“It Depends” - Towards Achieving Consistency in International Trademark Infringement Cases

Nadaline Webster,

Of all the perennially hot topics in the trademark world, somewhat understandably, trademark infringement tops the list. That, after all, is the working end of the business and consumes the most time and energy of any trademark professional. Much of the time is dedicated to avoiding infringement or finding infringement. And having found it, rather more crucially, proving it.

In any practice area of law, it is critical to remember that the facts of any particular case are the most important criteria to look at. It is this single piece of information that leads lawyers to so often say “It depends” in response to any question by their clients. While the applicable law is defined and limited, the variation of human activity is infinitely unlimited. It is impossible to know even which law applies without knowing the full facts of any particular circumstance.

The word ‘fact’ means something different in the legal world. On the internet (and in real life too) a person can claim any position or opinion and declare it as fact — quite often by the simple expedient of placing the word ‘fact’ at the end of their soliloquy. Sometimes capital letters are employed to emphasise the power of this single word to create undeniable truth. What we think of as ‘facts’ on an everyday basis are rather more often opinion, bias, prejudice, things we heard with no supporting evidence or things we merely wish were true. Thankfully, the courts set a higher standard. If you are making a claim then that claim will be based on the facts, many of which you will be required to adequately demonstrate or prove.

In an effort to create some sort of predictability and consistency in the treatment of cases, the courts often set out a list of factors or ‘tests’ required. These usually come about as the results of a particular case and are sometimes named after them. The ability of the facts to ‘pass the test’ of these considerations dictates not only the viability of taking the case in the first place but in theory predicts the outcome with some degree of success.

So far, so good. But here is often the point where theory meets reality and experience diverges from expectation. While the tests to be applied are clear and precise, assessing the ability of the facts to pass the tests is entirely subjective. It depends on the viewpoint, insight, interpretation, expertise and experience of the judge or jury in play. And it is not just across nations that consistency seems lacking. Decisions on likelihood of confusion, relative distinctiveness or weakness of marks, etc., vary from judge to judge even within the same courthouse.

The issue of achieving more consistency in trademark related judgements has been long since acknowledged. Proposed solutions include the development of specialised IP courts in many countries. The fundamental underpinning being that the more experience a judge has with trademarks in the commercial world, the greater their understanding of issues in play will be and the more consistent the judgements will become.. Undoubtedly this is true. Or is it?

Across many regions, the process of reaching a decision on any particular set of facts is based on the decisions of similar cases that have gone before. In many fields of law, this approach is effective in deciding the boundaries of acceptable human behaviour, setting the criteria that designates crossing them and what a reasonable punishment might consist of. This approach works well in the context of ascertaining facts and applying the law.

‘Likelihood of confusion’ is the fundamental tenet driving the practice of trademark law internationally. Where two conflicting marks are double identical (in relation to both the marks and the goods & services), it can be stated as a ‘fact’ that a likelihood of confusion exists between the two. Beyond that, judgement enters the world of ‘subjective opinion’ rather than ‘fact’. The further apart the two marks are, the more subjective and reliant on opinion the judgement becomes. Precedential decisions, no matter how experienced the judge, do little to assist. What is required then, is a new approach to ascertaining the facts of the case in the first instance.

It might be usefully argued that what makes two marks confusingly similar is response of consumers to those goods or services. Our marketplaces are busy, fast-moving and ever evolving entities. As technology progresses, our language is progressing faster too with new ideas, words and phrases created on a daily basis. Against that background, does it make sense to attempt to resolve a lack of consistency in assessing likelihood of confusion through human judgement and case law?

Heikki Vesalainen, Co-founder and Chief Architect of TrademarkNow, says not. “I would assert that no, the system should not be based on historical cases. Instead, the system should be based on the principle that two marks shall not be confusingly similar to the public. So instead of modeling the historical cases in assessing whether marks are confusingly similar, we should model the reaction of the public.”

Of course, to an extent, this is already in practice with market surveys being employed in certain cases. When you consider the tremendous volume of data required and the resources needed to acquire such, it is difficult to see how such information could be brought to bear on applications in regional IPOs or routinely across courtrooms. Difficult - but not impossible!

Not so long ago, the ability of artificial intelligence and legal technology to comb through vast quantities of trademark data from hundreds of trademark registries and deliver ranked and analysed results within seconds was just a dream. Today it is a reality. Who knows what tomorrow will bring.

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