful practical impact, especially where there is such strong reasoning that it can make a fellow judge change their mind. One judge recalled being invited to write the leading judgment on the basis that one of the other two judges supported his view. However, when that other judge saw the dissenting judge's judgment, he changed his opinion and the lead judgment became the dissenting judgment and vice versa. It was added that this did not happen often.
Issue 082
