Judges:

·         Chaired by The Rt Hon Professor Sir Robin Jacob ("RJ")

1.            Are surveys in trade mark cases (including surveys to demonstrate reputation) dead?

CB:  Surveys are perhaps not dead, but certainly resting ("pining for the fjords" as some might say).  The survey hurdle is certainly high but he was sure there will still be cases with the odd trade mark survey.  Whether and how they are to be used will be scrutinised closely at the case management stage. 

AJ:  There may still be some role for surveys.  But in many cases the reason surveys are brought into cases is to show that black is white.  Questioners load questions to extract the answer they're looking for.  Surveys have a limited role but are still of some use as long as people don't try to prove the impossible.

AC:  A well-executed survey can be instructive, and there should be a place for surveys in appropriate cases.  We have gone too far – strict rules of procedure and execution should be applied.  There are cases where one needs to show a likelihood of confusion and it is difficult to show this now.  Too much emphasis is placed on the judge being able to say what an average consumer would think.  US brand owners are shocked when precedence is given in English cases to witnesses rather than survey evidence.

TW:  He would be upset if they are dead.  United Biscuits v Asda (the Penguin/Puffin case) was won was because of the evidence of witnesses identified from the surveys.  The judges found it useful to have views from real people from the street.

RJ:  In the Jif Lemon case, evidence was adduced of real consumers that had shopped from a stall set up by the claimant's solicitors which was selling the defendant's product.  The customer was asked immediately afterwards what they had bought, with a large number saying a "Jif lemon."  He said that he doesn't believe any court will ignore genuine instances of confusion, even if they are in a survey.  We are different from the rest of the world in that other countries accept any survey stuck in front of them without asking about respondents, questions etc.  This is concerning.

2.            Should registries able to impose disclaimers as a condition of registration?

CB:  The trouble with disclaimers is that he is not sure they help.  Trying to work out what the scope of any right is with a disclaimer is even more difficult than if there isn't one. 

AC:  Originally thought they were a good thing but now thinks we should not have them.  There are going to be lots of marks that have an unregistrable bit on them.  However, a likelihood of confusion test should not be based on an assessment of comparing just those bits if they are the common element in the two marks.  OHIM has tended to apply such a test but the Grand Board of Appeal in Lifestyle Supplies v Ultimate Nutrition (Case R 1462, 2012-G, 18 Sept. 2013) seems keen to reverse the trend, but perhaps almost going too far the other way.   Any comparison is made more complicated with a disclaimer.

AJ:  10-15 years ago, he would have said we should keep disclaimers.  In the trade mark field, there was an assumption that everything not disclaimed had more significance, which caused genuine doubt.  In theory, we don't need disclaimers.  But things haven't been helped with the ECJ and GC applying a somewhat formulaic approach to the likelihood of confusion test, focusing on the distinctive and dominant elements of a complex mark.  More often than not the court is likely to find confusion – this needs to be reassessed.  OHIM said that there is pressure from countries outside the EU because every time there was an opposition, the registration was dead in the water.  This doesn't help the perception of EU trade mark system.  The debate will roll on.  Disclaimers are not the answer.

3.            Since a parody defence is now being introduced to UK copyright law, do we need an equivalent n trade mark law in relation to logos and shapes?

TW:  His general maxim in domain name cases is, "If it makes us laugh, it must be all right."

CB:  can see why you would want this for copyright.  However, for trade marks, it is not clear that a parody would be infringement in the first place.  The problem with these defences is that if you are just lampooning a brand and not in the course of trade, it shouldn't be infringement of a trade mark.  However, if you are causing confusion, even if it's a parody, there should be infringement.

AJ: does not want an exception for parody for trade marks.  Use has to be in the course of trade.  Generally, if you are not in trade, use of a mark as a parody will not cause confusion.  Where there is confusion, one shouldn't be able to claim a defence of parody.  There is already of potential defence if one can show honest use and with due cause.  The courts have effectively equated due cause with fair competition.  The parody defence would cause endless arguments about what is parody.

AC:  where parody is alleged, one must ask does the earlier mark have a reputation; is there a link; is there an unfair advantage; is there detriment?  There are a number of ways in which one could find someone who's having a bit of fun with a parody to get off the hook of trade mark infringement.  If the marks are identical, one still has to show damage to the trade mark function of the mark.  There will probably be no such damage with a true parody.  She is against developing this as a new defence.

RJ:  If there is a parody for trade marks, what about design rights?  "Big companies often have no sense of humour" when it comes to parodies.

4.            One Australian judge recently told both parties in a trade mark dispute to "chill".  Have you ever been tempted to say the same?

AJ:  Does this mean for the parties to chill, or their legal representatives?  He has been more tempted to say it for the latter. When the red mist comes down, sometimes it is better to let it wash over you.  "I have to tell myself to keep calm and carry on."

AC:  The message that is more appropriate is often "get real" rather than "chill."  She has seen appeals where a party has lost for fairly obvious reasons, and then brings a 30-point appeal.  There are some cases where stopping and more thinking would be a good idea.

CB:  Has often been tempted to say this.  Although litigants-in-person get a bad reputation for their behaviour, it is often the lawyers who need to chill.  In the Patents County Court, lawyers think it is obligatory to put on a show for the benefit of their clients.  He often thinks of the Michael Winner phrase "Calm down, dear" and wishes he could say this.  The best thing to do is often to stop saying anything, and let the parties get whatever it is they wish to say off their chest.

5.            Many reported cases involve disputes that you might expect to have settled if the parties had been more reasonable – or made to be reasonable as part of the case management.  Does the panel agree?

AJ:  There are two types of cases where settlement might be possible.  The first type of case is where there is no commercial conflict, but where the parties are co-existing.  This can be achieved with a co-existence agreement.  The second type of case is where one of the parties is obviously going to lose.  It is difficult to indicate to that party how they are on a hiding to nothing and should settle.  The main tool of a tribunal is the threat of costs.  Others include the cooling off period, stays of proceedings etc. Where people ask for a stay, the best way is to give the parties a short period of time and then monthly updates to the court.  This is quite effective. 

AC:  Usually we get papers, set the hearing, then the week before the parties ask for an adjournment.  It is important to ask for reports from the parties.  The idea of a High Court judge asking "can't you just settle?" is difficult because there are often elements to the case that the judge doesn't know about.

RJ:  It is a difficult art trying to get someone to settle.  You can do what Colin has done in some cases and give a preliminary opinion, and thereafter recuse yourself if the case proceeds.

CB:  People do ask for a preliminary opinion.  He has done this about 5 or 6 times, and thinks it has worked in about 4 or 5 times.  He thinks it is a good thing, as it is difficult to encourage people to settle.  The way to do it is to have a mechanism where people can ask the judges what they think.  Often the parties don't get a chance to hear an opinion on the case from someone impartial.  At a Case Management Conference, the PCC procedure allows for a review of issues.  This is effective because it allows you, as the judge, to get into detail.  This means there is more work at the beginning of the case.  However, getting the parties to go into detail at the beginning is a good way for parties to see the strengths/weaknesses of their case and encourages settlement.  "It's not rocket science."

TW:  The vast majority of trade mark cases are resolved out of court but it is difficult to force it.  In one case, the judge, in an effort to encourage settlement, had called both counsel in and said that one party was going to lose within 45 minutes if it went to trial and he would "blow that party out of the water".  The tactic failed and the case went to trial.  The judge did as he said since the claimant was suing the wrong party as defendant.   

6.            Was it helpful or a hindrance that Parliament re-wrote the provisions of the Trade Mark Act, rather than using the exact words of the Directive?

AJ:  So far this is largely irrelevant since we now largely refer just to the Directive.  It probably would have been easier if we had written it out verbatim. 

CB:  Don't know why the Parliamentary draftsman does what he does.  There are two different numbering schemes – it would be easier to use the same numbering system as well as the same words.  This means that judgments can be read by other people in different member states. 

RJ:  It should be the same numbers and the same language.  Copyright is worse: "they are committing crimes against humanity" and it is no good trying to understand it.  Parliamentary draftsmen should be fired or made redundant or pay more attention to what they're drafting. 

7.            Has the Commission missed any opportunities with its planned amendments to the CTM system following the Max Planck report?

AJ:  There are two areas he would have looked at.  Firstly, the lack of a genuine intention to use at the time of application, which is cluttering up the system.  Secondly, it would have been helpful if there was a clear rule on how much use is acceptable for non-use proceedings.  Use in one locality (as opposed to one Member State) is not enough, but it would have been useful for this to be a policy, rather than a judge-made rule.

AC: We should do something to reduce cluttering.  We are the only people who have the requirement of a genuine intention to use.  There is a mess on tackling pre-existing CTMs and how you interpret class headings.  Other people have suggested a 3 year non-use period but Anna is not advocating that. 

RJ:  TMs are about trade.  If you want to use them in trade, that is fine.  If you don't, you should not have it.  The US system is good.  What we are seeing is blackmailers who launch oppositions and expect to be paid off.  Both parties have huge great classes.  There is a love of bureaucracy in saying you don't have intention of use or affidavit of use.  The significance is a loss to the industry.