Trade mark law may be contained in statutes, but judges are the ones who interpret the statutes. Judges are also the ones who eventually decide whether one trade mark is confusingly similar to another. It is these factors that make the “Question the Trade Mark Judges” event that recently took place at University College London so fascinating for anyone interested in trade marks.

The event was chaired by one of the best-known IP law judges in the world, Sir Robin Jacob of the UK. Sir Jacob was joined by judges and trade mark hearing officers from the UK, Italy and Europe’s highest court, the Court of Justice of the European Union (the “CJEU”). Below is an overview of some of the key issues discussed at the event.

Advocacy

The judges agreed that good advocacy is important in trade mark cases, but that it’s rarely decisive except perhaps in very finely balanced cases. The judges were, however, keen to point out that they value legal representation, something they are reminded of whenever they hear a case where there is no legal representation. Judges particularly appreciate being presented with well-researched and well-reasoned legal submissions in cases where there’s little or no jurisprudence.

Unsurprisingly, advocacy seems to play a greater role in UK courts than in continental courts. This is important for those in South Africa, because the South African legal system is far more akin to the English system than those in continental Europe.

Although some judges maintain that they aren’t swayed by advocacy style, some of those on the panel conceded that they may subconsciously pay a little more attention when a “rock star” lawyer appears before them. There are conflicting views as to what, if anything, can be read into the fact that a “heavyweight” is appearing in court. Can one conclude that a well-known lawyer’s case must be right, because no hotshot would risk damaging his or her reputation by taking a losing case? Or can one assume that only confident, well-known lawyers take on difficult cases?

When it comes to oral submissions, short and sweet is definitely the way to go. In fact, when it comes to the CJEU, lawyers have a mere 15 minutes to say what they have to say, something that the UK representatives on the panel found disagreeable. The CJEU judge on the panel had this advice: don’t simply repeat what’s in your papers, bring something new and fresh to the hearing.

Judges

The issue of whether or not specialist IP law judges are necessary is a hot topic in many countries, including South Africa. Some on the panel said that it is unrealistic to expect to have trade mark specialists on the Bench and, rather, what is important in the selection of judges is diversity. An English judge on the panel said that, in his view, a judge needn’t be a specialist to hear trade mark cases, pointing out that some of the best UK trade mark judgments of recent years have been handed down by a non-specialist judge, Lord Justice Neuberger. He did, however, suggest that a non-specialist would struggle with patent cases.

Hard and soft IP

A topic of much debate, especially in law firms, is whether trade mark law is easier than patent law or, as it was framed here, whether the distinction that seems to exist in the UK between “soft IP” (copyright, designs and trade marks) and “hard IP” (patents) is fair and accurate? The judges on the panel did not like the distinction much, and one suggested using the terms “creative IP” and “inventive IP” instead.

An interesting observation by one judge on the panel was that whereas patent cases tend to be more difficult, factually, than trade mark cases, they also tend to be easier, legally. The judges felt that it was hard to say which form of IP was the most valuable, especially as copyright is growing in importance due to digital technologies.

The role of trade mark law

Why does trade mark law exist? Is it to protect the consumer from confusion or is it to protect the assets of companies, in this case, their brands? The judges agreed that there has been a shift over time and that although trade mark law may have originally served a mainly public role, the emphasis now seems to be much more on the rights and interests of brand owners. A UK hearing officer on the panel suggested that the two functions can co-exist, and that the increased trade mark owner-centric approach needn’t detract from consumer protection.

It is now clear that there can be trade mark infringement without consumer confusion. One example of this is that trade mark law now provides remedies against dilution and tarnishment of trade marks in cases where there may be no consumer confusion at all. This led to a discussion on whether issues like dilution and tarnishment should rather be dealt with through other areas of the law, such as competition law. One judge on the panel found it odd that in some countries trade mark law can be used to stop the parallel importation of genuine goods, another situation where there is no consumer confusion.

Parody

There was a discussion on whether parody should be recognised as a defence to trade mark infringement. All of the judges on the panel agreed that some parody defence is necessary and that it is a question of balancing rights: property rights and rights relating to freedom of expression.

Unsurprisingly, what is possibly South Africa’s best known trade mark case, Laugh-It-Off v South African Breweries(the Black Label/Black Labour case), came up in the discussion. In this case, the Constitutional Court recognised the right of a parodist to produce T-shirts bearing a logo that looked like the Carling Black Label logo to make a point about labour practices in apartheid South Africa. The UK judge on the panel said that this was a good example of a case where trade mark rights had correctly given way to freedom to make political statements.

While there is quite a bit that those in South Africa can take from this event, it is good to know that South African jurisprudence contributed to the discussions too.

Delene Bertasso

trade mark attorney senior associate IP

[email protected]

cell: +27 83 399 6172