Keyword: dilution

The Siren Song of the Subtle Copycat – Revisiting Trademark Law with Insights from Consumer Research external link

Senftleben, M. & Horen, F. van
The Trademark Reporter, vol. 111, num: 4, pp: 739-777, 2021

Abstract

The architecture of trademark protection systems rests on the assumption that brand imitation strategies are particularly harmful when they seek to achieve a high level of similarity by copying specific trademarked features of the original brand. Marketing research, however, shows that this assumption is doubtful. Subtle, theme-based imitation strategies – aiming at a modest degree of similarity – may allow copycats to garner greater profits and manipulate consumers’ purchasing decisions. Like an enchanting siren song, they may lure customers away from the original products of brand owners. Against this background, the paper discusses the question whether trademark law should be recalibrated. To lay groundwork for this discussion, the analysis outlines central functions of trademarks in today’s market economy before describing, on the basis of EU trademark law, the traditional approach to copycat strategies from a marketing and legal perspective. Introducing insights from recent marketing research, the paper explains why subtle, theme-based strategies may be more harmful than blatant, feature-based copying. The further examination places this insight in a legal context. Contrasting the empirical findings of marketing research with traditional assessment schemes in EU trademark law, it becomes apparent that there is a remarkable mismatch between legal theory and market reality. Current trademark provisions are not aligned with “real life” consumer perception. As a result, copycats with a subtle imitation strategy remain under the radar of applicable infringement tests. This dilemma is taken as a starting point to discuss the need for reforms in trademark law.

Advertising, blurring, conceptual marks, confusion, consumer perception, copycat brands, dilution, empirical legal studies, freedom of competition, frontpage, marketing research, Merkenrecht, new types of marks, similarity, tarnishment, trademark infringement, type of imitation, Unfair competition, unfair free-riding

Bibtex

Article{Senftleben2021b, title = {The Siren Song of the Subtle Copycat – Revisiting Trademark Law with Insights from Consumer Research}, author = {Senftleben, M. and Horen, F. van}, url = {https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3922568 https://www.ivir.nl/publicaties/download/TheTrademarkReporter_2021_4.pdf}, year = {1001}, date = {2021-10-01}, journal = {The Trademark Reporter}, volume = {111}, number = {4}, pages = {739-777}, abstract = {The architecture of trademark protection systems rests on the assumption that brand imitation strategies are particularly harmful when they seek to achieve a high level of similarity by copying specific trademarked features of the original brand. Marketing research, however, shows that this assumption is doubtful. Subtle, theme-based imitation strategies – aiming at a modest degree of similarity – may allow copycats to garner greater profits and manipulate consumers’ purchasing decisions. Like an enchanting siren song, they may lure customers away from the original products of brand owners. Against this background, the paper discusses the question whether trademark law should be recalibrated. To lay groundwork for this discussion, the analysis outlines central functions of trademarks in today’s market economy before describing, on the basis of EU trademark law, the traditional approach to copycat strategies from a marketing and legal perspective. Introducing insights from recent marketing research, the paper explains why subtle, theme-based strategies may be more harmful than blatant, feature-based copying. The further examination places this insight in a legal context. Contrasting the empirical findings of marketing research with traditional assessment schemes in EU trademark law, it becomes apparent that there is a remarkable mismatch between legal theory and market reality. Current trademark provisions are not aligned with “real life” consumer perception. As a result, copycats with a subtle imitation strategy remain under the radar of applicable infringement tests. This dilemma is taken as a starting point to discuss the need for reforms in trademark law.}, keywords = {Advertising, blurring, conceptual marks, confusion, consumer perception, copycat brands, dilution, empirical legal studies, freedom of competition, frontpage, marketing research, Merkenrecht, new types of marks, similarity, tarnishment, trademark infringement, type of imitation, Unfair competition, unfair free-riding}, }

Intermediary Liability and Trade Mark Infringement – Proliferation of Filter Obligations in Civil Law Jurisdictions? external link

Senftleben, M.
1126, pp: 381-403

Abstract

The erosion of the safe harbour for hosting in the EU Directive on Copyright in the Digital Single Market (CDSM Directive) leads to a remarkable climate change in the field of EU copyright law and the civil law jurisdictions of continental EU Member States. Inevitably, it raises the question of potential repercussions on the safe harbour for hosting and filtering standards in trademark cases. Even though online marketplaces are explicitly exempted from the new copyright rules and the CDSM Directive is not intended to neutralize the safe harbour for hosting in trademark cases, the adoption of a more restrictive approach in copyright law may quicken the appetite of trademark proprietors for similar measures in trademark law. The extension of the new copyright approach to trademark cases, however, is unlikely to yield satisfactory results.Due to the different conceptual contours of trademark rights, a system mimicking the filtering obligations following from the CDSM Directive would give trademark proprietors excessive control over the use of their trademarks in the digital environment. Such an overbroad system of automated, algorithmic filtering would encroach upon the fundamental guarantee of freedom of expression and freedom of competition. It is likely to have a chilling effect on legitimate descriptive use of trademarks, comparative advertising, advertising by resellers, information about alternative offers in the marketplace, and use criticizing or commenting upon trademarked products. As a result, consumers would receive less diverse information on goods and services and the free movement of goods and services in the internal market would be curtailed. The reliability of the internet as an independent source of trademark-related information would be put at risk. The analysis, thus, leads to the insight that a proliferation of the new filtering obligations in copyright law is undesirable and should be avoided.

algorithmic enforcement, confusion, Content moderation, descriptive use, dilution, exhaustion of trademark rights, filtering obligations, free movement of goods and services, freedom of commercial expression, freedom of competition, frontpage, market transparency, Merkenrecht, parallel imports, platform economy

Bibtex

Chapter{Senftleben2020g, title = {Intermediary Liability and Trade Mark Infringement – Proliferation of Filter Obligations in Civil Law Jurisdictions?}, author = {Senftleben, M.}, url = {https://www.ivir.nl/publicaties/download/Intermediary_Liability_and_Trade_Mark_Infringement.pdf https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3736919 https://www.oxfordhandbooks.com/view/10.1093/oxfordhb/9780198837138.001.0001/oxfordhb-9780198837138}, year = {1126}, date = {2020-11-26}, abstract = {The erosion of the safe harbour for hosting in the EU Directive on Copyright in the Digital Single Market (CDSM Directive) leads to a remarkable climate change in the field of EU copyright law and the civil law jurisdictions of continental EU Member States. Inevitably, it raises the question of potential repercussions on the safe harbour for hosting and filtering standards in trademark cases. Even though online marketplaces are explicitly exempted from the new copyright rules and the CDSM Directive is not intended to neutralize the safe harbour for hosting in trademark cases, the adoption of a more restrictive approach in copyright law may quicken the appetite of trademark proprietors for similar measures in trademark law. The extension of the new copyright approach to trademark cases, however, is unlikely to yield satisfactory results.Due to the different conceptual contours of trademark rights, a system mimicking the filtering obligations following from the CDSM Directive would give trademark proprietors excessive control over the use of their trademarks in the digital environment. Such an overbroad system of automated, algorithmic filtering would encroach upon the fundamental guarantee of freedom of expression and freedom of competition. It is likely to have a chilling effect on legitimate descriptive use of trademarks, comparative advertising, advertising by resellers, information about alternative offers in the marketplace, and use criticizing or commenting upon trademarked products. As a result, consumers would receive less diverse information on goods and services and the free movement of goods and services in the internal market would be curtailed. The reliability of the internet as an independent source of trademark-related information would be put at risk. The analysis, thus, leads to the insight that a proliferation of the new filtering obligations in copyright law is undesirable and should be avoided.}, keywords = {algorithmic enforcement, confusion, Content moderation, descriptive use, dilution, exhaustion of trademark rights, filtering obligations, free movement of goods and services, freedom of commercial expression, freedom of competition, frontpage, market transparency, Merkenrecht, parallel imports, platform economy}, }