01 May, 2014

Retrospective - What is a Trademark?

Image and association through that image is a very powerful thing in the success of a product in addition to its sustainability as a strong brand. Trademarks have always aimed to protect that image, functioning as an indicator of certain qualities, value or consistency, giving the customer or client reassurance as to their expectations. Even though arguably self-explanatory or even obvious, what a trademark truly is is often left in the dark to the layman and even some legal practitioners. Trademarks encompass a wide array of possible marks which can be registered in the common law, yet they all share a common purpose in their registration and existence. This purpose was discussed under current EU, and subsequently applying to UK legislation, after the introduction of the EU's very first Directive dealing with trademarks.

The case in question was Canon v Metro-Goldwyn-Mayer, initially dealt with in the German Federal Court of Justice (Bundesgerichtshof) and then referred to the Court of Justice of the European Communities for further clarification in 1998. The case dealt with the mark "CANNON", which was applied for registration by MGM in Germany in relation to films recorded onto cassettes and their subsequent uses in distribution and production for example. MGM's application was then objected to by Canon under the old German Trademark Law (Warenzeichengesetz), arguing that their registered trademark "CANON" would be infringed should MGM be allowed to register the word "CANNON". Initially MGM's mark was rejected by the German Patent Office (Deutsches Patentamt) due to the marks being analogous; however a second examiner at the Patent Office dismissed the initial decision and rejected Canon's opposition for lack of similarity. The case was further appealed to the German Federal Patent Court (Bundespatentgericht), where the Court rejected Canon's appeal, deciding the two marks were not similar. The case was then ultimately brought to the aforementioned Federal Court of Justice, from where the case was brought to the European Court of Justice.

Tony proudly carried his badge
Under Directive 89/104/EEC the Union sought to unify the Member States' approaches to trademarks, under which the German laws were amended. The Directive also applies to the UK, which enacted the Trade Marks Act 1994 to bring their legislation in-line with the EU regulations. Relating to the case, the Federal Court of Justice referred this question to the European Court of Justice: "May account be taken, when assessing the similarity of the goods or services covered by the two marks, of the distinctive character, in particular the reputation, of the mark with earlier priority (on the date which determines the seniority of the later mark), so that, in particular, likelihood of confusion within the meaning of Article 4(1)(b) of Directive 89/104/EEC must be taken to exist even if the public attributes the goods and/or services to different places of origin?"

The question can be seen in simpler terms: would the judiciary have to take into account the reputation of an earlier existing mark (in this case CANON) when assessing the registerability of a newer mark (in this case CANNON), even if the public would understand the different origins of the two competing items bearing their respectable marks? What the European Court of Justice emphasized was the tenth recital of the Directive, which states that "...the function of [of a registered trademark]... is in particular to guarantee the trade mark as an indication of origin". This, in the Court's decision: "...enabl[es] [the consumer], without any possibility of confusion, to distinguish the product or service from others which have another origin", adding that "...it must offer a guarantee that all the goods or services bearing it have originated under the control of a single undertaking which is responsible for their quality". In the Court of Justice's decision, answering the German Federal Court, the earlier mark's reputation has to be taken into account and just the risk of confusion would mean that there is a likelihood of confusion even if the two products have two distinct origins.

A trademark therefore offers a guarantee of quality and origin to the consumer, and has to be protected as such to prevent any confusion to the consumer as to this fact; a badge of origin, as it is often referred to as. Should other marks be allowed to be registered the consumer could be confused, at a quick glance at least. This position has been fully accepted in the UK under the Trade Marks Act 1994, and even in Canada the Canadian Supreme Court in Kirkbi AG v Ritvik Holdings saw that a trademark is "...a symbol of a connection between a source of a product and the product itself"; creating a similar description to what the European Court of Justice did.

As one can clearly see, trademarks offer a unique type of protection and a specific function. The origin of a product or services can be the deciding factor between the consumer purchasing your product rather than the other, and enabling that consumer to fully understand what they are buying is imperative. Trademarks offer this guarantee, protecting both the consumer and the owner of the trademark, making them incredibly valuable to all parties involved.

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