Following the call from our earlier blogpost, this Kat will be taking a crack at the first of what he hopes is a regular series of discussions on “IP Golden Oldies”. At the suggestion of Bob Sacoff from the Patttishall law firm in Chicago, I have now had an opportunity to consider one of the classic articles on trad emark law, “Trade-Marks and the Monopoly Phobia”, written by Beverly Pattishall and published in the Michigan Law Review in 1952. The gist of the Pattishall article was to argue elegantly against what he perceived as the shift from seeing trade mark rights based on the likelihood of confusion test to a monopolistic view that tended to view trade mark rights as innimical to competition.

Pattishall described the problem in the following words:

“Business concerns now often find, when in court seeking simply to prevent encroachments upon their individual identify, and thus, good will, that they are accused of striving to preserve unto themselves a monopoly in words and symbols which were and are the heritage of all.”

The starkest expression of this view had been stated by Judge Jerome Frank in the Eastern Wine Case of 1943. There, Judge Frank wrote:

“The magna carta of competition of competition, Adam Smith’s The Wealth of Nations, made it clear that the consumer’s interests were to be the dominant aim of the competitive system ….But the legal protection of trade-names does not engender competition; on the contrary, it creates lawful monopolies, immunities from competition.”

Indeed, Pattishall could have reached back to the middle of the 19th century. At that time, when Parliament was first considering the enactment of statutory protection for trade marks, the view was already being expressed, questioning the wisdom of providing an additional form of exclusionary protection for incorporeal rights. Concern over the alleged anti-competitive nature of trade marks was also highlighted by the U.S. Justice Department in connection with the legislation that ultimately took form as the Lanham Act in the U.S. in 1946.

In any event, Pattishall sought to refute this alleged tension between trade marks and free competition by a simple exercise of logical argument:

“Obviously, trade, as we know it, is impossible without individual identify; and equally obviously, identity in trade without trade-marks cannot be had. The avowed purpose of the anti-trust acts is to encourage competitive trade and to prohibit unfair monopoly. Thus, to affirm and further the doctrines of the anti-trust acts, but to inhibit the protection of trade-marks and other means of commercial identification, is patently contradictory.”

Pattishall then went on the elaborate the nature of the likelihood of confusion test as the raison d’etre of trade mark protection and to explain how trademark protection, properly understood in this way, does not implicate any concern about any restraint on competition. He wrote:

“What the law need protect is the right to individual identity, not the word or mark which, used in a certain finite way, is the means for achieving it….In a trade-mark or similar case no court is required to make any academic determination of whether the mark involved is a part of the public property. It need have no fear that in protecting a trade-mark a monopoly may be granted that is public property so long as it adheres to the likelihood of confusion test.” (Emphasis added.)

Pattishall devoted particular attention to what he perceived as the unfortunate use of certain terms, namely, “monopoly”, “infringement”, “property”, and “ownership”. In his view, reliance on these terms “only lead to error and contradiction in resolving the questions which arise in trade identification cases.” The reason for this is that “there is actually involved no vesting of specific proprietary right in any word or mark in protecting trade identity within the limits of the area of likelihood of confusion.” If there is any property right that is involved, “it is in the trader’s good-will.”

Towards the end of the article, Pattishall also addresses the issue of whether a given word is desirable because, in and of itself, it has value in promoting the sale of the product. If so, words threaten to imbue such trade marks with a potentially anticompetitive character. This is so, because they confer on the owner of such word not simply the right to have its product identified by the mark but also an exclusionary right to enjoy the inherent commercial drawing power of the mark.

From the distance of nearly 60 years fast-forward, what do we make of Pattishall’s arguments?

First, Pattishall does not address the current of argument that had been raised by Frank Schechter in 1927 (“The Rational Basis of Trademark Protection”) in favour of what we now recognize as trade mark dilution. That said, it can be said that Schechter was not proposing a proprietary view of trade marks, but rather an extension of the way that trade marks might function within trade in certain circumstances. On the “likelihood of confusion”/”proprietary monoply” spectrum, “dilution” is more in line with the former rather than the latter view of trade marks.

Second, one wonders how Pattishall would weave his arguments into a trade mark system that does not require use as a prerequisite for establishing the goods and services to be protected by the registration. The window of time within which goods and services may be protected even in the absence of actual use would seem to straddle the boundary between the two poles considered by Pattishall.

Third, there remains the “dirty little secret” of likelihood of confusion. By this I mean that a pure confusion-based system should ideally rest on a showing of actual confusion only. The “likelihood of confusion” test can be seen as extending the scope of trade mark protection in a way that argubably goes beyond what is strictly required. But a fuller consideration of this point is for another time.

When all is said and done, a consideration of the Pattishall article forces one to consider once again the first principles of trade mark law. In so doing, and in reminding us, in an elegant and tighly reasoned fashion, of the “likelihood of confusion” foundation of trademark law, he has left the trade mark profession with a continuing rich conceptual legacy.

First, the Court considered that, even if the perception of marks consisting of personal names can vary in the different countries in the Community, at least in Italy, consumers generally attribute greater distinctiveness to the surname than to the forename contained in trade marks: it followed that the surname Becker is likely to have attributed to it a stronger distinctive character than the first name Barbara in the mark Barbara Becker. Secondly the Court rejected the argument that the fact that Barbara Becker enjoys celebrity status in Germany as the former wife of Boris Becker does not mean that, conceptually, the marks at issue are not similar, as both marks refer to the same surname Becker. Indeed, such similarity was reinforced by the fact that, in part of the Community, the component ‘becker’ is likely to be attributed a stronger distinctive character than the component ‘barbara’, which is simply a first name. Thirdly the Court cited the judgment in Case C-120/04 Medion, where a composite mark, created by the juxtaposition of a component and the sign of another earlier registered mark, may be regarded as similar to that other mark where the latter has an independent distinctive role in the composite mark, although it is not the dominant component. Applying that criterion, the component ‘becker’ was a surname which is commonly used to describe a person, retaining an independent distinctive role in the mark Barbara Becker, which was sufficient for a finding of a likelihood of confusion. Finally, given that the parties did not deny that the goods at issue were identical or similar, and also taking account of the visual and phonetic similarities of the marks Barbara Becker and BECKER, there was a likelihood of confusion between the marks, even though the goods were directed at a public with a relatively high level of attention.

Barbara Becker then appealed to the Court of Justice and on Thursday, while the rest of us were sifting the entrails of its decision last Tuesday in Google France v Louis Vuitton, Advocate General Cruz Villalón quietly delivered an Opinion strongly critical of the Court of First Instance decision.

“56. It is abundantly clear from all of the foregoing that, if the Court in the judgment under appeal wished to base its reasoning definitively on the doctrine in Medion in order to assess the likelihood of confusion between the marks at issue,… it had to explain why exceptionally in that case it was necessary to dispense with the general requirement with respect to an application for a composite trade mark to examine the overall impression, bearing in mind, in particular, its distinctive and dominant components. In other words, it should have dealt with, in that context, the possible conceptual similarity between ‘barbara becker’ and ‘becker’, because in this case it is not necessary for the component ‘becker’ to have a dominant position in the mark as a whole.

57. However, none of that is to be found in the reasoning in the judgment under appeal. Instead, there is scarcely any consideration to be found other than that … that ‘becker’ is a surname, which is not in dispute, and which would be hard to refute. It is on that basis that the Court directly concludes that ‘becker’ and ‘barbara becker’ are similar … and, therefore that the Board of Appeal had erred in law…

58. … the judgment now under appeal makes no observations or assessment of the surname Becker in order to determine whether it retains an independent distinctive role, without necessarily constituting the dominant element in the mark as a whole, to which the judgment in Medion refers, whereas, in the circumstances of the case, it was essential to carry out an assessment of the distinctive character of the earlier mark BECKER. Since the latter had enjoyed a high level of notoriety with the public, any other mark which sought to designate identical goods would have more difficulties in appropriating that surname.

59. To sum up, based on a generalised understanding, in part incorrect, of the combined effects of the judgments in Fusco and Medion, the judgment under appeal may give rise to the belief, wrong in itself, that, in principle, any surname which coincides with an earlier mark may effectively prevent registration of a composite mark including a first name and the surname in question on the basis of a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94.

60. In other words, the result of adding a purported rule of principle derived from a previous judgment of the Court of First Instance to another from a judgment of the Court of Justice, appears to lead to a result which is almost inevitable, which is that the issue of conceptual similarity is practically superseded in as much as the Court failed to take account of all the facts of the case, as it was required to do in accordance with the case-law. Most particularly, it failed to examine the influence of the first name from a conceptual point of view of the mark Barbara Becker and the greater or lesser degree of distinctiveness of a mark composed of a single surname.

61. In the light of the foregoing, I consider that the judgment under appeal is vitiated by an error of law, and that the single ground of appeal should be upheld and the judgment set aside.

62. As the error detected may be remedied only by undertaking the assessments of fact referred to in the preceding paragraph, … I propose that the case should be referred back to the General Court in order for the latter to undertake those assessments and to give another ruling consistent with them”.

More on Barbara Becker here

Another person with whom to confuse Barbara Becker here