The Consumer Protection Function of Trade Marks: Just so?

This Kat been has thinking a lot lately about trade mark first principles in connection with his participation, together with
fellow Kat Jeremy, in a forthcoming program sponsored by the International Trademark Association (INTA) on the subject of trade marks and overlapping IP rights. One such principle is the recurring assertion that consumer protection is a bedrock of trade mark protection. Is this indeed the case and, if so, how does consumer protection fit within the trade mark protection structure?

Consider the observations made by the distinguished chief judge of the U.S. Ninth Circuit Court of Appeals, Judge Alex Kozinski, in his iconic article, “Trademarks Unplugged” (October 1993, 68 N.Y.U.L. Rev. 960), based on the text of his Boal Memorial Lecture. In the piece, Judge Kozinski considered three situations: the trading of Rolex watches, the sale of clothing bearing the marks of the New York Mets baseball team, and a pirated adaptation of Sega's Cool Spot video game. Going beyond the source function of trade marks, he posited four other kinds of interests embodied in the ownership of a trade mark-—moral, utilitarian, goodwill and free expression. Take the ROLEX watch, being for many a quintessential aspirational good. Because of the low price point of a fake watch, no consumer is deceived into thinking that he has purchased a genuine ROLEX product, nor has the purveyor of the branded watch likely lost a customer because of the sale of the fake watch. This is not to say that the brand holder may not have suffered harm. The question is how to understand the property right of the trade mark owner in such a way as to support the grant of relief in such a situation.

Speaking generally about this question, Judge Kozinski concluded as follows:

"We've considered four different kinds of interests implicated by giving trademark owners a more extensive property right in their marks: moral, utilitarian, goodwill, and free expression. How does a court or legislature go about balancing all of these? Well, as I tell my kids when they ask what I'll do if they run away and join the circus, I don't give advisory opinions. In truth, the hypotheticals I've sketched here indicate that results may be case-specific; many of these are close judgment calls, requiring one to balance interests that point in different directions. Applying these considerations to a particular set of facts requires a normative judgment about the relative importance of competing interests.

It is enough for today to recognize that in our culture, trademarks are doing all kinds of work they weren't originally meant to do. As their new functions become more important, so will the need for law to keep up. It's critical that we consider all the interests at stake and weigh those interests by reference to current reality, not according to rules made up at another time to deal with another reality. Trademarks, trade names, logos, and the other symbols of commerce have evolved. The law must evolve with them.”

The focus of Judge Kozinski’s comments is on the proprietary nature of the trade mark right. In so doing, he does not demonstrate any need to also embrace consumer protection as an alternative basis for the expansion of the trade mark right, even in the light of changing commercial circumstances.

Lest Kat readers think that this approach is limited to the American view of the issue, consider as well the pithy observation made recently to this Kat in an exchange with a highly regarded colleague in CTM practice, who put it simply as follows:

“In the EU, the understanding is that trade marks are IP assets, their protection serving their owners' interests. They do NOT protect consumers, we have other laws for achieving that.”

Here, as well, the position is clear. The trade mark right is a propriety right; protection of the consumer with respect to the use of a mark is not the concern of the trade mark laws.

And so the question: how does the consumer protection function fit as part of the trade mark system? After all, and especially so in certain European countries, unfair competition is a distinct statutory right with respect to trade marks, rather than being an element of the trade mark right itself. Is there any reason to treat consumer protection with respect to a trade mark in a different fashion?

KATNOTE from Jeremy, who has a bit of a bee in his bonnet about the consumer protection function of trade mark law: this seems to be a popular debating topic in the US to the point at which it has generated a rich and energetic literature. So influential is this debate that, in his editorial capacity, he sometimes receives articles submitted for publication in JIPLP that state it as being axiomatic that a function of trade mark law (and often the only function of trade mark law) is the protection of the consumer.

It's worth taking a look at the law in wider terms. The word "consumer" is entirely absent from the Paris Convention on the Protection of Industrial Property;  Part II Section 2 of TRIPS, which deals with trade mark law, makes no mention of the word "consumer" except in the tail end of Art.23.3, which deals with extra geographical indication protection for wines and spirits ("Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled"). The Community Trade Mark Regulation and Harmonisation Directive, which each actually containing the "c" word, do not articulate a notion of a consumer protection function, and no rights or remedies are open to consumers who are unprotected. While the "essential function" of the trade mark in Europe is 

"to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin" (Case C-206/01 Arsenal v Reed)

the protection is given not to the consumer but to the trade mark owner as guarantor of the identity of the origin of the marked goods. 

Consumer protection: are we no more
than canaries in the cage?

As this Kat has remarked on previous occasions, the role of the consumer in European trade mark law is not to be protected but to help the trade mark owner be protected. The consumer is like the canary in the cage which miners used to take underground with them, to detect the presence of poisonous gases. When the canary falls off its perch, dead, the miner carrying the cage knows that it's time to act for his own good. So too, when the consumer falls off his perch, as it were, by being confused, the trade mark owner knows that it's time to act for his own good. In practical terms, neither the canary nor the consumer has much joy in terms of recovery.  

Whether this should be the case is a matter for discussion.  Consumer actions against rogue traders who confuse them, particularly with regard to lookalike packaging, not to mention class actions, might do much to clarify consumer choice in the marketplace and improve its standard of commercial morality.