Fordham IP Conference 2011: part 4

After a panic-filled dash back to re-re-rewrite his paper tomorrow, IPKat team member Jeremy returned to the fray, coming in at the tail end of a fascinating session on initial interest confusion in trade mark law. The lively panel discussion, chaired by Professor Marshall Leaffer, turned on some of the most difficult areas: the nature and value of evidence of initial confusion, the extent -- if any -- to which proof of damage should be required, the degree of protection to which as-yet unused trade marks should be treated, the special position of initial interest confusion on the internet through the use of another's trade mark as a keyword. tytoc collie looks very much forward to reading the earlier bits of this session when they're published.

With two brains working together,
Eric decided to tackle the deeper
meanings of EU TM law

This session led naturally to the final presentations of the day, by the Kat's old friend Trevor Cook (Bird & Bird) and Marshall Leaffer, when comparing the European and US approaches to protection of trade marks against dilution. Trevor expressed concern that, led by the Court of Justice of the European Union, Europe was making the law up as it went along. He echoed earlier anxieties concerning the over-intellectualisation of the formulation of trade mark concepts, as well as strong academic criticisms of the development of trade mark law, particularly where attempts have been made to claw back some of the arguably over-wide protection accorded to trade marks in some circumstances. The overlap of regular infringement and dilution is one such area of contention. Citing decisions such as L'Oréal v Bellure, Trevor observed that concepts like "unfair advantage" and "without due cause" -- which do exist in European statute law -- receive little attention, while terms that have no legal basis such as "parasitism and "riding on the coat-tails" do.

Marshall Leaffer then took the audience through some 9th Circuit dilution decisions, leading with Visa v JSL Corp 610 F3d 1088 (2010) which affirmed that dilution was a question of fact, not law, and that, where a strong mark such as VISA is at stake, summary judgment is highly appropriate.  Perhaps surprisingly the court accepted that establishing a likelihood of confusion didn't require a plaintiff to produce expert testimony or market surveys: the characteristics of the mark might be relied on by themselves. The parallel existence of the word "visa" as a regular noun with a dictionary meaning did not undermine the word's trade mark meaning: what was significant was the way it was used. Marshall also considered Levi Strauss v Abercrombie & Fitch and the degree of similarity which was needed in order to establish confusion.