Not what you think
Some people might have wondered if they had wandered into
the wrong meeting: the 29th MARQUES Annual
Conference opened today with a presentation not on trade mark
law, the latest IP cases or the fight against counterfeits, but
In a lively and well-illustrated presentation, Christian
Scheier of Decode Marketingberatung revealed how the brain
perceives brands as rewards, and price as pain. "A brand is a
pain pill," he explained. This was just one insight in his
talk, which also addressed how people make purchasing decisions
and why we "think" less than we think we do; how the brain
interprets images and what that says about likelihood of
confusion; and why perception is hierarchical (which is
important for the use of colours in branding).
It was mostly welcome news for brand owners, particularly
when Scheier explained how brands trigger "diagnostic cues"
(features that define an object), just one of which –
if it is familiar enough – can prompt a purchasing
decision, whether it is the McDonald’s Golden
Arches or the Coca-Cola bottle. The good news: customers
(literally) don’t have to think about buying your
brand. The bad news: it’s very easy for lookalikes
to capitalise on that.
Brains and brands
In a panel discussion following Scheier’s talk,
Judge Joachim Bornkamm of the German Federal Court of Justice
and Gregor Vos of Klos Morel Vos & Reeskamp discussed how
legal principles in Europe such as the trade mark function, the
overall impression and likelihood of confusion fit with what we
know about the brain.
The answer, depressingly but not surprisingly, was not very
well. For example, since the Henkel case
C-218/01 14 years ago, judges have assumed that only a word
can be a sign of origin. As Vos said: "This is based on
judges’ assumptions, not on science." On the other
hand, the principle (first stated in
Puma v Sabel) that "the more distinctive the earlier
mark, the greater will be the likelihood of confusion"
correlates with the scientific evidence that our brains process
information very quickly.
As Bornkamm concluded: "Assumptions could and should be
challenged. We have to redesign them … Judges have to be
open to challenges." Try telling that to the bench next time
you have a tricky trade mark case to argue.
written before about the
confusion and uncertainty over the use of surveys in trade
mark cases, and it was emphasised again today. Ray Black, of
Mishcon de Reya, discussed the somewhat unclear (and probably
unfinished) trend in UK cases, where judges have been sceptical
of surveys but left just enough of a window for parties to
optimistically submit them.
Black described it as a "move closer" to other EU member
states but added: "We are still stricter in the way we go about
conduct of surveys". Liesbeth Marijnissen of the OHIM Boards of
Appeal noted that surveys are important at OHIM, but that the
Boards are required to follow national laws – which is
difficult when there is no consensus: "As long as national laws
are not harmonised, we take them into account."
Meet me in Madrid
The Madrid Protocol was the focus of a session this
afternoon, with speakers Marie Paule Rizo from WIPO and Tove
Graulund of Graulund Consulting, who gave a users’
view of the pros and cons. One thing that has become clear is
that, with 95 contracting parties covering 111 countries and
80% of the global market, Madrid is close to becoming a truly
global, rather than a Euro-centric, system. Over time, that may
have implications for the way it is run (notably the dependency
Next Thursday we’re holding a webinar on Madrid
from a US perspective, with speakers including Fran Jagla of
Lane Powell and Jeff Epstein of Cowan Liebowtiz & Latman.
They will discuss how the system works for American users, in
the light of the recent accessions (such as Mexico) and those
expected in the next few years (Canada). For more information,
and to sign up, click
#1 for quality of life
Welcoming the record 817 attendees to Vienna, MARQUES Chair
Uwe Over of Henkel noted that the city has six times been voted
the number one in the world in the
Mercer Quality of Living Survey.
That may have something to do with the musical entertainment
that was in evidence at the opening reception last night
The Conference was formally opened by Andrea Scheichl,
vice-president of the Austrian Patent and Trade Mark
Office, who emphasised that "intangible assets are the very
basis of existence for many companies" but added that work
needs to be done in promoting trade mark awareness: "The
majority of SMEs do not consider trade marks important to their
Nevertheless, the top 10 Austrian trade marks are valued at
€31 billion, with the most valuable brand worth a whopping
€15 billion. If you don’t know what brand
that is, read tomorrow’s roundup on managingip.com
to find out.