A big Thank You to everyone who entertained Tim and/or me at the many receptions. Toronto does
catering very well indeed and our Canadian hosts had pulled out the stops to
ensure we saw the city in its best light.
Now its hard to get onto the topic of trademark law at a professional conference like this, but there are those who are genuinely interested in the field and amongst them the concept of the famous mark kept cropping up.
The Canadian firm Johnston Wassenaar LLP even had the exceedingly good idea of theming their reception round some of the notorious Canadian cases in this field - giving its guests for example the opportunity to review genuine barbie® dolls while debating how the Canadian Supreme Court will decide in the final appeal from the decision in Mattel, Inc. v. 3894207 Canada Inc. where an opposition to register a barbie's logo for restaurant services has failed for want of likelihood of confusion. There was also plenty of pink panther® merchandise too as the rule that there must be a connection between the goods was established in United Artists Corp. v. Pink Panther Beauty Corp., It all sounds very reminiscent of the requirement that the ECJ made in the Adidas v Fitnessworld case in October 2003 for a link to be formed in the minds of the relevant public. In that case it was a link between the mark and the alleged infringing sign. The Canadian cases have looked for a link between the goods. The session during the conference on Tuesday morning on International Dilution Protection was more valuable for the preparation but could have been improved by a European viewpoint.
In this interesting field where brand owners naturally want as much protection as possible so that no one gets a free ride on their hard won reputations, the courts have to ensure that other traders are not overwhelmed in the process. Cases here can be won and lost by good evidence preparation and presentation. If the case is made out that there is believable damage to the brand, the claimant may win but cases like this fall if the facts are left to speak for themselves.
On 2 June 2006 the Canadian Supreme Court finally issued its decisions on the Barbie case and Veuve Clicquot. INTA intervened in the latter case because it addressed the quasi-dilution provision introduced into Canadian law in 1954 - way ahead of the corresponding European and US provisions. The Canadian law says:
22. (1) [Depreciation of goodwill] No person shall use a trademark registered by another person in a manner that is likely to have the effect of depreciating the value of the goodwill attaching thereto.
The press reported the loss by the brand owners but are they decisions on their specific facts or do the judgments develop, clarify or destroy the added protection that a famous mark owner can expect. In my humble opinion these judgements are extremely helpful in reconciling the differences between the US/ Canadian and European provisions and recognising the virtue of this type of protection. This was a case lost at first instance on the facts. They had the opportunity then to lead evidence that consumers would make a link between CLIQUOT as the name of a clothes store and the champagne brand. However the first instance judge held:
In my view a consumer who saw the word “Cliquot” used in the defendants’ stores would not make any link or connection to the [plaintiff’s mark].
Their case was doomed from then on. The Canadian court but look for more in depth comment in the specialist IP Press.
Down in the bowels of the Convention Centre an area of theatres and meeting rooms echoed mainly to silence. The Review of ECJ decisions was popular and Wednesday's US review kept a reasonable number of delegates busy but as usual many delegates boasted they had not attended any. This year there were Workshops - attendance limited to 150 so this probably discouraged some - which did provide an interesting opportunity for participation, previously only offered by the Table Topics that come at an extra charge.
Regular members (in-house trademark counsel) demand an opportunity to meet, entertain and educate their external counsel. A three hour briefing beginning at 07.30am on Sunday was apparently the price of being on one member's rosta. It might have been unchristian timing but it did mean that there was less time for their counsel to have acquired a permanent hangover. INTA does not want its Regular members to meet business developing lawyers unless they choose to visit the exhibition halls and this year arranged a private reception for them so they could receive some benefit from the registration fee without any risk.
The Exhibition stands were once more ranked by many attendees by reference to the free gifts on offer. Even the standard INTA bags for delegates had run out by the time I went to collect mine on Monday but there were plenty of alternatives in the exhibition hall. I now have a beautiful shimmering yellow silk bag and Chinese firm Lehman Lee will have an advert walking round London for some time to come. As you can see from the photo above, OHIM had T shirts to give away but when I had ironed mine, it proved to have the wrong url on the back.
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18 July 2006
