This article argues that the honest practices proviso should be more empirically based. Judges sh... more This article argues that the honest practices proviso should be more empirically based. Judges should focus on the efforts made by the competitor to avoid detriment to the trademark and on whether consumers perceive the potentially infringing sign differently because of these efforts. If the defendant has taken sufficient measures to minimise possible harm to the trademark owner but some confusion still exists or some advantage is taken, the use of the trademark should be allowed when these side effects are outweighed by overarching market values, such as furthering freedom of competition and enhancing consumer information and consumer choice. This conduct-based approach ensures that not only the legitimate interests of the trademark owner but also those of third parties are taken into account. In this way, trademark owners cannot prevent honest use of the trademark if the defendant has taken sufficient efforts to minimise harm, and at the same time third parties must respect tradem...
The present article considers whether the confusion analysis in trademark law is at risk of being... more The present article considers whether the confusion analysis in trademark law is at risk of being used strategically as a self-servicing mechanism by the industry to obtain trademark rights to descriptive, cultural and non-traditional signs. In this context, two features of the trademark system are particularly worrisome. First, trademark owners can strengthen the distinctive character of their marks by investing in marketing and branding campaigns. Second, trademark owners can afford expensive surveys demonstrating the high distinctiveness of their marks and strengthening their position in an infringement case. A study of 189 Dutch cases reveals that in the likelihood-of-confusion assessment, the degree of a mark’s distinctiveness and corresponding empirical findings can have a deep impact. However, the study also shows that descriptive, cultural and non-traditional signs were not often disputed. In practice, the risk of misappropriating these signs might therefore be limited. In s...
IIC - International Review of Intellectual Property and Competition Law
This article shows the necessity of including policy concerns, in particular the need to keep sig... more This article shows the necessity of including policy concerns, in particular the need to keep signs available for competitors, when assessing a likelihood of confusion. In the Adidas/Marca case, the CJEU ruled that the need to keep signs freely available for other economic operators cannot be a relevant factor in the infringement analysis. This is particularly problematic in relation to appealing signs such as stripe motifs. These signs not only serve as a source identifier, but also appeal to consumers and therefore give trademark owners an advantage over competitors on the market. In order to offer sufficient room for the concerns of trademark owners and competitors (and ultimately also consumers), it is essential to apply normative corrections not only in favour of trademark owners but also in favour of competitors. The current analysis of confusion in EU trademark law already contains a normative correction in favour of trademark owners. From an empirical perspective, the more d...
This article argues that the honest practices proviso should be more empirically based. Judges sh... more This article argues that the honest practices proviso should be more empirically based. Judges should focus on the efforts made by the competitor to avoid detriment to the trademark and on whether consumers perceive the potentially infringing sign differently because of these efforts. If the defendant has taken sufficient measures to minimise possible harm to the trademark owner but some confusion still exists or some advantage is taken, the use of the trademark should be allowed when these side effects are outweighed by overarching market values, such as furthering freedom of competition and enhancing consumer information and consumer choice. This conduct-based approach ensures that not only the legitimate interests of the trademark owner but also those of third parties are taken into account. In this way, trademark owners cannot prevent honest use of the trademark if the defendant has taken sufficient efforts to minimise harm, and at the same time third parties must respect tradem...
The present article considers whether the confusion analysis in trademark law is at risk of being... more The present article considers whether the confusion analysis in trademark law is at risk of being used strategically as a self-servicing mechanism by the industry to obtain trademark rights to descriptive, cultural and non-traditional signs. In this context, two features of the trademark system are particularly worrisome. First, trademark owners can strengthen the distinctive character of their marks by investing in marketing and branding campaigns. Second, trademark owners can afford expensive surveys demonstrating the high distinctiveness of their marks and strengthening their position in an infringement case. A study of 189 Dutch cases reveals that in the likelihood-of-confusion assessment, the degree of a mark’s distinctiveness and corresponding empirical findings can have a deep impact. However, the study also shows that descriptive, cultural and non-traditional signs were not often disputed. In practice, the risk of misappropriating these signs might therefore be limited. In s...
IIC - International Review of Intellectual Property and Competition Law
This article shows the necessity of including policy concerns, in particular the need to keep sig... more This article shows the necessity of including policy concerns, in particular the need to keep signs available for competitors, when assessing a likelihood of confusion. In the Adidas/Marca case, the CJEU ruled that the need to keep signs freely available for other economic operators cannot be a relevant factor in the infringement analysis. This is particularly problematic in relation to appealing signs such as stripe motifs. These signs not only serve as a source identifier, but also appeal to consumers and therefore give trademark owners an advantage over competitors on the market. In order to offer sufficient room for the concerns of trademark owners and competitors (and ultimately also consumers), it is essential to apply normative corrections not only in favour of trademark owners but also in favour of competitors. The current analysis of confusion in EU trademark law already contains a normative correction in favour of trademark owners. From an empirical perspective, the more d...
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Papers by Lotte Anemaet