CIPIL spring conference 2008

Trade Mark Dilution: Putting An End to (all the) Confusion: Faculty of Law, University of Cambridge, Saturday 15th March 2008

While the concept of dilution has been discussed since Schechter’s famous Harvard Law Review article in the 1920s, the matter only took on real relevance in the UK when the Trade Marks Act 1994 came into operation. After a few low level decisions, the ECJ provided some ‘guidance’ in General Motors v Yplon, Davidoff v Gofid and Adidas v Fitnessworld, but there remain many issues on which the guidance of the courts is required: What is the difference between a well-known mark and a mark with a reputation? What is the relationship between 'reputation' of a mark and brand values or brand image? When are two marks so similar that a consumer will make a 'link' between them? What is meant by 'detriment to distinctive character'? Is it possible to identify when such detriment will occur? Will it only occur in relation to invented marks? Will it ever occur by use of a similar mark? Does the concept of detriment imply 'unfairness'? What is meant by 'detriment to repute'? What is meant by 'unfair advantage'? Does 'unfair advantage' require harm 'present or prospective' to the trade mark owner? Does the notion of 'fairness' allow for a balancing of 'freedoms, rights and interests'? When is a sign used 'with due cause'? Has this notion been construed too narrowly? How does the concept of dilution mesh with the requirement of 'trade mark use' (or at least that the use 'jeopardise the essential function(s?) of the mark'? Does parodic use take unfair advantage of the repute of an earlier mark? Do the exceptions apply to such use? Will article 10 of the ECHR be brought into play? What justification, if any, exists for the broad protection offered to trade marks? What problems would a broad construction of s. 10(3) cause? With two references from the English Court of Appeal (Intel and L’Oreal), it is time for some of these questions to be answered.

This conference brought together over seventy academics and practitioners from the UK, Europe, Japan and the US, and proved to be a very stimulating and informative day. The speakers were: Lord Justice Jacob (Chair), Richard Arnold QC, David Keeling (Board of Appeal, OHIM), Professor Graeme Dinwoodie (Chicago-Kent/QMUL),  Professor Ansgar Ohly (University of Bayreuth), Professor Martin Senftleben (Free University of Amsterdam, Emmanuel Baud (Latham & Watkins, Dr Dev Gangjee (London School of Economics), John Noble (British Brands Group), David Llewelyn (White & Case)and Dr Jennifer Davis (University of Cambridge).

The fourth Emmanuel interdisciplinary workshop, on copyright and piracy, took place on July 1 2008. Speakers included William St Clair (Book History, Trinity), Nick Groom (English, Exeter), Jason Toynbee (Music, Open University), Alan Durant (Linguistics, Middlesex), Jonathan Aldred (Economics, Emmanuel), Loraine Gelsthorpe (Criminology, Cambridge) and legal commentators include Catherine Seville, Isabella Alexander, Jane Ginsburg, David Le Franc (Poitiers), Martin Kretschmer (Bournemouth) and Graeme Dinwoodie. An edited collection with CUP will be published early in 2010.

The conference was sponsored by MLaw and the drinks reception following it by Cambridge University Press