Annie-Blake_Trade marks and Linguistics

Trade marks and linguistics: - A paper focussing on the role that linguistics plays in trade mark law, with reason and recommendation for trade mark practitioners to utilise linguistics further within their application of the law - Student Number: 120624120 Word Count: 5,453 Table of Contents I Introduction Likelihood of confusion 1.1 1.2 1.3 1.4 1.5 1.6 Legal Context Linguistic Context Strength of the mark The requirement for a mark to be distinctive Descriptive marks and secondary meaning Generic marks 4 6 Dilution Passing Off 11 Every day Practise 12 4.1 Registration Practise 12 Perspectives 14 II Conclusion 16 III Bibliography 17 I Introduction “The starting point of trade mark law in many contexts is an understanding of how signs actually work in context, and linguistics is one way of establishing that starting point for words” The role and influence of linguistics within trade mark law is a contentious issue Whilst linguists point out that knowledge of linguistics is important for practicing in trade marks, particularly in relation to word marks, slogans and composite marks containing words, those in trade mark practise tend to be ignorant of even the basics of linguistics, often misunderstanding the discipline entirely Shuy, a highly acclaimed linguist, asserts that even judges can be ignorant to the job of a linguist and many legal practitioners are of the thought that linguistics is little more than a grasp of grammar and foreign languages2 Linguistics can be utilised to analyse words in general or, if required, finer detail such as the assessment of phonetic structural features of words with regards to vocality, voicing, intonation, stress, vowel quality and site of production in the mouth (otherwise known as distinctive feature analysis)3 The more in-depth analysis however can sometimes be considered unhelpful in trade mark litigation when a linguist presents technical findings to lay persons, or when, at the point of analysis of the trade mark (mark hereafter), at expert level, when paying due regard to the perception of the mark by the general public, certain features identified by a linguist may not be consciously understood by a consumer, therefore rendering complex analysis superfluous as Shuy aptly points out, “There is a fine line between being overly technical and being convincingly clear”4 What trade mark practitioners tend to overlook however, is the inherent value in understanding linguistics and whilst this field is criticized for being too technical, some case studies have indicated that complex phonetic approaches (such as distinctive feature analysis), have played a beneficial role in the assessment of word marks and have hence lead to successful litigation5 Although the use of linguistics is not entirely contested (because it is already a recognised and called-upon specialism within trade mark law), this report not only aims to highlight the extent of its importance, but also aims to present to the reader ways in which trade mark practitioners could implement the application of forensic linguistics to better assist the course of trade mark practise Dinwoodie, G, What Linguistics can for Trade Mark Law, in Bently, Davis et al, Trade Marks and Brands: an Interdisciplinary Critique, CUP, 2008: 140 Shuy, R, Linguistic Battles in Trademark Disputes, Palgrave Macmillan, 2002 Ibid Ibid: 75 Ibid There are many kinds of marks as laid out in the definition of what a mark constitutes in the TMA 1994: “any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings”6 To present this argument, I will be solely focussing on word marks as they are key to linguistic discussion; even OHIM recognise that, “the word component of the sign usually has a stronger impact on the consumer than the figurative component This is because the public does not tend to analyse signs and will most readily refer to a sign by its verbal component” Whilst I will be primarily focussing on marks under relative grounds as such emphasis on comparison between marks will itself highlight important aspects of linguistic analysis, absolute grounds of refusal will occasionally be referred to due to conceptual overlap within this paper where certain subsections (eg Descriptiveness and genericism), fall under both legal concepts To further enhance debate, I will be drawing upon UK trade mark law and US jurisprudence and academic argument, which in itself is abundant with linguistic insight The paper will be sectioned into relevant areas of trade mark law where linguistics is either currently utilised or could be utilised further In each section, I will be drawing upon relevant case law in order to demonstrate that knowledge of linguistics is not only useful, but vital to the practise of trade marks The areas covered are ‘Likelihood of confusion’, (covering vital concepts requiring a linguist’s attention such as descriptiveness and genericism), ‘Dilution’, the common law of ‘Passing Off’ and ‘Every day practise’ (under which I will discuss pre-registration processes to show that knowledge of linguistics and verbal similarities is not just important in opposition/infringement cases but also to everyday trade mark practise) The report will also briefly touch upon balanced perspectives to offer a rounded debate alongside the legal context., before concluding the discussion with emphasis on suggestions for ways in which the two fields of discipline could move forward together to form a mutually reliable relationship Trade Marks Act 1994 (TMA 1994), s1(1) ‘Office For Harmonization in the Internal Market’ (accessed 26 March 2014) Likelihood of Confusion 1.1 Legal Context Likelihood of Confusion (henceforth ‘LOC’), is used in the assessment of similar or identical marks and goods in relation to opposition proceedings (Section 5(2) (a) and (b) of The TMA 1994), and infringement proceedings (Section 10(2) of the same Act)8 In the leading case of Sabel v Puma 1997 9, the courts outlined a relevant test in which suitable areas of assessment are required for consideration to ascertain whether a LOC has occurred In assessing a similar or identical mark, the courts stated that, “The global appreciation test of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components”10 These factors should be considered globally with regard to the notion of the average consumer Linguistics is relevant to the concept of LOC with respect to the assessment of similar marks 1.2 Linguistic Context A linguist may be called upon to comment on visual aspects under the global appreciation test, however, trade mark law recognises the importance of focussing on aural features just as much as visual features because one should be relying on the “ear as well as the eye”11 I will therefore mainly be concentrating on the aural aspect as this factor is most notable to the argument of the need for linguistics in trade mark Law This point is further supported by the fact that the average consumer makes an assessment on a mark in its overall entirety and is expected to distinguish between two marks with an imperfect recollection of both, reflecting that aural features between marks would be a substantial factor in causing LOC This was acknowledged in Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV 199912 (following interpretation of Art.5(1)(b) of the Council Directive 89/104), where it was the opinion of Mr Advocate TMA 1994, s 5.2 (a)(b), s 10.2 Sabel BV v Puma AG [1997] E.C.R I-6191 10 Council Directive 89/104 Art.4(1)(b)(2) 11 ‘Westlaw’ (accessed 05/03/2014) 12 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] All E.R (EC) 587 General Jacobs that, “it is possible that mere aural similarity between trade marks may create a likelihood of confusion”13 In practise, in-depth aural investigation can provide better insight into the context of use and understanding of a word mark from the perspective of the average consumer rather than general evidence gathering techniques currently employed (e.g surveys) In the above case, the claimant believed that their mark ‘Lloyd’ was aurally similar to the defendant’s use of ‘Loint’, and would therefore cause LOC amongst consumers The courts referred back to statistics gathered in 1995, where a survey found that recognition of the ‘Lloyd’ mark was 36% of 14 to 64 year olds14 It was then questionable whether this 36% would be grounds for LOC because by using surveys in this way, “It is not possible to state in general terms, for example by referring to given percentages relation to the degree of recognition attained by the mark within the relevant section of the public, when a mark has a strong distinctive character”15 Across in depth analysis, a linguist will relay percentages of phonetic similarity in looking at sound distinctions and similarities between both marks taking into account factors such as plurality, context and the understanding and characteristics of nouns and verbs when examining meaning16 Therefore, the level of comprehensive detail which a linguist could explore would have been helpful in the Lloyd Shuhfabrik17 case by analysing the direct morpheme comparison in terms of percentage in which they occur in each mark and considering the dialect in which these are spoken in terms of whether this would change the quality of the word and vowels contained within, and not just by providing incomprehensive data on recognition Linguistic analysis of aural features has previously helped courts to make more informed decisions, as in Ford Motor Co v OHIM 201118, the marks: ‘KA’ (a make of car under the ‘Ford’ brand) and ‘CA’ (a range of car parts under the ‘Alkar’ brand), were compared for similarity and the phonetic analysis found that: it is not necessarily the start of the word which is most important, and that if the consumer were to read as a word and not an abbreviation, the overriding phonetic feature is the vowel Even though the vowel is significant, due to the fact that, “the overall perception of the consonant and ‘Westlaw’ (accessed 05/03/2014) 14 Evans, G, “RELATIVE GROUNDS FOR REFUSAL OF REGISTRATION: Part 1”, in, “MSC TRADEMARKS 2013, Trademeark Law and Management In the United Kingdom: Problems, Cases and Commentary” (unpublished) 15 Ibid: 11 16 Shuy, (n2) 17 Lloyd Shuhfabrik (n13) 18 Ford Motor Co v OHIM (T-486/07) [2011] ECR 11000581 13 the vowel must…be taken into account in the assessment of the phonetic similiarity”19, it was still concluded that the phonetic similarity “was not ‘notable’"20 Ultimately; despite the phonetic analysis, the case chose to deal with ‘KA’ and ‘CA’ as abbreviations due to the average consumer’s possible perception of the differential graphical representation Therefore, although helpful; linguistic findings in LOC cases not always form the substantive basis of the result of the case, but are certainly not overlooked, “the degree of phonetic similarity between the marks at issue must be recognised”21 1.3 strength of the mark An important aspect of LOC is strength of the mark, as noted in Sabel v Puma 199722; the mark should be perceived as a whole and the issue of the strength of the mark is thus enabling of such a perception A mark must therefore be distinctive Linguists are often consulted in such matters because the notion of ‘strength of the mark’ is an area which is concerned with assessing morphology Linguists are also called to discuss the lexicography of marks in strength of the mark cases (assessing data such as dictionaries and etymology of a word to analyse it’s meaning), should a distinction not be immediately apparent between two similar or identical words23 1.4 The requirement for a mark to be distinctive In the case of Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc 1998 24, the importance of a distinctive character was called into question It was determined that the more distinctive the earlier mark, the greater the LOC This is because where an earlier mark has built up a distinctive character or strong reputation, they benefit from broader scope of protection than a less distinctive mark, “Similar marks may more readily be distinguished when one of them is very well-known, especially where one of them has a clear and specific meaning, so that the public is capable of grasping it immediately” 25 The confusion which may arise between two similar or identical marks could lead the public to question “whether there is a commercial connection”26 ‘IPKat’ (accessed 08/03/2014) 20 Ibid 21 Ibid 22 Sabel (n9) 23 Butters, R, “Trademark Linguistics, Trademarks: Language that one owns”, in Coulthard, M & Johnson, A, “The Routledge Handbook of Forensic Linguistics”, Routledge, 2010 19 Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] All E.R (EC) 934 ‘Westlaw’ (accessed 05/03/2014) 26 Ibid 24 25 Similarity of marks is assessed with the view that when the relevant public are confronted by a sign, they not tend to analyse it in detail Instead, they are thought to concentrate on the distinctive and dominant components of signs27, explaining why the strength of the mark is so important considering it is regarded as a whole by the average consumer The strength of the mark depends on what type of mark it may be and there are several different types; from strongest to weakest: fanciful, arbitrary, suggestive, descriptive and generic Fanciful and arbitrary are strongest as they satisfy the requirement of distinctiveness as neither of them have, “a denotative or strong connotative relationship to products or services they refer to”28 ; traits inherent in marks with a lack of distinctive character such as descriptive and generic marks Due to their weakness in respect of distinctiveness, the above two marks tend to be the main culprits requiring linguistic analysis under trade mark law29, specifically because there is a great deal of ambiguity as to which of these two types a mark may fall under: “Many trademarks appear to have characteristics of more than one strength-of-mark category Thus, deciding where a mark fits best…frequently leads to occasions for litigation in which one side argues that the other side’s mark is too weak to be afforded protection”30 As a result of their frequent association with linguistic analysis, I shall be focussing on the linguistic examination of these particular marks 1.5 Descriptive marks and secondary meaning A descriptive mark falls under grounds for refusal of registration in Section 3.1(C) of the 1994 Act31 and is where a mark explicitly refers to the, “purpose, function, or use of the goods; of the size of the goods, of the class of uses of the goods, or desirable characteristic of the goods, or the end effect upon the user”32 Descriptive and generic marks often fail to pass opposition stage (and are therefore rarely seen to infringe due to unregisterability) The only ways in which a mark of this type can become registered is if it has been registered for some time or has acquired secondary meaning33 The very idea of secondary meaning (“a strong independent semantic association of the mark and the particular company that offers the product and service”34), is evidence of linguistics in action because it shows a true understanding of words in the market place, and how they are perceived by the consumer in a social context when competing against other word marks35 What Dinwoodie appears to be saying here is that the very reason ‘OHIM’ (n8) Butters (n24):358 29 Butters, R, “Imaginative Leaps in trademark law” (accessed 21/01/2014) 30 Butters, R, “Linguistic Analysis of Disputed Meanings: Trademarks”, in Chapelle C, “The Encyclopedia of Applied Linguistics”, Wiley-Blackwell, 2012: 31 TMA 1994, s 3.1 (c) 32 Shuy (n2): 32 33 Hart, T, Fazzani L et al, “Intellectual Property Law”, Palgrave Macmillan, th Edition, 2009 34 Butters, (n31) : 35 Dinwoodie, (n1) 27 28 Marks may not be registered based on descriptiveness is that they, “fail immediately to act as source identifiers”36 Furthermore, Durant (sited in Dinwoodie37) believes that trade mark litigators should broaden their interpretation and understanding of the term ‘descriptive’ Where previously, descriptive has been taken quite literally, the fact it is such a broad term is advantageous because it can build upon, “complex linguistic understanding of the term in the context of establishing rights”38to a more expansive market than just to that of consumer understanding, as is currently the case in trade mark law 1.6 Generic marks Generic Marks fall under grounds for refusal of registration in section 3.1 (d) of the Act39 and are impermissible for registration because they are distinctively weak in that, “there would be no straightforward way for their competitors to refer to their own products This would not only be confusing to the purchasing public, but it would also give the owners…unfair advantage in the marketplace”40 Though sometimes there is a reverse affect, marks can become weaker if they have acquired genericness along the way, even if they began as strong marks So called, ‘Genericide’ is where a brand is so well known that all products like it actually become known as it eg Hoover Interestingly, “In the UK [hoover] has become genericized to the extent that, in common speech, it is often used as a verb for the process of using a vacuum cleaner”41 This is not true of all major brands where it is also an established principle of trade mark law that a mark will not be considered generic if the public in general know and recognise it as a brand name, i.e if "the primary significance…is not the product but the producer”, this is true of well-known brands such as ‘Kleenex’42 Once a Mark has acquired genericness and where the brand is famous, strength of mark is considered in dilution cases This is a growing area for the recognition of linguistics within the law, “Forensic linguists have long been accepted as legitimate social-science expert witnesses on such trademark matters as strength of mark and likelihood of confusion but very rarely have they opined directly on dilution issues, where the technicality of Linguistics is greatly apparent”43 I shall now go on to discuss the linguistic influence in dilution cases Ibid : 143 Ibid 38 Ibid :146 39 TMA 1994, s 3.1 (d) 40 Butters (n25) : 359 41 Ibid 42 Butters, R, “Linguistic look at trademark dilution”, in, “Santa Clara Computer and High Technology Law Journal”, Santa Clara University School of Law, Volume 24, Number 3, 2007-2008 : 514 43 Ibid: 508 36 37 Dilution Dilution can occur when a mark which is well-known within its field of activity44 is blurred or tarnished by the existence of a similar mark The issue of dilution falls under s 5(3) and 10(3)45 for relative grounds for opposition and infringement respectively and affords the proprietor of a mark with a well-known reputation further protection beyond that of LOC because it considers similar marks which are outside of its field of activity (unlike LOC which considers visual, aural and conceptual, “combined with evidence that the marks being compared are associated with identical, competing, similar or related goods/services” 46), which would mean for cases assessed under LOC, two marks in distinguishable goods or service areas could co-exist It is the aim with dilution that this eventuality could not occur for the proprietor of the well-known mark The issue of tarnishment falls under the comprehensive understanding of dilution and occurs when an infringing mark is associated with poor or inappropriate goods or services therefore, “destroy[ing] the commercial value of the mark because people will associate the lack of quality of the infringer’s goods with the plaintiff’s unrelated goods”47In Moseley v V Secret Catalogue, Inc 200348 The claimant (Victoria’s Secret; a lingerie shop), felt that the defendant’s use of Victor’s Little Secret for adult novelty goods would tarnish their reputation Butters argues that as tarnishment may be detrimental to the earlier mark, it is grounds enough to argue the need for linguistic analysis because of the strong linguistic features which tarnishment encompasses when assessing similarity between the marks; semantics for instance (which considers meaning in context) 49 In Mead Data Cent Inc v Toyota Motor Sales 198950, the claimant bought action against Toyota for their use of ‘LEXUS’ (applied to a range of cars), arguing that it diluted their well-known ‘LEXIS’ mark for “computer assisted legal research…services”51 Due to such strong similarity caused by the vowel quality, linguistic analysis was certainly needed in this case Butters explains that the two marks can be pronounced the same by changing the vowel quality of both ‘I’ or ‘U’ in the respective marks, depending on the level of stress placed on either More technical analysis was drawn upon in the case though has been omitted from this report to make clearer to the non-linguist the general concepts ‘Jenkins’ http://www.jenkins.eu/mym-autumn-2003/trade-mark-dilution-in-the-uk.asp (accessed 07/04/2014) 45 TMA 1994, s 5(3) and 10(3) 46 ‘INTA’ (accessed 07/04/2014) 47‘IPWatch’ (accessed 02/04/2014) 44 Moseley v V Secret Catalogue, Inc - 537 U.S 418 (2003) Butters, (n44) 50 Mead Data Cent Inc v Toyota Motor Sales U.S.A Inc., 875 F.2d 1026 (2d Cir 1989) 51 ‘Heinonline’ (accessed 01/04/2014) 48 49 10 This case was poignant for the recognition of the importance of linguistics for trade mark law because, “testimony, admitted as "expert," about the linguistic phonological differences between two marks at least marginally affected the decision in a dilution caseand was considered important enough to be quoted in the majority opinion”52, a move which all linguists aim to push for in trade mark law 52 Butters (n44): 12 11 Passing Off The issue of passing off does not fall under trade mark law per se, but is an intellectual property issue covered under common law which provides rights to unregistered marks It describes the situation where one trader trades under the same intellectual identity as another trader so as to associate their goods with those of the earlier, where the earlier mark may perhaps be of superior quality, leading to instant sales due to confusion on the consumer’s part of false recognition53 Put quite simply; it is where one party is passing off the goods of another as their own In order for passing off action to take place, requirements were stipulated by Lord Oliver in: Reckitt & Colman Products Ltd v Borden Inc 199054, that there must be: “existence of plaintiff’s goodwill…misrepresentation and…damage (or likely damage) to the plaintiff’s goodwill or reputation”55 Under the doctrine of passing off, misrepresentation arises when a similar mark can cause harm to the goodwill of another due to the particular inferior quality or origin of those goods or services56 and does not need to be an intentional act and where found, can show a “likelihood of deception…[if]…the claimant was likely to suffer genuine and substantial damage to its reputation and goodwill by reason of the material misrepresentation”57 Misrepresentation is most important for Linguistic debate58 due to the fact that assessment between similar marks is required Misrepresentation can lead to confusion amongst consumers59; going someway in explaining the need for linguistic interpretation This was demonstrated in: Neutrogena Corp & Another v Golden Ltd and Another 199660 where, following linguistic investigation, it was found that the prefix “Neutr” (used for similar products by the defendant ‘Neutralia’) would cause confusion amongst consumers ruling that: “the legal test on the issue of deception was whether, on a balance of probabilities, a substantial number of members of the public would be misled into purchasing the defendant’s product in the belief that it was the plaintiff’s” 61due to phonetic similarity Following this, the court held that confusion would occur; a decision arrived at as a result of the detailed phonetic comparison relayed by the linguist Hart, (n35) Reckitt & Colman Ltd v Borden Inc [1990] All E.R 873 55 Hart, (n35): 126 56 Ibid 57 ‘Law Gazette’ < http://www.lawgazette.co.uk/law/law-reports/trademark/5039608.article> accessed 07/04/2014 58 Butters, (n32) 59 Hart (n35) 60 Neutrogena Corporation v Golden [1996] RPC 473 61 Hart, (n35): 130 53 54 12 Everyday Practise As has been discussed, there are many legal areas of trade mark law and of common law which are more informed as a result of linguistics, though areas such as administration processes relating to marks may also benefit from the linguistic discipline My discussion shall now briefly touch upon other such areas 4.1 Registration Practise It is common practise for those seeking to register a mark to search the trade mark database to determine if similar marks exist This is because the owner of an earlier mark will seek to oppose the registration or, if the later mark is registered, bring infringement proceedings The use of linguistics in this area of Trade Mark practise is argued to be a required one by scholars who criticise the current system for the lack of accuracy that comparative searches yield62 It is suggested that algorithms within language should be used in these searches by relying on particular patterns: “those that determine word similarity by examining the order of their letters, and those that rely principally on phonetics”63 The source even recommends making the search system more salient and comprehensive by combining many databases, not just the ROMARIN64, but various systems which support these two algorithms It is suggested that this move would be of benefit to the search process by covering a larger base for probable similarities By searching for marks based on algorithms, it increases the chances of spotting phonetically similar matches because risks are identified in the first instance Marks would therefore be stronger This identification would be aided by certain algorthims such as the N-Gram, which finds phonetic similarity patterns within word marks by calculating the difference between broken down components of the words and which are said to , “correlate effectively with the risk of human trademark confusion”65 It is suggested that without these sources merging, as it stands the current free systems yield results which may omit or fail to display exact matches, and are not sufficiently intelligent enough to realise the need for comparison of certain marks because their compositions may not be the same even though phonetically identical; potentially leading to future infringement eg Lab max (two words), versus labmax (one word), or ‘basic’ and ‘bas!c’ (typographical features creating confusion) The report urges for a more unified system to be adopted, “a balance needs to be found with precision, lest the user has to go through a huge amount of irrelevant data”66 This is one perspective I shall Fall, C & Giraud-Carrier, ‘Searching Databases for verbal similarities’, in, ‘World Patent Information’, Elsevier, Volume 27, 2005 63 Ibid: 138 64 ROMARIN is a search service provided by the World Intellectual Property Organisation which contains all international registrations (Ibid) 65 Ibid: 142 66 Ibid 62 13 now go on to discuss the various viewpoints of linguistic scholars and intellectual property scholars regarding their opinions on linguistics within trade mark law 14 Perspectives Many professionals in the Intellectual Property field find that ideas of linguistic clarity and understanding tend to ‘Over-intellectualise’67 Though Shuy stresses that linguists look at their data in an important way, “the type of patterns linguists look for are often very minute and unseen by non-specialists”68, arguing a clear need for technical fact during discussion over similar or identical marks Linguists believe that over-simplifying things could be detrimental to the case result as the findings may not be comprehensively accurate enough Butters criticises current court room methods of consulting dictionaries for word definitions explaining that it doesn’t provide sufficient evidence about the meaning of a mark69 The idea that linguists over-complicate things should be re-evaluated Table helps to show that during a case where the marks ‘Healthy Choice’ v ‘Health Selections’ were compared70, the linguist consulted dismantled the meanings of the words into a graduation of semantics in assessing whether the marks were synonymous in context at a basic level (in an effort to show the narrow meaning of the term ‘choice’) Table In context Actual Meaning “This choice is yours” The addressee can make it “This selection is yours” The selection was made by someone else, not the addressee “The gallery has a choice of paintings by The choice of what to look at can be made Monet” by the addressee “The gallery has a selection of painting by The selection was made by the gallery, not Monet” by the addressee Healthy Choice The addressee can make it Health Selections Someone else made the selections, not the addressee 71 This not only reflects the comprehensive level to which a linguist works in order to assess similarities and differences which may not be realised otherwise, but also reflects that linguistic evidence can be simplified to the needs of relevant audiences As a result of the simple linguistic approach taken in Table 1, it lead the judge to a better understanding and the linguistic knowledge presented was solely drawn upon by the judge in his conclusion; that ‘Healthy Choice’ was descriptive and thus is a weak mark ‘IPKat’ (n21) Shuy (n2) : 69 Butters (n25) 70 In ConAgra, Inc v Geo A Hormel & Co., 784 F.Supp 700 (1992) 71 Shuy (n2) : 79 67 68 15 because the mark conveys, “the healthy characteristics of the goods simply by looking at the mark”72 Technicality is only used where required In Little Dolly v Little Debbie, the linguist reported that “the sounds of ‘Little Dolly’ were only 13 percent different from those used in the name of his client, ‘Little Debbie’”73 To some this may seem technical, though to others it shows a level of accuracy, fine detail and adaptation to what level of discussion is required, and as such, linguists should perhaps be given more credit for their adaptive assistance to a case Putting technical criticism aside, many believe that courts are too easily swayed or that cases lose their direction through phonetic analysis (as in the case of Codorniu Napa v OHIM - Bodegas Ontañon74), where a well-known internet blog complained of such loss of focus considering the marks were figuratively different75, and so the consumers would be able to distinguish between the two Shuy defends this, disputing that linguists become controlling in forcing opinion of their own understanding of a word over the public’s understanding of a word by explaining that a linguist merely presents facts, allowing others to reach their own conclusions 76 Dinwoodie largely attacks a future of trademark law where linguistics does not feature more prominently; arguing that the current legal approaches create unnecessary expense because of a lack of socio-linguistic understanding of words in context Costs such as the administration of surveys which test for consumer understanding in terms of whether a word has gained secondary meaning; knowledge which; should linguistic expertise be more common, may already be realised without the need for more extensive research measures Dinwoodie further argues that trade mark law is currently too concerned with consumer association and with the reality that words in context present, and that this issue could be tackled if “Linguists [were] to teach attorneys, judges, and/or juries about the qualities and claims of lexicographical practice, and to convey technical linguistic information77 so that it could be practically applied to the law Ibid: 80 Ibid: 75 74 T-35/08 Codorniu Napa v OHIM - Bodegas Ontañon (ARTESA NAPA VALLEY)(2010) 75 ‘IPKat’ (n21) 76 Shuy (n2) 77 Dinwoodie, (n1) : 169 72 73 16 II Conclusion Various poignant points of discussion within the main sections of this paper have highlighted that there is and will always be a need for linguistic analysis within trade mark law The fact that it is so well known that aural similarity can cause a LOC means there must be acknowledgement for requirement of further investigation and analysis (if such a case should render), using the tools of linguistics Furthermore, such long existing ambiguity of strength of mark cases between descriptive and generic marks which (discussed in Chapter 1), should portray the need for the discipline of linguistics to be more highly regarded because it is only through comprehensive assessment of phonetic similarity that the distinctions between such types of marks can be better realised Whilst I hope to have highlighted to the reader that linguistics plays a bigger part in trade mark law than perhaps initially considered, it must be stressed that linguistics is not and will never be above the law in determining a case That is to say that linguistics can only go so far as to present scientific findings where required, and can by no means act as the basis for a result Yet it is as a result of linguistic analysis that more informed decisions can be made due to the enhanced scrutiny and technical information for which the linguist has provided In many of the areas discussed we have seen that linguistics helps to put a ‘real world spin’ on things by assessing the true nature of words in a social context Linguists are therefore calling for an understanding and further implementation of linguistics and assert that in order for linguistics and trade mark law to work together, marks need to be observed as tools of ‘Language in use’ as their key function, and to focus more on contextual use of word marks to get a clearer understanding of meaning as currently; trade mark law focusses on inherent meaning of words in isolation Moving forward, it is suggested that as the nature of marks change over time and the understanding of them and their use changes, linguistics can help this progress more effectively and as such, is required more than ever within the field of trade mark law as a discipline supportive and complementary to it 17 III Bibiliography Primary Sources Table of Cases and Legislation UK cases Reckitt & Colman Ltd v Borden Inc [1990] All ER 873 European cases Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc [1998] (C-39/97) All ER (EC) 934 Codorniu Napa v OHIM - Bodegas Ontañon (ARTESA NAPA VALLEY)(2010) (T-35/08) Ford Motor Co v OHIM [2011] (T-486/07) ECR 11000581 Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV [1999] (C-342/97) All ER (EC) 587 Sabel BV v Puma AG [1997] (C-251/95) E.C.R I-6191 International cases ConAgra, Inc v Geo A Hormel & Co., 784 F.Supp 700 (1992) Mead Data Cent Inc v Toyota Motor Sales U.S.A Inc., 875 F.2d 1026 (2d Cir 1989) Moseley v V Secret Catalogue, Inc - 537 U.S 418 (2003) Neutrogena Corporation v Golden [1996] RPC 473 Table of Legislation: UK Trade Marks Act 1994 Council Directive 89/104 Secondary Sources Books Bently, Davis et al, Trade Marks and Brands: an Interdisciplinary Critique, CUP, 2008 Chapelle C, “The Encyclopedia of Applied Linguistics”, Wiley-Blackwell, 2012 18 Coulthard, M & Johnson, A, “The Routledge Handbook of Forensic Linguistics”, Routledge, 2010 Evans, G, “Trademark Law and Management In the United Kingdom: Problems, Cases and Commentary” (unpublished) Hart, T, Fazzani L et al, “Intellectual Property Law”, Palgrave Macmillan, 5th Edition, 2009 Shuy, R, Linguistic Battles in Trademark Disputes, Palgrave Macmillan, 2002 Journal Articles “Santa Clara Computer and High Technology Law Journal”, Santa Clara University School of Law, Volume 24, Number 3, 2007-2008 : 514 “World Patent Information”, Elsevier, Volume 27, 2005 Websites ‘Heinonline’ (accessed 01/04/2014) ‘Imaginative Leaps in trademark law’ (accessed 21/01/2014) ‘INTA’ ( accessed 07/04/2014) ‘IPKat’ (accessed 08/03/2014) ‘IPWatch’ (accessed 02/04/2014) ‘Jenkins’ http://www.jenkins.eu/mym-autumn-2003/trade-mark-dilution-in-the-uk.asp (accessed 07/04/2014) ‘JSTOR’ (Similarity as a risk factor in drug name confusion errors) accessed (05 March 2014) 19 ‘Law Gazette’ < http://www.lawgazette.co.uk/law/law-reports/trademark/5039608.article> (accessed 07/04/2014) ‘Office For Harmonization in the Internal Market’ (accessed 26 March 2014) ‘Westlaw’ (accessed 05/03/2014) ... therefore calling for an understanding and further implementation of linguistics and assert that in order for linguistics and trade mark law to work together, marks need to be observed as tools... looking at sound distinctions and similarities between both marks taking into account factors such as plurality, context and the understanding and characteristics of nouns and verbs when examining... suggested that as the nature of marks change over time and the understanding of them and their use changes, linguistics can help this progress more effectively and as such, is required more than