Trademarks – what are they and why does the law protect them?
Trademarks are a subliminal feature of our everyday lives. As our eyes span supermarket aisles, TV advertisements and roadside billboards we immediately recognise distinguishable logos. The fascinating feature of such trademarks is that they convey far more than merely a company name or identify a product. Trademarks spurn our attention and stir emotions that cause an irrepressible identification with a product within our minds.
A perfect example of this stimulus are the golden arches of McDonalds set against its distinctive red background. The simple appearance of these colours will prompt even children to consider whether they are hungry.
This psychological association of logos, images and feelings form a complex cocktail of contemporary branding. Trademarks can tell us a lot more about a company than just its name. The trademarked Nike swoosh together with its catchphrase “Just do it” instantly conjures a sense of unyielding determination to its audience, and as a result now forms a vital part of its intellectual property which in turns goes to the company’s intrinsic value.
It is ironic to note that the motivational phrase “Just do it” was actually an adaptation of the last words of a death row prisoner by the name of Gary Gilmore who was executed in 1976. His final words were “Let’s do it”. A wily advertising executive pitched an adaption of the phrase to a sports fashion designer in the early 1980’s and the rest as they say is history!
It is clear therefore that these marks are the result of considerable monetary and intellectual endeavour and demand legal protection from unscrupulous counterfeiters. However, not all marks can be protected and the Irish and European Courts have embarked on a detailed scrutiny over the past number of decades as to just what kind of logo a company can call their own.
European & Irish Legislation
As can be seen from the above examples, trademarks can form the core value of a business and naturally therefore require protection in law. Companies will readily expend large resources developing such signs and logos and it would be unfair to permit other entities to copy such marks or leverage against the goodwill they have generated.
Protection of Trademarks in the European Union
The European Union has established a detailed set of laws to protect trademarks across the EU. Article 9 of Regulation (EU) No. 2017/1001 (the “Regulation”) provides that:
- “the proprietor of [an] EU trademark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:
- the sign is identical with the EU trademark and is used in relation to goods or services which are identical with those for which the EU trademark is registered;
- the sign is identical with, or similar to, the EU trademark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trademark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trademark”
Protection of Trademarks in Ireland
In Ireland, Section 14(2) of the Trademark Act 1996 (the “Act”) makes similar provision in the domestic, Irish context.
The battleground in trademark disputes is largely based on people’s perception of competing marks and logos and in particular, whether one sign could be confused with another. More often than not therefore, trademark infringement cases will turn on the concept of ‘the likelihood of confusion’ when one logo is compared to another.
The Likelihood of Confusion
In considering whether there is a likelihood of confusion as to origin, the global appreciation test has been adopted by the Irish Courts. In Cofresco Frishchhalterproduckte GmbH & Co. Kg V Controller of Patents [2000] 1 IR 582 Finlay Geoghegan J referenced a number of European and English decision in concluding that:
“Each mark must be viewed as a whole and should not be dissected for the purposes of a comparison”.
This reasoning is grounded in previous decisions as enunciated by the ECJ in Case C-251/95 Sabel BV v Puma which held:
“The likelihood of confusion must therefore be appreciated globally, taking into account all factors relevant to the circumstances of the case.”
It can be seen therefore that in assessing trademark infringement, one cannot hone in on one particular aspect of a logo which is or may be perceived to be similar to another, when the entire context in which the marks appear makes it clear that the products are not the same or associated and therefore there could not be any reasonable likelihood of confusion.
This assessment of confusion is not however a simple analysis of the Court. In Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [2000] FSR 77 the Court held that the assessment of a likelihood of confusion must be judged through the eyes of the average consumer of the goods or services in question, who is judged to be:
“…. reasonably well-informed and reasonably observant and circumspect”.
This subjective approach has caused issues for courts in the past, with one elderly male English judge rather awkwardly acknowledging the intrinsic difficulty in placing himself:
“Into the position of a 17–25-year-old female living in the north of England”.
Another consideration in assessing the likelihood of confusion is the nature and quality of the goods or services at issue. In Redd Solicitors LLP v Red Legal Ltd [2012] EWPCC 50, Birss HHJ accepted the submission of counsel that a consumer of solicitor’s services will generally be more careful, circumspect and discriminating than consumers of other goods or services. The court quipped that:
“…choosing a lawyer is a more serious undertaking than choosing a breakfast cereal”.
Cregan J. in the Irish Courts made a similar observation in Aldi Stores (Ireland) Ltd. v Dunnes Stores [2015] IEHC 551 where he stated that, in the context of an average consumer purchasing household goods in a supermarket and comparative advertising, they would be:
“…reasonably observant about the nature and quality of the products being compared”.
The ultimate assessment of the likelihood of confusion must take into account the precise context in which the sign which is allegedly similar to the registered trademark was used.
This is evident in the case O2 Holdings Limited & O2 (UK) Limited v Hutchison 3G UK Limited [2008] WLR (D) 193. In that case, O2 were taking action against Hutchinson 3G UK Limited (“H3G”), better known as one of O2’s main competitors ‘3’, for use of ‘bubble images’ to advertise telecommunication services. The court found that:
“The use by H3G, in the advertisement in question, of bubble images similar to the bubbles trademarks did not give rise to a likelihood of confusion on the part of consumers. The advertisement, as a whole, was not misleading and, in particular, did not suggest that there was any form of commercial link between O2 and O2 (UK) on the one hand, and H3G, on the other.”
Invalidation of Registered Trademarks
Article 59(1)(a) of the Regulation and section 52 of the Act set out the grounds upon which a registered trademark may be declared invalid. In summary, these grounds are registration in breach of article 7 of the Regulation / section 8 of the Act (absolute grounds of refusal) or the existence of an “earlier trademark” or “earlier right”. The onus in establishing invalidity rests on the person seeking the declaration. However, the onus switches to the proprietor to establish acquired distinctiveness (where pertinent).
Article 59(1) of the Regulation and section 52(1) of the Act provide that a registered trademark may be declared invalid on the any of the grounds listed in article 7 and section 8 respectively.
Both article 7 and section 8 include the following grounds:
- Trademarks that are devoid of any distinctive character; and
- Descriptive trademarks that consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.
Prohibition of Marks Devoid of Distinctive Character
Article 7(1)(b) of the Regulation and section 8(1)(b) of the Act prohibit the registration of trademarks that are devoid of distinctive character.
The sign in question must possess enough of a distinctive character to be regarded as an indication of trade origin. In Windsurfing Chiemsee Produktions-und Vertriebs GmbH v Boots [1999] ETMR 585, the court held that distinctive character means that:
“The mark must serve to identify the product in respect of which registration is applied for as originating from a particular undertaking, and thus to distinguish that product from goods of other undertakings”.
The Prohibition of Descriptive Marks
Article 7(1)(c) of the Regulation and section 8(1)(c) of the Act prohibit trademarks:
“Which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services”.
In Audi AG v OHIM [2003] ECR 11-5167, the court stated that the prohibition of descriptive marks:
“Pursues an aim which is in the public interest, namely that such signs or indications may be freely used by all”.
Acquired Distinctiveness
The above grounds for invalidity, i.e., non-distinctiveness and descriptiveness, may be overcome where the holder of the impugned trademark establishes acquired distinctiveness, by virtue of article 7(3) of the Regulation and section 8(1) of the Act.
The considerable test to be met in proving acquired distinctiveness is highlighted in Case C-215/14 Societe des Produits Nestle SA v Cadbury UK Ltd, where Advocate General Wathelet stated:
“It is clear from that case-law that it is not sufficient for the applicant for registration to prove that the average consumer of the category of goods or services at issue, who is reasonably well informed and reasonably observant and circumspect, recognises the trademark and associates it with his goods. He must prove that, for that average consumer, who is reasonably well informed and reasonably observant and circumspect, the trademark in respect of which registration is sought (as opposed to any other trademarks which may also be present) indicates the exclusive origin of the goods concerned, without any possibility of confusion.”
Revocation Based on Non-Use
Article 58(1)(a) of the Regulation and section 51(1)(a) of the Act provide that the registration of a trademark may be revoked if, within a continuous period of five years, the trademark has not been put to genuine use in the EU/State in connection with the goods or services in respect of which it is registered, and there are no proper reasons for non-use.
Genuine use was considered by the Court of Justice in Case C-40/01 Ansul BV v Ajax Brand beveiliging BV, where the Court stated that genuine use denotes use that is not “merely token” serving solely to preserve registered rights. Use by a trade mark proprietor must be consistent with the essential function of a mark. The Court of Justice added that when assessing genuine use, regard should be had to:
“All the facts and circumstances relevant to establishing whether the commercial exploitation of the mark is real, in particular whether such use is viewed as warranted in the economic sector concerned to maintain or create a share in the market for the goods or services protected by the mark”.
Conclusion
The law of trademarks is a fascinating and expanding field of law that protects the tangible representations of a businesses’ identity. Indeed, even sounds are now gaining legal protection where an audio logo uniquely identifies the commercial origin of products or services.
Interestingly Darth Vader’s breathing is trademarked by Lucasfilm, a subsidiary of Disney. Star Wars fans may be disappointed to note that the voice of the “dark side” is rather unceremoniously defined as, 'the sound of rhythmic mechanical human breathing created by breathing through a scuba tank regulator.’
This expansion of the doctrine of trademarks is developing in tandem with companies increasing their inter-territorial marketing, particularly across social media platforms. As a result, in our current global economy where brand recognition crosses jurisdictional boundaries, a close scrutiny and knowledge of not only domestic legislation is required, but rather a thorough appreciation of global legal and marketing trends is needed in order to keep pace with the ever-expanding methods of infringement.
