Stop, in the name of the (trade mark) law

We recently learned through Twitter of the “cease and desist” letter received by ThinkGeek from the lawyers for the National Pork Board, Faegre & Benson.  This type of letter, more accurately described under English civil procedures as a “letter before action”, usually sets out how the sender of the letter believes that the recipient is infringing the sender’s intellectual property rights.  A typical letter demands that the infringing stop and requires the alleged infringer to enter into undertakings about its future behaviour, under a threat of legal action if the matter is not resolved (hence, “cease & desist”).  In the ThinkGeek and National Pork Board case, the intellectual property rights at issue were various trade marks, including “The Other White Meat”.  ThinkGeek had marketed their canned unicorn meat under the slogan “Unicorn – the new white meat”.

As ThinkGeek point out in their blog, the letter they received from Faegre & Benson was “officially our best-ever cease and desist letter”.  It should be pointed out that the product was put on sale on 1 April.  There was, is and never will be, of course, an actual unicorn meat product.  So is this just an example of another trigger-happy American law firm (or client, to be fair to Faegre & Benson) wasting ridiculous amounts of law fees, or could this happen in the UK, too?

Firstly, the National Pork Board’s registered mark is “The Other White Meat”.  The mark used by ThinkGeek was “the new white meat”.  So we are considering non-identical, similar marks for similar goods (if you are willing to believe that there is such a thing as unicorn meat).  The forms of infringement for which a registered trade mark holder can bring an action under English law are set out at section 10 of the Trade Marks Act 1994 (TMA 1994), which we summarise in the table below:

Type of Mark Type of Goods Other Conditions TMA 1994 Ref
Identical mark Identical goods   s.10(1)
Identical mark Similar goods Likelihood of confusion s.10(2(a)
Similar mark Identical or similar goods Likelihood of confusion s.10(2)(b)
Identical or similar mark Any goods Registered mark with a reputation. Infringing mark used without cause, taking unfair advantage or is detrimental to distinctive character or reputation of the registered mark s.10(3)

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So the ThinkGeek case would have to involve there being a likelihood of confusion, which would in most cases have to be proved by the claimant (National Pork Board). However, the courts have said that they can make their own judgement on the likelihood of confusion, so that evidence of actual confusion is not always necessary (Mont Blanc Simplo GmbH v Sepia Products Inc (2000) Times, 2 February).  A court would consider whether confusion was likely at the time when the relevant goods were offered for sale (remember, 1 April) as well as all the surrounding circumstances. Given the facts of an April Fool’s Day sale of unicorn meat, you’d hope an English court would throw this out as not likely to confuse anyone. That leaves the similar mark, unfair advantage or detrimental use infringement.  Again, you would hope an English court would not entertain that a fictitious product not intended for actual sale takes unfair advantage of anyone, or is in any way detrimental.  Given this analysis, we would expect an English intellectual property lawyer to advise against any cease and desist letter or letter before action.

This does raise another issue, if this ThinkGeek case were considered under English law.  ThinkGeek have only published the first page of the 12-page letter they got from the National Pork Board’s lawyers. We therefore don’t know what the tone of the rest of the letter was, or what type of undertakings were demanded in the letter.  Cease and desist letters must be prepared carefully in England, as otherwise a sender of a letter risks being found to have threatened infringement proceedings, which itself is actionable (see  s.21 TMA 1994). This includes the solicitors (as senders) of a cease and desist letter.  We’ll never know if the National Pork Board or its lawyers crossed the line in this respect.

Perhaps, all things considered, the National Pork Board should have let this one go by.  After all, pigs will fly before real unicorn meat can be sold, whether as other white meat or not.

English court gets sniffy about being led by the nose

UK Trade Mark 777757

The recent Court of Appeal case of L’Oréal SA & Ors v. Bellure NV & Ors [2010] EWCA Civ 535 is probably the best, recent example of an English court attempting to tweak the nose of the Court of Justice of the European Union (formerly European Court of Justice)(CJEU) that you are likely to find. In its ruling the Court of Appeal acknowledged that it is bound by the European Communities Act 1972 to give effect to judgements of the CJEU and applied the CJEU ruling in Case C-487/07, a referral to the CJEU from the Court of Appeal at an earlier hearing on the case.  However, the leading judgement of Jacobs LJ does an excellent job of showing how unfair and perverse the ruling of the CJEU is when applied to the facts of the case. 

The case involved a small Belgian producer of smell-alike perfumes and its UK distributors, who sold the cheap versions of well-known designer brands to low-end retailers in bottles and packaging that were not identical but were generally similar to the brands’ packaging.  However, the defendants advertised the cheap perfumes in comparative lists which indicated by designer brands which perfume the cheap version smelled like.

 The brands brought various passing off and trademark infringement claims against the defendants.  Certain questions relating to the interpretation of the relevant parts of the Trade Marks Directive were referred to the CJEU for a preliminary ruling, and as a result the CJEU determined that use of a registered trademark in a price and smell comparison list could be a trademark infringement and that stating in comparative advertising that a product of service was an imitation or replica of a trademarked product can be prevented by the trademark owner.

 There are some notable passages in the judgement that show where Jacobs’ sympathies lay:  

Does trade mark law prevent the defendants from telling the truth?  Even though their perfumes are lawful and do smell like the corresponding famous brands, does trade mark law nonetheless muzzle the defendants so that they cannot say so?

I have come the conclusion that the [CJEU]’s ruling is that the defendants are indeed muzzled.

There is no good reason to dilute the [right of traders to make honest statements about their products] in cases where the speaker’s motive for telling the truth is his own commercial gain.

The [CJEU]’s decision in this case means that poor consumers are the losers. Only the poor would dream of buying the defendant’s products.  The real thing is beyond their wildest dreams. Yet they are denied their right to receive information which would give them a little bit of pleasure; the ability to buy a product for a euro or so which they know smells like a famous perfume.

If a trader cannot (when it is truly the case) say: “my goods are the same as Brand X (a famous registered mark) but half the price”, I think there is a real danger that important areas of trade will not be open to proper competition.” 

We have to agree with Jacobs LJ.  We would find it extremely difficult to advise a manufacturer or distributor of an imitation or replica product or service on how to advertise its products or services in comparison with a registered trade mark product or service.  The CJEU does not make it clear what it means by “unfair advantage” in the relevant provisions, nor what is meant by the CJEU’s opinion that “riding on the coat-tails” of a trademark is prohibited.  Is it even possible to cite a registered trademark in a comparative advertisement after the CJEU ruling?

This is not what the Trade Mark Directive or Comparative Advertising Directive should be about.