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Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Who we all are...
Anthonia Ghalamkarizadeh
Birgit Clark
Blog Administrator
Christian Tenkhoff
Fidel Porcuna
Gino Van Roeyen
Markku Tuominen
Niamh Hall
Nikos Prentoulis
Stefan Schröter
Tomasz Rychlicki
Yvonne Onomor
Trade Marks and Cognitive Science

Although Class 46 is dedicated to European trade mark law (ETML) there is nothing wrong in reporting what seems to be fundamental research in the US on topics that are pretty relevant for ETML as well, if it only where to obtain a comparative law perspective. This is especially true - I think - for the concept of dilution because, although likelihood of confusion is still at the heart of ETML, it is no longer as easy a key to success in most cases as it may have been in the past (especially in the Benelux where there once was no doubt that a proven risk of assocation was already satisfactory to establish an infringement).

ETML seems to be focused more extensively on the arena of Article 5(2) of the European Trade Mark Directive, which provides a surplus of protection for trade marks with a repute. Those trade marks may not be used for similar (as decided by the ECJ in Davidoff) or non-similar goods, if such use takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark, which resembles to some extent the dilution framework used in for example the US.

The ECJ takes Article 5(2) seriously. It seems to be not enough simply to postulate the element of Article 5(2). It should be evident that the relevant public links the disputed use of a trade mark with a repute, a use by the way that bears no risk of confusion, with that trade mark. If there is no such use, there is no case under Art. 5(2). But proving this is not as easy as eating simply the pudding. In the US psychological theories, based on associationist models of cognition, are in use, to explain how a trade mark can be harmed by the existence of similar marks even when consumers can readily distinguish the marks from one another and thus are not confused.

Prof. Adam Kolber of Princeton University reports on his weblog Neuroethics & Law Blog an article written by Rebecca Tushnet (Law, Georgetown), with the fascinating title Gone in 60 Milliseconds: Trademark Law and Cognitive Science (Texas Law Review, Vol. 86, p. 507, 2008). From the abstract (the entire article can be downloaded here) it can be seen that Tushnet argues that the theory of dilution does not rest on sufficient empirical evidence to justify its adoptation. The harm identified in the theory does not come from competitors, but from free speech about trade marked products. On these grounds Tushnet concludes that even a limited dilution law should be unconstitutional. Furthermore Tushnet maintains that the cognitive explanation of dilution brings no good. From the abstract it looks that there is no doubt about that: 'Rather than working like fingerprint evidence - which ideally produces more evidence about already-defined crimes - psychological explanations of dilution are more like economic theories in antitrust, which changed the definition of actionable restraints of trade. Given the empirical and normative flaws in the cognitive theory, using it to fill dilution's theoretical vacuum would be a mistake.' Let's be careful in finding what's on a man's mind......

Posted by: Gino Van Roeyen @ 06.27
Tags: animal trade marks, cognitive science,
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