Monday, 1 November 2010

Initial interest confusion comes to the UK

Initial interest confusion has always, since I first came across it in the Movie Buff case (Brookfield Communications, Inc v West Coast Entertainment Corp 174 F. 3rd 1036 (9th Cir., 1999)), appealed to me as a useful extension of trade mark protection. If you lure someone to your business by making a reference in some way to another's trade mark, you have at least got part of the way to taking a customer off that other trader by means of a deception. The deception stops there, but you have taken advantage of the other trader's trade mark to get that far, and that isn't fair - especially when the other trader is a competitor.

Since then trade mark protection has grown in so many ways, many of them quite regrettable beside IIF, but in the Google Adwords case the Advocate General was adamant that there was no such doctrine (though he didn't mention it by name)  in European Union trade mark law (nor, if it is a different thing, in the approximated laws of the Member States). Now, however, it seems that the English courts have imported it anyway, in Och-Ziff Management Europe Ltd & Anor v Och Capital LLP & Anor [2010] EWHC 2599 (Ch) (20 October 2010). The claimants are part of an asset management group and the defendants are an independent investment house. The claimants have Community trade marks, while the defendants have adopted their founder's nickname as the "trade marky" part of their corporate name. Some people might be able to distinguish the services they provide, but they could be lumped together under the heading "financial services", which is enough to raise a likelihood of confusion. But the claimants argued that they didn't have to prove a likelihood of confusion in the normal way, but only had to show initial interest confusion.

The judge - Arnold J, waiting patiently for the CJEU to answer his questions on Adwords in the Interflora v M&S case - carefully fits the case into the existing body of case law, referring to English, Irish and European Union cases. Even so, to have an infringement where the likelihood of confusion is dispelled before a transaction takes place, so the customer is in no doubt about with whom he or she is doing business, is a radical step. In the real world it might have its applications, but online it is revolutionary - and the very opposite of what the Advocate General suggested in the Google France case. There has, however, long been a "bait-and-switch" doctrine in English trade mark law, so perhaps it's not Arnold J who is being revolutionary, it was the Advocate General and Arnold J is the counter-revolutionary. Anyway, it's likely to be in the field of Internet searches and keywords that the doctrine finds its application, and it will bring a whole new dimension to trade mark infringement.

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