Weight Watchers’ pandemic termination of in-person services didn’t violate consumer protection law

Quintanilla v. WW Int’l, Inc., 2021 WL 2077935, No. 20 Civ.
6261 (PAE) (S.D.N.Y. May 24, 2021)

Weight Watchers shut down in-person services due to the
pandemic. Quintanilla alleged that WW’s cancellation of in-person services, and
transition of its workshop services online, without issuing refunds or any
reduction in membership fees, violated the usual California consumer-protection
statutes and constituted breach of contract, unjust enrichment, and money had
and received.

WW offered three types of subscription-based memberships:
(1) the Digital Membership, which provided access only to WW’s website and app;
(2) the Workshop + Digital Membership, which added weekly in-person group
workshops led by a WW coach; and (3) the Personal Coaching + Digital
Membership, which added one-on-one personal coaching.

Quintanilla alleged that she chose the Workshop + Digital
Membership “in part, because she wanted to participate in the weekly in-person
support meetings.” WW’s T&C state that “[i]n [WW]’s sole discretion and
without prior notice or liability, we may discontinue or modify any aspect of
the Offerings.”

While Quintanilla had standing to claim damages, she lacked
standing to seek injunctive relief. Her continued subscription couldn’t
manufacture standing now that she knew the truth. She “ ‘will not again be
under the illusion’ that WW would maintain in-person workshops, else sua sponte
reduce prices or issue refunds, during this, or a future, pandemic.”

California consumer protection claims: WW argued that no
reasonable consumer would have taken any statements by WW about its in-person
workshops to mean that “WW would never, even faced with a once-in-a-century
pandemic, modify the in-person aspect of those workshops,” especially given its
terms of service. 

The court agreed with WW. “[N]o reasonable consumer could
have understood such representations to mean that WW promised to keep offering
such services even in the face of a deadly pandemic, and in defiance of
dictates of the civil authorities.”  The
terms of service bolstered this conclusion, reserving the right to modify
services, and would have disabused a reasonable consumer who’d believed otherwise.
(Are reasonable consumers required to read the entire terms of service?) The
T&C also allowed Quintanilla to cancel her membership and seek a refund in
the event of, inter alia, “a Workshop closure.” But she didn’t do so, and WW’s
failure to sua sponte issue a refund was not wrongful.

The breach of contract claim
also failed “for the straightforward reason that her contract with WW does not
mention, let alone promise, in-person workshops.”

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acrimony among right-wing pundits isn’t commercial advertising or promotion

Corsi v. InfoWars, LLC, 2021 WL 2115272, No. A-20-CV-298-LY
(W.D. Tex. May 25, 2021) (R&R)

This is a defamation case with a Lanham Act chunk. The
parties are various right-wing public figures. Plaintiffs alleged that, in
InfoWars videos, Alex Jones made false claims that Corsi “seemed to be
extremely mentally degraded to the point of … dementia,” had a stroke, and
does not tell the truth, and Roger Stone falsely stated that Corsi was fired
from a prior job, is an alcoholic, often lies, is willing to perjure himself,
and is a “deep state” operative and a “fraud” who seeks to make political
conservatives look bad. Stone also allegedly attacked plaintiff Larry Klayman’s
reputation, stating that Klayman “could be the single worst lawyer in America,”
has “never actually won a courtroom victory in his life,” and is an “idiot” and
an “egomaniac.”

Plaintiffs alleged that they were competitors of defendants
“as conservative media personalities, broadcasters, authors and columnists on
social media and elsewhere.”

Dealing only with the Lanham Act claims: Plaintiffs’ alleged
injuries didn’t fall within the Lanham Act’s zone of interests. As other courts
have held, “[t]he mere fact that the parties may compete in the marketplace of
ideas is not sufficient to invoke the Lanham Act.” This was not commercial
advertising or promotion, but rather “expressions of opinions as commentary
during a radio show.” (Is failure of the defendant to engage in commercial
advertising or promotion really the same thing as failure of the plaintiff to
allege that it falls within the statute’s zone of interests? Doesn’t matter a
lot, but the court does seem to conflate them.)

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legal memo to existing customers wasn’t “commercial advertising or promotion”

Global Ltd. v. Trade Data Monitor, LLC, 2021 WL 2134909, No. 2:18-cv-01025-DCN
(D.S.C. May 21, 2021)

trade secret/similar case in which IHS owns a database called Global Trade
Atlas, which it acquired from the people who founded defendants, and you can
basically guess what happened next.

false advertising counterclaim arose from a legal memo that IHS sent to
customers who had been contacted by two people on behalf of defendant TDM:

understand that you have been contacted by Trade Data Monitor offering an
equivalent service to the Global Trade Atlas. As you may be aware TDM is a
business owned by an individual who sold the GTI business (including the GTA)
to IHS, and TDM also employs a number of former colleagues of IHS [ ]. I’d like
to make you aware that for a number of reasons we have commenced proceedings
against TDM to protect our proprietary and other rights. Notwithstanding any
proceedings we bring against TDM, we remain committed to support you and all of
our GTA customers and to the long-term development of the Global Trade Atlas.

wasn’t “commercial advertising or promotion” because, first, it was sent to
only 9 customers, less than 1% of customers, and communicating with “such a
minuscule subset of the relevant market can hardly comprise a ‘sufficient[ ]
disseminat[ion] to the relevant purchasing public.’” Second, the memo was not
“part of an organized campaign to penetrate the relevant market.” It was “a
responsive communication to existing customers” rather than “an active
advertisement intended to penetrate a market.”

did the memo breach the nondisparagement clause in the parties’ contract. It
didn’t “unjustly discredit” the principal or “detract” from his reputation; it
didn’t even say that defendants violated the law or breached a contract.

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Peloton’s innovation claims were puffery, but music ads were a problem

Interactive, Inc. v. Icon Health & Fitness, Inc., 2021 WL 2188219, No.
20-662-RGA (D. Del. May 28, 2021)

parties “compete in the at-home fitness market and offer products that allow
consumers to attend live and on-demand fitness classes from home.” They’re
fighting over cross-allegations of patent infringement, violation of state
deceptive trade practices acts, and violations of the Lanham Act. I’m only
addressing ICON’s counterclaims for false advertising, not the patent part of
the ruling.

counterclaimed that Peloton has made false claims in advertisements regarding
its status as an innovator and as a tech company, e.g., that it was a “very
hardcore technology company. We make a tablet computer better than apple … We
are as hardcore of a tech shop as anything in NYC right now.” Peloton also
stated that was Bike is the “first of its kind.” ICON said this was false
advertising, particularly because Peloton licensed the relevant technology from
ICON. “Innovator” and “hardcore technology company” were non-actionable puffery.
So was “first of its kind,” apparently for vagueness/bluster reasons.

also challenged statements by Peloton’s CEO implying that Peloton has no
competitors, such as “Nobody else provides them, so we’re kind of a category of
one.” These too were broad, generalized claims of superiority without any
reference to a specific product or characteristic.

ICON alleged that Peloton engaged in a misleading, bait and switch advertising
scheme with respect to the availability of music on its platform. Though none
of the cited ads referenced any artist or song in particular, the court
understood ICON to be alleging “that the playlists linked in the Instagram
posts contained music that Peloton lacked a license to or soon removed from its
platform.” Peloton rejoined that its challenged Instagram posts “advertise only
the availability of Peloton’s playlist feature.” 
claims did survive. “Telling consumers that they can ‘find the perfect tunes
for [their] on demand ride[s]’ and ‘see the artists and songs powering your
on-demand rides’ and linking to specific playlists reasonably suggests that the
songs contained in the playlists are available on Peloton’s platform.”

claims were treated similarly.

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gold buyer’s “up to 90%” payment claims were plausibly misleading

Gold Cash, Inc. v. Beyond 79, LLC, 2020 WL 9848431, No. 18-CV-00837 EAW
(W.D.N.Y. Dec. 15, 2020)

Previous opinion. 
The parties compete in the market for buying gold from ordinary people.

2010, the Today Show—a morning television show aired on the NBC network—aired a
segment in which it mailed a single item of gold to ten different mail-in
precious metals dealers and compared the prices offered. The Today Show
received the highest offer from Defendant, which offered 90% of market value.
From 2011 to the present, Defendant has published various advertisements
stating that it is ranked or rated “#1” by the Today Show.

some false advertising claims were dismissed, but claims “based on the Today
Show-related advertising” were sufficiently pled. Plaintiff sought to amend the complaint, omitting, inter alia, claims
regarding “latest payouts” stock photographs but adding allegations that
defendant “deceives customers by falsely advertising on its website that it
offers the ‘highest payouts in the industry’ and ‘will pay you … up to 90%
for your precious metals.’ ” It sought to add additional allegations about
customer reviews and test transactions, and about how defendant’s business
operations materially changed since 2010.

new claims regarding defendant’s statements that it pays “up to 90%” of the
value of gold and has the “highest payouts in the industry” were not futile. Plaintiff
detailed three test transactions in which the potential sellers were initially
offered 33-53% of the value of their gold items, only receiving final offers of
up to 87% of the items’ value after a series of negotiations in which the defendant
was unresponsive and gave false information. While the proposed complaint
didn’t plausibly allege literal falsity—it didn’t show that defendant never
pays 90% and it didn’t provide context on standard payouts in the industry—it
did plausibly allege misleading advertising. That’s a question of fact.
Further, the plaintiff identified “specific customer reviews that evidence
confusion regarding the prices paid by Defendant, including reviews stating ‘[Defendant]
should do what they advertise and pay 90% of what the gold/jewelry is worth,’”
etc. These specific factual allegations were sufficient to make it plausible
that consumers were confused or misled.

defendant argued that these allegations improperly to hold it liable for
“statements made directly to individual consumers.” True, wide dissemination is
required for commercial advertising or promotion, but the ads challenged here
were statements on defendant’s public webpage and otherwise disseminated to the
public; individual consumers’ complaints were evidence of those statements’

was the court persuaded that “highest payouts in the industry” were mere
puffery or opinion. Particularly when coupled with the specific assertion that
such payouts were up to 90% of an item’s value, that wasn’t vague or

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student social media use of school colors/logo not plausibly confusing

Arizona Board of Regents v. Doe, 2021 WL 3684116, No.
CV-20-01638-PHX-DWL (D. Ariz. Aug. 18, 2021)

Doe, a real asshole (“deeply unsympathetic,” to use the
court’s terms), advertised “ASU Covid Parties” on a similarly-named Instagram
account and spewed a lot of bile as well as, in its first post, using ASU’s
colors. The Board sued Doe for trademark infringement and related claims; Doe
defaulted. Nonetheless, the court—correctly—refused to allow the Board to expand
trademark and false advertising law to this conduct. The only evidence of
actual confusion was a tweet: “#ASU having COVID parties and claiming it’s a
hoax? I am stopping my alumni [membership] and removing my alumni sticker from
my car and sending back my ASU alumni plate. I am embarrassed to be associated
with thus [sic] ignorant behavior.”

Interestingly, Instagram allegedly refused a TM takedown
request because “the reported party appears to be using your trademark to refer
to or comment on your goods and services,” despite persistence by ASU’s outside
counsel.  However, when the Board sued
and moved for a TRO, Facebook agreed to disable the “asu_covid.parties” account
and prevent the accountholder from creating new accounts, so the Board agreed
to dismiss it as a defendant.

All of ASU’s claims required likely confusion or deception.
That just wouldn’t happen to a reasonably prudent consumer. Only one post, the
first, used ASU’s distinctive maroon and gold colors and ASU’s logo, and the
surrounding context would prevent likely confusion. The accountholder posted
the first two comments in the thread, the second of which was: “Those of you
coming back to Phoenix. We about to get fucking lit.” “Although it is not
uncommon for universities to attempt to appeal to students by imitating their
vernacular, no university would drop the f-bomb in an official party
invitation,” and a reasonable consumer would not have thought ASU was inviting
them to get drunk. “Many of the subsequent messages from the ‘asu_covid.parties’
account affirmatively criticized—often in profane and vulgar terms—ASU’s
leadership and official policies. … Many things can be said about these
offensive and outrageous statements, but it is not plausible (to put it mildly)
that a reasonably prudent consumer would believe ASU was the source or origin
of them.”

Although the one tweet called out “#ASU,” it wasn’t clear
from the “haphazardly worded tweet” whether this individual was actually
confused or simply disgusted that ASU students were sponsoring COVID parties.
Even assuming that 0.0002% of the alumni base believed that the profanity-laden
posts were actually coming from ASU, that didn’t show confusion. “Tellingly,
the comments to the posts suggest that readers believed the ‘asu_covid.parties’
account belonged to a student or group of students, not the university.” And
Doe “expressly identified himself as a community advisor (i.e., student) and
railed against ASU’s administration and official policies.”

Even if other factors like strength of the mark and
similarity of marketing channels favored the Board, “the remaining Sleekcraft
factors are unimportant” in a case, such as this one, where “no rational trier
of fact could find that a reasonably prudent consumer…would likely be

What about initial interest confusion? It didn’t apply
because even the initial post using maroon and gold  “was too crude and profane to create initial
confusion as to its source and origin.” But, “[m]ore broadly, it cannot be the
case that every social media post written by a college student that happens to
use the school’s colors and/or logo in the post, and identifies the school’s
location as the location of the poster, creates initial interest confusion and
qualifies as an actionable trademark violation.”

State trademark dilution: the court, somewhat
disappointingly, declined to exercise jurisdiction over the claim rather than
resolving it.

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infant/child painkiller case dismissed as preempted

Youngblood v. CVS Pharmacy, 2021 WL 3700256, No.
2:20-cv-06251-MCS-MRW (C.D. Cal. Aug. 17, 2021)

Another infant/children acetaminophen consumer protection
case. This one dismisses the claims as completely preempted by the FTCA.

Plaintiffs argued that their claims are consistent with the
FDCA and FDA regulations because of the federal prohibitions on false or
misleading labeling. However, a Tentative Final Monograph (TFM) issued by the
FDA in 1988 and rendered a final administrative order under the FDCA in 2020
was more specific. TFM prescribes labeling requirements for over-the-counter
analgesics for children, including acetaminophen. It directs that products for
children between two and 12 years of age be labeled “for Children,” bear
specific warnings for that age group, and provide specific dosing instructions
for different age ranges. Products for “[c]hildren under 2 years” must bear the
instruction “[c]onsult a doctor.” A drug complying with the TFM and general
labeling regulations “is generally recognized as safe and effective and is not

One recent case with the same theory rejected preemption on
the same grounds, while another found preemption. The court here found that the
plaintiffs’ theory sought to do more than bring the packaging at issue in line
with federal requirements. Plaintiffs complained that the infants’ product,
which is labeled for children between two and three years of age, “does not
state that it is … the same medicine contained in the Children’s Product.”
They sought “clear disclosures that there is no pharmacological distinction
between ‘Infant’s Product’ and ‘Children’s Product’ and that the two products
can be used interchangeably in a manner that is safe to infants and children
alike.” They didn’t explain how these requirements were identical to the
requirements of the 1988 TFM. A win for them would penalize CVS for not making
“representations beyond what the 1988 TFM requires for children’s acetaminophen

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two Zillow false advertising cases, divergent outcomes

REX – Real Estate Exchange Inc. v. Zillow Inc., No. C21-312
TSZ, 2021 WL 3930694 (W.D. Wash. Sept. 2, 2021)

Rex sued Zillow and the National Association of Realtors for
antitrust and false advertising violations. Surprisingly, the antitrust claims
survive, as do false advertising claims agains Zillow.

NAR “is the nation’s largest trade association for real
estate professionals.” Membership includes multiple listings services (MLSs).
NAR’s optional Segregation Rule requires members’ listings obtained through
MLSs internet data exchange feeds to be “displayed separately from
listings obtained from other sources.” NAR also adopted a mandatory rule that
requires a seller’s agent to include in any MLS listing a predetermined offer
of commission to a buyer’s agent, thereby prohibiting any party from later
modifying that commission. “NAR’s members allegedly encourage their customers
to offer high commissions for buyers’ agents, resulting in historically high,
static commissions throughout the United States, with total commissions
averaging about 5.5 percent of a home’s sale price.”

REX is a licensed broker that employs licensed real estate
agents across the nation, but it is not a member of NAR or any MLS and thus has
not agreed to comply with any of NAR’s rules. Home sellers who choose REX’s
services can negotiate a buyer agent commission, and thus pay a total average
commission of 3.3 percent of a home’s sale price. REX lists its customers’
homes on various real estate aggregator websites, including two of Zillow’s
websites, Zillow.com and Trulia.com, the first and fourth most visited real
estate aggregator sites in the US. REX’s listings were historically displayed
on Zillow’s primary search page alongside the listings of MLS participants.

But then “the growth and substantial inventory of
Zillow-owned homes placed Zillow in a new position: Instead of focusing on
being an open access point for consumers to display and access residential real
estate listings, Zillow’s interests turned to its own substantial home
inventory.” In late 2020, Zillow announced that it would join forces with NAR
and several MLSs, publicly committing that “all Zillow-owned homes will be
listed on the MLSs with commissions paid to agents representing buyers.” NAR’s mandatory
Buyer Agent Commission Rule is allegedly the “paramount reason that real estate
commissions are two to three times higher in the United States than in
comparable international markets.” Zillow also announced that it would begin to
use MLS data feeds to populate its websites.

Zillow’s redesigned website, complying with NAR guidelines,
created a separate page or tab, called “Other listings,” that is concealed
behind the primary results page or tab, called “Agent listings.” As a result, consumers see only a portion of available homes
at a time. Even though REX’s customers’ homes are all listed by licensed real
estate agents, its lisitngs are now in “Other listings” rather than “Agent
listings.” REX alleged that this was deceptive and harmful, and resulted in
views plummeting on Zillow’s websites, causing “a corresponding drop in sales
and…lost brokerage service revenues to” REX.

redesigned tab; “other listings” in gray, top right

views after the change

The court found that the antitrust claims were sufficiently
well pled.

Lanham Act claim: Was this commercial advertising or
promotion? The key question was the Gordon & Breach element asking
whether the challenged commercial speech was “for the purpose of influencing
consumers to buy defendant’s goods or services,” a requirement not affected by Lexmark.

The complaint alleged that Zillow joined the NAR and MLSs to
promote its inventory of Zillow-owned homes. It then changed its websites to
comply with the new MLS rules and insulate MLS brokers from competition. The
allegations that Zillow adopted the misleading labeling system “for the purpose
of influencing its customers to use the Zillow Offers business, as well as the
services of other MLS agents, by concealing or discouraging the services of
non-MLS agents like Plaintiff,” were sufficient.

However, REX failed to state a Lanham Act claim against NAR.
“There are no other allegations explaining what NAR did to design or encourage
this particular labeling system on Zillow’s websites, let alone when, where,
and how NAR did it.”

So too with the Washington Consumer Protection Act claims.
Zillow argued that its conduct was “reasonable in relation to the development
and preservation of [its] business.” That was a factual issue inappropriate for
a motion to dismiss, even if such a business purpose defense was available. But
NAR got off the hook for the same reasons as with the Lanham Act claim. 

Picket Fence Preview, Inc. v. Zillow, Inc., No.
2:21-cv-00012, 2021 WL 3680717 (D. Vt. Aug. 19, 2021)

Picket Fence, which publishes listings for homes that are
for-sale-by-owner (FSBO), alleged that Zillow’s policy of providing free online
listings for FSBO homes violated the Vermont Consumer Protection Act and the
Lanham Act and constituted state law unfair competition. The court dismissed
the claims.

“A major incentive for homeowners to advertise with
[Plaintiff] is reaching potential buyers directly through [Plaintiff’s]
publications and avoiding a 6-8% real estate commission” that is typically paid
to real estate agents and brokers. When an FSBO seller lists real property on
Zillow, potential buyers see “Contact Agent” prominently displayed. Agents can
allegedly pay to get their name on the listing or to be the only contact for a
listing. The “Get More Information” tab lists the contact information for
“Premier Agents” first “and the owner is listed at the bottom of the list.”
Zillow allegedly makes it difficult or impossible to contact the owner.

This is allegedly a bait and switch; FSBO sellers “may lose
potential sales” from these listings “because Premier Agents may redirect
potential purchasers to other properties if the [FSBO seller] is not willing to
share a commission with the Premier Agent” or if another property would provide
the Premier Agent with “a better commission.” While Zillow “claims that it is
offering a service for free, [ ] in reality [it] is charging the Premier Agents
so they can advertise on the website of those free ads and receive hijacked
inquiries from deceived buyers.”

Picket Fence, which charges for FSBO listings, allegedly
lost a lot of business to Zillow, and was one of the few remaining FSBO
publications to survive Zillow.

First, Picket Fence lacked standing to sue on behalf of FSBO
sellers.  And it couldn’t sue under the
VCPA because it wasn’t a consumer. Nor could it bring a predatory pricing claim
because it didn’t allege that the free listings weren’t free or below cost, or
that there was a dangerous probability that Zillow would raise prices once competitors
were driven from the market.

Lanham Act claim: Lexmark standing existed, but deception
wasn’t plausibly pled. Picket Fence argued that Zillow misleadingly failed to
“disclose that interested shoppers would be directed to Premier Agents.”
However, since 2017, Defendant’s website has included a disclaimer stating that
“[b]y pressing Contact, [potential buyers] agree that Zillow Group and its
affiliates, and real estate professionals may call/text [potential buyers]
about [their] inquiry.” And Picket Fence failed to identify any representation
that any sales would be “commission free” or any promise that a real estate
agent would not be involved in a subsequent sale. “An FSBO seller remains free
to refuse to deal with a real estate agent and free to refuse to pay a real
estate agent’s commission even if it uses Defendant’s website. Defendant’s
listing focuses only on a preliminary step in a real estate transaction with no
promise as to what happens thereafter. Stated differently, a customer who is
promised a free listing is not promised a commission free sale either directly
or by implication.”

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“tested” can misleadingly imply high performance on test

Carder v. Graco Children’s Products, Inc., — F.Supp.3d
—-, 2021 WL 3909953, No. 2:20-CV-00137-LMM (N.D. Ga. Aug. 31, 2021)

Plaintiffs from fifteen states alleged that Graco made false
and misleading representations about two models of children’s car seats,
specifically marketing them as being (1) “side-impact tested” and (2) safe for
children as small as thirty pounds and as young as three years old. Graco
allegedly knew since 2002 that the seats didn’t appreciably reduce the risks
associated with side-impact collisions (and that there are no federal safety
standards for side-impact testing); that Graco’s own testing didn’t show that
the seats were safe in side-impact collisions; and that the seats weren’t safe
for children under forty pounds or younger than four years old.

A couple of points: The claims didn’t fail under Rule 9(b)
even though some plaintiffs didn’t plead the exact model they purchased or the
exact time, date, and price of their purchases; those details aren’t required
to satisfy Rule 9(b), which requires specificity about “the particulars of the
allegedly misleading statement itself, not .. the circumstances of the
plaintiff’s conduct in reliance on that statement.”

Could the advertising mislead a reasonable consumer? Graco
argued that its statements were true, but the court accepted that, “at the very
least, reasonable consumers could believe that Booster Seats advertised and
represented as ‘side-impact tested’ would offer appreciably increased safety in
side-impact collisions.” And plaintiffs alleged that they didn’t. Even
accepting that “side-impact tested” was literally true, it could still mislead
a reasonable consumer. [Cue XKCD reference.]

There’s a lot of discussion of various state consumer
protection acts. As to state safe harbor provisions, Graco argued that its
seats complied with federal safety standards set by the National Highway Traffic
Safety Administration, but its alleged conduct (stating that the seats were
safe for kids under forty pounds) was neither “required” or “specifically
permitted” by NHTSA. Manufacturers are required to use a label stating a
recommendation for maximum and minimum child sizes, with a lower bound
prohibiting booster seats for kids under 13.6 kg, but it is left to
manufacturers “to determine what that specific safety recommendation should be.”
And NHTSA prohibits misleading labels or instructions, so if “side-impact
tested” misleadingly suggested that the seats offered increased safety in
side-impact collisions, this representation would violate federal rules rather
than complying with them.

However, claims for injunctive relief under Illinois law
failed because plaintiffs didn’t allege an intent to repurchase the seats.

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Reading list: The Confusion Test in European Trade Mark Law

Ilanah Fhima & Dev S. Gangjee, The Confusion Test in
European Trade Mark Law

A very helpful overview. From a US perspective, offers real
insights into how a system of registration primacy differs from a system of use
primacy. A couple of points that I specifically noted: the authors conclude,
based on “a substantial number of cases,” that courts that consider similarity
of marks first are more likely to find confusion. “This is because once the
tribunal has invested the effort in conducting the highly case-specific
comparison of the marks and found them to be similar, it is less likely to
dismiss confusion based on the comparatively formalistic comparison of goods. On
the other hand, if goods are considered first, it is easier to place more
reliance on this element of the test without having one’s perception clouded by
the work done to compare the marks.” I’m not sure one could say the same about
US cases.

It’s also striking how comparatively little distinctiveness
of the mark, or of shared elements of the parties’ marks, matters in the
European analysis versus US analysis, which is more likely to give a narrower
scope to a weaker mark. (Both approaches give broader scope to especially
strong marks, but European cases seem less willing to do the inverse.) That may
be something that relates to use-based versus registration-based approaches. As
the authors report, an analysis of European General Court decisions found “that
the distinctiveness of the senior mark had very little if any bearing on the
outcome of cases” and “visual similarity of marks played the greatest role in
assessing similarity of marks.” (As they note later, visual similarity may loom
larger in Europe because of language differences—for those who don’t understand
the meaning of a word in another language, conceptual similarity doesn’t really

Unlike US cases, in Europe, distinctiveness (or relative
lack thereof) “cannot override the importance of similarity of marks and of
goods,” and the court often rests on similarity of marks and goods only,
wihtout reaching any result on “what the mark’s level of distinctiveness
actually was.” Language differences also inform this result: even where the
majority of EU languages would consider a common element to be descriptive, if
some might not, the doctrine indicates that people who used those languages
would perceive greater similarity and therefore face a greater likelihood of
confusion. As the authors conclude, “[t]he undesirable consequence of this
approach to global appreciation is to grant a broad legal monopoly to ‘weak’
marks.” The CJEU shows the greatest favoritism to weak marks, whereas the
EUIPO, national registries, and national courts “are more sceptical and seek to
narrow the scope of protection for such marks.”

Also, some useful statistics: As of mid-2018, “shapes or
three-dimensional marks constituted 0.55% (10,279) of EUTM applications and
0.41% (6,231) of registrations, while pure colours constituted 0.01% (104) of
EUTM applications and 0.01% (95) of registrations.” And I appreciated the point
that “the most revealing indicator of the commercial significance of colour and
external packaging marks is the extent to which the tobacco industry has sought
to preserve them” in its pitched battle against plain packaging requirements.

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