INTA Special Report: Sir Robin Jacob's Speech

Sir Robin Jacob was the final speaker of the concurrent session ( see previous report here) and opened by stating that

"This is my first time at INTA and I have been told that it involves everyone here exchanging their business cards with everyone else, which by my calculation is 81 million exchanges of cards. I have not brought enough cards."

Sir Robin stated that he cannot give a 100 year perspective on European trade mark law because there has yet to be 100 years of European trade mark law: the Directive was only introduced in 1994, however he was able to comment on UK law. Sir Robin began his substantive speech by giving a short overview of the beginning of trade mark registration in the UK in 1875 and told the audience about the story of the first UK trade mark - that of Bass Beer as a word mark and the more recognisable red triangle. Even back then UK judges were cautious about allowing trade mark and brand owners go too far for registrations. Sir Robin quoted the dicta in Joseph Crosfield & Sons' Application in a case dealing with the registration of PERFECTION for soap

"Wealthy traders are habitually eager to enclose part of the great common of the English language and to exclude the general public of the present day and of the future from access to the enclosure."

This was the general theme of pretty much everything that Sir Robin said during his speech - that the powerful trade mark owners have pushed the boundaries forward over the past several years and the courts are going to start pushing them back. He stated that the wealthy marks, known in chambers as "snob-marks", have been around for hundreds of years and exist today, and these marks try to show off all the time and shout the loudest about others "free-riding" off their esteem. Sir Robin stated that this argument is listened to more by Continental judges than by English ones, which is worrying. He stated that the Continental systems do not seem to have the same suspicious of monopolies than we do in the UK and that they are more comfortable with the fuzzily defined areas of unfair competition (The AmeriKat thinks there should be a drinking game for every time Sir Robin says he hates unfair competition in a speech. One talk she attended by Sir Robin, the AmeriKat would have been on the floor by minute-10). Sir Robin stated that he believed that the Far East is more in favor of competition than that of Europe when it comes to addressing trade mark owner's rights.

Sir Robin concluded his speech by criticizing the L'Oreal v Bellure decision (the AmeriKat agrees) and that this was an unfortunate development in trade mark law in Europe. He stated that

"I think people should be allowed to tell the truth."

So if they say they are a smell-a-like, then why should trade mark law "save" a big brand owner where the consumer is not confused because the defendant has informed the consumer that they are a smell-a-like. A member of the audience took fault with that view, but Sir Robin stated that if someone tells truth in a trade and has not made anything infringing, i.e. making smell-alike perfume is not infringing, then what is the problem? We do not need to protect brands that far, stated Sir Robin.

Probably seeing his time quickly evaporating, Sir Robin starting spilling out other criticisms. He took issue with the terminology used in trade mark law. If we started referring to "protecting a monopoly" than "protecting a brand" people and courts may be more cautious in protecting trade mark rights to such extremes, as that in the L'Oreal case. Also, he said that some of the exhaustion rules in Europe were "stupid", but the Amerikat could not write fast enough to take everything down (did anyone else?). Sir Robin went on:

"Trade marks say something and if they are telling the truth that is okay, but if they are lying they should be strangled."

Sir Robin closed with the following three comments:

1. The impact on technology in this field cannot be predicted and we will not yet be able to understand it.
2. The most important trade marks that matter have always been, are and will always be word marks.
3. From 100 years ago today, there is nothing all that different because trade marks are still performing the same function. [Note: Was this a quick attempt to discuss the functionality doctrine of trade marks and criticism of recent EU case law in this area? Surely not!]

It was a fascinating discussion and spurred a lot of debate following the close of the speeches. One audience member passionately questioned why the panel was so reluctant to refer to trade mark's as property. The panel were in agreement in stating that the use of the word "properly" when referring to IP is not helpful to IP because IP is really only a "bundle of rights". The term "property" also negative in term as it ring-fences rights as "ours" and "not-yours", which is unhelpful PR-wise as well is inaccurate. Miles also stated that if international trade mark systems are to be successful they need to recognize registered marks only in so far as a local use does not pre-date it.

This was the first speech the AmeriKat has seen by Sir Robin since he left he bench earlier this Spring and is very much looking forward to more uncensored commentary on IP law from the bastion of UK intellectual property law