Trade Marks in Context
When you are reading this article, you are perceiving it. The actuality is another matter. You might speed read it and end up with a very different impression of its content and message than was either intended or objectively understood. The reason for that difference is context and perspective.
Hegel the famous philosopher understood that. He took the view, like many others before him, that we do not know the world we merely perceive it. He came from the philosophical school of idealists. Karl Marx, by contrast, was a materialist. What you see reflects reality. You miss nothing in the translation. That is the translation through your 5 senses into what you believe reality is about.
This might sound a universe away from trade mark law, but that distance is less than one might think.
Those 2 philosophical approaches might be hinted at within the quote:
“In neurophysiology, a distinction is generally made between mechanical and chemical senses. The first group consists of touch, sight and hearing, which are all easily comprehensible because they relate to the concept of shape and form (gestalthaft) and can be described relatively objectively”
But these words are not those of a philosopher of the likes of Hegel or Marx but an extract from the Opinion of Advocate General Ruiz-Jabaro Colome when assisting the Court of Justice in Case C-273/00, Ralf Sieckmann, the judgement in the rose-scented rubber car tyre trade mark application. Could such a rose smell just as sweet if it could be distilled and transposed from the human perception of a scent into some form of verifiable, dare I say it, material, graphic. Some material record of the scent which would become registerable and then protectable.
Words, unlike scents it would appear, quite counter-intuitively, are capable of multiple meanings. Jacob J. in Origins Natural Resources Inc v Origin Clothing Ltd case ([1995] FSR 280 at page 284) said when construing s.10 of The Trade Marks Act 1994 for the first time that it: "requires the court to assume the mark of the plaintiff is used in a normal and fair manner in relation to the goods for which it is registered and then to assess a likelihood of confusion in relation to the way the defendant uses its mark, discounting added matter or circumstances.". The latter words describe the context in which the mark is used.
He repeated that first English law interpretation of s.10(1) Trade Marks Act 1994 in British Sugar PLC v. James Robertson & Sons Ltd., 1996 R.P.C. 281 (Chancery Division) (U.K.), the famous “Treat” case. In it, of the test he said, was a mark-for-mark comparison when it comes to infringement. Added matter, the stuff which might surround a trade mark or the circumstances in which it was marketed to the consumer were to be ignored. If the jam manufacturer took the toppings manufacturers' trade mark “treat” into their label amongst a whole host of other device type imagery, that was irrelevant to a finding of a likelihood of confusion and infringement. Whether a consumer could not see the wood for the trees was irrelevant, even if all the trees were Round Tree's.
Thus, registered trade mark law departed from passing off, where added matter and circumstances of sale had been historically considered to be important.
So from 1996 onwards the UK Intellectual Property Office and the English Courts applied that strict rule. The Courts had opted for idealism over realism. The mark for mark analysis ignored the reality, it blocked out what might be considered obvious or at least relevant. Marx would have turned in his grave. But to be fair to Jacob J. he had only followed suit. That played by Sir Wilfred Greene, the then Master of the Rolls in Saville Perfumery Ltd v June Perfect Ltd and FW Woolworth Ltd ((1941) 58 RPC 147. There, the Defendant to trade mark infringement proceedings could not escape liability by showing that something outside the actual mark itself had distinguished his goods from those of the registered proprietor.
However, the European Court began its divergence from idealism by at least contemplating the existence of a materialist world. In the now famous judgement of O2 v Hutchinson C-533/06, and within the context of comparative advertising, the Court was asked to consider whether the contextual setting of a trade mark was relevant to liability for infringement. Hutchinson had adopted O2's famous bubbles in its own comparative advertising, not quite exactly, but at least thematically. The Court was asked to consider a reference question from the English Court of Appeal concerning trade mark context. Was added matter relevant? The European Court side-stepped the issue. It had answered a question which disposed of the dispute and therefore opted to decline the invitation of the Court of Appeal to answer the reference question. It thereby avoided siding with either realism or materialism. Borrowing terms from astronomy, added matter versus dark matter (stuff in the universe you simply cannot see just like stuff around a trade mark you also treat as invisible).
Ironically it was not until the aptly named Specsavers took on Asda, that the Court took on the analysis through a new set of lenses. In Case C-252/12 Specsavers International Healthcare Ltd v Asda Stores Ltd the Court sided with materialism. Both the Claimant's and Defendant's use of colour whether or not the subject of the mark as registered was relevant to the global assessment of similarity of the respective trade marks. Little did the Court know that it was, by proxy, settling an age-old dispute which had formed the dialectic between the ancient philosophers, idealism versus materialism.
However, the Court in Specsavers misconstrued the 02 judgement. It believed O2 had resolved the added matter issue. It hadn't. Nevertheless, Specsavers relied upon O2 for support of its newly founded ideology: added matter was a relevant factor.
Therefore recently when the High Court decided Iconix Luxemboug Holdings SARL v Dream Paris Europe Inc & another [2023] EWHC 706 (Ch), Miles J. was asked to consider the similarity of 2 allegedly conflicting device marks. That of Umbro and that of Dream Paris. Both comprised two concentric rectangles. Umbro's wider than it was tall. Dream Paris very much more isometric. Miles J. perceived them to be dissimilar to such a degree that he believed the very threshold of actionable similarity was engaged. In passing, there was no evidence of actual confusion between the two before the High Court.
Arnold LJ in the Court of Appeal [2024] EWCA Civ 29 saw something very different. He contemplated the competing marks when viewed from different perspectives, that of a consumer seeing the Defendant's isometric squares from above as well as from behind when born upon footwear and viewed from the eye level of a standing human being. He concluded Miles J. had missed this perspective. So the Court had moved on from added matter to perspective. Arguably the same thing because it is not an appreciation of the Claimant's mark as registered but the apprehension of it by a consume of something beyond it. Squares can become diamonds depending upon your perspective. How many girls might have lost their best friends that way? A classic example of that phenomenon is to be found in Holbein's The Ambassadors. In that acclaimed portrait a human skull is depicted in a visually skewed manner only to be identified in its true form and shape from a particular viewpoint. Possibly unknown to both Miles J and Arnold LJ was that Specsavers was wrongly decided because it in turn wrongly construed O2.
Now context and perspective are both relevant considerations in any assessment of confusing similarity and link. The mark-for-mark approach forever consigned to history. Thus we have arrived at idealism through a misconception of realism: the judgment in 02.
Professor Mark Engelman
Research Associate St. Edmunds College Cambridge
Barrister
Member of the Thomas Cromwell Group
4-5 Gray's Inn