Trade Marks: The Essence of Confusion

It is axiomatic to say that Intellectual Property struggles with its own identity and the famous quotation that Schechter made at the start of his work on trade marks exhibits this perfectly^[1]:

‘The fountain-heads of not ungrateful streams of litigation, are accepted as though, like the image of Ephesus, they fell direct from heaven for the benefit of a deserving profession’^[2]

The conceptual basis of the whole of Intellectual Property^[3] is one of the truly interesting areas of jurisprudence because of the tensions within the whole subject. The issue that is being explored in this work neatly ties into this jurisprudential backdrop because issues of confusion over origin of a Trade Mark defeats its very purpose. It developed throughout the 17^th and 18^th centuries in the common law of the UK and the majority of reported cases highlighted that ‘the essence of liability was a likelihood of public deception’^[4]. The idea was that the trade mark denoted a certain origin and was a method for consumers to differentiate substantially similar products; the likelihood of confusion to consumers is one of those in the penumbra of the subject which has dogged the subject since Millington v. Fox^[5] where it was established there was an action in equity even where there was an absence of fraudulent intent the only issue seemed to be that there was de facto deception. The jurisprudence that is covered in this work is intended to analytically assess the courts treatment of the issue of confusion with reference to the whole area’s conceptual background. We must as I outlined above start these considerations with an acceptance that we are in fact dealing with a much larger problem given the multiplicity of background justifications for the whole subject matter. We must understand that Trade Mark is not an area sui generis but plays its part in the network of IP solutions which at an abstracted level has an overarching identity crisis which is merely filtered down into Patent, Copyright and Trade Mark law. Armed with these caveats we will begin our work. The first section of the essay is legalistic and technical and will be a consideration of the case law surrounding the issue of confusion and generally building an understanding of what the courts mean by the concept. The second section will then assess these in a more abstract and jurisprudential manner and we will conclude with some observations about potential reform or suggestions about the way forward.

The understanding of the concept of confusion is so central to the subject of trade mark law because it is concerned with the infringement actions that a Trade Mark owner can take to enforce his right in rem against other competitors. This has been described as the raison d’etre of trade mark law^[6]:

‘…the value of the trade mark system depends on the extent to which the activities of others can be categorised by the trade mark owner as ‘infringing acts’’^[7]

Obviously confusion is not the only infringing act but in order to understand its centrality to the subject we need to have a brief understanding of the way that trade mark law has evolved. The idea of distinguishing marks has a long history^[8] but as I mentioned the law has developed since the late seventeenth century into the current system that we have. The law developed in an ad hoc fashion at common law through the Chancery court until pressure from traders resulted in statutory intervention. The Trade Marks Registration Act 1875 established for the first time a register for trade marks, then the Merchandise Markets Act 1862 made it a criminal offence to forge a trade mark after a while there was a number of consolidating statutes such as the Patents, Designs and Trade Marks Act 1883, Trade Marks Act 1905, Trade Marks Act 1919, Trade Marks Act 1938 and most recently the Trade Marks Act 1994. However, domestic law is only a start throughout the twentieth century as globalisation in commerce became ever more prevalent the layers of sources for trade mark law have increased ten fold. There are numerous international treaties and agreements such as the Paris Convention on the Protection of Industrial Property, Madrid Agreement on the International Registration of Marks, Madrid Protocol, Agreement on Trade-Related Aspects of intellectual Property (TRIPs), Trademark Law Treaty and the European Union’s trade mark harmonisation directive to name a few. The layered nature of this especially given the effective compliance mechanisms within TRIPs and the European Union on member states mean that these sources of law can be very potent and have big impacts on the harmonisation of concepts of the trade mark^[9]. Given there is a multiplicity of sources for trade marks we need to try and understand not only where regulation comes from but more generally understand the historical concerns that have motivated trade mark law and defined its boundaries over the years so that we can fully appreciate the subtleties in the area.

Pickering argues that there are four groups of interests which trade mark law seeks to balance and contemplate: ‘those of the producer…those of his competitors…those of consumers…and the general public interest’^[10] the dimensions of these interests may vary and are in themselves subjects of large controversy. It is undoubtedly the latter two interests, given their altruistic nature, that are the most touted rationales of Trade Mark law, the most common combination is to argue that the regulation of the relationship between producer and competitors ensures that the interests of the latter two are protected to an optimal degree. However in order to evaluate the appropriateness of the judicial use of confusion and appreciate its relative centrality we need to flesh these interests out somewhat.

The traditional explanation of the interest of a producer in a trademark was touched on in the introduction and is commonly understood to be derived from basic principles; if you want your product to be identifiable as distinct from other similar products then you need to use some kind of mark or design to distinguish it. This has been done since Roman times^[11]; Bainbridge gives a definition of the interest as producer has in a trade mark:

‘Marks are a very valuable form of intellectual property because they become associated with quality and consumer expectations in a product or service. Some good become synonymous with their trade name…’^[12]

It is the concepts of association and goodwill in the form of consumer expectations about quality that are core to the value of a trade mark to the producer. It has in fact been argued that trade marks have undergone an evolution from their original purposes of denoting origin and ‘realigned’ themselves as ‘a mark conveying quality, value and authenticity’^[13] or in other words goodwill which in itself becomes a tradable commodity. This is certainly evident in the shift between the Trade Marks Act 1938 and 1994^[14], the TMA 1938 solely attached protection to trade marks operating as indicators of origin whereas the European Directive that was harmonised into UK law through the TMA 1994 places this justification at the forefront but it is only one ‘particular’ justification implying that their could be an expansive interpretation of the interests protected^[15]. At a European level the importance of trade marks as an advertising tool was given explicit backing in the case of Parfums Christian Dior SA v. Evora BV^[16] where use of Dior trademarks by Evora in advertisements were seen as harmful to the reputation of Dior, despite the fact that Dior was the origin as Evora where resellers. The reason that the latter has developed seems likely to be because producer’s interests have changed with cultural perspective shifts^[17]. HG Wells once commented that a mark ‘reaches over a retailer’s shoulders and across the counter straight to the customer and sells the goods’^[18], the advertising and merchandising nature of a trade mark has now become as Davici argued realigned so as to be of a primary nature and the primary interest that the law needs to protect. The law in this vein makes a trade mark a piece of personal property, or incorporeal moveable property in Scotland, in s.2 (1) and 22 of the TMA 1994 therefore using basic property law principles it gives the owner a monopolistic right to use and control that trademark in the same manner that all IP rights are devolved on their owners. The trademark can pass ownership in pretty much the same manner as any other piece of property and can be subject to the same burdens such as grant of licence, security interest or court orders. However, given the economic value of many trademarks and the increased emphasis on the value of advertisement it has brought into question whether monopolistic control is really fair however without going into depth we also should appreciate the specificity of the right that is granted and can be limited to particular categories of products, particular colours, size, dimensions, consistency and many other variables that make direct fraudulent use of the mark a relative scarcity in comparison to those that are similar but outwith the specific trade mark property.

Pickering defines the interest competitors have is to minimise the monopolistic tendencies of a trade mark holder or more specifically the abuse of that monopoly and domination of ‘effective and desirable information-conveying symbols’^[19]. This is very much protected by the existence of conditions on registration as Pickering states ‘one cannot assume that simply because the law is willing to confer the right, it will confer the right in all cases’^[20]. Here we will briefly discuss the underpinning economic rationale and then move on to discuss how the registration conditions prevent unfair competition to a degree. It is imperative to remember to relate this back to confusion being an infringement of this right, the reason that we wish to avoid confusion through the actions of a third party is directly correlative to our view of the justifications for imposing such conditions. Classical neo-social economic theory places a large aversion on tendencies towards monopolistic behaviour that is succinctly where a market leader is able to act independently of the market and is not subject to the economic restraints of free competition. Whilst undoubtedly Trade marks create a monopoly of use it has to be remembered that at a fundamental basis a trademark is never the product it is attached to and subject to certain limitations can be reproduced. It is clear that for a trade mark to aid monopolistic behaviour it would have to be synonymous with a product not just a specific type of product. Therefore the existence of the trade mark Coca Cola doesn’t in any way aid the corporation in obtaining a monopoly in the fizzy drink market^[21].

As regards registration there is a further restriction on the ability for people to abuse the right in rem that is granted over the trade mark. The first criteria is that the mark has to be capable of ‘distinguishing goods or services of one undertaking from those of other undertakings’ and this will stop the trademark in effect becoming synonymous with all variations of a product, a good example is the case of Philips Electronics NV v. Remington Consumer Products Ltd^[22] where the claimant had registered a drawing of its three-headed shaver as a trade mark but because such a drawing pertained to function and not origin of the product it was held invalid. The baseline function of trade mark law now operates as distinguishing products^[23] and this operates as a protection from crossing the line between distinguishing and subsuming products by use of a trade mark. This is reflected in the negative approach of the courts following Davies v. Sussex Rubber Co^[24] in that the test isn’t whether it is capable of distinguishing but negatively whether it is incapable of distinguishing either now or in the future. The danger of the latter lying in the monopolistic practices that could ensue. Furthermore s.3 and s.5 of the TMA 1994 place restrictions on deceptive trademarks, applications in bad faith, use prohibited by law, contrary to public policy or morality, devoid of distinctive character and already customary ‘signs or indications’^[25] within a trade. If these aren’t immediately picked up by the registration authority then they can be struck out by the courts such as occurred in Philips above.

We now move onto the issue surrounding the rationale that trade mark law serves to incorporate the interests of consumers in an indirect fashion. Bainbridge defines this as ‘to protect customers from deception, that is to prevent the buying public purchasing inferior goods or services in the mistaken belief that they originate from or are provided by another trader’^[26]. There are a number of caveats that we have to be aware of when we refer to consumer protection as an interest that is protected by trade mark law because the TMA 1994 ‘is not a ‘consumer protection’ statute’^[27] and there is no direct action for a consumer that has been the victim of the deception but relies on the interests of the producer to act as a stimulus which has the by product of protecting consumers, it is an indirect protection which as Pickering shows has come to be sidelined somewhat in a producer-centric system which can in fact have larger rewards for consumers because the identification of a trade mark with the producers commercial persona in effect enforces a kind of morality on them which enhances fair competition and thus a net benefit for consumers. Therefore the shift we discussed in relation to the producers interests has a net accumulative effect so that consumers in fact become more benefited. However, the fact remains that the common law on trade marks started on the basis of protecting consumers from deception and did not set out to create a system of property rights which is what has evolved and from that perspective we need to be careful of how we use this as a justification. It is also hard to see how the lending of trademarks in the form of merchandise branding and assignation for certain purposes can be justified as protecting the consumer because in a sense that is encouraging consumers to buy a product independent of the merits of that particular product. People will buy a Nike watch over an unknown brand watch if they’re in a similar price range this gives a trademark holder significant market strength when moving horizontally into new markets. Nike will not have to establish its credentials as perhaps it had to with sports wear and equipment which distorts competition. That is why a core product might be subject to market forces to a greater degree than penumbrary products.

The public interest is argued to have been served by ensuring efficient allocation of resources within classical economic theory^[28] now this is somewhat interlinked with the previous two interests and as we saw it might appear at first as though monopolistic rights might be anti-competitive but that in themselves they could not do it, the issue about big brands moving into new markets is a caveat, but generally it will not hinder competition through monopolistic practices and in that sense contributes to a healthy economy which benefits every member of society not just participating consumers.

We have dealt above with core interests and the background justifications for trade mark law in the UK as well as outlining the legal apparatus that it is surrounded on but we must now move on to consider how these relate to justifying infringements of the rights, in particular confusion and its treatment by the judiciary as it compares to things such as comparative advertising and passing off and the judicial reaction that those concepts have received.

As I mentioned in my introduction, Phillips considers the enforcement mechanisms in the TMA 1994 to be the raison d’etre of trade mark registration i.e. the ability to protect your product from third parties. This would seem so given the fact that as we saw the interlinked nature of the interests protected by trade mark law rest on the crux of the self-interest of the trade mark owner. In considering confusion we will have large attention to the European directive and the jurisprudence from the court of justice given its importance to the TMA 1994. The main reason that the European directive is so important is that it marks an expansive move away from the TRIPs version, Directive 89/104 and the CTM Regulation covers not only likelihood of confusion but subsumes likelihood of association under the same heading which is not expressly included in the TRIPs agreement. In understanding the differences that the background justifications make we have to realise that for example confusion isn’t the only test that could be used for example infringement could be measured by financial harm to the trademark holder but as Rothman has stated the fact that customer confusion is the central test in trade mark law in itself should tell us a little about how the law is oriented.

Likelihood of confusion is the lynchpin that holds the statutory infringement actions together with the rather limited situation where the sign complained of is identical to the registered trade mark and appears on identical products, if there are any issues of identity or similarity then likelihood of confusion is the test to be applied^[29]. However, statutory concepts have been mutated and we need to understand its common law origins in order to assess the future directions. Passing Off is the tortuous forerunner or ‘the common law form of trade mark law’^[30] and has always been wider than traditional trade mark law. Passing off actions rather than focusing on the individual trade mark are concerned with the damage to goodwill which is in effect a piece of incorporeal property fundamental to the trader or business^[31]. The justifications for this action share affinities with the justifications for trade mark law however in other jurisdictions it has been made clear that passing off is not concerned with consumer protection^[32] in any way and cannot be premised on such, again any benefits would be indirect however there appears not to be a concerted judicial will to protect consumers. When Lord Diplock laid down the conditions for a passing off action in Spalding & Bros v. AW Gamage Ltd^[33] they highlighted the main distinction between passing off and trade mark regulation, the test is trader-centric and has no reference to confusion or any such concept. If a trader wishes to establish a passing off action then he must prove their has been a misrepresentation, made by a trader in the course of trade, to prospective customers/final consumers of a product, calculated to injure business performance or goodwill of other trader and is likely or has done so^[34]. The passing off action has no requirement for a trade mark to be registered, is not limited to replication of trade marks but can cover any action that can be perceived as impacting on reputation or goodwill &c…which is aptly described in the ambiguous statement of general ‘get-up’^[35] which is incapable of precise definition. There are obviously a number of similarities such as the jurisprudence on ‘in the course of trade’ but the largest area is in relation to the concept of misrepresentation. This test is seen as incorporating the likelihood of confusion test but with some sort of additional element. The simple existence of confusion is not enough per se^[36] Bainbridge cites HFC Bank plc v. Midland Bank plc^[37] in elaboration of this point and argues that what is required is to prove that the claimant has achieved brand name recognition, and not confusion in itself. In reading the case law in the area the considerations seem to be very similar such as distinctiveness of get-up, brand recognition and common field of activity so whether the distinction is tautologous is unclear however arguments must at the very least be framed differently, confusion cannot be the central thrust of the argument although similar considerations may apply as between misrepresentation and confusion.

Moving onto statutory considerations before we consider likelihood of confusion in depth we also ought to be aware of another infringement action which overlaps with that particular action. The idea of comparative advertising may at first be seemingly innocuous^[38] that is comparing one product to a competitors for a variety of reasons predominantly though to establish lower prices &c… generally on a global level this isn’t something which is heavily circumscribed but the European Union have produced the Misleading and Comparative Advertising Directive 84/450^[39] which makes specific reference to trademark law and Directive 89/104 but apart from that bears very little comparable jurisprudence. The ECJ has only had to consider it on two occasions so far^[40] and given the list of permitted comparative advertising and the open texture of many of the concepts such as ‘same needs’, ‘purpose’ or ‘unfair advantage’^[41] that bear no resemblance to traditional trade mark law concepts. It does include in Art 3A (d) a reference to creation of confusion but it is hard to see why this is necessary given the cover of TMA 1994 and the common law tort of passing off. Phillips suggests, and the UK Judiciary seem to indicate support of this position, in fact interpret this as a distinct area of law rather than part of trade mark law. However it is a close relative and is as well to be aware of it, the justifications that we discussed earlier do not seem to have the same relevance to this either but we will bear it in mind when we move onto discuss the concept of confusion.

As I mentioned above unless an infringement occurs under the limited circumstances of s.10 (1) then s.10 (2)^[42] is the next option and is formulated so that where the use of a mark ‘in the course of trade’^[43] is likely to cause confusion given its similarity or identity with a particular trademark and a particular product. As we have seen passing off more aptly exhibits the kinds of interest that we saw in relation to producer’s interests and as we observed many of the laws movements have gone in this direction nevertheless the test is still fundamentally grounded in a consumer-centric approach^[44]. The fact that this is the fundamental basis does not however obstruct their being perversions of interpretation and we will now turn to the judicial consideration of these issues and see whether they have struggled with the concept and look at distinctions in the concept of confusion as between Europe and the UK. The first thing to understand about the test is that it is speculative, a factor which has been heavily criticised^[45], and Lord Diplock made the position clear in General Electric Co v. General Electric Co Ltd^[46] that past evidence of confusion would be strong but wasn’t a prerequisite and could be made out in a different fashion. The interesting thing about the test is that it also seems to be ‘global’^[47] in that it is ubiquitous throughout most large international bodies of law such as Benelux, TRIPs and Directive 89/104 and even in America it has been enshrined in the Lanham Act. We will approach this area in a structured manner as it covers a large amount.

• • Origins of the Test

The likelihood of confusion test has evolved from very small origins in this country in the TMA 1875 and interpretation of s.11 which was reproduced in the 1905 and 1938 Act in the form:

‘Any matter… likely to deceive or cause confusion or otherwise’

This had developed from case law in the English common law, an action which eventually evolved into passing off^[48] with the first reported decision being Sykes v. Sykes^[49] where an action for damages on the proof of deliberate deceit was allowed and an action in equity based on deception of the public also appears to have been available^[50]. Therefore it would appear that this test is very old and tied up with the British conception of confusion however in recent years this has changed quite significantly and our heritage seems in conflict with progressive international developments. The 1938 Act was seen as anachronistic and had a number of very large flaws but successive governments had showed significant inertia until their hand was forced by the promulgation of Directive 89/104 by the European Community (EC) Council in 1988 which aimed at harmonising trade mark law throughout the member states, this lead directly to the TMA 1994 which is why it is so important because it in effect incorporated EC Law into our domestic law but there were still significant conflict over the proportions of the concept of confusion between English law and European law, this argument is covered by nearly every commentator^[51] and thus much of this will be repetition but it is important when we understand the importance of background justifications.

The conflict between the English concept and what is varyingly called the Benelux^[52] interpretation or the European approach^[53] depending on the text you refer to but there is an undoubted tension over the exact interpretation the courts ought to take to the concept of confusion. In Wagamama Ltd v. City Centre Restaurants plc^[54] just a year after the 1994 Act came into force Laddie J showed a reluctance to accept the wider interpretation that was argued in that case. The 1994 Act added the concept of ‘likelihood of association’^[55] which had never been their formerly and widened the concept because as well as the traditional understanding of confusion^[56] which had to be confusion as to origin i.e. a misunderstanding of where the product came from but likelihood of association has a wider meaning and covers the likelihood that the use of a similar mark on a different product might cause a consumer to associate it with the other product^[57]. The interesting thing about the Wagamama judgement is its reference to background justifications, as Laddie J states the TMA 1994 requires a reconsideration of first principles and he came to the conclusion that ‘If the broader scope were to be adopted, the directive and our Act would be creating a new type of monopoly not related to the proprietor’s trade but in the trade mark itself’^[58]. This means the English approach places a premium on the origin function of a trade mark and sees anything more as harmful to consumers through harming competition. The European interpretation of the directive has been different and has taken a middle path which leaves the concept of confusion unclear, in the seminal case on this issue Sabel BV v. Puma AG, Rudolf Dassler Sport^[59] the court accepted the arguments of the UK and agreed that ‘analogous semantic content is not in itself a sufficient ground’^[60] but that it would be on each individual case down to the complex factors whether something more than origin could be imputed to the trademark. Although not explicit about the principles the court seems to take a different emphasis on similar background justifications because they see protection of the customer of confusion marginally more important than creation of a wider monopoly right. The position was slightly elucidated by the decision in Canon Kabushiki Kaisha v. MGM Inc.^[61]:

‘A lesser degree of similarity between these goods or services may be offset by a greater degree of similarity between the marks, and vice versa’^[62]

This slightly more expansive interpretation has since played out in the UK Courts in a series of cases: Premier Brands UK Ltd v. Typhoon Europe Ltd^[63], Pfizer v. Eurofood (UK) Ltd^[64] and Associated Newspapers Ltd v. Express newspapers^[65] and Neuberger J set out the three main characteristics of the new concept of confusion; a) visual, aural and conceptual similarity bearing in mind the dominant characteristics of the mark b) distinctiveness of the mark and c) degree of similarity of goods which the mark is used on^[66]. The widening of the concept is argued by a number of commentators to have deleterious effects^[67], we can discount those writers who argue that it creates an anti-competitive monopoly can be discounted if we view the whole of the justifications of trade mark law. However the critique offered by some writers such as Rothman is more sophisticated they argue the expansion represents attention to the rights of the tr