Fordham Report 2014: SCOTUS, the CJEU and trade marks -- a matter of influence

This Kat had the privilege this morning of participating as a panellist in "Sunrise Seminar II: Supreme Courts and Trademark Law: Why SCOTUS has little influence, why the CJEU has more – but for how long?", one of three Sunrise Seminars that commence at the cosy time of 7.30 am. Marshall Leaffer (Maurer School of Law, Indiana University, Bloomington) introduced the session's keynote speaker, Fordham IP Conference founder Hugh Hansen who asked the question "Who's running the show?"

Regarding the US, Hugb considered the role of the Federal judge, the generation of weak rulings and the lack of policing of trade mark decisions by the Supreme Court. Hugh distinguished between rules and standards; the former are difficult to get around, while the latter are not.

Why should anyone want to become a Federal judge, Hugh asked. Not to follow precedent, it seems, but rather to give back to the public and to society their acquired wisdom as to what should be done and what is just. This is their "natural inclination", as is their desire not to have their decisions reversed.

What is the culture of the Federal courts? All three levels -- district, Court of Appeals and Supreme Court each have their own culture, shaped by the kind of role it plays and the self-perception of the judges who staff them. District court judges have a heavy work load, including administrative chores, with little assistance -- but they are living with the facts, they see who gets hurt and who are the good guys and who are the bad ones. They sense things like "free-riding" and it affects their decision-making processes.

Sir Winston and his gesture:
registrable as a trade mark?

Court of appeals judges have four clerks as against two, fewer administrative responsibilities and the luxury of few time limits. "It's almost a part-time job", Hugh observed -- and no-one dissented. But this means that the judges have time to get things right, which they are expected to do.  They are an  intermediate level of field command in military terms, looking at a larger picture than does the trial judge. Moving on to the Supreme Court, they are like Churchill in his war bunker, making big decisions on the basis of major political and other issues that lower court judiciary are unaware of.  If you are practising trade mark law, it's a mistake to look to Supreme Court decisions since they are atypical of whatever happens in trade mark practice.  Declining to run through the decisions he considered weak or strange, Hugh reminded the audience that the court could not in any event monitor or police what happens to its rulings after it has delivered them.

Moving on to the Court of Justice of the European Union (CJEU), Hugh went right back to the Treaty of Rome and the court's initial role and to the CJEU judges' lack of suitability to handle trade mark law.
Considering their lack of aptitude they do quite well, he conceded.  Hugh then contrasted the experience of the UK and the Benelux when it comes to aligning their trade mark doctrines with that of the CJEU, where the UK has shown a greater willingness to adjust to CJEU norms while the latter has treated EU law as an extension of its own pre-EU case law. Hugh then cited some examples, relating to the registration of single letters and colours, as examples of lack of apparent clarity in following CJEU rulings.  He closed by alleging that there was a general European outcry over the CJEU's Baby-Dry case and that the Europeans would get rid of that court in a moment if they only could.

Judge Denny Chin was the first panellist to speak. He reassured us that judges quite enjoy being reversed; it's a sort of badge of honour. Nor do they do their judging for the money, since their pay is roughly equal to what a three-year qualified lawyer earns.  It's not the job of appellate judges to make sure that lower court judges are following their decisions, and sometimes they don't get followed simply because their decisions are difficult to understand.  Marshall Leaffer agreed, observing that the Supreme Court rarely takes trade mark appeals and that those that it does take are usually outliers rather than mainstream, bread-and-butter trade mark cases.

Peter Ruess (Arnold Ruess, Duesseldorf) was then asked to comment on the European side of things.  Said Peter, the CJEU and the German courts have far more trade mark judges and cases to hear than in the US. The two continents' systems are so different that it's not possible to compare them.

This blogger then pitched in with an impassioned defence of the position in Europe. We have had to shed a history of separate national trade mark cultures in order to adopt a new order, and we're getting there, he said. The CJEU may be manned by judges with insufficient knowledge of commercial issues, but as an institution it's doing just fine: its decisions may be poor but they're easy to follow -- and it can reverse and correct its earlier decisions if needed.

Managing Intellectual Property editor James Nurton, after confessing his desire to be a judge on the Second Circuit, was also broadly supportive of the position in the EU.  At trial level, he observed, citing Dirk Visser's Kay Uwe Jonas memorial speech earlier this year, judges judge on the basis of their instinct.

From the floor, OHIM Board of Appeal member Gordon Humphreys confirmed that things have changed: OHIM has developed a convergence policy and has a "living tool" in its feedback loops for filtering CJEU decisions into examiners' decision-making processes. Spyros Maniatis (Queen Mary, University of London) then reminded us that the CJEU has to adopt a "Lego-like" approach in developing its jurisprudence since it can only answer the questions that are referred to it.