Likelihood of Confusion: The Irrational Basis of
Trademark Protection
Of the “likelihood of confusion” (“LOC”) test, Professor Roger Bone
expressed his consternation as follows: “The test is a
mess. It produces bad results, is doctrinally incoherent, and lacks a sensible
normative foundation. It chills socially valuable uses and facilitates
excessively broad expansions of trademark law, and it includes factors that
make no sense as predictors of likely confusion. Most importantly, the test
erroneously assumes that consumer confusion is enough to warrant liability
without regard to the harmful consequences or the moral wrongfulness of the
defendant’s conduct.”
Expansion
of the LOC test dates from the late 1940s and early 1950s. Then, in both the USA and Canada, important
trademarks generally were denied protection unless it could be shown that the parties’
goods were in direct competition. As a reaction to cases where protection was
denied against what we now see as blatant infringements, caselaw gradually at
first, then increasingly expanded the scope of LOC. Such expansion occurred
with fuzzy boundaries, so it is no wonder that many cases are brought today
when the plaintiff’s real motive is to protect against loss of distinctiveness
(i.e. dilution by blurring), in circumstances that do not support an action
based on dilution simpliciter.
So,
how to dial back the scope of LOC without legislative reform? It is submitted
that increased emphasis should be placed on the defendant’s motive. If a guilty motive cannot be inferred from
all the relevant surrounding circumstances, but there is some doubt, the
emphasis should shift to proof of damage or likely damage to the plaintiff, excluding
damage to distinctiveness, which should exclusively be determined in accordance
with statutory dilution law. If there is
no such proof, injunctive relief is not justifiable except in extraordinary
cases, or cases involving blatant infringement or statute-defined dilution.
[This is an Authors' Take post, which provides readers with an insight into current IP scholarship, featuring preliminary comments and thoughts from authors of articles accepted for publication in forthcoming issues of the Journal of Intellectual Property Law & Practice (OUP).]
