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The Average Consumer in Confusion-based Disputes in European Trademark Law and Similar Fictions

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Abstract

The “average consumer” fiction in confusion-based disputes in European trademark law is the subject of this analysis. Until recently, this average consumer was almost overlooked in the literature, and it is not mentioned in the legislation. This book analyses the average consumer considering legal fiction theory. Further, it analyses the fictions similar to the average consumer in European trademark law (e.g. the informed user in design law and the person skilled in the art in patent law), and the average consumer under the UCPD. The analysis of the average consumer in confusion-based disputes under European trademark law covers EU law and the laws of the UK, Sweden, Denmark and Norway. This chapter provides the purpose, structure and delimitation of the analysis.

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Notes

  1. 1.

    European Parliament and Council Regulation (EU) 2017/1001 of 14 June 2017 on the European Union trade mark (codification), [2017] OJ L 154/3 (the “TM Regulation”). See also Chap. 9.

  2. 2.

    EP and Council Directive (EU) No 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trade marks (Recast), [2015] OJ L 336/1 (the “TM Directive”). Although the previous TM Directive will not be repealed until 15 January 2019 reference in this book is to the TM Directive. See also, Chap. 9.

  3. 3.

    Laustsen, Rasmus D., ‘An Economic Analysis of EU Trademark Law; the Role of the Average Consumer in Trademark Infringement between Two Confusingly Similar Trademarks’, in Lyngsie, Jacob, Mortensen, Bent O. G. and Østergaard, Kim eds., Rets- og Kontraktøkonomi: Law & Economics an Anthology (Djøf Publishing, 2016), 37, p. 42.

  4. 4.

    Former judge at the Court of Appeal of England and Wales.

  5. 5.

    Jacob, Robin, ‘IP and Other Things: A Collection of Essays and Speeches’, (1st edn, Hart, 2015), p. 86.

  6. 6.

    References to “trademark owner,” unless referred to otherwise, also cover “trademark user” since the trademark owner has the right to bring proceedings for infringement of EU and national trademarks, except in a licensing arrangement where an exclusive license is given by the trademark owner (the licensor) to the trademark user (the licensee). “Senior trademark” is taken to be the same as “earlier trade mark.” As defined in art. 8(2)(a)(i)-(iv) of the TM Regulation and art. 5(2)(a)(i)-(iii) of the TM Directive.

  7. 7.

    That the main “woolly areas” are not found in these “double identity” instances is not the same as saying that these issues are not litigated upon.

  8. 8.

    Fromer, Jeanne C., and Lemley, Mark A., ‘The Audience in Intellectual Property Infringement’, Michigan Law Review, vol. 112/no. 7, (2014), pp. 1251, p. 1252. Although Fromer and Lemley’s article analyses US law, their overall considerations apply to a European context.

  9. 9.

    Ibid, p. 1254.

  10. 10.

    Gut Springenheide and Tusky, Case C-210/96, [1998] ECR I-4657, para 31.

  11. 11.

    The “CJEU” is taken to include the Court of Justice, as assisted by the Advocates General and the General Court in line with use of the term in art. 19 (1) and (2) of the TEU.

  12. 12.

    The historical backcloth of the average consumer is analysed in Chap. 8.

  13. 13.

    Dinwoodie, Graeme, and Gangjee, Dev, ‘The Image of the Consumer in EU Trade Mark Law’, in Leczykiewicz, Dorota, and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 339, Weatherall, Kimberlee, ‘The Consumer as the Empirical Measure of Trade Mark Law’, Modern Law Review, vol. 80/no. 1, (2017), pp. 57, Laustsen, Rasmus D., ‘An Economic Analysis of EU Trademark Law; the Role of the Average Consumer in Trademark Infringement between Two Confusingly Similar Trademarks’, in Lyngsie, Jacob, Mortensen, Bent O. G. and Østergaard, Kim eds., Rets- og Kontraktøkonomi: Law & Economics an Anthology (Djøf Publishing, 2016), 37, Jennifer, ‘Revisiting the Average Consumer: An Uncertain Presence in European Trade Mark’, Intellectual Property Quarterly, no. 1, (2015), pp. 15, Blythe, Alice, ‘In Search of Mr. Average: Attempting to Identify the Average Consumer and His Role within Trade Mark Law’, European Intellectual Property Review, vol. 37/no. 11, (2015), pp. 709 and Carboni, Anna. ‘Confusion Surveys and Confused Judges’, Jiplp, vol. 10/no. 1, (2015), pp. 1.

  14. 14.

    Although mentioned by different national judiciaries, in particular the UK judiciaries have in recent years elaborated explicitly on the average consumer. Most notably in the UK High Court in Interflora v. Marks & Spencer, [2013] EWHC 1291 (Ch), paras 194-224, Enterprise v. Europcar, [2015] EWHC 17 (Ch), paras 130-143, Supreme Petfoods v. Henry Bell, [2015] EWHC 256 (Ch), paras 50-55, London Taxi Company v. Frazer-Nash Research and Ecotive, [2016] EWHC 52 (Ch), paras 159-163 and Walton International, Giordano v. Verweij Fashion, [2018] EWHC 1608 (Ch), para 106, and in the UK Court of Appeal in Interflora v. Marks & Spencer, [2014] EWCA Civ 1403, paras 107-130 and London Taxi Company v. Frazer-Nash Research and Ecotive, [2017] EWCA Civ 1729, paras 20-35. Arnold J giving the lead judgement in the mentioned UK High Court decisions is key to developing the UK precedence on the average consumer, and hence more broadly the European discussions on this.

  15. 15.

    Leczykiewicz, Dorota and Weatherill, Stephen, eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), also containing the article on the average consumer in European trademark law: Dinwoodie, Graeme, and Gangjee, Dev, ‘The Image of the Consumer in EU Trade Mark Law’, in Leczykiewicz, Dorota, and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 339.

  16. 16.

    Leczykiewicz, Dorota and Weatherill, Stephen, ‘The Images of the Consumer in EU Law’, in Leczykiewicz, Dorota and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 1.

  17. 17.

    See ibid, p. 14. Two prominent trademark law scholars have been included in that book to discuss the image of the average consumer in EU trademark law. See Dinwoodie, Graeme, and Gangjee, Dev, ‘The Image of the Consumer in EU Trade Mark Law’, in Leczykiewicz, Dorota, and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 339.

  18. 18.

    Samuel, Geoffrey, ‘Is Law a Fiction?’, in Del Mar, Maksymilian and Twining, William eds., Legal Fictions in Theory and Practice (1st edn, Springer, 2015), 31, p. 33.

  19. 19.

    See Chap. 5.

  20. 20.

    And not “he/she” as used by other authors. See among others, Davis, Jennifer, ‘Revisiting the Average Consumer: An Uncertain Presence in European Trade Mark’, Intellectual Property Quarterly, no. 1, (2015), pp. 15, p. 15, Dinwoodie, Graeme, and Gangjee, Dev, ‘The Image of the Consumer in EU Trade Mark Law’, in Leczykiewicz, Dorota, and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 339, p. 375 and Weatherall, Kimberlee, ‘The Consumer as the Empirical Measure of Trade Mark Law’, Modern Law Review, vol. 80/no. 1, (2017), pp. 57, p. 73.

  21. 21.

    Lind, Douglas, ‘The Pragmatic Value of Legal Fictions’, in Del Mar, Maksymilian and Twining, William eds., Legal Fictions in Theory and Practice (1st edn, Springer, 2015), 83, p. 84.

  22. 22.

    Gut Springenheide and Tusky, Case C-210/96, [1998] ECR I-4657, para 14.

  23. 23.

    It has thus been stated by Gummesson: “Marketing situations are not easy to grasp. It should be unnecessary to say that marketing decisions and actions are not just based on analyses of data, because data are mostly hard to find, hard to define, and they are incomplete. The reason I mention this is that there seems to be a scholarly dream that if we just do more research and collect more data (“get all the facts”) we will eliminate uncertainty and risk and make rational decisions. However, the real world does not allow this.” Gummesson, Evert, ‘Qualitative Research in Marketing: Road-Map for a Wilderness of Complexity and Unpredictability’, European Journal of Marketing, vol. 39/no. 3/4, (2005), pp. 309, p. 311. Also, Addis and Podestà have stated that marketing “approaches have been the object of a constant process of systematisation and refining. The activities that can be ascribed to the market domain have been evolving in the course of time, drawing frequently from other disciplines; let us think, for example, of the market segmentation which draws its technique from psychology and statistics, or of the study of purchaser and customer behaviour which availed itself on psychological, sociological, and economic principles and models, and so on.” Addis, Michela, and Stefano Podestà, ‘Long Life to Marketing Research: A Postmodern View’, European Journal of Marketing, vol. 39/no. 3/4, (2005), pp. 386.

  24. 24.

    Towfigh, Emanuel V. and Petersen, Niels, ‘Economic Methods for Lawyers’, (1st edn, Edward Elgar, 2015), p. 18 and p. 25.

  25. 25.

    See Chap. 6.

  26. 26.

    The Court of Justice stated in Björnekulla that national trademark law had to be interpreted by the national court in accordance with not only the wording but also the purpose of the TM Directive 1989. This applied, even if the purpose was contrary to the purpose of the national trademark law as set out in the preparatory works of the national trademark legislation. Björnekulla, Case C-371/02, [2004] ECR I-5791, para 13.

  27. 27.

    See for instance, Mitsubishi v. Duma Forklifts, Case C-129/17, [2018], para 35, Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer. Case C-39/97, [1998] ECR I-5507, para 28 and Arsenal v. Reed, Case C-206/01, [2002] ECR I-10273, paras 48 and 50. Canon referred to CNL-SUCA v. HAG, Case C-10/89, [1990] ECR I-3711, para 14. CNL-SUCA v. HAG and Arsenal v. Reed both referred to Hoffmann-La Roche v. Centrafarm, Case 102/77, [1978] ECR 1139, para 7 and CNL-SUCA v. HAG also referred to Centrafarm v. American Home Products, Case 3/78, [1978] ECR 1823, paras 11-12. Hoffmann-La Roche v. Centrafarm was the first time the Court of Justice referred to the “essential function” of trademarks. On the background of the origin function Simon, llanah, ‘How Does “Essential Function” Doctrine Drive European Trade Mark Law?’, IIC, vol. 36/4, (2005), pp. 401, in particular p. 413-414.

  28. 28.

    Commission Memorandum on the creation of an EEC trade mark adopted by the Commission on 6 July 1976, [1976] Bulletin of the European Communities Supplement 8/76, p. 8, para 11. The memorandum may be considered as part of the preparatory works preceding the TM Regulation 1994. The role of preparatory works as a legal source is discussed in Chap. 3.

  29. 29.

    Ibid, p. 8, para 12.

  30. 30.

    The TM Memorandum 1976, p. 20 (italics in the first quote are added). The guarantee and advertising functions are also mentioned in ibid, p. 8.

  31. 31.

    Opinion of the European Economic and Social Committee on the ‘Proposal for a Directive of the European Parliament and of the Council to approximate the laws of the Member States relating to trade marks’ of 12 November 2013, COM(2013) 162 final - 2013/0089 (COD), [2013] OJ C 327/09, p. 44 para 3.1.2. The EESC is part of the legislative process cf. art. 114 of the TFEU.

  32. 32.

    Recital 11 of the TM Regulation and recital 16 of the TM Directive.

  33. 33.

    Cornish, William R., Llewelyn, David, and Alpin, Tanya, ‘Intellectual Property: Patents, Copyright, Trademarks and Allied Rights’, (8th edn, Sweet & Maxwell, 2013), p. 648.

  34. 34.

    Cf. recital 13 of the TM Regulation and TM Directive and art. 4(a) of the TM Regulation and art. 3(a) of the TM Directive. See also Björnekulla Fruktindustrier, Case C-371/02, [2004] ECR I-5791, para 21, Merz & Krell, Case C-517/99, [2001] ECR I-6959, paras 23-24 and Mendes SA v. EUIPO, Case T–419/17, [2018], para 24.

  35. 35.

    Cf. art. 58(1)(b) of the TM Regulation and art. 20(a) of the TM Directive. See also Björnekulla Fruktindustrier, Case C-371/02, [2004] ECR I-5791, para 22 and Mendes SA v. EUIPO, Case T–419/17, para 25.

  36. 36.

    Hoffmann-La Roche v. Centrafarm, Case 102/77, [1978] ECR 1139, para 7. See also Centrafarm v. American Home Products Corporation, Case 3/78, [1978] ECR 1823, paras 11-12, CNL-SUCA v. HAG, Case C-10/89, [1990] ECR I-371, para 14 and recently building on this, Schweppes v. Red Paralela, Case C-291/16, [2017], para 37. See further on the background of the origin function Simon, llanah, ‘How Does “Essential Function” Doctrine Drive European Trade Mark Law?’, IIC, vol. 36/4, (2005), pp. 401, in particular p. 401-408.

  37. 37.

    CNL-SUCA v. HAG, Case C-10/89, [1990] ECR I-371, para 13 (italics added), and recently building on this, Schweppes v. Red Paralela, Case C-291/16, [2017], para 37.

  38. 38.

    The former being on likelihood of confusion and the latter on protecting a trademarks’ reputation.. Sabel v. Puma, Case C-251/95, [1997] ECR I-6191, (opinion of AG Jacobs) and Parfums Christian Dior v. Evora, Case C-337/95, [1997] ECR I-6013, (opinion of AG Jacobs).

  39. 39.

    Sabel v. Puma, Case C-251/95, [1997] ECR I-6191, (opinion of AG Jacobs), para 32.

  40. 40.

    Parfums Christian Dior v. Evora, Case C-337/95, [1997] ECR I-6013, (opinion of AG Jacobs), para 41.

  41. 41.

    L’Oréal v. Bellure, Case C-487/07, [2009] ECR I-5185, para 58. See also Google France cases, Cases C-236/08 – C-238/08 [2010] ECR I-2417, para 77, Die BergSpechte Outdoor Reisen v. trekking.at Reisen, Case C-278/08, [2010] ECR I-2517, para 31, Portakabin v. Primakabin, Case C-558/08, [2010] ECR I-6963, para 30, Budějovický Budvar v. Anheuser-Busch, Case C-482/09, [2011] ECR I-8701, para 71, Interflora v. Marks & Spencer, Case C-323/09, [2011] ECR I-8625, para 38, Daimler v. Együd Garage, Case C-179/15, [2016], para 26 and Mitsubishi v. Duma Forklifts, Case C-129/17, [2018], para 34.

  42. 42.

    Thus, based on the practice of the Court of Justice, the EFTA Court has ruled that the origin function is the main function of trademarks. See Paranova, Case E-3/02, [2003], para 36 and Vigeland, Case E-5/16, [2017], para 67. Also, the EFTA Court has emphasised the other functions of trademarks as reflected in L’Oréal v. Bellure. See Vigeland, Case E-5/16, [2017], para 71. On the influence of the decisions of the EFTA Court to the analyses of this book, see Chap. 3, Sect. 3.3.2.3.

  43. 43.

    Daimler v. Együd Garage, Case C-179/15, [2016], para 27.

  44. 44.

    The finding by the court was made immediately after it had stated referring to the functions of trademarks other than the origin function as set out in e.g. L’Oréal v. Bellure, Case C-487/07, [2009] ECR I-5185, para 58: “By application of Article 5(1)(a) of Directive 2008/95 [TM Directive 2008], the proprietor of a trade mark is entitled to prevent a third party from using, without his consent, a sign identical with that trade mark when that use is in the course of trade, is in relation to goods or services which are identical with those for which that trade mark is registered, and affects, or is liable to affect, the functions of the trade mark, including not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or service (‘the origin function’), but also its other functions such as, in particular, that of guaranteeing the quality of those goods or services or those of communication, investment or advertising.” Daimler v. Együd Garage, Case C-179/15, [2016], para 26.

  45. 45.

    The quote continues: “Therefore, as a rule, the function in relation to quality is adversely affected, if goods not attaining those quality requirements are commercialised under the trade mark, for example, by licensees or following impairment by the purchaser.” Viking Gas v. Kosan Gas, Case C-46/10, [2011] ECR I-6161, (opinion of AG Kokott), para 45.

  46. 46.

    L’Oréal v. Bellure, Case C-487/07, [2009] ECR I-5185, para 58. See also Google France cases, Cases C-236/08 – C-238/08 [2010] ECR I-2417, para 77, Die BergSpechte Outdoor Reisen v. trekking.at Reisen, Case C-278/08, [2010] ECR I-2517, para 31, Portakabin v. Primakabin, Case C-558/08, [2010] ECR I-6963, para 30, Budějovický Budvar v. Anheuser-Busch, Case C-482/09, [2011] ECR I-8701, para 71, Interflora v. Marks & Spencer, Case C-323/09, [2011] ECR I-8625, para 38, Daimler v. Együd Garage, Case C-179/15, [2016], para 26 and Mitsubishi v. Duma Forklifts, Case C-129/17, [2018], para 34. More broadly, Advocate General Trstenjak stated in Budějovický Budvar v. Anheuser-Busch that “[t]he [legal and economic] functions inherent in or essential or ascribed to a trade mark are manifold. They include, according to legal writing on trade mark law, inter alia the coding, guarantee, origin, identification and individualisation, information and communication, monopolising, naming, quality, distinction, confidence, distribution and advertising functions, without the individual functions always having legal relevance in addition.” Budějovický Budvar v. Anheuser-Busch, Case C-482/09, [2011] ECR I-8701, (opinion of AG Trstenjak), footnote 26 and main text at para 63 of the opinion, including the scholarly sources referred to here.

  47. 47.

    Bently, Lionel, Sherman, Brad, Gangjee, Dev and Johnson, Phillip ‘Intellectual Property Law’, (5th edn, Oxford University Press, 2018), p. 1122.

  48. 48.

    Cornish, William R., Llewelyn, David, and Alpin, Tanya, ‘Intellectual Property: Patents, Copyright, Trademarks and Allied Rights’, (8th edn, Sweet & Maxwell, 2013), p. 646. Similarly, when analysing these other functions of trademarks, Kur and Senftleben have stated that Court of Justice “judgements are notoriously tight-lipped, with information on the core considerations being dispensed in minimal dosage.” Kur, Annette and Senftleben, Martin, ‘European Trade Mark Law: A Commentary’, (1st edn, Oxford University Press, 2017), p. 16, footnote 45.

  49. 49.

    Mitsubishi v. Duma Forklifts, Case C-129/17, [2018], paras 34-37.

  50. 50.

    Gangjee, Dev S., ‘Property in brands. The commodification of conversation’, in Howe, Helena and Griffiths, Jonathan ed., Concepts of Property in Intellectual Property Law (1st edn, Cambridge University Press, 2013), 29, p. 40.

  51. 51.

    Davis, Richard, St Quintin, Thomas and Tritton, Guy, ‘Tritton on Intellectual Property in Europe’, (5th edn, Sweet & Maxwell, 2018), p. 281.

  52. 52.

    Gielen, Charles, ‘Harmonisation of trade mark law in Europe: the first trade mark harmonisation Directive of the European Council’, European Intellectual Property Review, vol. 14/no. 8, (1992), pp. 262, p. 264.

  53. 53.

    Lego is good example of this, when they already as a global company decided in 1973 to apply the same Lego trademark to all its products. See the history of Lego set out here: https://www.lego.com/en-us/aboutus/lego-group/the_lego_history/1970 (last visited 26 May 2019).

  54. 54.

    Griffiths, Andrew, ‘Brands, Business and Social Responsibility’, in Faure, Michael and Stephen, Frank ed., Essays in the Law and Economics of Regulation in Honour of Anthony Ogus (1st edn, Intersentia, 2008), pp. 193, p. 210.

  55. 55.

    This section is an adapted insertion from Laustsen, Rasmus D., ‘An Economic Analysis of EU Trademark Law; the Role of the Average Consumer in Trademark Infringement between Two Confusingly Similar Trademarks’, in Lyngsie, Jacob, Mortensen, Bent O. G. and Østergaard, Kim eds., Rets- og Kontraktøkonomi: Law & Economics an Anthology (Djøf Publishing, 2016), 37, pp. 45.

  56. 56.

    The EESC TM Opinion 2013, p. 44 para 3.1.2.

  57. 57.

    Hauck v. Stokke, Case C-205/13, [2014], (opinion of AG Szpunar), para 30, including footnote 11 of the opinion. Reference was made by Szpunar to Griffiths, Landes and Posner. Landes and Posner are two of the pioneers describing the economic role trademarks play in lowering consumer search costs. See also and Laustsen, Rasmus D., ‘An Economic Analysis of EU Trademark Law; the Role of the Average Consumer in Trademark Infringement between Two Confusingly Similar Trademarks’, in Lyngsie, Jacob, Mortensen, Bent O. G. and Østergaard, Kim eds., Rets- og Kontraktøkonomi: Law & Economics an Anthology (Djøf Publishing, 2016), 37, p. 54-55.

  58. 58.

    See, among others, Cornish, William, and Phillips, Jennifer, ‘The Economic Function of Trade Marks: An Analysis with Special Reference to Developing Countries’, IIC, vol. 13/1, (1982), pp. 41, p. 41 – 42 and Griffiths, Andrew, ‘An Economic Perspective on Trade Mark Law’, (1st edn, Edward Elgar, 2011), p. 61.

  59. 59.

    Ozga, S. A., ‘Imperfect Markets through Lack of Knowledge’, the Quarterly Journal of Economics, vol. 74/no. 1, (1960), pp. 29, p. 29.

  60. 60.

    Cornish, William, and Phillips, Jennifer, ‘The Economic Function of Trade Marks: An Analysis with Special Reference to Developing Countries’, IIC, vol. 13/1, (1982), pp. 41, p. 46 (italics added).

  61. 61.

    Landes, William M., and Posner, Richard A., ‘The Economic Structure of Intellectual Property Law’, (1st edn, Harvard University Press, 2003), p. 168.

  62. 62.

    Akerlof, George A., ‘The Market for “Lemons”: Quality Uncertainty and the Market Mechanism’, the Quarterly Journal of Economics, vol. 84/no. 3, (1970), pp. 488, p. 500. Landes, William M., and Posner, Richard A., ‘The Economic Structure of Intellectual Property Law’, (1st edn, Harvard University Press, 2003), pp. 167.

  63. 63.

    Posner, Richard A., ‘Intellectual Property: The Law and Economics Approach’, the Journal of Economic Perspectives, vol. 19/no. 2, (2005), pp. 57, p. 67. See also Davis, Richard, St Quintin, Thomas and Tritton, Guy, ‘Tritton on Intellectual Property in Europe’, (5th edn, Sweet & Maxwell, 2018), p. 287 and Kur, Annette and Senftleben, Martin, ‘European Trade Mark Law: A Commentary’, (1st edn, Oxford University Press, 2017), p. 8-9.

  64. 64.

    Dogan, Stacey L., and Lemley, Mark A., ‘Trademarks and Consumer Search Costs on the Internet’, Houston Law Review, vol. 41/no. 3, (2004), pp. 777, p. 787.

  65. 65.

    Landes, William M., and Posner, Richard A., ‘The Economic Structure of Intellectual Property Law’, (1st edn, Harvard University Press, 2003), p. 168. Today trademarks are not the only devices solving the information asymmetry. Possible solutions to the information asymmetry, and one solution to avoid selling “lemons” as new cars, are to define what pre-sale information on the products sellers have to disclose to the consumers. Hoffer, George E. and Michael D. Pratt, ‘Used Vehicles, Lemons Markets, and used Car Rules: Some Empirical Evidence’, Journal of Consumer Policy, vol. 10/no. 4, (1987), pp. 409, p. 411. Also, within EU a so-called information paradigm focusing consumer information transparency is said to be one of the main methods of consumer protection. Howells, Geraint, and Wilhelmsson, Thomas ‘EC Consumer Law: Has it Come of Age?’, European Law Review, vol. 28/no. 3, (2003), pp. 370, p. 380-381.

  66. 66.

    Griffiths, Andrew, ‘An Economic Perspective on Trade Mark Law’, (1st edn, Edward Elgar, 2011), p. 2-3.

  67. 67.

    First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks (89/104/EEC), [1989] OJ L 40/1.

  68. 68.

    Recital 1 of the TM Directive 1989.

  69. 69.

    Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark, [1994] OJ L 11 / 1. Jaffey, Peter, ‘The New European Trade Marks Regime’, International Review of Industrial Property and Competition Law, vol. 28/no. 2, (1997), pp. 153, p. 188. Tritton et al have pointed out that it was intended that the TM Directive 1989 and the TM Regulation 1994 should have been introduced at the same time. One reason for this not happening according to the Tritton et al was the thorny road of agreeing on where to locate OHIM. Davis, Richard, St Quintin, Thomas and Tritton, Guy, ‘Tritton on Intellectual Property in Europe’, (5th edn, Sweet & Maxwell, 2018), , p. 296. The author of this book attended a summer school at Bucerius Law School Hamburg in 2014 where the first vice president of OHIM, von Mühlendahl, during a lecture mentioned the negotiations on where to locate the OHIM. In similar veins as Tritton et al, von Mühlendahl held that the negotiation process was a thorny road. Adding to this, von Mühlendahl held that Spain, although maybe not the dream scenario at the time of negotiation, today has to be content with the European Intellectual Property Office (as it is known today) ending up in Alicante since the institution has grown to become a significant player in the EU institutional landscape. This latter reference is merely anecdotal.

  70. 70.

    Recital 1 of the TM Regulation 1994.

  71. 71.

    The Single European Act, of 28 February 1987, [1987] OJ L 169/1 (the “Single European Act”).

  72. 72.

    Treaty of Lisbon amending the Treaty on European Union and the Treaty Establishing the European Community of 13 December 2007, [2007] OJ C 306/01 (the “Lisbon Treaty”). Hence, it was stated in art. 3(1)(f) of the Single European Act that “[f]or the purposes set out in Article 2, the activities of the Community shall include, as provided in this Treaty and in accordance with the timetable set out therein (f) the institution of a system ensuring that competition in the common market is not distorted.” This was reiterated by art. 3(1)(g) of the TEU Pre-Lisbon (both treaties as further defined in Chap. 3, Sect. 3.2.1. The provisions are categorised under “principles.”

  73. 73.

    EP and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (Codified version), [2008] OJ L 299/25. Recital 2 of the TM Directive 2008.

  74. 74.

    Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version), [2009] OJ L 78/1. Recital 2 of the TM Regulation 2009 and recital 3 of the TM Regulation.

  75. 75.

    CNL-SUCA v. HAG, Case C-10/89, [1990] ECR I-3711, para 13.

  76. 76.

    Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer. Case C-39/97, [1998] ECR I-5507, para 28. See also Arsenal v. Reed, Case C-206/01, [2002] ECR I-10273, para 48, Céline SARL v. Céline SA, Case C-17/06, [2007] ECR I-7041, para 27 and recently Mitsubishi v. Duma Forklifts, Case C-129/17, [2018], para 30.

  77. 77.

    Alcon v. OHIM, Case C-412/05 P, [2007] ECR I-3569, para 54 referring to Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer. Case C-39/97, [1998] ECR I-5507, para 28.

  78. 78.

    Weatherill, Stephen, ‘From Economic Rights to Fundamental Rights’, in Vries, Sybe Alexander de, Bernitz, Ulf and Weatherill, Stephen eds., The Protection of Fundamental Rights in the EU After Lisbon (1st edn, Hart, 2013), 11, pp. 29. As Weatherill has pointed out, it is no longer a declared purpose of the EU to create “a system ensuring that competition in the internal market is not distorted.” Art. 3(1)(g) of the TFEU Pre Lisbon. Ibid, p. 32-33.

  79. 79.

    Treaty of European Union (consolidated version), [2012] OJ C 326/13 (the “TEU”).

  80. 80.

    It is now stated in art. 3(3) of the TEU that “[t]he Union shall establish an internal market. It shall work for the sustainable development of Europe based on balanced economic growth and price stability, a highly competitive social market economy, aiming at full employment and social progress, and a high level of protection and improvement of the quality of the environment. It shall promote scientific and technological advance” (italics added).

  81. 81.

    The Charter of Fundamental Rights of the European Union, [2012] OJ C 326/391 (the “EU Charter”). Weatherill, Stephen, ‘From Economic Rights to Fundamental Rights’, in Vries, Sybe Alexander de, Bernitz, Ulf and Weatherill, Stephen eds., The Protection of Fundamental Rights in the EU After Lisbon (1st edn, Hart, 2013), 11, p. 30. Besides the two mentioned reasons for softening of the “economic focus,” Weatherill has also referred to the importance of certain “horizontal clauses” and the “constitutional identity.” Ibid, p. 30-32.

  82. 82.

    Cf. art. 6(2) of the TEU. It is stated in art. 6(1) of the TEU, that “[t]he Union recognises the rights, freedoms and principles set out in the Charter of Fundamental Rights of the European Union of 7 December 2000, as adapted at Strasbourg, on 12 December 2007, which shall have the same legal value as the Treaties.” According to Skouris, the Court of Justice took the approach that the principles of supremacy and direct effect, as touched upon above, “could not hold their ground without being coupled with a system of judicial review of violations of fundamental rights.” Skouris, Vassilios, ‘Preface’, in Peers, Steve, et al eds., The EU Charter of Fundamental Rights: A Commentary (1st edn, Hart, 2014), i. Vassilios Skouris was president of the Court of Justice from 7 October 2003 – 6 October 2015.

  83. 83.

    Phillips, Jeremy, ‘Trade Mark Law a Practical Anatomy’, (1st edn, Oxford University Press, 2003), p. 20-21.

  84. 84.

    See further on the “discounted” consumer from the average consumer model, Chap. 11, Sect. 11.2.

  85. 85.

    As an example of indirect consumer protection, Sanders and Maniatis referred to the origin function as described by WIPO. As an example of direct consumer protection, the authors referred to Council Directive 85/374/EEC of 25 July 1985 on the approximation of the laws, regulations and administrative provisions of the Member States concerning liability for defective products, [1985] OJ L 210/29, but reference could have been made to any number of consumer protection directives, such as the UCPD offering general consumer protection against unfair commercial practices. Sanders, Anselm Kamperman and Maniatis, Spyros M., ‘A Consumer Trade Mark: Protection Based on Origin and Quality’, European Intellectual Property Review, vol. 15/no. 11, (1993), pp. 406, p. 410.

  86. 86.

    Ibid. See also Skrzydło-Tefelska, Ewa, and Żuk, Mateusz, ‘Article 9: Rights Conferred by a Community Trade Mark’, in Hasselblatt, Gordian N. ed., Community Trade Mark Regulation (EC) no 207/2009: A Commentary (1st edn, Beck/Hart, 2015), 295, p. 303.

  87. 87.

    Treaty on the Functioning of the European Union (consolidated version), [2012] OJ C 326/47 (the “TFEU”). The content of art. 12 was previously set out in art. 153(2) of the TFEU Pre-Lisbon where it was placed under the heading “Consumer Protection” to a broader section headed “Provisions Having General Application.” This provision is an example of what Weatherill has denoted a “horizontal clause.” See below in Sect. 1.3. Weatherill, Stephen, ‘From Economic Rights to Fundamental Rights’, in Vries, Sybe Alexander de, Bernitz, Ulf and Weatherill, Stephen eds., The Protection of Fundamental Rights in the EU After Lisbon (1st edn, Hart, 2013), 11, p. 30.

  88. 88.

    This provision appears under Title XV “Consumer Protection” of the TFEU (art. 153 of the TFEU Pre-Lisbon).

  89. 89.

    Weatherill, Stephen, ‘Art. 38 - Consumer Protection’, in Peers, Steve et al eds., The EU Charter of Fundamental Rights: A Commentary (1st edn, Hart, 2014), 1005, p. 1011-1012.

  90. 90.

    As pointed out by Pila art. 17(2) of the EU Charter and art. 118 of the TFEU were the first articles to refer to “intellectual property.” Pila, Justine, ‘Intellectual Property as a Case Study in Europeanization: Methodological Themes and Context’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 3, p. 15. Consequences of this is further touched upon below in Sect. 1.3.3.

  91. 91.

    Recital 21 of the TM Regulation and 27 of the TM Directive.

  92. 92.

    Reference in the opinion was made to art. 17(2) of the EU Charter. Ibid p. 43 section 2.5.1.

  93. 93.

    Reference in the opinion was made more generally to the (alleged) consumer underpinning of EU trademark law and to art. 169 of the TFEU. Ibid respectively p. 44 section 3.1.1 and p. 45 section 3.9.

  94. 94.

    Lloyd Schuhfabrik Meyer v. Klijsen Handel BV, Case C-342/97, [1999] ECR I-3819, para 26. The Court of Justice referred to Gut Springenheide and Tusky, Case C-210/96, [1998] ECR I-4657, para 31.

  95. 95.

    Shoe Branding v. Adidas relating to sports shoes and clothing (class 25 of the Nice Agreement). Shoe Branding v. Adidas, Case C-396/15 P, [2016], para 15.

  96. 96.

    Longevity Health Products v. OHIM relating to certain pharmaceuticals and other preparations for medical or veterinary purposes (class 5 of the Nice Agreement). Longevity Health Products v. OHIM, Case C-81/11 P, [2012]. On the distinction between fact and law (the “fact/law divide”) see Chap. 4, Sect. 4.3.1.

  97. 97.

    Meica Ammerländische Fleischwarenfabrik v. OHIM, Case T-247/14, [2016], paras 37 and 39. See in more detail Chap. 11, Sect. 11.4.1.1.

  98. 98.

    See e.g. LR Health & Beauty Systems v. OHIM, Case T-202/14, [2016], para 23.

  99. 99.

    Google AdWords are now called “Google Ads.”

  100. 100.

    L’Oréal v. eBay International, Case C-324/09, [2011] ECR I-6011, para 94.

  101. 101.

    Interflora v. Marks & Spencer, Case C-323/09, [2011] ECR I-8625, paras 44 and 50 and L’Oréal v. eBay International, Case C-324/09, [2011] ECR I-6011, para 94.

  102. 102.

    See among others, Laustsen, Rasmus D., ‘An Economic Analysis of EU Trademark Law; the Role of the Average Consumer in Trademark Infringement between Two Confusingly Similar Trademarks’, in Lyngsie, Jacob, Mortensen, Bent O. G. and Østergaard, Kim eds., Rets- og Kontraktøkonomi: Law & Economics an Anthology (Djøf Publishing, 2016), 37, p. 40, including references, and below Chap. 11, Sect. 11.4.

  103. 103.

    Commission, Free movement of goods: Guide to the Application of Treaty Provisions Governing the Free Movement of Goods, of 18 December 2013, p. 8.

  104. 104.

    On the meaning of the terms de lege ferenda and de sententia ferenda, see Chap. 2, Sect. 2.1.

  105. 105.

    See Chap. 12, Sect. 12.6 that builds on Laustsen, Rasmus D., ‘An Economic Analysis of EU Trademark Law; the Role of the Average Consumer in Trademark Infringement between Two Confusingly Similar Trademarks’, in Lyngsie, Jacob, Mortensen, Bent O. G. and Østergaard, Kim eds., Rets- og Kontraktøkonomi: Law & Economics an Anthology (Djøf Publishing, 2016), 37.

  106. 106.

    Weatherall, Kimberlee, ‘The Consumer as the Empirical Measure of Trade Mark Law’, Modern Law Review, vol. 80/no. 1, (2017), p. 57-58.

  107. 107.

    EP and Council Directive 2005/29/EC of 11 May 2005 concerning unfair business-to-consumer commercial practices in the internal market and amending Council Directive 84/450/EEC, Directives 97/7/EC, 98/27/EC and 2002/65/EC of the European Parliament and of the Council and Regulation (EC) No 2006/2004 of the European Parliament and of the Council (Unfair Commercial Practices Directive’), [2005] OJ L 149/22.

  108. 108.

    As part of the absolute grounds for refusal of registration, it has to be decided if the sign to be registered is non-distinctive, descriptive or generic and hence bared from registration, cf. art. 7(1)(b)-(d) of the TM Regulation and art. 4(1)(b)-(d) of the TM Directive. The “predictive assessment” of the sign is conducted referring to the average consumer of the relevant category of products. Bently, Lionel, Sherman, Brad, Gangjee, Dev and Johnson, Phillip ‘Intellectual Property Law’, (5th edn, Oxford University Press, 2018), p. 979-980. See also Matratzen Concord v. Hukla, Case C-421/04, [2006] ECR I-2303, para and 24 Nestlé v. Cadbury, Case C-215/14, [2015], para 61, both including references. It is clear from these decisions, that the average consumer must be applied when deciding distinctiveness and descriptiveness. However, so far, the Court of Justice has not stated that the average consumer as such must be applied when deciding genericness. See Björnekulla Fruktindustrier, Case C-371/02, [2004] ECR I-5791, paras 23-25 and Kornspitz Company v. Pfahnl Backmittel, Case C-409/12, [2014], paras 29-30. Signs are barred from registration if they “consist exclusively of: (i) the shape, or another characteristic, which results from the nature of the goods themselves; (ii) the shape, or another characteristic, of goods which is necessary to obtain a technical result; (iii) the shape, or another characteristic, which gives substantial value to the goods.”, cf. art. 7(1)(e)(i)-(iii) of the TM Regulation and art. 4(1)(i)-(iii) of the TM Directive. In assessing (iii) the Court of Justice has stated that the perception of the average consumer is not decisive, however, it is relevant for determining what are “the essential characteristics” of the sign. Lego Juris v. OHIM, Case C-48/09 P, [2010] ECR I-8403, para 76 and Hauck v. Stokke, Case C-205/13, [2014], para 34.

  109. 109.

    For “double identity” disputes as part of the relative grounds for refusal of registration see below footnote 110 and for marks with a reputation see below footnote 111.

  110. 110.

    In the double identity disputes, the perception of the average consumer is used to determine if there is identity between the sign and the mark. LTJ Diffusion v. Sadas, Case C-291/00, [2003] ECR I- 2799, para 52. In art. 9(2)(a) of the TM Regulation: “Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where: (a) the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered” See the TM Directive art. 10(2)(a). As for registration, see art. 8(1)(a) of the TM Regulation and the TM Directive art. 5(1)(a).

  111. 111.

    A later mark is not registrable under the TM Regulation and TM Directive if it (i) “is identical with, or similar to” an earlier mark, (ii) where the earlier mark “has a reputation in the Community” and (iii) “where the use of the later trade mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute” of the earlier mark. The Court of Justice has stated that: Ad (i) For there to be a minimum of similarity between the marks there has to be a “link” between the two and that “[t]he fact that for the average consumer, who is reasonably well informed and reasonably observant and circumspect, the later mark calls the earlier mark with a reputation to mind is tantamount to the existence of such a link, within the meaning of Adidas-Salomon and Adidas Benelux, between the conflicting marks.” Intel v. CPM, Case C-252/07, [2008] ECR I-8823, para 63 and also Adidas-Salomon and Adidas Benelux v. Fitnessworld, Case C-408/01, [2003] ECR I-12537, para 29 and El Corte Inglés v. OHIM, Case C-603/14 P, [2015], para 42. Ad (ii) “A trade mark’s distinctiveness and its reputation must be assessed, first, by reference to the perception of the relevant public, which consists of average consumers.” Intel v. CPM, Case C-252/07, [2008] ECR I-8823, para 34. Ad (iii) to show detriment “to the distinctive character of the earlier mark requires evidence of a change in the economic behaviour of the average consumer.” Ibid, para 77. As for detriment to the reputation of the earlier mark “such detriment is caused when the goods or services for which the identical or similar sign is used by the third party may be perceived by the public in such a way that the trade mark’s power of attraction is reduced.” L’Oréal v. Bellure, Case C-487/07, [2009] ECR I-5185, para 40. “[A]s regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, in so far as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to average consumers.” Intel v. CPM, Case C-252/07, [2008] ECR I-8823, para 36. As for infringement see art. 9(2)(c) of the TM Regulation and the TM Directive art. 10(2)(c). As for registration see art. 8(5) of the TM Regulation and art. 5(3) of the TM Directive.

  112. 112.

    In Danish: “blotlægges Varemærkebeskyttelsens Livsnerve.” Andreasen, Hardy, ‘Varemærkeretten i Konkurrenceretlig Belysning. En Retssammenlignende Analyse Af Varemærkerettens Grundbegreber Og En Fremstilling Af Ejendomstetten Til Varemærker’, (1st edn, Ejnar Munksgaard, 1948), p. 274.

  113. 113.

    Maeyaert, Paul, and Muyldermans, Jeroen, ‘Likelihood of Confusion in Trademark Law: A Practical Guide Based on the Case Law in Community Trade Mark Oppositions from 2002 to 2012’, Trademark Reporter, vol. 103/no. 5, (2013), pp. 1032, p. 1038. Although the article focuses on the registration of trademarks in Europe, the importance of the likelihood of confusion query seems to be stressed in a broader light, i.e. also related to infringement.

  114. 114.

    Fhima, Ilanah, and Denvir, Catrina, ‘An Empirical Analysis of the Likelihood of Confusion Factors in European Trade Mark Law’, IIC, vol. 46/no. 3, (2015), pp. 310, p. 311.

  115. 115.

    In framing the average consumer, there are significant differences between the registration and infringement scenarios. One being that the former is more hypothetical given that the junior trademark is not in use whereas this is not the case in the latter. See for instance, Chap. 10, Sect. 10.2.2 for a further account of the different scenarios.

  116. 116.

    The relative grounds for refusal or invalidity related to the likelihood confusion are found in art. 5(1)(b) of the TM Directive and arts. 8(1)(b) and 60(1)(a) of the TM Regulation. As Bøggild and Staunstrup have pointed out, what has happened in the market between the registration of the junior trademark (and the opposition to this registration) and the invalidation claim by the senior trademark owner may influence the invalidation decision. For instance, it may influence an invalidation decision if it is possible for any of the parties to substantiate that the relevant public has changed or for the senior trademark owner to substantiate that actual confusion has occurred. Bøggild, Frank, and Staunstrup, Kolja, ‘EU-Varemærkeret’, (1st edn, Karnov Group, 2015), p. 430-431. See also, Davis, Richard, St Quintin, Thomas and Tritton, Guy, ‘Tritton on Intellectual Property in Europe’, (5th edn, Sweet & Maxwell, 2018), p. 365-366 and 375 and Mellor, James, David Llewelyn, Moody-Stuart, Thomas et al, ‘Kerly’s Law of Trade Marks and Trade Names’, (16th edn, Sweet & Maxwell, 2018), p. 426-427.

  117. 117.

    See among others, Maeyaert, Paul, and Muyldermans, Jeroen, ‘Likelihood of Confusion in Trademark Law: A Practical Guide Based on the Case Law in Community Trade Mark Oppositions from 2002 to 2012’, Trademark Reporter, vol. 103/no. 5, (2013), pp. 1032, p. 1041 and Dent focusing on the history for confusion in an Australian context in Dent, Chris, ‘Confusion in a Legal Regime Built on Deception: The Case of Trade Marks’, Queen Mary Journal of Intellectual Property, vol. 5/no. 1, (2015), pp. 2. Fhima, Ilanah, and Denvir, Catrina, ‘An Empirical Analysis of the Likelihood of Confusion Factors in European Trade Mark Law’, IIC, vol. 46/no. 3, (2015), pp. 310. and the forthcoming, Fhima, Ilanah S., and Gangjee, Dev S., ‘The Confusion Test in European Trade Mark Law’, (1st edn, Oxford University Press, 2019 (forthcoming)) to be published in March 2017. See also the sources referred by Maeyaert, Paul, and Muyldermans, Jeroen, ‘Likelihood of Confusion in Trademark Law: A Practical Guide Based on the Case Law in Community Trade Mark Oppositions from 2002 to 2012’, Trademark Reporter, vol. 103/no. 5, (2013), pp. 1032.

  118. 118.

    See Maeyaert, Paul, and Muyldermans, Jeroen, ‘Likelihood of Confusion in Trademark Law: A Practical Guide Based on the Case Law in Community Trade Mark Oppositions from 2002 to 2012’, Trademark Reporter, vol. 103/no. 5, (2013), pp. 1032, p. 1041.

  119. 119.

    As explained by Mellor et al “the term “global appreciation” is used in four different contexts in relation to the relative grounds (and infringement): (i) in the assessment as to whether marks are identical(…) (ii) whether there is a likelihood of confusion, (…) (iii) whether there is a link between the earlier and later mark, (…) and (iv) if so, whether the link gives rise to an unfair advantage or would be detrimental to the distinctive character of the earlier trade mark.” Mellor, James, David Llewelyn, Moody-Stuart, Thomas, et al, ‘Kerly’s Law of Trade Marks and Trade Names’, (16th edn, Sweet & Maxwell, 2018), p. 399.

  120. 120.

    As per recital 2 of the TM Amendment Regulation the name of the Office for Harmonisation of the European Union (OHIM) has been changed into the EUIPO and the Community trade mark into the EU trademark.

  121. 121.

    Davis, Richard, St Quintin, Thomas and Tritton, Guy, ‘Tritton on Intellectual Property in Europe’, (5th edn, Sweet & Maxwell, 2018), p. 515.

  122. 122.

    Firth, Alison, Lea, Gary R. and Cornford, Peter, ‘Trade Marks: Law and Practice’, (4th edn, Jordans, 2016), p. 9.

  123. 123.

    In 2017 the number of heard EUIPO opposition decisions on EU trademarks was 6,668 (an increase of 33% compared to 2016) and cancellation decisions on EU trademarks (i.e. including both revocations and invalidations of registered trademarks) was 727 (a decrease of approximately 36% compared to 2016). See the European Intellectual Property Office Annual Report 2017, available at: https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/about_euipo/annual_report/annual_report_2017_en.pdf (last visited 26 May 2019), p. 20-421.

  124. 124.

    See above footnote 110.

  125. 125.

    Senftleben, Martin, ‘Trade Mark Protection - A Black Hole in the Intellectual Property Galaxy?’, IIC, vol. 42/no. 4, (2011), pp. 383, p. 383.

  126. 126.

    The functions, other than the origin functions, were prominently set out in L’Oréal v. Bellure, Case C-487/07, [2009] ECR I-5185, para 58. Bently, Lionel, ‘From communication to thing: historical aspects of the conceptualisation of trade marks as property’, in Dinwoodie, Graeme B., and Janis, Mark D. eds., Trademark Law and Theory: A Handbook of Contemporary Research (1st edn, Edward Elgar, 2008), 41. See below Sect. 1.3.1.

  127. 127.

    Recital 16 of the TM Directive. See also recital 11 of the TM Regulation.

  128. 128.

    For the purpose of European trademark law, see Sect. 1.3 below.

  129. 129.

    The directive was to be implemented by the member states no later than 28 December 1991, cf. art. 16(1) of the TM Directive 1989.

  130. 130.

    Sabel v. Puma, Case C-251/95, [1997] ECR I-6191.

  131. 131.

    Gut Springenheide and Tusky, Case C-210/96, [1998] ECR I-4657 and Lloyd Schuhfabrik Meyer v. Klijsen Handel BV, Case C-342/97, [1999] ECR I-3819. This “trinity” of decisions is analysed in Chap. 10.

  132. 132.

    The early beginnings from Cassis de Dijon to Sabel is addressed in Chap. 8.

  133. 133.

    See among others, Lundmark, Thomas, ‘Charting the Divide between Common and Civil Law’, (1st edn, Oxford University Press, 2012), Zweigert, Konrad, and Kötz, Hein, ‘Introduction to Comparative Law’, (3rd edn, Oxford University Press, 1998), p. 69, Husa, Jaakko, Nuotio, Kimmo and Pihlajamäki, Heikki, ‘Nordic Law - between Tradition and Dynamism’, in Jaakko, Husa, Nuotio, Kimmo and Pihlajamäki, Heikki eds., Nordic Law - between Tradition and Dynamism (1st edn, Intersentia, 2007), pp. 1, p. 9. See also Husa, Jaakko, and Tapani, Jussi, ‘Germanic and Nordic Fraud - A Comparative Look Under the Surface of Commonalities’, Global Jurist Advances, vol. 5/no. 2, (2005), pp. 1, p. 11-12 and p. 14, Husa, Jaakko, Nuotio, Kimmo and Pihlajamäki, Heikki, ‘Nordic Law - between Tradition and Dynamism’, in Jaakko, Husa, Nuotio, Kimmo and Pihlajamäki, Heikki eds., Nordic Law - between Tradition and Dynamism (1st edn, Intersentia, 2007), pp. 1, p. 9, Smiths, Jan M., ‘Nordic Law in a European Context: Some Comparative Observations’, in Husa, Jaakko, Nuotio, Kimmo and Pihlajamäki, Heikki eds., Nordic Law - between Tradition and Dynamism (1st edn, Intersentia, 2007), 55, p. 61.

  134. 134.

    Finalising this book, the current state of the Brexit is that the UK is still a member of the EU, and that the withdrawal procedure under art. 50 of the TEU has been formally initiated, meaning that the UK is due to leave the EU 29 March 2019 with a likely transition period until 31 December 2020.

  135. 135.

    See: https://www.gov.uk/government/publications/ip-and-brexit-the-facts (the website is last updated 1 March 2019) (last visited 26 May 2019). On this website, the UK IPO ongoingly informs about the consequences of Brexit to Intellectual Property law in the UK.

  136. 136.

    Explanatory Memorandum to the Trade Marks Regulations 2018, No. 825, p. 5.

  137. 137.

    Agreement on the European Economic Area Final Act, of 3 March 1994, [1994], OJ L 1 (the “EEA Agreement”). See Chap. 3, Sect. 3.3.2, in particular Sect. 3.3.2.3.

  138. 138.

    The EU (Withdrawal) Act 2018 repeals from the date of the UK exit from the EU the European Communities Act of 1972 that gives force to EU law in the UK. Close to passing by Parliament of the Withdrawal Act on 26 June 2018, the House of Commons on 13 June 2018 rejected certain amendments to the act suggested by the House of Lord that would have made it a mandatory negotiating objective of the Government when negotiating the exit agreement to stay in the European Economic Area. See: https://www.parliament.uk/business/news/2017/september/commons-european-union-withdrawal-bill/ (last visited 26 May 2019).

  139. 139.

    Curtis, Lee, and Somers, Lauren, ‘What a Brexit would Mean for UK and EU Trademark Law’, World Trademark Review, vol. October/November (2015), p. 50.

  140. 140.

    On these decisions, see mainly Chap. 11.

  141. 141.

    In art. 129(3) of the TM Regulation it is stated: “Unless otherwise provided for in this Regulation, an EU trade mark court shall apply the rules of procedure governing the same type of action relating to a national trade mark in the Member State in which the court is located.” See also Davis, Richard, St Quintin, Thomas and Tritton, Guy, ‘Tritton on Intellectual Property in Europe’, (5th edn, Sweet & Maxwell, 2018), p. 296-299 and 513-514.

  142. 142.

    Recital 16 of the TM Directive.

  143. 143.

    See below in Chap. 11. As Tritton et al pointed out in the 2014 edition of their book, the starting point is that it is for the proprietor of the registered trademark to prove “that the use of the sign by a defendant will adversely affect the essential function (or other functions) of a trade mark.” However, referring to Interflora Court of Justice, Tritton et al have seen a deviation from the starting point, since “if either it is difficult to ascertain whether the goods or services of the advertiser originate from the proprietor of the earlier trade mark or indeed, if the average consumer is unable to determine such a fact, then it should be assumed that there is an adverse effect on the function of the trade mark.” In this context, reference was made to Interflora v. Marks & Spencer, Case C-323/09, [2011] ECR I-8625, paras 44-45. Tritton, Guy, Davis, Richard, Longstaff, Ben, et al, ‘Tritton on Intellectual Property in Europe’, (4th edn, Sweet & Maxwell, 2014), p. 406-408, and less elaborative in his recent version of the book. See Davis, Richard, St. Quintin, Thomas and Tritton, Guy, ‘Tritton on Intellectual Property in Europe’, (5th edn, Sweet & Maxwell, 2018), 286-287.

  144. 144.

    Dinwoodie, Graeme B, ‘The Europeanization of Trade Mark Law’, in Ohly, Ansgar and Pila, Justine eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 72, p. 92.

  145. 145.

    Viken, Monica, ‘Legal Aspects regarding the use of Market Surveys as Evidence’, NIR, vol. 3/(2012), pp. 220, p. 222. The article (in English) from which this quote is taken addresses the use of survey evidence in Nordic trademark and marketing law cases. The article is condensing some of the conclusions of Viken’s preceding PhD project (in Norwegian) on the topic, i.e. Viken, Monica, ‘Markedsundersøkelser som Bevis i Varemerke- og Markedsføringsrett’, (1st edn, Oslo, Gyldendal, 2011).

  146. 146.

    Arnoldo Mondadori v. OHIM, Case C-548/14 P, [2015], para 38 and the case law referred to here.

  147. 147.

    PepsiCo v. Grupo Promer, Case C-281/10 P, [2011] ECR I-10153, paras 53 and 59. See Chap. 6.

  148. 148.

    A flipside of this focus is found in Duivenvoorde’s 2015 PhD thesis, “The Consumer Benchmarks in the Unfair Commercial Practices Directive” also considering the UCPD as implemented by the member states and national case law but only focusing on EU trademark law. Duivenvoorde, Bram B., ‘The Consumer Benchmarks in the Unfair Commercial Practices Directive’, (1st edn, Springer, 2015).

  149. 149.

    The Max Planck TM Report pk. 1.21, p. 50. See also below Chap. 7.

  150. 150.

    For a recent mentioning of the principle, see e.g. Dinwoodie, Graeme B., ‘Introduction’, in Dinwoodie, Graeme B. ed., Intellectual Property and General Legal Principles: Is IP a Lex Specialis? (1st edn, Edward Elgar, 2015), 1. That the UCPD is considered a lex generalis stepping aside for lex specialis appears from art. 3(4) of the directive. See also Citroën Commerce v. ZLW, Case C-476/14, [2016], para 42.

  151. 151.

    Cf. art. 3(4) of the UCPD. See also Garde, Amandine, ‘Can the UCP Directive Really Be a Vector of Legal Certainty?’ in van Boom, Willem, Garde, Amandine and Akseli, Orkun eds., The European Unfair Commercial Practices Directive: Impact, Enforcement Strategies and National Legal Systems (1st edn, Farnham, Ashgate, 2014), 109, p. 120-126.

  152. 152.

    The EUR-Lex database provides access to documents such as i) the Official Journal of the European Union, ii) EU law, iii) preparatory acts and iv) EFTA documents.

  153. 153.

    Council Directive of 24 September 1990 on nutrition labelling for foodstuffs (90/496/EEC), [1990] OJ L 276/40. Recital 9 of the directive.

  154. 154.

    EP and Council Regulation (EU) No 1169/2011 of 25 October 2011 on the provision of food information to consumers, amending Regulations (EC) No 1924/2006 and (EC) No 1925/2006 of the European Parliament and of the Council, and repealing Commission Directive 87/250/EEC, Council Directive 90/496/EEC, Commission Directive 1999/10/EC, Directive 2000/13/EC of the European Parliament and of the Council, Commission Directives 2002/67/EC and 2008/5/EC and Commission Regulation (EC) No 608/2004, [2011] OJ L 304/18. In the regulation it is stated in recital 41, that “[t]o appeal to the average consumer and to serve the informative purpose for which it is introduced, and given the current level of knowledge on the subject of nutrition, the nutrition information provided should be simple and easily understood. To have the nutrition information partly in the principal field of vision, commonly known as the ‘front of pack’, and partly on another side on the pack, for instance the ‘back of pack’, might confuse consumers.” (…) A free choice as to the information that could be repeated might confuse consumers. Therefore it is necessary to clarify which information may be repeated.” Furthermore, in recital 43 that “[t]here have been recent developments in the expression of the nutrition declaration, other than per 100 g, per 100 ml or per portion, or in its presentation, through the use of graphical forms or symbols, by some Member States and organisations in the food sector. Such additional forms of expression and presentation may help consumers to better understand the nutrition declaration. However, there is insufficient evidence across all the Union on how the average consumer understands and uses the alternative forms of expression or presentation of the information. Therefore, it is appropriate to allow for different forms of expression and presentation to be developed on the basis of criteria established in this Regulation and to invite the Commission to prepare a report regarding the use of those forms of expression and presentation, their effect on the internal market and the advisability of further harmonisation” (italics added).

    In art. 35 of the regulation it is specified how certain nutrition information “may be given by other forms of expression and/or presented using graphical forms or symbols in addition to words or numbers (…)” one requirement for using these alternative forms of expression is that “d) they are supported by scientifically valid evidence of understanding of such forms of expression or presentation by the average consumer” (italics added).

  155. 155.

    EP and Council Regulation (EC) No 1924/2006 of 20 December 2006 on nutrition and health claims made on foods, [2006] OJ L 404/9. Recital 16 of the regulation states that “[i]t is important that claims on foods can be understood by the consumer and it is appropriate to protect all consumers from misleading claims.” This recital continues in a substantially identical way to set out the relevance of the average consumer akin to recital 18 of the UCPD analysed in Chap. 7. Furthermore, art. 5(2) of the regulation states that “[t]he use of nutrition and health claims shall only be permitted if the average consumer can be expected to understand the beneficial effects as expressed in the claim.” Under art. 13 of the directive certain “health claims” with no reference “to the reduction of disease risk and to children’s development and health” “may be made without undergoing the procedures laid down in Articles 15 to 19, if they are: (i) based on generally accepted scientific evidence; and (ii) well understood by the average consumer” (italics added).

  156. 156.

    Commission Regulation (EU) No 907/2013 of 20 September 2013 setting the rules for applications concerning the use of generic descriptors (denominations), [2013] OJ L 251/7. Recital 5 of the regulation states that “[i]n order, inter alia, to ensure a high level of protection for consumers, the use of claims should not be false, ambiguous or misleading. The same principle should apply for the use of generic descriptors (denominations) which could imply an effect on health. In order to achieve such objective and in line with the principle of proportionality, national authorities will have to exercise their own faculty of judgment, having regard to the case law of the Court of Justice, to determine the typical reaction of the average consumer in a given case.” Italics added. According to art. 1 of the directive, the “[a]pplications concerning the use of generic descriptors (denominations) within the meaning of Article 1(4) of Regulation (EC) No 1924/2006 shall be submitted and presented in accordance with the rules set out in the Annex” of the directive.

  157. 157.

    Commission Directive 2007/29/EC of 30 May 2007 amending Directive 96/8/EC as regards labelling, advertising or presenting foods intended for use in energy-restricted diets for weight reduction, [2007] OJ L 139/22. Recital 4 of the directive states that “[a]llowing claims referring to a reduction in the sense of hunger or an increase in the sense of satiety under the condition that such claims are based on generally accepted scientific evidence and are well understood by the average consumer reflects the evolution in the range and properties of products.” This directive was repealed by the following regulation where the reference to the average consumer does not appear: Commission Regulation (EU) No 609/2013 of 12 June 2013 on food intended for infants and young children, food for special medical purposes, and total diet replacement for weight control, [2013] OJ L 181/35.

  158. 158.

    European Parliament and Council Regulation (EU) 2017/1369 of 4 July 2017 setting a framework for energy labelling and repealing Directive 2010/30/EU [2017] OJ L 198/1, recital 35.

  159. 159.

    See Chap. 4.

  160. 160.

    Hence, McEvoy in setting out different categories of comparative law has described for instance a comparison of EU law and English law as a vertical comparison, whereas a comparison of English law and French law is a horizontal comparison. McEvoy, Sebastian., ‘Descriptive and Purposive Categories of Comparative Law’, in Monateri, P. G. ed., Methods of Comparative Law (1st edn, Edward Elgar, 2012), 144, p. 146.

  161. 161.

    What is understood by European trademark law is further expanded on in Chaps. 2–4.

  162. 162.

    The UCPD has thus been described as “a general clause to cover all economic harm caused to consumers by unfair practices” in B2C relations. Howells, Geraint G., Micklitz, Hans-W, and Wilhelmsson, Thomas, ‘European Fair Trading Law the Unfair Commercial Practices Directive’, (1st edn, Ashgate, 2006), preface.

  163. 163.

    Among others, Davis, Jennifer, ‘Revisiting the Average Consumer: An Uncertain Presence in European Trade Mark’, Intellectual Property Quarterly, no. 1, (2015), pp. 15, p. 16.

  164. 164.

    See among others, on Canadian perspective, Corbin, Ruth M., ‘The Moron in a Hurry – a Creature of Law Or Science?’, in Archibald, Todd L. and Echlin, Randall Scott eds., Annual Review of Civil Litigation 2015 (1st edn, Carswell, 2015), 43 and on an Australian/European perspective, Weatherall, Kimberlee, ‘The Consumer as the Empirical Measure of Trade Mark Law’, Modern Law Review, vol. 80/no. 1, (2017), pp. 57.

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    Rasmus Dalgaard Laustsen

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Laustsen, R.D. (2020). Background. In: The Average Consumer in Confusion-based Disputes in European Trademark Law and Similar Fictions . Springer, Cham. https://doi.org/10.1007/978-3-030-26350-8_1

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