INTA Grapevine Symposium report 4

The fourth and final session of the first day of the INTA Advanced Symposium, "Undressing trade dress", sought to bring everyone up to speed on the law and business developments in US and EU trade dress law in the 15 years or so since the US Supreme Court decision in Two Pesos v Taco Cabana. Moderator D. Peter Harvey (Harvey Siskind LLP, US) led speakers Curt Krechevsky (Cantor Colborn, US) and a late substitute for William D. Raman (Wong Cabello, US), who had been taken ill), Verena von Bomhard (Lovells, Spain) and Jaime Schwartz (YUM! Restaurants International) through a tour of the issues -- particularly the relation between 'traditional' trade mark law, unfair competition/passing off doctrine at state level and the trade dress provisions under s.43(a) of the Lanham Act.

Verena von Bomhard then explained that, in Europe, the term "trade dress" had no legal significance. Elements of product appearance corporate identity might be described as "trade dress" in co-existence agreements, but that's as far as it goes. EU protection is essentially registration-based and the EU IP professional would analyse that which it is sought to protect and then break it into its component parts - a sort of 'protection cascade' of registered trade mark and design rights, followed by unregistered rights. A "complex product impression" might be registered as a trade mark in Europe, but the protection is limited since infringement is based on an assessment of the overall impression of the registered trade mark and the alleged infringing product -- and it can be hard to establish similarity with another complex product on the facts. Three-dimensional marks have become increasingly difficult to register without additional distinctive subject matter.

There then followed a general discussion as to whether lookalikes were a problem in the US. The use of "compare to" language on a product seeking comparison with a leading brand was a case in point, in that it is regarded as informing consumers that the "compare-me" product is not the original. The likelihood of confusion can bne reduced further by vendors offering grey goods or me-too products in one part of their stores while selling premium brands in another (Grey v Meijer, 6th Cir. 2002). Walgreens' practice of using "compare-to" labelling was also mentioned as reducing the likelihood of post-sale confusion. The culmination of this discussion was a procession of participants from around the world saying what the prospects were for trade dress protection in their own jurisdictions.

Jaime Schwartz closed the session with a review of post-Two Pesos as it specifically affected the trade dress of store get-ups,restaurant uniforms and similar items. It is clear that any "generic look" remains unprotectable and that the courts are unwilling to draw a negative inference even from the fact that the alleged infringer can be shown to have committed an act of intentional copying (House Management Inc. v Raleigh Ale House Inc.. 205 F.3d 137, 4th Circ. 2000). Also instructive was the Hooters case (see illustration, right, and note in MIP here), where the plaintiff was unable to establish trade dress rights against an alleged copyist, having previously asserted - in response to allegations of discrimination against a would-be male waiter - that the costumes were in fact functional.