European perspectives on due cause and free speech

Brief discursion: Recent Court of London decision on comparative advertising. The claimant had static images that were registered marks using bubbles. There was strong secondary meaning for bubble imagery both static and moving. The defendant wanted to enter the claimant’s mobile telephony market and engaged in aggressive comparative advertising. It used different bubble imagery in its ads to compare itself to claimant. Comparative advertising in the EC must comply with a large number of conditions – it must objectively compare material features, avoid confusion, avoid discrediting or denigrating the competitor’s trademarks, and avoid taking unfair advantage of the competitor’s marks. The comparative ads used bubble imagery to suggest that the claimant’s services were much more expensive than the defendant’s. (There were three other ads comparing the services to other competitors’, also evoking their marks, but those competitors didn’t sue.)

This ad ran for 10 days and has turned into a legal WWIII. The London court approved the ad, but it will take another few years for it to make it all the way through the EC courts.

Annette Kur, Max Planck Institute, Germany: Famous EU case: Greenpeace did a “Stop E$$O ad.” A free speech interest obviously there conflicts with Esso’s TM right.

Ask the opposite question first: When does TM protection not interfere with other interests? (1) Where the supply of new signs is unlimited in principle; (2) where protection is necessary to secure truthful consumer information as to the commercial origin of goods or services. It follows that where the supply is limited (3-D forms, descriptive terms) and where there’s no concern for truth (as when there’s no confusion) there are reasons to be concerned.

Specifically, when the use is referential – indicating the source of what you’re talking about, but not the source of your talk – there are special concerns for speech.

EC law only directly addresses the dissimilar-products situation, but those cases aren’t particularly burdensome for countervailing interests, and so Kur isn’t going to talk much about them.

Extended protection for strong marks is also granted with respect to similar goods. This can be a problem for things like color and shape because the supply of those signs is more limited, and thus extended protection/broad definitions of likely confusion can hamper free competition. For example, the Nike swoosh case (D’Nickers) discussed earlier seems to give protection to a design element. A German case gives protection to the color violet for chocolate and found unfair competition/likely confusion when another party used violet for cookies. The protection here really went to an extreme.

Free speech interests: There are concerns involving parodic marks, such as Babewatch for videograms with sexually explicit content. Is that a use made “without due cause”? There is opportunity to argue in favor of parody, at least when the goods are dissimilar and extended protection is sought. When the marks are used for similar goods, however, difficulties arise because European law doesn’t have a specific parody exception or doctrine that incorporates due cause into the likelihood of confusion analysis.

The most prominent problems arise where “use as a mark” is doubtful, as in the Greenpeace campaign in which Greenpeace wasn’t using E$$O to sell goods. The meaning of “use as a mark” under EC law is unclear; the French court in the Greenpeace case didn’t even see it as a requirement. The ECJ has suggested we need use as a mark when infringement is an issue, and in the new “bubbles” case one issue will be whether the ad is using the bubbles as a mark. The general tendency is to assume that as soon as a mark is identifiable as someone’s mark then there is sufficient use as a mark. Once that is taken as established, there are only a few exceptions to liability. In the E$$O case there was a need to take speech interests into account, but no easy way to do so, so the court had to reach out to the French Constitution to dismiss the case.

Example from German case law: violet-colored post card with a poem on it, attributed to “Rainer Maria Milka” (Milka being the chocolate company with the violet wrapper). The German court had to refer to German constitutional principles of freedom of art to dismiss the case, rather than finding an internal TM perspective. This causes fragmentation because each country has its own free speech principles, and when it comes to community TMs there is no European Constitution in place to help out. The European Declaration of Human Rights is a possibility, but its applicability is unclear.

Once you’ve acknowledged constitutional rights play a role, they need to be taken seriously. You can’t just say we can ban the speech when we don’t like the form, or when the person who’s the target of the speech is offended. In German law, one decision pointed this out very clearly: the mere fact of commercial use is not a per se reason to be stricter with regard to the standards applied to the allowable language. Of course when consumers are misled or there’s serious harm to a competitor, that’s different, but just objection to the language isn’t sufficent.

One example from earlier German law: the BMW TM was converted into a name that suggested becoming more sexually active, used on a sticker. It ended up in the chamber of the court that dealt with free speech, and the court said that the use didn’t target BMW’s performance in the commercial sector and thus couldn’t be prohibited. (Comment: note here how the cognitive/psychological theory breaks that distinction down – unrelated uses can affect evaluations of the TM owner.) People at the time were sure that if the case had gone to the commercial chamber it would have come out the other way; this is an example of how free speech concerns change the calculus a lot.

Nominative/referential use isn’t obviously a use made with “due cause,” but may be treated as a per se infringement as a use of an identical mark for identical goods. Comparative advertising, as with the cellphone service ad, raises similar problems.

Because there are no clear free-speech exceptions, we are left with many problems, such as: Is it admissible to sell scarves saying “I am an Arsenal fan” with truthful indications of source? That is, the seller goes beyond printing the logo and incorporates it into a truthful statement of fandom. What about using the logo on a book about the club? Selling paintings of players in their uniforms? Using the logo in an ad comparing Arsenal’s performance with that of its Chelsea rival?