The Authors' Take - For a clarification of the concept of similarity - Critical review of European case-law regarding infringement of a mark with reputation

For a clarification of the concept of similarity - Critical review of European case-law regarding infringement of a mark with reputation

by Louis Louembé, Pierre Massot, and Mythili Thaya

What is similarity between signs? If no one asks us, we know what it is. If we wish to explain, to him who asks when elements of resemblances are sufficient for a sign to be considered similar to a trade mark with reputation, we find it far more difficult! This is the paradox of trade mark lawyers put in the words of Saint Augustine (surely for a more philosophical question). Although more practical, the question of the similarity of signs is of the utmost importance to defend efficiently trade marks with reputation against free-riding.

Indeed, when a trade mark is well-known, it is sufficient for the sign in dispute to repeat a characteristic element of the trade mark with reputation, however minor it may seem, to trigger a mental association with it, as demonstrated in the famous "Master" case (judgment of 11 December 2014, Coca-Cola, T-480/12). It is therefore important to have a method of assessing similarity between signs sufficiently thorough to take into account apparently minor elements but which can be sufficient to create a likelihood of association because of all relevant factors (such as of the reputation of the trade mark, the identity of the products and services offered, etc.).

Our article aims at demonstrating that European case-law is not satisfying in this regard. Indeed, the CJUE has initially modelled the method of assessing similarity in the case of infringement of a trade mark with reputation on the method designed to search for a likelihood of confusion. As a consequence, it excludes any consideration of reputation at the stage of assessing similarity and encourages consideration of the overall impression produced by the signs. Although the CJEU has attempted to make certain adjustments, the method of assessing similarity in relation to trade marks with reputation remains unsatisfactory and a source of uncertainty in the case law. It is also inconsistent with the case law on protected designations of origin, even though the logic governing these two systems is similar. We conclude that the method of assessing similarity in the case of infringement of a trade mark with reputation should be reviewed and defined with regard to its own purpose, i.e. identifying elements of resemblances sufficient to create a mental link between signs, and not a likelihood of confusion.

[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). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Comment on Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (2d Cir. March 26, 2021)

Comment on Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (2d Cir. March 26, 2021)

U.S. Second Circuit Court of Appeals tames “transformative” fair use; rejects “celebrity-plagiarist privilege”; clarifies protectable expression in photographs

by Jane C. Ginsburg

In Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 2021 U.S. App. LEXIS 8806 (March 26, 2021), the Second Circuit reversed the SDNY’s grant of summary judgment that Andy Warhol’s silk screen adaptation of a photographic portrait of entertainer Prince was a fair use. The Second Circuit’s decision retreats both from its prior caselaw’s generous characterization of artistic reuse as “transformative,” and from the outcome-determinacy of a finding of “transformativeness.” The court also provided an important explanation of copyrightable authorship in photographs.

Lynn Goldsmith's photograph (L);
Andy Warhol's Prince (R) 

Like other recent decisions, this judgment may signal a taming of “transformative use.” Prior caselaw, particularly in the district courts, seemed to accept almost any alleged new meaning or purpose, or added expression, as “transformative,” and then, having racked the first fair use factor into the defendant’s column, lined up the other three to conform to the first. Appellate courts now may be curbing this enthusiasm, both by adopting a more critical assessment of alleged transformations, and by reviving the independent importance of the fourth factor, market harm. In emphasizing the impact of the defendant’s use on the plaintiff’s ability to license derivative works, the Second Circuit may have begun to redress Cariou’s derogatory treatment of the art world proletariat. The court recognized that depriving photographers of licensing markets, including markets for using their works as “raw material” for other artists to stylize, disserves the overall goal of copyright to promote creativity by enabling artists to make a living.

Furthermore, the court’s exposition of protectable expression in photographs should reassure photographers, particularly photojournalists, whose art consists largely of knowing how and when to seize the moment. Against the contention that such images merely convey a reality the photographer did not create, the court’s emphasis on “the image produced in the interval between the shutter opening and closing,” (at *37) recognizes that “the readiness is all.” (Shakespeare, Hamlet V.2).

[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). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Preclusion Due To Tolerance: Conditions For Applying The Acquiescence Rule In Trade Mark Law

Preclusion Due To Tolerance: Conditions For Applying The Acquiescence Rule In Trade Mark Law

by Michal Bohaczewski

The article analyses a rule of the EU trade mark law referred to by the legislature as ‘acquiescence’. The provisions on acquiescence provide for a period of preclusion for filing an invalidation or infringement action against a later registered trade mark which has been used on the market, provided that the proprietor of the earlier right tolerated that use for 5 successive years. 

The study first examines the prerequisites for the commencement of the period of preclusion resulting from the jurisprudence of the Court of Justice of the EU. In particular, the author refers to the requirement of knowledge by the proprietor of the earlier trade mark of the use of the later mark which, in some cases, in the absence of evidence of direct knowledge, may be deduced from the circumstances of the case. 

The article further analyses the conditions which need to be fulfilled for the period of preclusion to expire. The author raises the issue of the form in which the proprietor of the earlier right should oppose the use of the later trade mark in order to exclude his acquiescence. This matter of major practical importance is currently subject to a question referred to the Court of Justice for a preliminary ruling (C-466/20). 

The study also examines the relationship between the preclusion due to acquiescence and the ‘peaceful coexistence’ of the trade marks as a factor to be taken into account in the assessment of the likelihood of confusion between the signs, since prima facie the scopes of application of both rules may seem to overlap. The author concludes however that in reality there is little room for an overlapping between them.

[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). The full text of this contribution will be made available on Advance Access soon]

The Authors' Take - Trademarking “COVID” and “Coronavirus” in the United States: An Empirical Review

Trademarking “COVID” and “Coronavirus” in the United States:

An Empirical Review

by Irene Calboli

Since its global debut in early 2020, the COVID-19 pandemic has led to a tsunami of trademark applications including the terms “COVID,” “Coronavirus,” and other medical and pandemic-management related terms. In this Article, I examine the applications that have been filed with the United States Patent and Trademark Office until the end of 2020. In particular, I present a comprehensive set of data regarding the products for which the applications have been filed, the type of filing entities, the legal basis for filing, and the date of filing throughout the relevant period. Based on these data, the COVID-19 pandemic led not only to a large number of filings for medical and pandemic-related products, but also for unrelated and promotional products. Individuals and small businesses were the largest groups of filers, and over two thirds of the applications were based on intent-to-use rather than use in commerce. The number of filings closely mirrored the development of the pandemic during the various months of 2020. In addition, when compared with previous filings for signs including terms related to past sensational events, including pandemics, the numbers of “COVID-19 related” applications were much higher than any previous filings. This confirms the catalyst effect of the COVID-19 pandemic also on the trademark application system, even though a large number of these applications may ultimately not be registered as several signs may be found to be generic or descriptive—in particular for medical and pandemic-related products—or deemed not to function as trademarks—for example if they are used as ornamentations on promotional products. The signs may also be found to be deceptive if they imply a specific cure or solution, when this may not be accurate. Still, the data presented highlight several interesting aspects of the phenomenon of “filing sensationalism,” even though it remains difficult to understand what triggered this large number of filings precisely with respect to the COVID-19 pandemic--a time that we all hope to put behind in the nearest future.

[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). The full text of this contribution will be made available on Advance Access soon]