Trademark scholars roundtable: the consumer in different contexts

Session 3:  The
Consumer in Different Trade Mark Contexts
Do the questions that we have looked at in the first two
sessions vary in different trademark and adjacent contexts? Is assessment of
the reaction of the average consumer in trade mark law the same assessment that
is performed in examining consumer reactions in the context of passing off or
unfair competition law or consumer protection or trade practices law? For
example, can we compare the doctrinal apparatus surrounding the “average
consumer” now at the heart of EU trade mark law with the means of determining
the reaction of a “substantial proportion of the public” test under common law
passing off jurisprudence? Is this useful? Does it tell us anything about the
(actual or potential) roles for complementary bodies of law in this space? Even
within the body of trade mark law proper, is the construct of the consumer
different in registration proceedings as opposed to infringement contexts?
Introduction:   Ansgar
Ohly: The notion of average consumer in unfair competition and right of
publicity/right of personality (German law). 
Unfair competition: development of the notion in European law and
relation to TM law.
Notion of average consumer has origins in unfair competition
law, 1984 Directive against misleading advertising, and also in cases involving
free movement of goods. W/o harmonization, standards for advertising were
different—protection very strict in Germany, 10-15% misled = sufficient for
misleading. Some saw this as undue restriction on free movement. ECJ decided it
was disproportionate to ban misleading advertising where an average consumer
wouldn’t be misled. Originally created as a harmonization device.
Some complain that average consumers aren’t as sophisticated
as ECJ assumes.  Directive on B2C
relations: defines average consumer as one who’s reasonably well informed and
reasonably attentive/circumspect, taking into account cultural and linguistic
factors. There must be consumer relevance: the consumer must be caused to take
a transactional decision which he or she otherwise wouldn’t have taken.  ECJ stresses Directive is committed to higher
level of consumer protection—much more protective than it used to be.  Purely
Creative/Office of Fair Trading
about aggressive sales practices. Reminds
one of 1970s German case law: consumers ar easily misled.  Also, causing confusion is misleading advertising.
27 of 28 provide civil law remedies, except the UK, to
enforce the Directive, so competitors can bring a private action. Evident
problem of overlap in most countries. German SCt: Hard Rock Café in Heidelberg—not
licensed by the Hard Rock Group.  How can
this be?  He was there before they were,
early 1980s when there was only a London Hard Rock and not a protected TM. He
has older rights and also there’s an acquiescence issue. But if you ask whether
there’s an issue of consumer confusion, then yes: tourists particularly.  (German © law would not cover the Hard Rock
logo, which he used.)  Conflict b/t TM
logic and unfair competition law: German SCt decided that TM logic prevailed
and that TM logic needs to be taken into account in unfair competition
analysis, even though Directive does not have exceptions or provisions for
balancing competing interests.
TM law: in past, would’ve said TM was less fact specific and
more formal, looking at similarity of signs, similarity of goods, and
distinctiveness of the mark, and not much at what the consumer does in
particular circumstances.  However, TM
law might become more unfair competition-like: (1) keyword cases.  Needs to be inquiry into “adverse effect on
the origin function,” and such an effect is assumed if ad suggests commercial
link or is so unclear that consumer doesn’t know.  Duty of providing information = unfair
competition concept. (2) Specsavers: using factors external to the register are
taken into account in confusion inquiry. Less certainty.  Risk of overprotection. But also makes
clearer what the functions of a TM are and you may avoid overprotection/protect
only when there’s a real likelihood of harm.
Personality/merchandising rights: German law is much closer
to US law than English law.  German =
personality right protecting privacy and publicity at the same time, monistic.
UK = no right of publicity, so only way to protect Rihanna against sale of
T-shirts w/her image is to use passing off, which requires confusion.  Rihanna: High Court decided this was passing
off, on the merit of those particular facts, b/c there had been a previous
relationship w/Rihanna and Top Shop. So consumers might think she was behind
this particular campaign.  At pains to
stress this was very fact specific. 
Contrast b/t passing off approach and German law. He thinks: if you want
publicity rights you should say so; looking at the consumer clouds the issues
of a monopoly right over use of name/image. Doesn’t think consumers care
whether T-shirt is official or unofficial. 
Either choose IP or nothing.
Rebecca Tushnet

US: average consumer is target consumer; 10-15% can be sufficient.  Accidental convergence or rough justice at
least from a Western perspective?  Idea
of considering alternatives: what could the advertiser have done instead to
communicate its message?  In TM, we say
the alternatives are infinite so we don’t need to worry about losing
information from suppressing a particular use, but that might not be true. In
false advertising we should worry more: if there’s a truthful message received
by 50%, we might not want to suppress it if suppression reduces confusion to 5%
but also reduces comprehension of the truthful message to 5%. Richard Craswell’s
work on this is excellent.
Jennifer Davis persuasively argues that changing economic
and social conditions allowed the courts, in trade mark cases, to abandon a
view of consumers as heterogeneous and divided by class, education and income
and instead to assume the existence of an average consumer whose perceptions
were key.  I want to reiterate my call to
think of consumers and not the consumer—the plurality/bell curve concept is logically
independent of the idea of treating consumers differently in different
contexts, but I think that conceiving of consumers in the plural more easily
allows us to adjust to different contexts, such as the nuclear reactor not run
by Homer Simpson.  Also, though Barton
Beebe as usual insightfully criticizes the way that the shift to variations
among TMs, not variations among consumers, has become more central to TM tests,
I think there’s also a role for seeing the consumer change as she moves through
her day.  The marketing and psychological
evidence does suggest many contextual determinants of attention and choice,
though how that can fruitfully be translated into TM cases remains to be seen.
Indeed, I’ll suggest that the marketing evidence might disrupt the project of
TM law as distinguished from unfair competition/false advertising law law.
Surveys in false advertising cases: Part of a general
pattern of offering a rich account of the reasonable consumer and what s/he
cares about and what she doesn’t care about, even when the cases don’t involve
surveys.  Individual buyer testimony is
relatively more common, and the buyers get to tell their whole stories—why they
made the decisions they did, or at least why they think so though they may not have great insight into their own
motivations and they too are of course affected by what we’ve been calling the
Heisenberg principle that asking the consumer changes how the consumer
thinks.  But regardless, we do get a more
3D picture of the consumer in the false advertising cases because of the
concept of materiality: TM law structurally isn’t set up to offer this thicker
account of consumer decisionmaking.  One
reason, I think, is because many times the TM would be part of what doesn’t
matter to most consumers, so the account of the consumer compressed only into
her response to the TM is inherently contradictory: it is at least not
US false advertising law has taken a very different approach
to surveys from US TM law, dividing cases sharply into those involving literal
falsity, where no other evidence of consumer reaction is required, and implicit
falsity where only survey evidence—and
usually not expert testimony or testimony from individual consumers—is considered
sufficient.  Doctrines exist to blunt the
force of this division and it doesn’t work that well in my opinion, but it’s
notable that this is essentially a cost management doctrine: surveys aren’t
worth their costs in many cases where the message is clear.  It’s not a normative decision but an
empirical one, in the division we’ve been using.  So the consumer is notionally the same
consumer as we confront in TM but we have different ideas about how to figure
out what she’s thinking when it comes to false advertising instead of TM.  We could instead try to ramp up the
evidentiary requirement in certain troubling infringement cases, as apparently
the European courts have done in dilution by requiring proof of an economic
effect on the mark—it wouldn’t be that the consumer differs, but that our
confidence in whether we can determine the outcome without a greater
investigation into the specifics of the plaintiff’s particular consumers
Another specific type of consumer I would like to discuss is
the consumer we reject: Found in the context of counterfeiting cases (or even
post-sale confusion cases, such as the Atmos clock case in the US).  She’s the bad consumer: the one who is seeking
counterfeits. Reaction of this consumer is generally excluded from our
averaging process—not a matter of comprehension, but a matter of valuation.  She knows quite well that she is not getting
the authentic version and doesn’t care. 
She fits on the “nonconfused” end of the spectrum, but it turns out that
we don’t just want a 2-dimensional spectrum; we exclude her and shift our
inquiry to the more easily confused. 
(She is also the only defendant-side consumer whose existence is
routinely acknowledged, which makes things even rougher on defendants, pace Mike Grynberg’s work.)
Primary Discussants:   
Graeme Austin: Typical C&D in NZ says we’ll get you for passing off,
TM infringement, and violation of consumer law. Many cases: courts just work
through those causes of action.  (Google
keywords was litigated as consumer protection matter, not private cause.)  Array of similar causes of action. 
Coherence: we lack a coherent approach to unfair
competition, but Australia wants coherence in all private law.  High Court has said this is an important
value.  We should try to achieve
coherence between common law and regulatory/statutory law.  In a case expanding TM owners’ rights,
Australian court said: policy of TM Act shifted balance of objectives of TM
more toward identification and protection of TM owners than the protection of
consumers, though that remains an objection. Misleading conduct laws also
protect consumers. Reasoning: consumer protection law does the necessary job of
protecting consumers, so TM can shift more to producers.  Jigsaw: different statutes doing different
things; TM is buffered by modern regulatory laws directed at consumer welfare.
Licensing arrangements/settlements: these can affect
consumer welfare, but we don’t police them against misleading/deceptive
conduct. Maybe, if those private arrangements result in misleading consumers,
we should look to consumer protection and not TM (RT: which would lead to the
end of the naked licensing doctrine). 
Divergences b/t Aust. and NZ: NZ law says consumer protection shouldn’t
override TM law, but Austl. allows consumer protection to pop up in copyright
etc.  History of consumer protection law
in Aust/NZ: NZ took the Australian Trade Practices Act prohibition against
deceptive practices, then added broader consumer protection laws, borrowed by
Aust. in recent laws—sense that traders should be subject to one body of law. Interestingly,
TM laws of both countries have some significant divergence; parliament is not
seeing TM as part of this jigsaw of consumer protection.
Compare statements of statutory purpose: TM statutes are
about TMs, not consumer protection. Reflects historical position that consumer
confusion isn’t the only game in town. 
What does this say about relationship b/t TM and consumers,
and fundamental purpose of TM law?  Dogan
described purpose as lowering search costs/enhancing competition.  Wonders if thinking about TM as part of a
cluster of laws that go to information in the marketplace would change
that.  Consumer information story: can it
be downplayed when there are other consumer protection laws surrounding it?
Remedies: seeing in IP flexibility in the remedies, and that’s
possibly a good thing for balance.
Finally: other torts, like negligent misstatement—there the
liability is conditioned on reasonable reliance by the recipient on the
information.  Normative tool for
balancing risks of speaking in the market: the speaker is not the insurer of
the recipient of the information. Something to borrow for TM law? The consumer
needs to do some work.
Stacey Dogan: Search costs v. other goals: struggling w/role
of search costs/competition in TM in the US. 
Can’t generalize, but thinks there’s a tension between economic model
and TM law in practice which reflects normatively impulses that can’t be
explained by the economic model—anti exploitation.  (She calls it economic model b/c if you say “search
costs” people get hung up on that and miss the ultimate goal.)  “Taking unfair advantage” doesn’t seem
explainable on any economic basis: more like natural rights. Parallels in US
law. Economic model is very appealing in that it suggests why we protect TMs
and also suggests limits on TM, but may be descriptively inaccurate for many
Annette Kur: procedures are not harmonized/type of
enforcement is diverse and different courts decide, so in practice
harmonization becomes very difficult. 
Better to have it all in one law. 
Coherence in the way Austin described works if the use of the TM owner
is regulated by consumer protection acts. 
Something that TM law allows the proprietor to do may still be
prohibited by consumer protection law. 
But what about Hard Rock? Much more difficult. TM law admits there is a
conflict, but there are rules, like priority. From a systemic point of view, we
accept the conflict w/unfair competition law. 
No good & coherent solution to be found if you have two different
legal acts regulating the same behavior. Need coordination beyond a general
principle of leaving consumer protection to other laws.
Austin: that was part of my point: we need to give more
attention to how TM fits into the consumer protection scheme.
Kur: the bad consumer—in European law we “solved” that
problem by saying we don’t care about her b/c we don’t need likely confusion by
applying special rules for counterfeits/double identity. Does that solve the
problem? It at least deals w/it practically.
Sir Robin Jacob: Ohly said TMs were less fact specific than
unfair competition; many times that must be so b/c the registered marks aren’t
in use, maybe on both sides. But once there is an actual mark in use suing
another use, they may look at the facts on the ground: which is what happened
in Specsavers.  But so many TM fights are indeed
shadowboxing. We should pay less attention to that kind of case. 
When you have TM comparisons, registries start developing
formulae for TM comparisons. And they tend to be ridiculous rules.
British perception of Germans: Germans thought any TM was an
infringement of another mark.  Terrapin
and Terranova: confusing?!  But that has
changed.  Introduction of average
consumer did send a message.  But we’ve
now made a hell of a mess about the average consumer, when really all the court
had in mind was to exclude outliers—there’s a range of average consumers.
10-15% is quite serious—6 million people in this
country!  Figure should be lower. But we
must be sure they are being deceived, b/c mostly consumers aren’t as stupid as
courts/TM offices think they are. 
Enforcement: we’ve made a mistake b/c the best person to
look after the deceived consumer is the deceived consumer; we need a cause of
action beyond malicious falsehood.  Must
allow advertisers to be a bit hyperbolic.
Dev Gangjee: Functional definition of consumer—consumer as
citizen where information is a tool; rational consumer in contract law;
etc.  Less pressure to go for a single
idea. But if we see TM as part of broader ecosystem, and it’s ok for other
areas to do the heavy lifting, what’s left of the idea of the consumer in
TM?  If meaningful engagement w/consumer
is happening elsewhere, are we back to consumer as alibi?
Bill McGeveran: Q of who is the victim in various areas of
law: in various areas, we’re no longer looking out for the consumer—e.g., right
of publicity.  Without consumer in TM, to
what extent would similar interventions have occurred to protect
producers/people currently deemed TM owners? 
Judge Frank in Haelan who
splits privacy and publicity rights and says we need to protect them both.  Nothing in that case on the effect on
purchasers of baseball cards.  What law
would remain w/o consumers? Would it look all that different?  Consumer may be post hoc
rationalization/stalking horse for other interests.
Laura Heymann: Hard Rock: was there any discussion of a
possible disclaimer?
Ohly: not an issue b/c court said TM law/acquiescence
trumped consumer protection. Few other cases mostly involving the internet did
use disclaimers.  We could end up in
Arsenal-type situation where we put up a sign and the ECJ says a clear
disclaimer is immaterial to TM law. But now it has effect in unfair
Heymann: though we know disclaimers are often ineffective.
Ohly: also very hard to do here specifically: the Hard Rock
logo is so recognizable that it’s hard to dissuade consumers.  Court distinguished b/t ongoing operation of
restaurant and sale of goods: each sale is a new infringement—so they can’t
sell merchandise any more b/c it’s a new TM infringement each time.
Kur: it’s true many TM conflicts are not real world
conflicts and the rights are broader in the books than in reality.  Brings us back to distinction between
registration and infringement.  But
should that lead to a situation where the legal principles we apply differ as
between the proceedings?  [RT: The way
this conversation is going indicates that we have been using the consumer as a
concept to pack in other issues; very little in this discussion is about the
consumer.]  For systemic reasons, we don’t
distinguish in our black letter law.  TM:
Like requiring a distance between cars to avoid crashing.   Unfair competition: geared towards a
materialized crash, thus geared more towards examining precise circumstances of
crash; scope of protection turns out to be smaller.  (RT: This metaphor raises the ‘congestion/we
are building too many highways/we are encouraging too many people to buy cars’
issue pretty clearly.)
Graeme Dinwoodie: if you took the consumer out, what would
happen?  We could shrink TM so it wasn’t
trying to protect the consumer, but maybe that would broaden the scope of TM
McGeveran: my prediction as well.
Austin: More nuanced—protection of consumers remains an
objective, just shifted.  [RT: also
wouldn’t you still need the consumer to evaluate scope, if you were at all
interested in actual confusion or dilution?]
Dinwoodie: use can expand scope (Specsavers) or to
restrict/confine the scope of the mark. Should we have a unidirectional
rule?  Sanctity of register v. consumer
protection point in different directions. 
Without use after 5 years there’s no need to maintain stuff on the
Barton Beebe: Does the US even have TM law, as defined by
this slightly more formal approach taken by Europe?  We seem to be unfair competition, very
fact-specific.  Much less shadowboxing.  More a question than a claim.
Dinwoodie: our casebook completely assimilated §§32 and 43—effectively
the same.
Litman: the first and second edition of our book came out
before Two Pesos; there were
different rules then.
Beebe: now we tell our students there’s no difference in
infringement standards between the two. 
(And they ask why we made them learn all the registration stuff!)  Jacob’s criticism of niggling rules for TM
offices; but wouldn’t it be worse without these rules?
Jacob: they’ve never had clients, they’re isolated—they’re a
kind of monastery.  But you have to
understand that the rules are artificial; general courts have less excuse [for
deferring to them?].
Beebe: we don’t squarely address commercial ethics/morality
in the US, possibly set to the side. TM law without God, secular and
utilitarian?  Or talking to God directly,
without rules.  At the same time,
morality sneaks back in through general sense of fairness. 
UK has no misappropriation law as such: you must show
misleadingness to win misappropriation; there’s no raw misappropriation.  What about fairness?
Jacob: it’s legitimate
Dirk Visser: or you come up with another thing to call it,
like the Rihanna case—just deny there’s a misappropriation theory underneath
Jacob: old English libel case, Tolley v. Frye, 1935.  Amateur golfer and chocolate co. published an
ad implying endorsement, and golfer sued for libel saying people would think he
was taking money for that. He won.
Jennifer Davis: TM, unfair competition, and consumer
protection law are 3 quite different things in some ways.  UK 1862: first consumer protection law, while
unregistered TM law already existed to protect traders’ goodwill.  1875: first registry bill, b/c traders wanted
international reciprocity.  UK: w/out
registration, test is whether goodwill has been affected, and one way of
finding that is confusion, but there are different ways of thinking about
consumers reflected.  Though in practice
the confusion might be pretty much the same.
Jacob: I used to say that if there was no passing off there
was no infringement as a general rule. 
An unused registered mark was another matter.

Davis: empirical evidence: we have split cases deciding liability and then
damages.  One of the reasons we avoid
empirical evidence so much may be because in the first action we don’t have to
show any actual damage.
Jacob: have to show it’s likely.
Davis: but never have to quantify. [But this is also true in
the US, for injunctive relief.]
Jacob: most countries split liability and financial
compensation.  US often puts them
together which doubles the size of the case/changes the whole dynamic.
David Llewellyn: too bad for Hard Rock.
Ohly: but what about the consumers?
Llewellyn: consumer protection law, the consumer is a party
or there’s a representative body there for her. We shouldn’t forget that the
consumer isn’t represented by the TM owner; not a party to the litigation. This
is a commercial dispute; consumer protection law is philosophically very
different, and we shouldn’t elide the legal differences.
Cases treat passing off as an add-on.  But statute says likelihood of confusion for
infringement; passing off is about/should be about deception, not likelihood.
There is a conceptual coherence if you look at them as serving their own
functions.  But judges here throw them
all in and in the US they do too. 
Complete mess.  [Though §43(a) says
likely confusion too!]
Mid-point summary:   Robert
Burrell: TM infringement as precautionary principle: When you’re acting as an
attorney you think you’re acting on the precautionary principle, trying to
carve out a space for your clients just in case. So when you register for “software”
in general, you think you’re protecting your client, not massively
inconveniencing other traders who make completely different kinds of software.
TM law and other actions: registration based systems: quite
often when we want to expand protection we jettison discussion of consumers and
talk about property rights/fairness/dislike of copying.  Confusion is usually the end of discussion
when we talk about consumers, but what happens when we want to impose a
limiting doctrine?  We use the average
consumer to say there’s no liability, but really she might be and we just don’t
care. Lack that vocabulary.
Excision of class distinctions in average consumers.  Need to be careful—illiteracy still exists.
If we try to unite consumer protection & TM, keep in mind the other
functions of consumer protection law, like regulating payday loans. Careful
about letting difficult-to-confuse consumer in TM filter back to consumer
protection so the consumer is expected to read and understand a bunch of
6-point type.  [Confusion about what? That
question can really help, I think—numeracy is generally low, but brand
understanding may be high.]
There is a technocratic element to TM law. When judges are
setting rules, they have to be applied by lawyers and bureaucrats, and common
understandings develop.  Don’t pretend a
small/medium enterprise routinely looks through the TM register; it’s
lawyers.  So when we think about rules,
bear in mind the rules are applied by people who are immersed in the sytem to
people who are not.  Having 3 clear
factors is better than “just look at it” given 10s of 1000s of marks and the
desire for some consistency.  Also
remember the speed at which examiners turn over.  Examiners are often there for only a year or
two; they need a set of rules to apply.
Double identity: you abstract away from the actual use sign;
you abstract away from the goods to the registered goods; then we have double
identity; then we have likely confusion—we’ve gone very far in our
precautionary principle—too many layers of precaution.  Practice of industry: lawyers register
everything possible; then next layers of precaution pile on.
Michael Grynberg: Problem of multifaceted consumer. The
empirical consumer might be the metric of liability, or delineation of property
boundary; the consumer as end or policy goal. “Public” or “citizens” might be a
better term. Intermingling of conceptions of how consumer should be—divorcing policy
priors from that construction is difficult. Go to another regime, raise
independent question of what we want that law to do and whether that affects the conception of the consumer.
Another issue: transparency. If we have an IP right, we
shouldn’t dress it up as unfair competition, as Ohly says, when the confusion narrative
doesn’t hold up.
Coherence: do doctrines fit or overlap [or conflict]. Do we
need to interpret different regimes in light of each other and do we need
different consumer constructs for each? 
[The more I hear this the more troubled I get. The consumer is the same
person facing the different regimes. If we want any empirical element, we need
to deal with that.]  We don’t always need
the construct of the consumer even if the consumer’s public/policy face is
present—that’s one role of shortcuts in some doctrines.  We don’t necessarily need to evaluate ideal
consumer’s likely confusion.  Given the
difficulty courts have of isolating what they mean when they say ‘consumer,’
this multifaceted consumer does need to be contained. One way: doctrines that
act as constraint—we don’t go to false advertising surveys if we have literal
falsity.  ACPA: doesn’t require consumer
confusion if there’s cybersquatting.
Even if courts stop playing games w/ consumers, there are
plenty of other heuristics to play with. Even if we had a vision of the
consumer we all accepted, the uncertainty/fudging could be shifted to another
realm, like confusion.
Michael Handler: Feedback effect: TM expands to consider
passing off issues in Australia, then passing off expands to catch things like
character merchandising.  Complicates a
clean delineation of what the statutes are intended to do. 
What it means for registration in Aust.: The standard of
confusion for registered marks is if consumers would “wonder” if there was a
connection—very low standard.  Often the
case that 250-paragraph judgment with 220 paragraphs looking at market and
finding no passing off; then a few more para. saying the standard is lower for
registration and thus there’s TM infringement.
Jacob: suing for registered TM infringement v. also adding
passing off is a huge decision.  Arsenal
case: Arsenal should never have sued in passing off, because they didn’t have
evidence of deception.  If they’d done it
on TM infringement alone, they’d have needed no evidence—same mark, same goods,
done.   Favorable facts: then you add passing off and
get emotional impact.
Discussion of protection for generic/descriptive terms
against confusion: McGeveran: American example of Blinded American
Veterans.  If there really is confusion,
should the law act?  Then-Judge Ginsburg
used unfair competition principles to say it’s generic, but there’s bad will
and resulting confusion.  But this isn’t
a pop-up enterprise; it has long established goodwill/attempt to divert it.
Heymann: Remedies—you can use the term but you need a
disclaimer. Similar with Murphy bed—you can use the name, but can’t call it the
McGeveran: pointed to as example of why you need some rump
non-TM unfair competition law, whereas in most cases there’s complete overlap.
Dirk Visser: is intent more important or likely confusion?
McGeveran: Good question—case talks about both.  (RT: NY Ct App case in famous marks case of Bukhara requires bad faith; confusion
alone wouldn’t be enough and that’s an analogous situation.)
Grynberg: more cited by law reviews than cases; extreme
Litman: incoherence: secondary meaning doesn’t count b/c it’s
generic, but secondary meaning also produces unfair competition remedy.
Jacobs: Menswear shop called Cording; breakaway director
started Gnidroc.  Bad faith?  No one would be confused.  But if D is trying to get trade, court will
presume he’s succeeded in his intent—D knows best the mysteries of his
Sentfleben: if one field becomes more empirical, does that
create pressure on other related fields to become more normative?  Fine tuning w/unfair competition/passing
off.  Apply hard rules on genericism to
prevent TM rights, but then unfair competition.
Visser: if you prohibit any IP right, it pops up again under
unfair competition whether you like it or not.
Dinwoodie: German law—TM law was supposed to be normative
and unfair competition empirical—is this switching places?
Kur: German unfair competition law is also normative to an
extent, but at the core the risk of misleadingness would lead Germans to look
more to empirics/facts of the case, rather than an abstract kind of space
around a given TM. The rule that stronger marks get more protection is
normative everywhere.
Burrell:  Not
everywhere.  Reputation can be a double-edged
sword: recognition will be improved so proof of infringement will be harder in
Visser: in many countries choice between TM or unfair
competition can be triggered by other considerations—France has separate courts
and separate remedies. Netherlands: cost award requirement only applies to TM,
not unfair competition, so everyone goes for TM; same issue w/intermediate
remedies. Don’t look for the theoretically best cause of action, but the practically
best. That’s a big reason different countries choose different paths.
Jennifer Davis: People may fear losing registration—if the
mark is descriptive.  Unfair competition
may be more expansive way to go, not
less as we [Europeans] often perceive it.
Jacob: the rule of ECJ, fame equals more protection, is
obviously factually incorrect. It must
be a rule of law.
Grynberg: Going back to Blinded American Veterans, Ginsburg
never ordered any of the remedies we’ve discussed; said the district court
could work it out.  Look at their
webpages today: no disclaimers. The equitable bailout in US TM law is really
very narrow.
Llewellyn: the passing off and registered TM infringement
causes of action have converged in Singapore. 
Some people suggested that there should be no protection for
unregistered marks—that’s one way of approaching the issue, though it didn’t
get very far.
Kur: our approach to the conflicts may differ by which rules
we’re trying to navigate. If we say the consumer is the same, we just transform
those issues into the way in which we assess confusion.
McGeveran: There are some of these claims where we disregard
the consumer of entirely—right of publicity.
Dinwoodie: Legal transplants: the ECJ taking the advertising
notion of the consumer and transplanting it into TM will be harmful unless they
reconstruct it w/attention to the different goals.  But we can get comfortable w/messiness if we
take that care.

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