Arsenal V. Reed Case

VICTORY TROUGH HARMONY! This well known slogan of the Arsenal F.C. came into reality after contradictory judgements of the European Court of Justice and English High Court through ECJ’s interpretation of harmonized European Trademark law. The Arsenal Court, with its historical judgement rather than providing a clarification to the case before it, bring out many crucial questions regarding to the European trade mark law from the legitimacy of the post sale confusion to functions of trade mark, from definition of trade mark use to merchandising rights and even to the real competences of the European Court of Justice. Rather than answering questions of the referring Court, ECJ’s reinterpretation of the facts and analysing the case with its own facts by giving special focus on the functions of trade mark, Advocate General’s wide, even in most part economical, considerations and substantial justifications, High Court’s rejection but Court of Appeal’s confirmation and interpretation of the ECJ judgement, all these development reserved the Arsenal case one of the most discussed and extraordinary cases of the European case law.  Within this context one of the most important effects of the Arsenal case arguably was its substance in a way to cause further questioning the rationale for the trade mark protection. Arsenal court’s approach to the trade mark infringement Sub rose reminded the world wide anxieties about the propertization and erosion in the public functions of the trade mark law.The main argument of this paper will be built on consumers who are the legitimizing element of the trademark protection in the trademark infringement cases. Thus very legitimate boundary of the trademark protection in the infringement cases is determined by the trademarks capability to perform its positive functions in regard to consumers. In the part I, paper will discuss expansionist nature of European trademark law in the light of Arsenal and subsequent case law. In the Part II expansion of trade mark law and trend toward the propertization of trademark will be analysed. Part III will focus on the indispensable place of confusion under the trademark infringement law and will try to justify any attempt to ignore confusion criteria in the infringement cases would undermine basic foundations of the legal protection of trademarks.  

Part I – THE ARSENAL CASE AND ITS AFTERMATH
The case concerned with defendant’s, Mr Reed’s, sale of unauthorised Arsenal merchandise carrying Arsenal words and Logos in his stall where he also located a large warning stating that ‘the words or logos on the goods offered for sale, are used to adorn the product and does not imply or indicate any affiliation or relationship with the manufacturer’[1]. Case when came before the English High Court, Laddie J dismissed the passing off claims of the Arsenal F.C. due to plaintiff’s failure to prove the actual consumer confusion and in regard to trade mark infringement claims of the plaintiff referred two questions to the European Court of Justice.   
Laddie J, asked whether the trade mark use only indicate trade origin or use as a badge of support, loyalty or affiliation can also amount a trade mark use, thus may lead to an infringement?[2] Court’s reply actually did not provide clear guidance for the questions. Rather Court firstly focused on the essential function of the trade mark. After defining the essential function by referring the established case law[3] [a]s to guarantee the identity of origin of the marked goods or services.[4]Judgment proceed with reemphasizing the absolute protection granted in the directive in regard to use of identical signs in relations with identical products by the virtue of tenth recital of the preamble and the protection in that sense should be granted [a]gainst competitors wishing to take unfair advantage of the status and reputation of the trade mark by selling products illegally bearing it. The crucial point in the Judgment was the para. 51 where the Court interpreted the rationale for the article 5 (1)(a) of the Directive[5] as;
[e]xclusive right under Article 5(1)(a) of the Directive was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions. The exercise of that right must therefore be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods.[6] (Emphasize added)
In addition the decision made it clear that the warning in the Mr. Reed’s stall, which is designed to distinguish the official and non official products, can not effect the conclusion that the function of trade mark to guarantee the indication of origin jeopardized. That is within the meaning guaranteeing that [a]ll the goods or services bearing it have been manufactured or supplied under the control of a single undertaking which is responsible for their quality[7] has been jeopardized. While in reaching this conclusion Court introduced a new concept in the European Trade Mark law when it highlighted that, the warning in the Mr. Reed’s stall does not prevent the possibility for after sale confusion in the mind of public[i]f they come across the goods after they have been sold by Mr Reed and taken away from the stall where the notice appears, may interpret the sign as designating Arsenal FC as the undertaking of origin of the goods.[8]Thus Court concluded that [i]t is immaterial that in the context of that use the sign is perceived as a badge of support for or loyalty or affiliation to the proprietor of the mark.[9]
When the case came once before the High Court, Laddie J. interpreted the answer and concluded that there is no infringement if there is no trade mark use which is prejudicial to the essential function of registered trade mark.[10] On the other hand he ignored ECJ’s final conclusion by finding that ECJ exceeded its jurisdiction by finding facts instead of only providing guidelines about the law.[11] On Appeal, Court of Appeal for England and Wales decided in favour of Arsenal by concluding As found by the judge, the trade marks, when applied to the goods, were purchased and worn as badges of support, loyalty and affiliation to Arsenal, but that did not mean that the use by a third party would not be liable to jeopardise the functions of the trade marks, namely the ability to guarantee origin[12].Court therefore interpreted as trade mark use is irrelevant if the use is jeopardizing the functions, in particular essential function of the trade mark.
IMPLICATIONS OF THE ARSENAL
It is noteworthy to simplify the essential underlying points of the Arsenal case. The case was concerned with ordinary merchandising case which was necessitating interpretation of the Article 5(1) (a) of the directive. On the other hand because it was a Merchandising case, it was a very appropriate platform to discuss the rationale for the trade mark protection. It is just because in a Merchandising case a [t]rade mark is sold, not as a source indicator, but desirable feature of a product.[13] There are many convincing arguments that granting protection at this point, without an evidence of confusion, will harm the consumers and competition which undermines the rationale for trade mark protection.[14]Thus in its judgments in order to justify its findings, Court also underlined the scope of protection under the European trade mark law.
At the first point Court was simply transferred what article 5(1) (a) mandated.  If the marks and products are identical, according to the wording of the article 5(1) (a) there is no requirement for the existence of confusion in the minds of public[15] and there is per se infringement. Secondly in defining the scope of protection under European Trademark Law, not surprisingly in the Arsenal case, ECJ did not limited itself to a narrower scope of origin function in the trade mark use. As Barresi also underlined, the [t]ext of the directive does not leave much room for a different approach.[16]Since the 10th Recital reads that [t]he function is in particular to guarantee the trade mark as an indication of origin.[17]According to Annett Wagner “This shows that the origin function is not considered to be exclusive, but that the Directive is open for a broader understanding of the trade mark’s performance.” Moreover Geigen at this point argues that “The Directive had to leave other functions open since it provides for the possibility of wide protection of reputed marks even if no confusion arises. Such protection can only be given if one accepts that the trade mark has functions other than being an indicator of origin.” [18]Thus as a matter of law, Court clarified that directive mandates protection of all functions of the trade mark. Within this scope, by the Arsenal case Court also first time recognized the Post sale confusion as another actionable form of confusion.[19]This without doubt Court’s endorsement of widened the scope of protectionunder the European trademark law rather than being restricted to confusion as to origin function.[20] In the remaining part paper will discusses longitudinal diversion of European trade mark law form the consumer protection and orienting into trade mark owner centred orbit.
PART II – PATRONIZING THE CONSUMER PATRONAGE OR DEMOCRATIZING THE EXCLUSIVITY
This part will discuss the ebbs and flows of Trade mark law between the consumers and trade mark owners. It is the subject matter of the trade mark law is that law grants exclusive right to protect trademark owners’ ability to use its reputation to sell its products.   [21]However as Shanahan put forward trade marks serves [t]wo complementary policy objectives: the protection of the trader’s business and the protection of the consuming public.”[22]The underlying rationale for trademark protections is that trademarks fosters competition and provides advantages to the consumers. These benefits are seen as the most important justifications for the trademark protection. Trademarks grant an exclusive right to its proprietor but it is generally accepted that this right ‘[a]ims to promote more competitive markets by improving the quality of information in those markets’[23] Without doubt trademark law does not there to protect firms from the competition. Surely it is not the aim of the trade mark law.[24]Landes and Posner at this point outline the main pro-competitive essentials of the trade marks as “the benefits of trademark in reducing consumer search costs require that the producer of a trademarked good maintain a consistent quality over time and across consumers.”[25] Therefore the justification for the legal protection is competition and ultimately customer oriented. Next part in turn will discuss this justification in order to asses the legitimate boundaries of the trademark protection. To this end it would be appropriate firstly to focus on the functions of trademark in order to understand effective functioning of trademarks.
FUNCTIONS OF TRADEMARK
Although there are theoretically complex views regarding to the performance of functions of trademarks, it is also confirmed in the findings of ECJ’s Arsenal case law that the scope of protection is determined by the true definition of these functions. There are at least three accepted functions of the trademarks by which commentators frequently underlines. Origin function, Quality or Guarantee function and Investment or Advertisement function.[26]  The Origin function[27]of trademarks is traditionally explains that trademarks are the indicators of the trade source.[28]Therefore trademark law emerged as the protection of origin function of trademarks by enabling information transmission from the trade source to public without being exposed to consumer confusion.[29]Furthermore there are certain views abut all other functions are relative and derivative.[30]However increasing complexity in the trade relations by inclusion of fragmented distribution networks, changing foundations of the marketing techniques clearly expanded the scope of protection and consequently studies on consumers’ behaviour expanded the boundaries of the trademark protection.[31]Trademarks then became indicators of liability[32], rather than indicators of origin. This fact is also underlined by ECJ in the Hag II when the court emphasised the essential function of the trademarks as “For the trade mark to fulfil its role, it must offer a guarantee that all goods bearing it have been produced under the control of one single undertaking which is accountable for their quality.”[33]
The advertisement function on the other hand represents a 20th century introduction to the trademark literature especially widely recognized after Frank Schechter authorized his famous article on the Rational Basis of the Trademark Protection. The challenge toward the classical expression of origin function at this point put forward by the Schechter as; [t]he true functions of the trademark are to identify a product as satisfactory and thereby to stimulate further purchases by the consuming public[34]. Schechter’s argument through ‘the mark actually sells the goods’[35]advocated for the expanded protection of the trademarks and prepared a doctrinal background for the anti-dilution laws.[36]One of the most important implications for the general acceptance of the advertisement function of trademarks is the recognition of the goodwill of the trademark rather than the goodwill of the product or its maker.[37]This implication also repeated by the Advocate General Colomer in Arsenal opinion when he indicated that a trademark ‘[a]cquires a life of its own, making a statement about quality, reputation and even, in certain cases, a way of seeing life.’[38]
TRADE MARK:  MONOPOLY OR PROPERTY
Trade marks are practically due to they confers exclusive right to use to its owner at least by some commentators identified with the monopolies.[39] Most shared anxiety among the ‘trademark as a monopoly’ proponents is that such monopoly would harm the competition rather than expectedly fostering competition. Timberg summarizes the main arguments of the ‘trademark as a monopoly’ proponents by underlying the ideas of two important figures Ralph Brown and Edward Chamberlain.
“[t]he result of effective trade-mark promotion is to differentiate the trade-marked article from other trade-marked and nontrade-marked articles possessing the same general physical and chemical characteristics and the same utility to the consumer, and to create for the trade-marked article a monopoly and an immunity from the rigors of competition. The trade-mark creates for its specific product an entirely separate market, where demand becomes inelastic and prices are established which are independent of the prices of other articles of the same class that would otherwise be competitive with it.”[40]
Monopolists argued that distinguishing nature of the trademarks leads trademark monopolies.  Since they are by distinguishing certain product out of its general class and place them into their own class, trade marks like the patents and copyrights have monopolistic aspects.[41] This monopoly based approach strictly challenged by the Property based approach to the trade marks.[42]  The property-based approach tends to assume that the property right in a trade mark is the right to prevent confusion.[43] Under property-based doctrine however ‘confusion becomes not just a question of probable confusion as to source, but possible confusion over any connection between the plaintiff and the allegedly infringing use.’ [44]Another major assumption of the property based school is that the approximation of goodwill as a property.[45]  There are plenty of possible different definitions of the Goodwill within the context of trade mark law, however a common touch might be for all definitions is that Goodwill is something has to do with the Customer Patronage[46]. On the other hand one important metaphor for the Goodwill is its vagueness but at the same time its conclusiveness that it can not be “seen, felt and tasted,”[47]but exist only “in the minds of the buying public.”[48] Bone explains the difficulty in the definition of the Goodwill as [f]or one thing, any single concept meant to capture all the factors that affect consumer choice was bound to be vague and open-ended.[49]
Proponents of trademark law as the legal system of goodwill protection come to recognize that trademarks are the merely symbols of goodwill and without proper goodwill protection the trademark law is meaningless. To this end Carter emphasize that
“A trademark, then, is a “distinguishing” mark, a way of identifying the good. The mark serves no other function and enjoys no legal existence independent of the goodwill that it symbolizes. Without goodwill, marks have no meaning, and the law has traditionally treated meaningless marks as unworthy of protection.”[50](Emphasize added)
However as accepted dual aim of the trademarks necessitates both protection of public and trademark owner, trademarks are neither confers property rights but, if it is appropriate as McCabe underlines, ‘remain a quasi-property right.’[51]It is the protecting consumer interests that legitimate the protection of the trademarks. All the grammar of the trademark law is rests on the concept of confusion[52] and as Beebe emphasis the ‘consumer, we are led to believe, is the measure of all things in trademark law.’[53]Since it is well established that trade marks foster competition, increase the quality, reduce customer search cost[54], all these effects of the trademark protection is at the end consumer oriented. Consumers are the one of the core beneficiaries of the modern trade mark protection. It is the consumers that are democratising the exclusivity provided by the legal protection and [t]rademarks deserve legal protection to the extent that such protection allows them to serve the function of communicating information to consumers.[55]Torremans at this point urges that;
“Goodwill essential element of a trade mark for its owner, but it will only exist if   the consumer distinguishes the product or services labelled with the trade mark from other products or services. The guarantee for consumers or users that the product or service labelled with the trade mark is of a standard quality is essential in order for the goodwill, be it negative or positive goodwill to be created.”[56]
PART III – CONFUSION PREVENTION OR GOODWILL PROTECTION 
Place of confusion in the law of trade mark infringement has been set under the article 5 of the trade mark directive in a following way; when there is an identical sign of defendant with the trade mark proprietor’s in relation to the identical goods or services, the confusion is assumed[57], when the sign of the defendant identical or similar with the trade mark proprietor’s in relation to identical or similar goods or services likelihood of confusion sought[58]and if the trade mark is in question is a trademark with reputation, then confusion is no more a condition.[59]  The confusion criteria under directive find its very application in Art. 5.1(b). Recent SABEL Court confirmed the expanded scope of likelihood of confusion test [T]he concept of likelihood of association isnot an alternative to that of likelihood of confusion, but serves to define its scope.[60]In regard to article 5.2 cases, established European case law indicate that although there is no need for confusion in the mind of public, due to similarity between the sign and mark, a link has to be established in the mind of public.[61] The article 5.2 is considered as European anti-dilution law.[62]A major expansion beyond the dilution theory in the trademark protection occurred after the Davidoff and Adidas cases.[63]Prior to Adidas case the article 5.2 of the Directive was applicable to the trademarks with reputation in respect to the non-competing protects. Since it is the Anti-Dilution theory in fact seeks protection of well-known trademarks, try to extend protection against diluting acts such blurring or tarnishment.[64]McCarthy handles this subject delicately when he argues that [d]ilution is and should be a separate legal theory positing a different kind of damage to a mark caused by a different form of consumer perception.[65]Furthermore he underlines that Davidoff and Adidas cases which ECJ confirmed the application of anti-dilution statute to the competing goods would meant unnecessary expansion of trademark protection and undermines the competitive goals of the trademark protection. In this respect he also emphasises, likelihood of confusion test is the sole test for the competing products and for the sake of basic rationale of the trademark protection [66]should not be expanded into the non-confusion bases. Beside the anti-dilution law, expansion of the concept of confusion by the Courts assertion of more actionable confusion forms can be explained as a matter of changing trade relations, increasing recognition of the trademarks ability to the sell the product as all discussed in part II of this paper. As Anne M. McCarthy argued limitation on the scope of confusion alone might cause harm to the trade mark proprietor.[67]In the last part, the proper limit of this expansion will be discussed. 
IT IS MINE! ™
A Trade mark, in conformity with its functions represents sense of expression which utters this basic phrase, “it is mine”.Although it might be called as a simplistic reductionism,[68]as seen even historically all the functions of the trademark have been built on this phrase.  It is freedom of trade mark owner to say with all its features, its pros and cons, this product belongs to me. As an illustration what actually trade marks law attempt to protect is this freedom of expression. Therefore the operation area of the trade mark is between the trade mark owner and customers where this expression has been flowed and what the law actually protects neither the trade mark owner nor the customers but provides a safe journey of the expression flow from the trade mark owner without being exposed to any obstruction resulted from the confusion.[69]In this sense the trade marks enables informed customers by proving them ability to distinguish one owner’s product from another and (but) set them free in their choices.
On the other hand Goodwill, as we have described above, serve as a key tool for the customer patronage. It is created by the customers repurchases resulting from their satisfaction by the product. It is the goodwill turns the customers purchasing decision into a custom, a habit.[70]However this custom, as every customs, subject to change by the Opinio Juris depending on the customers’ satisfaction. Thus it is better to illustrate the Goodwill as the fuel for the continuation of flow of expression from trade mark owner to customer. Trademark law surely concerns with the appropriation of this kind of fuel when it is asserted that one of the dual aims of the trademark law is to protect sellers’ ability to use its reputation to sell its products.[71]However there are at least two important reasons why the trademark infringement law might not be focused to the goodwill protection. It is first because protecting the “goodwill”, but only goodwill, is not within the scope of trade mark infringement law, trade mark law deal with the safe delivery of the expression which is possessed by the trade mark. On the other hand Goodwill is often described as something created by the producers’ efforts and customer response to this efforts and every time subject to change between these two dynamics. Thus sole protection of this dynamic notion will both affect the producers’ efforts to gain and regain customer satisfaction and also would meant interference to the customer choice. None of these are expected outcome of the trade marks within the competitive markets.[72]Secondly protecting goodwill without any clue of confusion would put the trademark law into the same foot with the manual or handbook of marketing departments. Moreover it would lead, if not exaggeratedly intervention to the consumer autonomy by law. It is generally accepted that [W]ithout advertising, that is goodwill could hardly be established[73]. For instance a more sceptical view on this line was given nearly half decade before by Ralph Brown as ‘the choice between one highly advertised dentifrice and another is, in important respect, no choice at all.… It is only choice between one illusion and another’.[74]What Ralph Brown indicated according to 1948’s advertisement techniques, was that advertisements have a persuasion function and protection of this function will meant interference to the consumer choice. Today persuasion function of the advertising has turned into manipulation.[75]Thus logic can be established that superfluous protection to the goodwill will automatically lead protection of advertising function of the trademark and so helps the manipulation of the public by law.
CONCLUSION
Arsenal case was a typical merchandising case, which is the reason why the case was achieved to open Pandora’s Box about scope of protection of the trade mark law. Should it be consumer oriented or proprietor oriented. In other words should it be confusion based or property based. Balance of interest in the trade mark law was the main issue before the Court; public interest and proprietor’s interest. The Arsenal trademark, as in every merchandising case, was the product itself[76], just as attracting consumer to purchase the product in question only because of the Arsenal logo on it. That is the mark’s goodwill was the essential seller of the product. Thus case might ease the Court to take a property-based approach. Perhaps, in spite of critics regarding to Courts piddle of public interest in the case, or its reluctance to concentrate on the typical trade mark use question, Court’s judgement might be tolerated due to message given by the case. Within the very ambit of a Merchandising case, Court recognized that trademark owner needs to have a broader protection in the wake of developed and complex marketing wars, changing selling methods. It is just because the information flow from the trademark owner and the customer is now more vulnerable to the confusion than ever before.  Moreover court’s recognition of post sale confusion also illustrated this fact. Since the existence of such kind of confusion was vital in the judgement.[77]On the other hand the subsequent Opel case somewhat provided an evidence that Court is seeking a balance between the dual aims of the trade mark protection. The Opel judgement of the Court made it clear that confusion has a vital importance in assessing the infringement by determining the trade mark use.[78]Therefore it would be appropriate to consider the Arsenal case as an opportunity before the Court to illustrate the main rationale for the harmonised European trade mark law by which the Court manifested its intention to not stick into a single function of the trade mark but it will consider other functions of the trade mark as well.

Confusion is the primary criteria for the all the trade mark infringement cases, however all the cause of actions which affects the core definitional functions of the trade mark also should be also subject to greater scrutiny under every trade mark regime. In the previous sections paper has been discussed the expansion of the trade mark law due to globalization, increasing international commerce, advancing marketing techniques, reshaping consumer behaviours, and complicated advertisement techniques. Without a shadow of doubt all these late 20thcentury developments effected the definition of trade mark as well. All these developments, in order to enable trade marks active assistants of the competitive markets, installed new functions to the trade marks. Furthermore most importantly make the trade mark owners more vulnerable to an inf


[1]Case C-206/01, Arsenal Football Club plc v. Matthew Reed, [2002] ECR I-10273
[2]‘1. Where a trade mark is validly registered and (a) a third party uses in the course of trade a sign identical with that trade mark in relation to goods which are identical with those for [which] the trade mark is registered; and (b) the third party has no defence to infringement by virtue of Article 6(1) of [Directive 89/104/EEC]; does the third party have a defence to infringement on the ground that the use complained of does not indicate trade origin (i.e. a connection in the course of trade between the goods and the trade mark proprietor)? 2. If so, is the fact that the use in question would be perceived as a badge of support, loyalty or affiliation to the trade mark proprietor a sufficient connection?’ Laddie J.’s 1st  judgment at 6th April 2001 Arsenal Football Club plc v. Matthew Reed.
[3]Case 102/77 Hoffman-La Roche [1978] ECR 1139, para. 7, and Case C-299/99 Philips [2002] ECR I-0000, para. 30
[4]Case C-206/01, Arsenal Football Club plc v. Matthew Reed, [2002] ECR I-10273.para. 48
[5]Council Directive 89/104 of December 21, 1988 to approximate the laws of the Member States relating to trade marks [1989] O.J. L40/1.
[6] Ibid. para.50
[7] Ibid. para.48
[8] Ibid. para.57
[9] Ibid. para.62
[10] Laddie J.’s 2nd judgment at para.20 at 12th December 2002 Arsenal Football Club plc v. Matthew Reed.
[11]Case C-206/01, Arsenal Football Club plc v. Matthew Reed, [2002] ECR I-10273. para.27
[12]Arsenal Football Club plc v. Matthew Reed , 2003 CAEW Civ 696, para.48
[13] Dogan, Stacey L., Lemley, Mark A., The Merchandising Right: Fragile Theory or Fait Accompli?. Emory Law Journal, Vol. 54, 461-505, 2005 p.465
[14] Ibid. p.465 Dogan and Lemley supports that ” When a trade mark is sold, not as a source indicator, but desirable feature of a product, competition suffers -an consumer pay- if other sellers are shut out of the market for that feature.” From this point of view the goodwill protected in the Arsenal case nothing to do with the Arsenal’s Goodwill. See also Kilbey, Ian: The Ironies of Arsenal v. Reed, European Intellectual Property Review, 479-482, 2004 p.480 Ian Kibley pointed out Arsenal’s reputation, like that any other sports club, is made on the field, not in the market. Thus it is arguable at this point that increasing the range of support to the team by providing more cheaper and affordable memorabilia would harm the goodwill of the arsenal. Instead it might be argued that this kind of use contributed to the Goodwill of the trade mark owner. 
[15] Case C-291/00 LTJ Diffusion v. Sadas Vertbaudet [2003] ECR I-2799. para. 49 “Article 5(1)(a) of the directive does not require evidence of such a likelihood in order to afford absolute protection in the case of identity of the sign and the trade mark and of the goods or services” There are also views about the presumption of confusion within the context of article 5(1) (a) See in particular AG Jacobs opinion in Case C-291/00 LTJ Diffusion v. Sadas Vertbaudet [2003] ECR I-2799. at [35], See also Paul L.C. Torremans, The likelihood of association of trade marks: an assessment in the light of the recent case law of the Court of Justice, Intellectual Property Quarterly, 3, 295-310, 1998, p. 300
[16]Barresi, Francesca Romana: The “Arsenal” of the ECJ for the Protection of Trademarks Rights, Legal Issues of Economic Integration, 157-165, 2003 p.164
[17] Annett Wagner , Infringing trade marks: function, association and confusion of signs according to the E.C. Trade Marks Directive, European Intellectual Property Review, 21(3), 127-132, 1999, p.131
[18] Charles Gielen, Harmonisation of Trademark Law in Europe: The First Trademark Harmonisation Directive of the European Council, European Intellectual Property Review 14 (8). 262-269, 1992 p.264
[19] See also Paul Torremans, Holyoak and Torremans Intellectual Property Law, (4th edition, Oxford University Press, United States, 2005) p.401 “that confusion element is vital in this context”
[20] Dyrberg, P. and Skylv, M., Does Trade Mark Infringement Require that the Infringing Use be a Trade Mark Use and, if so, what is Trade Mark Use?, European Intellectual Property Review 25(5), 229-233,2003 p.232 Broad notion of origin function in the Arsenal case [t]ends to encompass the other functions of trade mark. See also Jukka Snell, European Courts and Intellectual Property: a tale of Hercules, Zeus and Cyclops, European Law Review, 29(2), 178-197 p.184, 2004 Jukka Snell points out this fact as; “According to the Court, trade marks have more than one function, and the essential origin function is to be interpreted broadly (and) use liable to affect this function for example by undermining the distinctive character of the mark through generalised usecan be prohibited.”
[21] The subject matter of the European trademark law is defined by the ECJ in the Centrafarm case. Case 3/78 Centrafarm BV v American Home Products Corporation [1978] ECR 1823 para.11 “[I]n particular the guarantee to the proprietor of the trade mark that he has the exclusive right to use that trade mark for the purpose of putting into circulation for the first time and therefore his protection against competitors wishing to take advantage of the status and reputation of the mark by selling products illegally bearing that trade mark.” See also Robert G. Bone, Hunting Goodwill: a History of the Concept of Goodwill in Trademark Law, Boston University Law Review, Vol. 86(3), 547-622, 2006 p. 567
[22] D. Shanahan, The Trademark Right: Consumer Protection or Monopoly? Trade Mark Reporter, 72, 233-251, 1982 p. 234
[23] Supra Note 11 p.471
[24] See also (Hag II) Case C-10/89 SA CNL-Sucal NV v Hag GF AG [1990] para.13
[25] Landes, William and Richard Posner, Trademark Law: An Economic Perspective, Journal of Law and Economics, 30, 265-309, 1987 p.269
[26]Cornish and Llewelyn, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (6th Ed., Sweet and Maxwell, 2006) p.620. Another accepted function of the trade marks is differentiation function. A trademark distinguish product of one trader to another rather than simply identification of product Although this function by some commentators accepted as a part of origin function, there are different arguments regarding to the differentiation function is a much broader and separate from the origin function.
[27] See in particular Friedrich-Karl Beier “A Trademark serves to distinguish the goods of one manufacturer from the goods of another. The trade mark should identify the origin of the good with a particular company. The exclusive right to use granted to the trademark owner by statute serves to protect only this function and limited by this basic purpose of trade mark protection.” Friedrich-Karl Beier, “Territoriality of Trade Mark Law and International Trade” [1970] International Review of Industrial Property and Copyright Law 48-72 p. 61. Cited in Elson Kaseke, Trademark Dilution: A Comparative Analysis, PhD Thesis, 2006, University of South Africa. p.7
[28] See Cornish and Llewelyn, Supra Note 25, p.620
[29] See Robert G. Bone, Supra Note 20 , p. 550 see the so-called “information transmission model”
[30] See D. Shanahan, Supra Note 21, pp. 238-241 D. Shanahan describes that primary function of the trademark is source-origin function; other functions such as what he defines descriptive and marketing functions are derivative or secondary functions.
[31] Elson Kaseke, Supra Note 26, p.10
[32]Lionel Bently and Brad Sherman, Intellectual Property Law, (2nd edition, Oxford University Press, United States, 2001), p.694
[33]Case C-10/89 SA CNL-Sucal NV v Hag GF AG [1990] para 13. See also Opinion of Advocate General Colomer delivered on 7 March 2006in Case C-48/05 Adam Opel AG v Autec AG [2007] ECR-I 1017. para. 26
“According to settled case-law, the essential function of a trade mark is to guarantee the identity of the origin of the product or service to the final purchaser by enabling him, without any possibility of confusion, to distinguish the product or service from others which have another origin, confirming that they have been manufactured or provided by a single undertaking which is responsible for their quality.” Judgments inter alia in Case 102/77 Hoffmann La Roche[1978] ECR 1139, paragraph 7; Case C‑299/99 Philips [2002] ECR I‑5475, paragraph 30; and Case C‑40/01 Ansul [2003] ECR I‑2439), paragraph  43.
[34] Frank I. Schechter, The Rational Basis of Trademark Protection, Harvard Law Review, 40, 813-833, 1927 p.819 Schechter defined trademark as the [m]ost effective agent for the creation of good will, imprinting upon the public mind an anonymous and impersonal guaranty of satisfaction, creating a desire for further satisfactions
[35]Ibid. p. 819 (emphasize not added)
[36]Opinion of Advocate General Jacobs delivered on 10 July 2003 in Case C-408/01 Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld Trading Ltd. Para. 37
[37] Spyros M. Maniatis and Anselm Kamperman Sanders,A Consumer Trade mark: Protection Based on Origin and Quality, European Intellectual Property Review, 15(11), 406-415, 1993, p.408
[38] Opinion of Advocate General Colomer delivered on 13 June 2002 in Case C-206/01, Arsenal Football Club plc v. Matthew Reed, [2002] ECR I-7945.para. 46
[39] See Rosler Hannes, The Rationale for European Trade Mark Protection, European Intellectual Property Review, 29(3), 100-107, 2007. p.100, see in particular Timberg Sigmund, Trade-Marks, Monopoly, and the Restraint of Competition, Law and Contemporary Problems, 14, 323-361, 1949, p. 325See also Glynn Lunney, TrademarkMonopolies, Emory Law Journal, 48(2), 367-488, p.368, 1999 see Spyros M. Maniatis, Supra Note 36, p.406
[40] Timberg, Sigmund, Supra Note 38, p.325
[41]Borchardt, Kurt, Are Trademarks an Antitrust Problem, Georgetown Law Journal, 31(3), 245-261, 1942.p.245
[42] See Glynn Lunney , Supra Note 38, p.369, “property refers to a set of legal relationship or rights with respect to absence of substitutes for the thing in the market.” See also Swann, Jerre B.; Davis, Theodore H. Jr., Dilution, an Idea Whose Time Has Gone; Brand Equity as Protectable Property, the New/Old Paradigm, Journal of Intellectual Property Law, 1, 219-259, 1993. p.225
[43] Bannon, Elizabeth Cutter “Revisiting the rational basis of trademark protection: Control of Quality and dilution-estranged bedfellows” John Marshall Law Review, 24, 65-117, 1990.p.71
[44] See Glynn Lunney, Supra Note 38, p.369,
[45] See Robert G. Bone, Supra Note 20, p.571
[46] Irene Calboli, Trademark Assignment “With Goodwill”: A Concept Whose Time Has Gone,  Florida Law Review, 57(4), 772-941, 2005.p. 801 See also Robert G. Bone, Supra Note 20, p.571 Bone underlines that ‘No one might know exactly what goodwill was, but everyone could reason as if some thing actually existed which the term goodwill named See also Irene Calboli for the difficulty in defining Goodwill and its consequences. Calboli in page 814 emphasize that [T]he uncertainty surrounding the idea of goodwill created many misunderstandings in its application. Trademark owners used goodwill to protect the investments in their brands and exploited the vagueness of its definition to argue in favour of extended trademark protection.’
[47] J. Thomas McCarthy, McCarthy on trademarks and unfair competition, (4th ed. 2004) cited in Irene Calboli, Supra Note 44,p. 809
[48] Ibid. p. 809
[49] See Robert G. Bone, Supra Note 20, p.570
[50] Stephen L. Carter, The Trouble with Trademark, Yale Law Journal, 99, 759 -765, 1990. p.762
[51] See McCabe, Kathleen B., Dilution-by-Blurring: A Theory Caught in the Shadow of Trademark Infringement, Fordham Law Review, 68, 1827-1877, 1999. p.1830 “A property-right-in-gross is one that is similar to the rights attached to real property. On the other hand, a quasi-property right in trademark is one with limited protections, based primarily on the protection of the public from confusion.”
[52]Ibid. p.1828
[53] Beebe, Barton Search and Persuasion in Trademark Law, Michigan Law Review, 103, 2020-2073, 2004. p.2021
[54] See Landes, William and Richard Posner, Supra Note 24, pp. 269-271 see economizing function of trademark. See also Michael Pulos, A Semiotic Solution to the Propertization Problem of Trademark, UCLA Law Review, 53, 854-861, 2006. p. 837 “The consumer-search-costs rationale maintains that “trademarks lower consumers’ search costs by providing them with valuable information about brands and encourage quality control rather than create social waste and consumer deception.”
[55] Michael Pulos, A Semiotic Solution to the Propertization Problem of Trademark, UCLA Law Review,53, 854-861, 2006. p.835
[56]Paul Torremans, Holyoak and Torremans Intellectual Property Law, (4th edition, Oxford University Press, United States, 2005), p.431
[57] Article 5.1(a) of Trademark Directive See Supra Note 13. Case C-291/00 LTJ Diffusion v. Sadas Vertbaudet [2003] ECR I-2799.
[58] Article 5.1(b) of Trademark Directive
[59] Article 5.2 of Trademark Directive
[60] Case 25/95 Sabel v. Puma [1997] ECR I_6191. para.18
[61] Case C-408/01 Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld Trading Ltd, [2003] 1 C.M.L.R. 14. para.41
[62]Thomas J. McCarthy,Dilution of a Trademark: European and United States Law Compared, The Trademark reporter, 94, 1163-1181, 2004. pp.1163-1164
[63] Ibid. p.1177
[64] McCabe, Kathleen B, Supra Note 50, p.1828 “Trademark dilution occurs when a person or company uses a mark identical or substantially similar to a pre-existing trademark, triggering a mental association on the part of the consumer between  the two marks, thereby eroding the strength of the original mark.”
[65] Thomas J. McCarthy, Supra Note 60. p.1177
[66] Ibid. p.1177
[67]McCarthy, Anne, M. Post-Sale Confusion Doctrine: Why the General Public Should Be Included in the Likelihood of Confusion Inquiry, Fordham Law Review, 67, 3337- 3371, 1998. p. 3337
[68] Opinion of Advocate General Colomer delivered on 13 June 2002 in Case C-206/01, Arsenal Football Club plc v. Matthew Reed, [2002] ECR I-7945.para. 46
[69]Lisa H. Jonston, “ Drifting Towards Trademark Rights in Gross” The Trade Mark Reporter, 85, 19-54, 1995, p. 20 “In a regulated free market economy; trademarks perform an important role in facilitating the free flow of information to the consumer and thereby reduce market transaction cost. “
[70] See Supra Note 20.
[71] Ibid.
[72] For a more sceptical view regarding the protection without confusion See Robert G. Bone, Supra Note 20, p.619  Bone further argues that “As long as consumers are not confused or misled -so the information that the defendant communicate is accurate – using the plaintiff’s mark saves social resources that would otherwise have to be invested in building the same meaning into different mark”
[73]International Bureau of WIPO,  Economic Importance of Trademarks and Geographical Indications and Their Use in Commerce, Wipo National Seminar on the Protection of Trademarks and Geographical Indications, Beirut, March 17 to 19, 2003. p.13
[74] See Ralph S. Brown Jr, Advertising and the Public Interest: Legal Protection of Trade Symbols, Yale Law Journal, 57, 1165-1206, 1948. Reprinted in Yale Law Journal, 108, 1619-1659, 1999. p.1636 For Ralph Brown advertising has two main functions; Information function and Persuasion function. The latter can not be protected by the trade mark law.
[75] Graeme W. Austin, Tolerating Confusion About Confusion: Trademark Policies And Fair Use, The University of Arizona, Arizona Legal Studies, Discussion Paper No. 07-18, November 2007. p.4
[76] See Dogan, Stacey L., Lemley, Mark A., Supra Note 11, p.4
[77] See also Paul Torremans, Supra Note 19, p.401
[78] Case C-48/05 Adam Opel AG v Autec AG [2007] ECR-I 1017 In the Adam Opel AG v Autec AG case which was concerned with the defendant’s (Autec), a toy car manufacturer, copying Opel’s car model in which Opel has registered trade mark for motor vehicles as well as toys, German court referred a remarkable question to the European Court of justice which shed some lights to the Arsenal turbulence. German court directly asked whether such kind of copying of a real car in a reduced scale including the trade mark of the proprietor of the trade mark as applied to the real car, is a trade mark use. Interestingly this time Court after revisiting its Arsenal judgement, held in para. 24 that “If, by those explanations, the referring court intended to emphasize that the relevant public does not perceive the sign identical to the Opel logo appearing on the scale models marketed by Autec as an indication that those products come from Adam Opel or an undertaking economically linked, it would have to conclude that the use at the issue in the main proceedings does not affect the essential function of the Opel logo as a trade mark registered for toys.”
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