If it ain't broke don't fix it?

This is the Guest Editorial of the June 2015 issue of JIPLP. The author is long-time Editorial Board member Gill Grassie (Brodies).

If it ain't broke don't fix it?

Brands and trade marks can spark passionate emotions in both their owners and consumers. However, both groups have different, and sometimes conflicting, reasons for their strength of feeling, fuelling debate in the context of the ongoing comprehensive review of the EU trade mark system.

Brands are big business. According to the 9th annual edition of Millward Brown's Brandz Top 100, Most Valuable Global Brands 2014, the combined value of the world's most important brands is US$2.9 trillion. Businesses, investing vast amounts in developing and maintaining their brand strategies and protection programmes, are passionate about protecting their trade marks and growing brand value. It is little wonder then that they wish to increase legal protection for trade marks and keep fair user-type defences to a minimum.

In the consumer camp, meanwhile, brands can inspire loyalty, assist in making choices and create a sense of belonging. Is there a need then to better protect the rights of consumers to make free use of registered trade marks in certain circumstances?

The current EU regime around protection of brands and trade marks has not changed significantly since the initial EU Council Directive in 1988 and the Regulation in 1995. Since then the internet and social media have revolutionised the way we interact with brands and purchase products. In consequence, the Commission is conducting a review that aims to modernise the trade mark system in Europe at both EU and national level, re-examining the scope of the defences or exceptions to trade mark infringement.

The review prompted 38 academics to publish last September their ‘Recommendation on Measures to Safeguard Freedom of Expression and Undistorted Competition in EU trade mark law’. They argue that the limitations should be broadened, there being a need to protect fundamental freedoms and certain free uses such as for political and artistic purposes, including criticism, comment and parody, and reporting current events. More controversially, the Recommendation proposes to empower the courts to develop new defences on a case-by-case basis, with no restriction to non-commercial use.

The other side of the debate is encapsulated in an open letter from several trade mark owner associations to the European Parliament Member States Commission, warning against expansion of the exceptions and, specifically, against introducing an exception for parodies and trade marks: such use is only acceptable where the aim is one of “legitimate general interest and not just malice”, while use for commercial benefit should not be allowed.

The current regime already recognises the need for commercial use in ‘use in the course of trade’ for infringement to occur, as well as a lack of honest practices. To the extent that parody, comment etc need to be legitimised, the law already allows these types of uses where there is no confusion as to origin and no commercial use. If trade mark owners believe that such use goes too far, then they can seek redress under the law of defamation.

Article 10 of the European Convention of Human Rights, which guarantees freedom of expression in all forms, including political and artistic, may be invoked in defence to allegations of infringement. Protection thus already exists for the public interest-type use of brands at a number of levels. Arguably these protections are tested regularly in the social media, where the public frequently make their views heard on particular brands with no apparent fear of being sued for trade mark infringement. Social media have also influenced the way brand owners deal with trade mark disputes, often choosing a more gentle approach for fear of a social media backlash that severely damages a brand or customer loyalty.

This begs the question: “Is the status quo preferable to introducing a raft of new exceptions to trade mark infringement?” The latter risks making a complex but relatively functional legal provisions even more complicated, prompting an onslaught of litigation nationally and before the Court of Justice of the European Union. Another unintended consequence, particularly if an open-ended US style fair use or dealing provision is adopted, could be the introduction of a partial law of unfair competition without any thought to proper harmonisation.

If the aim is to balance the rights of brand owners and consumers, it is perhaps in everyone's best interest to leave things as they are? The relationship between the two groups is symbiotic and control of the brand messaging and power is far from being wholly with the brand owners.

To check the rest of the content of this issue, just click here.