TRADEMARK INFRINGEMENT WITHOUT

USE OF THE TRADEMARK PER SE

David Gilat, Adv. Gilat, Bareket & Co.

Israel

Introduction

Introduction

What is a Brand?

What is a Brand?

A Brand according to Keller

Branding has been around for centuries as a means to distinguish the goods of one producer from those of another.

In fact, the word brand is derived from the Old Norse word brandr, which means to burn, as brands are the means by which owners of livestock mark their animals to identify them.

Kevin Lane Keller, Strategic Brand Management Building, Measuring and Managing Brand Equity, Pearson (2013).

Trademark Infringement and the

Protected Interest

M.P. McKenna, The Normative Foundation of Trademark law, 82 Notre Dame L. Rev. 1839, 1841 (2007):

"[T]rademark law was not traditionally intended to protect consumers. Instead trademark law, like all unfair competition law, sought to protect producers from illegitimate diversions of their trade by competitors American courts protected producers from illegitimately diverted trade by recognizing property rights."

Trademark Infringement and the

Protected Interest

Oliver R. Mitchell, Unfair Competition, 10 Harvard L. Rev. 275 (1896):

"Logically speaking, the fact is that Unfair Competition is properly a generic title, of which trade mark is a specific division"

What is a Brand?

A Brand according to Keller

According to the American Marketing Association (AMA), a brand is a name, term, sign, symbol, or design, or a combination of them, intended to identify the goods and services of one seller or group of sellers and to differentiate them from those of competition.

Kevin Lane Keller, Strategic Brand Management Building, Measuring and Managing Brand Equity, Pearson (2013).

What is a Brand?

A Brand according to Keller

In fact, however, many practicing managers refer to a brand as more than thatas something that has actually created a certain amount of awareness, reputation, prominence, and so on in the marketplace. Thus we can make a distinction between the AMA definition of a brand and the industrys concept of a Brand...

Kevin Lane Keller, Strategic Brand Management Building, Measuring and Managing Brand Equity, Pearson (2013).

Introduction

Commercials from Nespressos campaign

Introduction

Espresso-Clubs Commercials

In the next commercial

the presenter is not George Clooney!

Introduction

Ad from Espresso-Clubs Facebook page

Trademark Infringement and the

Protected Interest

There are two levels of infringement: "Classic Infringement" Infringement of the

registered mark itself;

Gestalt Infringement" Trespassing on the brand in a broader sense (the goodwill associated with the trademark).

The whole exists independently from the component parts

Kurt Koffka

Classic Infringement

Does Espresso-Club's commercial infringe Nespresso's trademark?

Classic Infringement

Does Espresso-Club's commercial infringe Nespresso's trademark?

Classic Infringement

Apple Inc. v. Deutsches Patent- und Markenamt

Judgement of the Court of Justice of the EU in case (c-421/13)

Inside of the store

Brand Equity

The value premium that a company realizes from a product with a recognizable name as compared to its generic equivalent

There are three principal and distinct perspectives to studying brand equity: (1) Customer-based brand equity; (2) Company-based brand equity and (3) Financial-based brand equity.

Keller, K.L. and Lehmann, D.R. (2006) Brands and branding: Research findings and future priorities Marketing Science 25(6): 740759.

Brand Knowledge

According to the Brand Knowledge Framework, consumers brand knowledge reflects their awareness of the brand (their ability to recall and recognize the brand) and the entire set of associations that come to their mind when they think about the brand.

Keller, K. (1993). Conceptualizing, measuring, and managing customer-based brand equity. The Journal of Marketing 1 (22).

Brand Personality

The set of human characteristics associated with a brand.

Consumers tend to humanize brands, which facilitates their sense of emotions felt toward the brand and their creation of a relationship with it.

In concrete terms, a consumer may feel more similar to Michael Jordan when they wear Nike Michael Jordan basketball shoes, or they may acquire a sense of sophistication and prestige when they are adorned with a Rolex watch.

Aaker, J. L. (1997) Dimensions of Brand Personality Journal of Marketing Research, 34, 347-56.

What is a Brand?

In summary

A brand is a collection of rational and emotional associations that are embedded in the consumer's mind in connection with certain goods sold by a particular manufacturer.

Gestalt Infringement

The Gestalt principle

Gestalt principle emphasizes the wholistic nature, where recognition is inferred more by the properties of an image as a whole, rather than parts, during visual perception.

Hui Jiang & Chong-Wah Ng & Hung-Khoon Tan, Gestalt-based Feature Similarity Measure in Trademark Database, Department of Computer Science, City University of Hong Kong (2005).

Trademark Infringement and the

Protected Interest

What is the protected interest for each type of infringement?

Why are we protecting a registered mark?

The rationale is protecting the goodwill of the trademark from

unfair competition

Trademark Infringement and the

Protected Interest

Had Espresso-Club used a blank sign or no sign at all on the store in the commercial would it matter?

Would Espresso-Clubs commercial perform the same function in substantially the same way to obtain substantially the same result?

In the Nespresso case, the use of the George Clooney look-alike seems to produce the same damage regardless of whether classic trademark infringement takes place

Clips from the Commercials

Clips from the Commercials

Clips from the Commercials

The Purpose of a Brand

A Brand is a Means of Communication

In a society of massive consumption, due to the inherent distance between the manufacturer and the end consumer, the role of a trademark is to communicate between the two, by conveying myriad of messages, promises, assurances, emotions, etc.

The Purpose of a Brand

Positioning

Positioning is a marketing strategy that aims to make a brand occupy a distinct position, relative to competing brands, in the mind of the customer.

Case Law

C.A 8441/04 Unilever Plc v. Eli Segev (IL Sup. 2014)

Case Law

C.A 8441/04 Unilever Plc v. Eli Segev (IL Sup. 2014) "The idea of a dove as symbolizing body-care and hygiene is an idea that was conceived by the appellant. While penetrating the idea into the market, many efforts and resources have been invested and so noted also the Registrar. The appellant succeeded in creating in the mind of the consumer an image that creates an association... The person who ought to reap the fruits of the image that was coined in the brain of the consumer, is the one who invested the efforts for its creation

It seems to me that the circumstances of this case indicate that the respondent did seek to be built on the back of the appellants and to benefit from the association created in the mind of the reasonable consumers ..."

Case Law

Puma v. Pudel Federal court in Germany of 2 April 2015 - I ZR 59/13 - Springender Pudel

Case Law

Puma v. Pudel Federal court in Germany of 2 April 2015 - I ZR 59/13 - Springender Pudel

The court held that poking fun at Puma's well-known trademark (the word "PUMA" stylized and the leaping cat) by using the word "PUDEL" stylized in the same manner and a leaping poodle was considered unfair.

The court held that while there was no great likelihood of confusion between the two marks, the junior mark (PUDEL) benefited from the similarity between the marks, and acquired attention it otherwise would not have received.

Case Law

C.A. 8483/02 Aloniel Ltd. v. Ariel McDonald (IL Sup. 2004)

Case Law

C.A. 8483/02 Aloniel Ltd. v. Ariel McDonald (IL Sup. 2004)

"Indeed, a commercial that "makes use of goodwill to insult its owner" as any commercial expression or other expression lies under the wings of freedom of speech But the purpose of the Trademark Ordinance, that is, the values it comes to protect, justifies, in this case, the limitation of the commercial expression. Burger King's commercial and the use Ariel [McDonald] made of McDonald's trademark was intended to cause injury to a competitor. The commercial did not serve a public matter worthy enough to tip the scale towards the freedom of speech and against the clear language of the [Trademarks] Ordinance "

Case Law

McDonalds v. Burger King

The Dutch court awarded an injunction and ruled that Burger King must stop using the mascot of its competitor McDonald's in its TV commercials as its commercial infringed the laws of comparative advertising.

The court held that there was no trademark infringement due to differences between the figure of Ronald as registered and the