UCL Institute of Brand and Innovation Law (IBIL) and MARQUES, the European Association of Trade Mark Owners, invite you to meet and question some of the judges that are or were until recently deciding our trade mark disputes.
The chair The Rt Hon Professor Sir Robin Jacob will pose a set of pre-selected questions from the audience to:
Virginia Melgar – Chairperson of the 5th Board of Appeal, EUIPO
The Honourable Mr Justice Mellor KC – High Court
Douglas Campbell KC – Deputy High Court Judge, Civil Recorder and Crime Recorder on the South Eastern Circuit
Allan James – Senior Hearing Officer and Head of Trade Mark Tribunal, UKIPO
good evening ladies and gentlemen thank you very much for coming uh this evening uh this is a joint Marx and ible uh event and I’m the Marx side of the equation uh my name is Roland mson uh I’m on the the board at marks and so I help run this event uh we’re very grateful to be uh having UCL host us here uh I do uh for those of you who’ve been before I do a little mini plug uh for marks in particular on behalf of the Amicus curi uh team which I get involved with as well and so all I say to you is for those of you that have particularly interesting cases that might go on appeal uh and you wish some backup perhaps from marks as a European trademark Owners Association uh we would very much welcome you bringing the case to us at an early stage as early as possible please uh and uh we’re not now just talking about cases going to the uh General Court the court of justice we’ just recently intervened in the case in France at the national court level and that we were accepted as an amicus in that uh and um so we’d be more than happy to get involved in in National UK cases or national cases in other jurisdictions but the game is to come in and get our involvement early is all I can say because it takes time to get us on board and um we also need to consider whether or not we are willing to support you we like to do so but on the whole we’re doing it just remember that marks like ector and in is a is a brand Owners Association so we will be looking at it from a brand owner perspective on that note I think plug over I will hand over to Sir Robin who is our chair this evening and he will introduce the panel and look forward to seeing you after for drinks thank you I’m told I have to clip this on you Robin yeah thank you good evening everyone we’ve got the usual list of about 20 25 questions of which we’ll be lucky to get through 10 s some more difficult than others we debated them now at tea and with no firm conclusion about anything at all I’m going to start with one of the questions which is more about the personal satisfaction of a judge do you enjoy your cases being reported in the newspapers the main stream maybe or would you rather you just quietly got on with the job and nobody said anything and have you noticed that some people aiming to get their decision on the on the news who would like to start with that one yes please Virginia by I haven’t introduced the panel because you know who they all are no thank you um I think today we cannot be out of the uh social media debate and uh reporting and and blogs we feel all at least in alikante very proud when there’s a debate generated by our decisions whether there are arguments against or people like or dislike the the case I think it’s good we are there to you know this enrich the debate and gives more arguments the issue I see is that we are not really able to engage in a response and we are now reflecting at the boards of appeal at the office um to to think about a policy if if for example we are commenting our own decisions or commenting the decisions of the Neighbors in in another board so the debate is good yes and uh I like it and uh in the blogs or in social media but we need to reflect on how we uh the authors of the decisions engage in that you how does how does the traar registry feel about when there some decision of hearing offers it gets all over the papers well I’ll speak I’ll speak for myself and I’m quite happy to have my decisions I enjoy having my decisions uh commented upon in the legal media the mainstream media I’m fairly univalent about but what I what I what I do find denying is when you is when you find out things about the case because the party said more to the media than they have evence to the tribunal yes and that’s very infuriating when you think well you know they said we lost despite the fact of xiser you never put in evidence that XIs now that you know it wasn’t taken into account so you do feel like com back and saying excuse me um this part’s complaining and you know look at the way they run their case now they’re saying that wasn’t something wasn’t taken into account so yeah sometimes it can be uh a bit frustrating but we obviously make a point of not engaging in in those sorts of debates or pushbacks against people um but I’ve had a couple of those in in the last year or so one was called bull out which was a family business up against Red Bull uh in relation to soft drinks and the other was some gentleman who wanted to ra Tesla for catering services uh and uh I found himself on the long end of a decision and got very upset about it went to the press and again I found more about his business and what his motives were for read the article I don’t actually found any evidence at all in the case may so there we are that’s what I think about it can be very frustrating on occasions but go goes with the Terr James um well I think the safest course is to be completely indifferent to anything that is reported in the press and in particular not to get drawn into any discussion about it you decide the case and that’s it it’s pretty simple as far as I’m concerned fun official which is the Latin for your function yes Douglas have you found yourself at the end of any of this uh well in the day job all publicity is great when uh but as a judge quite happy the radar all said comment and legal press is fine but you don’t want to be the daily maale other thing I do notice is that um from City J I do a bit of it very rare that anyone says to you good job you know you’re only get the losers complaining and no one ever s how much effort you this is a bit I once found myself praised in the sun oh wow oh dear what top judge gets caught it was one it was hiy Park where I found found against Muhammad Al fired the court of appeal reversed me wrongly as they later said in later case uh right we’ve probably done that question to death um does the behavior of parties in the way they handle their cases upset you sometimes for example uh where there’s a famous Mark and the defendant or the other side doesn’t admit it’s famous everybody knows it’s famous but they don’t admit it so the first parties got to spend a lot of money proving it and so on and so forth does that um affect the way you view the case and does do you think there should be a simple uh way of dealing with people who don’t make admissions of obvious things for example an immediate orders to costs James you can go for that one first you’re the toughest of them all you’ve got the best position yeah no I mean if if people make um take up stupid positions then they’re going to pay for it have you ever made an order making them pay for it straight away I no I can’t remember doing anything like that but I I better get my excuse in early because I’ve been a judge for three years now and I’ve only been let loose on two trademark cases but that’s because we’ve got so many patent cases so I’m I’m I’m losing my grip on my qualification to be classified as a trademark judge um but uh no I haven’t that hasn’t you produced another volume of curly in that time no I but I rely on my fellow [Laughter] Wars right well I think we’ll probably leave that one any further but I think the power of of of sanctions from the court is should be real post sale confusion uh recent court of appeal cases have said that post sale confusion is an established part of both EU and domestic law is that really so or should it be so what do you think about that Douglas yes and yes that was quick well it it came out I think in that op Z decision that Richard gave a few years ago and people hadn’t really thought of it up to that point although there was that BP case about the the Green mway selling but when that case came out it was a whole lot of discussion in in settings like this about Co sale confusion is this new something I remember thinking at the time well why is it new exactly is this was always the um so I think yes it always has been part and yes it should be to be honest I mean still confusion still damaging to BRS why should it not be yeah I agree I mean I’m a mere first instance judge so I do what I’m told by the court of appeal well of course especially uh does the office take into account postale confusion if they get evidence of it is relevant uh yes uh in fact it gets argued surprisingly often or I suspect it’s going to be argued more often as a result of the recent decision um often it’s tied into this question of what is the average consumer’s level of attention because uh during the selection process which is the norm uh you can gauge how much attention a person’s uh paying if it comes up in the case of post sale confusion um the argument is often linked to an argument well people won be pay much attention because uh you know they’re not know buying this product there watching somebody else wearing it or something like this and therefore you should factor in a lower level of attention and they could be confusion get in that context I remember I had a case many years ago where somebody was arguing that uh uh it was to do with the stripes on football boots and the argument was well you know if you’re sat at the back of a stand and you see a football on the other side of the pitch will he be able to tell whether he’s wearing two stripes on his boots or three stripes on his boots and I thought well this is you yeah if you’re at the back of a stand you might want be able to see his feet little don’t him uh but it seems to me that we’ve gone quite a long way away from you know the protecting the functions of a trademark because um if you’re going to if you’re going to say well that’s a ltic a relevant ltic infusion um that would would lead to all sorts of uh marks being ELD be too similar because if you got a you know being too similar that you could mistake them from 300 meters is enough uh when you’re not paying much attention the bar would be would be very low I think that’s one of the reasons why in picar Picasso the court of justice said that the most important point when it comes to assessing the relevant consumer’s level of attention is during the selection process so that you don’t go off uh and attach a lower bar when it comes to other points in time including post sale confusion yes I agree it’s it’s a real thing um it it uh it’s come up in quite a few cases I’ve dealt with over the years including I remember one many years ago uh which was uh the color green applied to oil um and the argument was that it could be a trademark because people have had have Aid to have their oil changed and if they wanted that particular brand which is the one that died it to Green you could check your your engine afterwards to make sure they put the one in that you’d ordered and if it wasn’t the right color you knew they they given you a cheaper oil so a great example of a of a trademark function attached to uh in that case a p non-conventional trademark so I agree it’s it’s a real thing it has to be taken into account but it shouldn’t lead into these uh more sort of speculative arguments about sort of people seeing things from you know too far away or whilst they’re rushing down the aisle of a supermarket and they you know they’re not paying attention properly they pick up the wrong thing it shouldn’t lead to that sort of thing becomeing action is the is the have you found post sale confusion evidence being offered in in in the office uh no because as you know and has been mentioned they the court tell us to check the moment of purchase and where where is the the the confusion actually in in the moment you take a decision but I I I mean I like the I like the reasoning I like the where it comes from I mean the oldest trademarks we know are on the bottom of pot in the building just around the corner the British museum they’re thousands of years old if you saw the same mark on two different pots you say was made by the same man and the other way in the real modern world which you might want to know it’s spare parts you undo something’s gone wrong with your machine you take out the bit and you try and find that you find the trademark and bloker made them bit years after you bought the thing I think it’s absolute nonsense to suggest that you limit it to prale we had a recent decision in test Rosa ah Ferrari Testa Rosa case which uh clearly they didn’t like it because we said there’s no use for for cars just some left use for spare parts and and toys and uh well they are unhappy so they are before the general court we’ll see 50 or 60 years after the the car was L uh this is a very sort of ordinary one in some ways but it’s a very sort of personal one how many of you have started writing a judgment thinking you know the answer and changed your mind has any one of you done it all I bet all the time all the time yeah um you confess confess actually most trademark cases I know what the answer is although there were one or two appointed person decisions where I didn’t and yeah you know in for those cases you just got to work through all the issues and the answer comes out that often happens in patent cases by the way that’s more but um there are some trademark quite a few trademark cases where the answer is pretty obvious actually I you’ve written hundreds of decisions you ever changed your mind you started off after you started yes not not in a huge number of cases but certainly in some cases I I’ve changed my mind usually because I’ve made a decision based on what I expect the evidence to be able to show yeah and then I look at the evidence I find there’s actually there’s holes in it my my logic path has to has to be rerooted yeah inconvenient holes right and sometimes I end up in the same place even though I might get there by a different route and sometimes I find I can’t get there at all because so there’s just too many gaps in the evidence and you frustratingly have to make a decision you’re not 100% happy with but yes it does does happen and um you know it can make life does frequently makes life more difficult when you you expect to be able to find certain things proven uh and in fact you what you actually find is the um is not same as James um not to think in trademark cases uh because you read the papers and you mean you have a view and as Alan says you s of think what the evidence are going to say and you don’t really change mind that much half cases it’s happened a couple of times but I do remember vividly uh it was some shorts application and thinking the others was clearly X and WR on notes and became almost 10 minutes that was the wrong answer I had to change it and I didn’t really have the opportunity to go away and sort of you know sort of rewrite it all because the decision was near instantly so remember that pretty bidly but that’s that’s that’s quite significant if it the light it throws on the European patent office’s decision principle they give you the answer on the day and won give you the reasons later they’re stuck with what they’ve written what they’ve said they’re going to do yes okay does anybody in this audience think that’s a good idea does anybody I’m this is serious because I think then one day they got to change that in the EPO nobody thinks it’s a good idea right well it depends how confident you are in the result yeah if you are confident in kind of onet but if if you need to go away and think about it the best thing to do is go in and think about it even if you are confident you may have time you come to write it may go wrong much better safer be safer than sorry yeah um I’m again sort of my judgment might in you how often do you go and ask somebody else who’s not involved in the case another judge what do you think of this do do you do that Alan yes in fact all the hearing officers in the the IPO do it you have a a system called peer review which means somebody else challenges what you tries to challenge if to find a challenge what you’re proposing to say and then it’s very helpful at bringing out inconsistencies in what you’ve said it doesn’t often very often change the the outcome uh but it’s very helpful sometimes because you as you get into a case sometimes you you you lose sight sometimes of the uh you know the the reasoning as to why you went one way on a particular ground per another way on another ground and somebody points out to you actually that doesn’t really sort time very well with this it allows you to sort of have a second thought about it and put it in a more rational form so yes we do uh we don’t debate the cases and sort of come to a collective decision but in terms of somebody running you going through it and saying is there anything inconsistent or obviously illogical about this that Happ routinely we also sit occasionally as panels where you do have to have a debate with the other panel members as to as to what the outcome is going to be but the nor is a single hearing officer in company name cases we routinely S as panels of three uh so we are used to discussing and and have always so far been able to come to a consensus view I have I have we are panel of three so we exchange a lot among ourselves but sometimes um as rapporter of the case I I want to see another colleague for example I need to check a cultural concept or linguistic concept and and I want to be sure that what I’m what I am told in the in the documents is ex ly that I remember a case the Mark was kelia and of course it was pleaded the two marks were identical one from for cigarettes another for I think it was class four products and the issue is that Kel is a region of Finland and very with a lot of specific characteristics also share with Russia so I went to see it with a with a Finnish colleague who is also a member of the second Board of appeal who happens to come from this region in order to check you know all the information we had and U to send back the case to The Examiner saying well you shouldn’t have accepted the mark in the first place but you need in in a in a multicultural context you need to be allowed and free and uh go to you know to visit Concepts which are difficult to apprehend from the uh the documents in an opposition for example um I didn’t know about the the peer review system in the UK sounds like a very good idea actually unfortunately we don’t operate that although we do I mean I work in the rolles building and all the judges offices are on 4 floors the way around and say I get bold a case about tax or Charities or something that I didn’t practice it I will be able to find a judge somewhere on the floor who knows all about that and uh everybody’s very amable to you going saying like just give me a few Basics on this and it works in Reverse so although I don’t do all the trademark cases a lot of people come and ask me you know not they’re not asking me to decide the case for them they’re asking well how how does this concept work and it’s it’s good fun actually that sort of discussion and it helps everybody because it’s a two-way process douas do you get much chance of doing that or not probably not in trademark matters but in other things well sometimes a bit it does happen a little bit but as as everyone says it’s quite limited and often I find is the process of explaining you thinking to them that’s the valuable B not really the response yeah the most valuable response sometimes if someone say oh don’t about that you know that’s a good response oh yeah obviously going off being there but if it’s on well maybe and then quite often I think well that wasn’t particularly valuable at least clown find I have thought ofel actually one thing I must say as well it always strikes me is funny I do b a crime setting as well 15 days a year and I always find it odd when full-time crime judges say you do you think this sentence is [Music] about drug dealing or what I had all the products lined up next to each other in my room in Laural and Bel and John Mumy came into my room looked at them and said no he would have even hel the historic ones non invention this is a more technical one is it becoming the case like Picasso and Messi where Mark is particularly famous so that a somewhat similar Mark was held to be not confusing in a way that it wouldn’t have been if the Mark had been less famous is this a problem we’re noticing and is it unfair if it is happening or is it not a problem anyway ad what you think of that um I think it’s an area of quite a bit of confusion so the uh two of the cases that I think the question you had in mind was the casso picaro case and the M Messi Massi decisions in in Europe of course Picasso is is not trademark but is a trademark but it’s not just a trademark it’s the name of uh famous artist and Messi of course is a name famous footballer so when we were talking about conceptual identity counteracting counteracting visual oral similarities these cases tend to be about people or names that have got significance beyond the brand they are famous names but I de with one about a year and a half ago where the earlier Mark was rebellion and the appc Mar was Extinction Rebellion uh and the argument was like you to confusion I said don’t think anybody’s going to confuse Extinction Rebellion with ear a trademark for just the word Rebellion because the significance is people’s minds are so different and of course you know there two words against one or something um so I said no but there was a really quite intense argument in that case about whether what we were doing was was dumbing down or discounting the distinctiveness of the earlier brand by from just going conceptual difference and uh that was the view I took is that you could do that where it was had an identity beyond the trademark but if it’s purely its identity as a trademark so if we’re talking about um you know something like Intel for example you can’t say well Intel’s very well known so there’s there’s the concept and you know intell hasn’t got the same concept so therefore you you have to uh you have to sort of uh find no likely to confusion between two very similar names because the trademark reputation of the the well either either of the marks no the the the case law is that the more distinctive the earlier Mark and the better known it is the greater the likelihood of confusion so if it’s purely a trademark reputation it doesn’t come into conceptual Compares but if it is a name which has got a broader significance like name famous football or artist or whatever or and a movement like Extinction Rebellion then you can factor that in because that is goes to the concept and it brings to mind just the trademark idea was Cojack um T Kodak had a little fight in the 1970s I would have thought you can tell the difference between film and lollipops seeking detect sucking detective but still I think um s jobs if you allow me I think there there’s an issue at the moment with with the comparison of names um at least with family names ER because the the court has recognized in Luxembourg in Rolf versus wolf case that they have taken two different and parallel um case law lines one saying that the name is a concept and another saying that there’s no Concept in a name yeah well and of course that means that if the name is famous um you first have to say well there was a concept because the I’m saying this is a family name and I recognize that as a family name so we are a little bit uh lost at the moment and I agree with the Alan’s analysis but the court has admitted that they have taken two different positions therefore the boards we can take uh whatever of these two positions but I think if there’s a great uh knowledge not saying reputation about a particular name well the conceptual difference will make the conclusion of no likelihood of confusion I had the opposite case messy versus Massi okay after the messy M the he tried to challenge the um very old Spanish uh ristan Mark for sport articles and uh we said no likelihood of confusion and he couldn’t produce any but it was an old Mark yeah because the the in fact the uh the line of products of the it’s a family business this Massi they are in Catalonia and they uh they were very well known for very particular items linked to cycling and uh and messy of course of course is well known well for closing he’s he’s very good at very good at um football but he’s never played football in the bicycle yeah so um but there was much less publicity talking about social well media talking about our cases of course our cases was not commented as much as the messy Massy other case I mean I think um Alan explained it very well I mean these cases Picasso parara messy Massi they are said to give rise to the neutralization Doctrine or principle and I think it’s really dangerous call a Doctrine or a principle because all it is it’s a particular example on the facts of the cases where a conceptual similarity happened to override any visual in par similar and it’s very dangerous call do because you feel case is actually telling it has somebody actually called it a doctrine of neutralization yeah it’s in the it’s in Thomson life it’s from there yeah Thompson life talks about neutralization not invented by us I’m not sure this is a really new thing though I mean I was thinking of all cases right X andex and you mentioned the Jack one so I mean I’m not sure it’s a doct all J says but is it that new otherwise nothing to add but applied to names I think is that’s yeah plus you applied to persons well those were kind of notional oh cojak was a notional person that was was the whole point okay Co I don’t suppose anybody here remembers K Jack yes how many do some some people some people more than I thought um this is a question really for and I I want some people to think of this and I’m surprised about this one we are seeing many many less applications for interim injunctions in trademark and passing off cases than they used to be most of our cases when I started the bar were done on that you either got your injunction defendant went off and did something different or you didn’t which case you gave up one or two cases went on Neutrogena was one where they failed to get the interlocutory injunction and said it is confusing and went on and proved it at trial but that was very rare So basically trademark cases were done a lot cheaper then than they are now because Inter injunction you get the papers ready write him a letter 7day answer go for them on the eighth day they give them two weeks to put their evidence in one week for evidence and reply judge hears it in a month case over why isn’t it happening now and I’m going to invite people from the a to join in if they can think why is it just that they they don’t realize it can be done yeah it’s I think it’s very difficult to give an answer to this um I mean when I first started I I was John balton’s pupil and I remember going to the Motions court and he would be doing 10 12 cases a day I mean there were two motions a day a week at that point he’d be he’d be doing 10 or 12 and a lot of those were Anton pillars but that was because there were a lot of pirates around at that point and there were a far few Pirates now actually I think that may be true um I think also the analysis of interim injunctions is more sophisticated now the analysis of the irreparable damage arguments is more sophisticated in the trademark case yeah yeah well anyway the upshot is we don’t have one of the two trademark cases I’ve done was an interim injunction so that was vodka so um yeah have you done any as a deputy uh no I did one as Council a few years ago got one in Franken Nike was called um and that was you small company against giant Nike and we stopped this massive andout and that way to the court appe as well and that actually is the last trademark in Junction case I’ve seen that was about five years ago and it was an iek as well which made it a bit unusual I think the two reasons are people just don’t think they’re going to win them and people think they’re too expensive I think there not a lack of knowledge a lack of you know well they don’t go to court at all if they do it’s going to be this is the cheapest way to get it sorted yeah if you get your injunction yeah if you do you get it youve got it sorted by losing as well you know it’s expensive thing to do injunction application and U so plus treat my Proprietors aren’t necessarily as rich as patent people patent can true big time and trying on and you know also you do get them in patent cases all by clearly the wife even failed to do it that’s a welln area you can get in Junctions outside that I’m not sure anyone’s getting injunctions for any intellectual property right temporary injunctions inter J yeah Junction of course you it’s interesting I think it’s a busy really any views from the room yeah yeah anybody else know why why it’s not happening now yeah yeah I think from a client you when you’re Rising fers on in Junction cross undertaking damages is huge exposure for them that’s is the cost as is the risk when the case James referred to the injunction was declined speedy trial ordered so I think there is just that fair now amongst clients there it was always a lottery but I think it’s more of a lottery it’s going expensive it got spoiled by sand a bit I don’t know because the basic rule when I started was you if you thought you were going to get into injunction because they were confusingly s you went for it on the whole you can work out ahead actually your point about speedy trial is a very good one because I think judges are much more ready to give a speedy trial yeah now which slightly takes the point away yeah of course yeah um you looking at me yes ma’ um since you’re one I think s said was the Hendrick’s uh little one about um in Scotland that was a injuction and then it didn’t prove to be so cheap when I was well we ended up appeal but it was upheld so it did say but time gone through that process and the Scottish process bit more painful for the English one uh it was about five months later and it took ages to get cost order well the mysteries of getting a cost order in Scotland will pass over yes I’m going to say that that cost at the Cent other options so we have as Glo we are regularly instructed go get inam Instinct in Scotland as an alternative to UK because of because of England not in England you go you go in Scotland rather than that’s very interesting okay yeah mean normally reasonably Blain cases just go bang they’re dead can I add as your Le there was an Audy out of the Henrik case which was the first time the Scottish Court decided that it was able to give a pimary injunction with C which I thought was really weird because the English courts I’m sure had been merily given injunctions that covered the whole Scotland for years well we didn’t say what the injunction was it was the injunction to defend and be restrained from we didn’t say whether that worked in Scotland or not I don’t know nobody ever went and did it after the injunction been granted only in Scot where would you bring your contemp proceedings England or in Scotland a wonderful questions well can anything be done about reducing litigation costs in England I mean people have always ask that question since I don’t know possibly the first time we had a court yeah and they ask it all the time all the world all over um is there anything we could do make things a bit better make bundling easier I gather there’s a requirement to have lots of bundles in some places well um I mean now we almost exclusively deal with electronic bundles which are they’re much cheaper to put together which is sometimes a bad thing because you get more stuff in them but at least you not destroying a forest okay giving how how M bundles to all the people in the court um I mean in terms of reducing cost it’s really the responsibility of the parties and if they’re not prepared to be sensible then they’re going to ramp up the costs and it’s it’s unfortunate that they only realize later when they’ve lost that they perhaps should have thought about the issues in a slightly more sensible way um I mean we’ve got we’ve got lots of routs through which we can try and reduce the cost so you’ve got ipek shorter trial scheme Etc and it’s up to litigant to use those processes oh any any other comments on the that anybody got a good idea how we can make it cheaper what about sending it to an arbitrator just on the papers I’m just suggesting that the judge of AI oh right um is there a problem um about defining the relevant consumer in the sense that when you want to prove reputational acquire distinctiveness you narrow the concept of the consumer and say there’s a small group of people they’re the only people in matter and they know me very well but when you come to average level of attention you won’t say oh average sort of guy um is there a problem of different concepts of the average consumer in different parts of trademark law well is any do you think there are any problems or not this is this is Alan’s question I’ve got that written I’ve got AJ written on the um the question is is it a problem I don’t think it is a problem um people like to sort of focus narrowly when they’re trying to show requir distinctiveness because it gives them a smaller pool in which they’ve got to show the requir reputations uh and sometimes then when it comes to arguing about confusion or Advantage they want to sort of cast the pool much bro more broadly um so they bring in groups so more easily confused or taken advantage of whatever uh than they that they wanted to focus on when it come to the first question is to when they had a reputation so I mean the short answer is you can’t have it both ways you can’t have cast the pool um narrowly when it comes to showing what your reputation is and then extend it much wider when it comes to sort of trying to bring in whether people are going to be affected by scope of the reputation when it comes to Rel to mark um you can see this in in in a case came up must be five six years ago the London taxis case where in order to show distinctiveness and reputation the the CL wanted to rely upon the Rel of the consumer being essentially some bought taxis um and uh or a taxi phone and that sort of thing um but um obviously the the logic of that would be would be actually Wass of acquir distinctiveness the logic of that would be and you look at a quite specialized group and it’d be relatively more straightforward to show quite distinctiveness if if the sign had some distinctive character um but the the court of appeal felt that actually the uses of taxes should have been taken into account as well and in that in that broader uh in that broader group it was much more difficult to to show distinctiveness I had come across a similar problem the other way around a few years later I dealt with the case involved in shap the uh the land gr gr defend model in particular um as the the party that was trying to show acquire distinctiveness had taken on board this earlier judment in the London taxis case done a survey that went right across basically anybody who would buy a vehicle at all they were just they didn’t try to focus it on people who were interested in a 4×4 uh and as a result of that the level of recognition I thought they’d be able to show turned out to be very much lower and not only that there was quite a lot of uh noise in in the survey results they put forward because some people weren’t really in interested in for by Falls didn’t know the difference between Land Rovers and jeeps and so therefore there’s quite a lot of quite a high level of Mis attribution of this shaped to thing as that particularly to the Jeep uh company when uh I would have I felt in that case it would have been uh better for the both the applicant and for me to have understood uh in a among this group of people which of them actually would be in the market for buying a 4×4 and which of them are just people who might use a car from time to time but really got no interest in the 4×4 Market um that would have been I I felt more helpful so but I think to be the the applicant unusually had been very fair about it and very objective followed the taxis case to the letter and cast them net very broadly um I thought in that case it took the result to doubt to be for me less helpful than if they they’ve actually done perhaps done both fix if they asked the wider group but also asked would you be in the market for buying a 4×4 then you might have been able to work out you know in that market was there a stronger degree of at least recognition than the headline indicated and less confused with that what was a Jeep and what was a landro which is another confusing Factor so um uh see yes the uh you you need to think very carefully about who your relevant average consumer is when you’re trying to show quite distinctiveness uh and the answer may be even more complicated may be actually there’s more than one relevant group of average consumers and some of them may be more important than others so you need to think about that as well I think the these surveys or going forward Witnesses yeah I think um in some cases it’s pretty obvious that one party is playing switch rude yeah other here and in other cases it’s much more subtle so you got to you got to actually thought about it quite hard and then you realize they’re still doing the same yeah pulling the same trip yeah anybody else want to come in this is all the clever question I don’t who thought of this one is for each of you may not apply to you James because you’ve only done two trademark cases the question is is there a trademark case in which you were not a judge but you wish you had been and if so dare you say which it was and why I I had a we we decide a case on the the issue of territoriality of use this is uh the Mark was the standard and um it was F it was the attacked by a cancellation revocation for non use in the European Union and in fact the uh the proprietor showed that they had very luxury hotels in Miami Los Angeles and New York and that they were talking or planning a hotel in London and um we had to rule on whether you know advertising that you have hotels in the USA uh through booking or triago or Trip Advisor was use of providing accommodation in class 43 and uh in my board we concluded no and then the court of well the general court said that we were all wrong because in fact anybody in the EU could perfectly book and of course these hotels received people from the European union now I would have loved to be the reporter in Luxembourg and to rule exactly on what does it mean when you have to Prov use of services which are which mean for me at that least that was the reasoning a tangible is something that you can touch like a bed a bathroom Etc we are not talking about promoting advertising or marketing hotels around the world in which case I agree the fact that you have promoted the the service but if you are talking about putting a premise to have accommodation in a hotel which is by definition not possibly virtual how you can say that three hotels in the US is used in the EU I was completely shocked by the so I would have loved to have the opportunity to confirm my own decision it’s not it’s not because because you know we I think I don’t know if you share that feel I don’t have this sort of possession feeling Vis the cases we rule on um but it was the first case uh where the court had to say what is this territoriality of Youth in a global digital world and in in the discussions we had Among Us um we arrived to the idea that some services may be absolutely virtual where you don’t need any physical anything like marketing advertising uh telecommunications but there are Services which by definition imply some minimal things although there’s this glamping concept where you can you know go in a very luxuy stand in the middle of the desert but a hotel accommodation uh means and requires some at least some minimum things so unfortunately there’s no other case so I you know when we we have we analyze a judgment that has an analment we had We Gather every month and we analyze this uh of course we decide if this is a trend or not and with this case the standard case we have a question mark because of course I pleaded not to not to follow the general court but we are looking forward another case in which we have this discussion so um I said to vice president papasavas I would have loved for one day to be there sitting in laxenburg in that case well when you are reversed by high court there were two reactions one is damn it I made a mistake I can see I’ve got it wrong and the other is Lord forgive them for they know not [Laughter] what yeah I’m going to yeah go it’s a bit of a dangerous question this because you just think back to the cases you R and think yeah you know now that I know what the answer is I could have done this yeah there’s I’m going to ask this question reverse we didn’t discuss that is a trade case in which you were a judge which you hadn’t which you wish you hadn’t been ah oh that’s not you had no time to think of that one any if none that come to a mind immediately no surprise all right um Ai and trademarks first of all there were two questions one how do you think it’s going to affect trademarks generally and particularly though how is it going to affect you as judges who would like to start with that J can I start you can start okay you go of course privil ladies um what I have seen well first of all in the office in Ali count I have to tell you we have created a tech watch Group which um is um animated by a by the person responsible for AI in the office uh but we um all the services are represented there and we know we exchange we brainstorm about how is affecting us and is affecting us and um three weeks ago we had a big Gathering of this Tech group and uh we brought examples of how this is affecting us and we have seen and I I am curious to know if you have seen that statement of grounds or observations clearly coming from a machine and in our cases is even worse because there’s not the fact that there’s no coherence in the arguments is the fact that the language you cannot follow because probably they have put the Jud GPT in English into a Google translator or de whatever and you you don’t know if this is Spanish French Italian uh polish or or Czech and we couldn’t what what can we do with this you know we you you have to summarize because we summarize the arguments of the party how sometimes we put sick when it’s a sort of strange uh comment or use of uh words but when it’s the whole 27 pages is just something you cannot you canot summarize because you don’t know what it is and uh other colle say well go back to the part go back to the lawyer and ask them to produce something that makes sense we don’t know but this is happening and in in our case is worse because it it’s the language issue and of course we have seen law firms that don’t Master the language of the procedure going through you know writing their mother tongue and then translate and you see that the you see you read you understand that there’s some sort of Google translate behind but at least you can follow the line of arguments but we have seen cases I don’t know what they are talking about for example calling the board the Senate okay we the if if the Senate could reverse okay and that’s one thing I’m very worried about because that means that I have to produce a a communication asking for again producing um something and then leave the other party possibility to answer I mean this is you know I’m worried about what are the the powers and the other case is uh the use of AI for as a tool for health help the decision to be more um say better every and we don’t have to say that this is we have to talk about that it’s not a Taboo it’s there so yes AI can be a fantastic tool for example if you have a list of goods and service of 27 pages and you are comparing and you are in page 39 and you don’t know if you have forgotten something in class three which is at your first page so if you can ask J gbt dear um J gbt have I forgotten yes you have forgotten that I I think we all should welcome these kind of things just a quick check or you have um a mark applied for very strange Goods in class one which is a class that I don’t particularly like uh because there are some terms which you don’t understand and then the the earlier Mark is in class two but you have the impression that this is all about the same thing you’re talking about Co coings or this chemical substance and you ask GPT can clarify me put me an example whether these Goods these words correspond to the same thing that sort of help I find it fantastic better decisions more argued or you you know guides you to a different Check Yes always always under our control but for me the most woring thing at the moment in is this sort of documents that are producing a funny Language new language that I cannot summarize well I we one of our exam questions this year is going to be a proposition of intellectual property law given by chat gbt and the question is what if anything is wrong or right about the above and that’s quite a good way of frightening the students they better not be using at gbt we know there’s a big problem with it and but at the same time a really clever exercise now how much is the office using the British office using AI uh we don’t use AI in decision right there like could be used it um we do see quite a lot of gibberish in some of the idas and the pleadings but then again we saw that even before they no don’t you see it more now no no not really no okay yeah that’s I just not recognizing I just assumed it was just more gibberish James you got any comment on this you probably have you seen much gibberish coming in yeah lots of it but for years lot of well uh actually in the trial I’m doing at the moment there is a very long wit statement and there certain paragraphs that are accused to have been written by J chck QB I mean actually it doesn’t matter at all um but there is a suspicion because the language just gets very very very quickly anyway um I I basically AI I think is it’s currently very dangerous um it is going to improve but I I still think we’re going to have to think very carefully about anybody using it and if people um put submissions in that are drafted by CH gbt I think they should expect to have them rejected ah a better solution I like I to be looking for rules maybe a Court rule no submission should be written by chat gbt yeah Senor apartment to be told if it specifically well maybe we we should put the question to the civil procedure Rules Committee yes that’ll take years Douglas how you well well two thoughts one is um I’ve got interesting talk from Comm Burst when he said uh it’s quite good for Treeing box work because box work is the least glamorous bit of judging it’s also paper applications and L judges and all sorts of things um not really necessarily a coure hearing as such but if you get the AI to go through and just summarize it for you can work out oh that’s a three-hour job oh that’s a 10 yes so you don’t need yourself to work out you think that’s quite a good idea I think it’s good idea make a difference um so far as decision- making is concerned there quite a good story about um uh a cancer lab in fact it was two cancer hospitals um and the both the results of the two hospitals went to the same place have an AI to tell if people had cancer and it was actually quite accurate uh but they didn’t know how it was working and eventually they worked out the reason it worked was Hospital a put the x-rays or whatever and a metal marker on the top left and Hospital B put it on the top right so the AI worked out which was coming from hospital a hospital B and then just use the average for Hospital a hospital B so it was quite accurate but you know in in this room round about way and uh if you’re actually trying to use it for substantive decision You’ get the same thing wouldn’t you you wouldn’t know how it was doing it at all well well the the regulation on AI was voted today uh what did they vote the uh there’s a regulation by the EU and I understand that the parliament has agreed today by a vast majority and now has to be signed and agreed by the council I think there’s a there are some interesting prohibitions there in particular if there’s a um an Evidence of infringement of copyrights and things like that but um I have we have to think about how this is going to impact um and I’m sure this will impact the the work on all EU agencies we have to I just uh received the the news this afternoon that the the regulation is was voted all right it’s been voted on do we know if anybody can understand it uh well no no we know we can ask J GPT um I’m I’m I’m concerned about the creation of the agency because there’s an agency that is supposed to take uh care of the uh issues but I don’t know which sort of issues for example the the the problem I just mentioned uh if there is an EU Agency on artificial intelligence can I you know ask them to give me the possibility to refuse the U to accept to say there’s no statement of Grants because they are generated by artificial intelligence I don’t know exactly how this is going to work because we are all absolutely all touched by artificial intelligence but there is an there is an agency foreing right better move on I think social media and user generated contact has changed what goes on because once upon a time companies put their advertisements and they all direct at the consumers and the consumers couldn’t answer back now they do it’s a two-way process what difference has that made has it help us getting a better idea of of consumer perceptions or is it just more noise what have you got a view on that Alan have you got evidence coming in about social media yes I think uh it’s almost a sort of routine part of every uh evidence see you look at now social media people want to tell you how many followers they’ve got and how many people have viewed you know their sites in the last few years uh and indeed you might get some evidence of you know what people to be posting about their products or whatever on their site U occasionally it’s helpful sometimes you can see from the date of the post you know what was going on at particular points in time um sometimes it does points they make about you know the brand or whatever it might be sometimes sort of feeds into one of the arguments that the part is putting forward about how it’s perceived so sometimes it could be quite helpful um it does create a lot of noise because it’s very difficult in terms of the followers for example to know when it was they acquired all these followers because they don’t be usually tell you what when all this happen so you just looking at the vence AR and the relevant dat almost always U and the other thing is that the numbers sometimes can be misleading so you look at it you think well that sounds like a lot of people you know you got ex number of followers or ex number of people visit visit this to your site um but you have to bear in mind that some of these social media accounts are not sort of geographically limited so this could be over a very large territory which people have been looking at this s um and uh also you don’t it’s difficult to know what it represents as a proportion so there’s no substitute for market share evidence for example to say you’ve got you know 10 20 30 40 200,000 followers it might help you paint your picture in in totality U but no it does no substitute for saying what your market share is in a particular Market I think sometimes people mislead themselves into thinking that it is if you just show you’ve got so many thousand followers uh and then when you look at it you say I don’t know where they all are I don’t know how when you acquired them all so all of a sudden the the value of the evidence in that context suddenly starts to plumm it and if then if you put all your eggs in that basket you you could be left high in ground so I would say yes it helps to paint a paint the overall picture of the brand and it’s it’s significance to people uh but it’s no substitute for market share and to over figes specific to to it to the relevant jurisdiction how’s the social media going in Ali County well we have a we have social media everywhere I exactly the same feeling as Alan as as a an argument for acquire distinctiveness we we had a case for a multimedia Mark of the famous uh Turkish CH salt be who filed the the thing he does with the salt on the meat as as a multimedia Mark and uh when we refuse it for meat and restaurant Services he said but I have for I have videos in uh YouTube and on Instagram that have been seen by 14 million people yeah okay but then where and when and you know exactly this issues about territoriality proof of date Etc and we didn’t refuse it because it was a social media evidence but we refuse it because it didn’t comply with the might have all come from South America yeah well um first of all his first restaurant is in Turkey so you know and he has a restaurant in New York and uh so that’s one one type of line of arguments we use we normally use in in acquired distinctiveness now uh on reputation of course the it I mean so far I think we have not accepted a proof of reputation only on the basis of social media very difficult to do that because you don’t have the share you don’t have the proportion I mean nothing will replace a a a very good done a very well done survey now I tell you I draw your attention to the last week judgment from the general court on Rihanna uh again determining trademark law because um uh there was a discussion about the validity of a of a design of puma and um the general court agreed with the third board of appeals saying that the uh picture of ryana showing these new shoes uh destroy the novelty of the of the design so you have to be very careful when you are putting uh new items in in the Instagram or Tik Tok account of uh people that have millions of followers um because it has an effect on this this kind of things like uh novelty but I’m the issue of social media is for example the possibility of um giving certification of the dates or the origin where this is coming from I’m I’m not close and I’m I’m not against taking on board social media of course but we have the constraints we have in the in the law okay from the likelihood of confusion Viewpoint there are two things to bear in mind one is of course we’re not allowed to do surveys anymore that’s into floor in the court of appeal twice they didn’t say that I know know I know but um they’re greatly discouraged compared well you’ve got to be good surface I that that’s what we did in Jem was a good at the same time we’ve had this massive massive growth in social media and increasingly you get a stack of social media evidence and I have very mixed uh feelings about it because sometimes it is clearly just More’s in a hurry just typing something bang off and then in that a vodka case the claimant came along and said oh we’ve got 10 or so absolutely clear like uh instances of Confusion And yet when you looked at the chain of the messaging it proved the exact opposite so you’ve got to be careful with social media I agree with what everyone said thus far the evidence itself is usually a bit useless um but clients think it’s great and it’s cheap and it’s free so they’re always pressing you know tell the judge as many followers we get so you get that pressure um and sometimes it leads to something else uh you’re talking about the the postings the comic and Glee case we had a grand total of one confused person and we got that because she posted something on Twitter saying when they first came out I thought they were connected um and you know so that was actually valuable but it wasn’t valuable because it was on Twitter it was valuable because it pointed us to the the witness yeah right there’s going to be one more and then we’re going to stop it’s a very loaded question in the way it’s phrased I read it in lookalike cases to what extent are Judges taking account of or willing to take account of the large body of consumer Behavioral Science research which makes it clear that the elements of packaging which most influence consumer purchasing decisions are color shape and artwork with brand name being far less important um far less important than trademark lawyers and judges mistakenly think you can’t get more low didn’t question them that I wonder who posed that one and if so how can the courts benefit from this knowledge without C spiring both parties having to hire experts create reports and cross-examine their opponents expert James well I mean this debate about Lites has gone on for decades I mean it was live when I first came to the bar and it’s it’s still live and I mean unless there’s a legislative change to say for example look lights can be stopped um I don’t think this we can take account of this sort of them I mean I I completely get what you’re talking about BR because I remember once sister phoned me up and said go down to on the3 it’s a big supermarket and uh the solic said get how look at where they sell Twix so I did the whole aisle adopted the color and the packaging of Twix and so you’ve got the own brand you got Twix and I mean everybody knows that the the leading brand is used as a signal for the look lights and the look lights cheaper but you know until somebody says they’re either taking unfair advantage or you know you can’t get away from the likelihood of conf I mean the tests are there and if it doesn’t fit then the look likees to survive yeah yeah the question was with AAL science yeah this this idea that the lawyers and judges have that the name is the most important part of packaging when in fact an April site shows the opposite it’s color sh prove it so that’s the point so yeah what going to that is it the Behavioral Science evidence that’s a wealth bit or is it expert evidence which is expens the bing up delete so it’s either you put the research evidence in or do you call an experts the course and the other side con examin what what is the expert in he or she consumer behal science specifically packaging a lot of thearch well I mean I’m telling what El is to you’d have to call you’d have to call somebody and say I’m an expert this is the position nobody and and as a result of this being the reality you should be much the lawyer then says the judge you must infer that there is deception or confusion after all although you can’t prove it any other way I mean I wouldn’t buy it for a moment myself but never mind it’s not the argument isn’t the same the argument is well that’s that’s he’s asking for change of laws James says he’s saying if you want to say no it’s on Advantage well but there is no such thought of unfair Advantage well three oh if it’s a trademark but but this is nothing to do with the trademark this is this is this is all about packaging registration is well if the anyway I think it’s very difficult to debate this in the absence of actually looking at the packaging some some as we know some some lookalikes have been stopped and just hadn’t sh yeah we even without that evidence yeah yeah but I mean the question was about the case where you would bring that evidence said how you do it bring it you know cheaply I think well if it’s a big brand what I couldn’t get if this is a big brand they can and and and against a supermarket it’s not worrying about the expenses T compared with their advertising spend it’s not this is not this is not a a litigation cost problem yeah but the supermarkets are very clever yeah doing this anyway they don’t want to sue the people they don’t they don’t they don’t they the big Brands don’t want to sue them for quite different reasons and they’re their customers the recent case the B case for example it’s not a big br I think I think you got M St position when understand pen anded those but actually an was that sausage one was they’re not EXA big they’re not exactly big Brands what’s happening is that they’re coming out with new products and 6 months later looking like come out and then want try and stop it and we were asking the question merely to say how can we save the money you’re certainly not going to do it by I don’t believe it’s going to be realistic the Big Brand I mean still litigation costs are I know they’re a lot but compared with this what’s involved in most of these businesses they’re peanuts junction junction I just going to say um if you talk about the war of butcher’s case I think that was passing out for the real problem was lack of confusion yeah I I seem to remember some passing off I did about a Melton P pie and it was walls and it was Mrs T’s husband that was on the board of walls um I think they did something quite clever about that to avoid publicity I was at a high court judge at the time and he came into court had one to look at it and it disappeared and the product disappeared too right we are done and dusted I think thank you all the panel they’ve been brilliant haven’t [Applause] they