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Trade marks and linguistics:

- A paper focussing on the role that linguistics plays in trade mark


law, with reason and recommendation for trade mark practitioners
to utilise linguistics further within their application of the law -

Student Number: 120624120

Word Count: 5,453

Table of Contents

I Introduction

1 Likelihood of confusion

1.1
1.2
1.3
1.4
1.5
1.6

Legal Context
Linguistic Context
Strength of the mark
The requirement for a mark to be distinctive
Descriptive marks and secondary meaning
Generic marks

4
4
6
6
7
8

2 Dilution

3 Passing Off

11

4 Every day Practise

12

4.1

Registration Practise

12

5 Perspectives

14

II Conclusion

16

III Bibliography

17

I
Introduction
The starting point of trade mark law in many contexts is an understanding of how signs
actually work in context, and linguistics is one way of establishing that starting point for
words 1
The role and influence of linguistics within trade mark law is a contentious issue. Whilst
linguists point out that knowledge of linguistics is important for practicing in trade
marks, particularly in relation to word marks, slogans and composite marks containing
words, those in trade mark practise tend to be ignorant of even the basics of linguistics,
often misunderstanding the discipline entirely. Shuy, a highly acclaimed linguist, asserts
that even judges can be ignorant to the job of a linguist and many legal practitioners are
of the thought that linguistics is little more than a grasp of grammar and foreign
languages2 .
Linguistics can be utilised to analyse words in general or, if required, finer detail such as
the assessment of phonetic structural features of words with regards to vocality,
voicing, intonation, stress, vowel quality and site of production in the mouth (otherwise
known as distinctive feature analysis)3.
The more in-depth analysis however can sometimes be considered unhelpful in trade
mark litigation when a linguist presents technical findings to lay persons, or when, at
the point of analysis of the trade mark (mark hereafter), at expert level, when paying
due regard to the perception of the mark by the general public, certain features
identified by a linguist may not be consciously understood by a consumer, therefore
rendering complex analysis superfluous as Shuy aptly points out, There is a fine line
between being overly technical and being convincingly clear4.
What trade mark practitioners tend to overlook however, is the inherent value in
understanding linguistics and whilst this field is criticized for being too technical, some
case studies have indicated that complex phonetic approaches (such as distinctive
feature analysis), have played a beneficial role in the assessment of word marks and
have hence lead to successful litigation5.
Although the use of linguistics is not entirely contested (because it is already a
recognised and called-upon specialism within trade mark law), this report not only aims
to highlight the extent of its importance, but also aims to present to the reader ways in
which trade mark practitioners could implement the application of forensic linguistics
to better assist the course of trade mark practise.
Dinwoodie, G, What Linguistics can do for Trade Mark Law, in Bently, Davis et al, Trade Marks and
Brands: an Interdisciplinary Critique, CUP, 2008: 140
2 Shuy, R, Linguistic Battles in Trademark Disputes, Palgrave Macmillan, 2002
3 Ibid
4 Ibid: 75
5 Ibid
1

3
There are many kinds of marks as laid out in the definition of what a mark constitutes in
the TMA 1994: any sign capable of being represented graphically which is capable of
distinguishing goods or services of one undertaking from those of other undertakings6.
To present this argument, I will be solely focussing on word marks as they are key to
linguistic discussion; even OHIM recognise that, the word component of the sign usually
has a stronger impact on the consumer than the figurative component. This is because the
public does not tend to analyse signs and will most readily refer to a sign by its verbal
component 7.
Whilst I will be primarily focussing on marks under relative grounds as such emphasis
on comparison between marks will itself highlight important aspects of linguistic
analysis, absolute grounds of refusal will occasionally be referred to due to conceptual
overlap within this paper where certain subsections (eg. Descriptiveness and
genericism), fall under both legal concepts.
To further enhance debate, I will be drawing upon UK trade mark law and US
jurisprudence and academic argument, which in itself is abundant with linguistic
insight.
The paper will be sectioned into relevant areas of trade mark law where linguistics is
either currently utilised or could be utilised further. In each section, I will be drawing
upon relevant case law in order to demonstrate that knowledge of linguistics is not only
useful, but vital to the practise of trade marks.
The areas covered are Likelihood of confusion, (covering vital concepts requiring a
linguists attention such as descriptiveness and genericism), Dilution, the common law
of Passing Off and Every day practise (under which I will discuss pre-registration
processes to show that knowledge of linguistics and verbal similarities is not just
important in opposition/infringement cases but also to everyday trade mark practise).
The report will also briefly touch upon balanced perspectives to offer a rounded debate
alongside the legal context., before concluding the discussion with emphasis on
suggestions for ways in which the two fields of discipline could move forward together
to form a mutually reliable relationship.

Trade Marks Act 1994 (TMA 1994), s1(1)


Office For Harmonization in the Internal Market
<http://oami.europa.eu/en/mark/marque/pdf/part%202%202.C-EN.pdf > (accessed 26 March 2014)
6
7

1
Likelihood of Confusion
1.1 Legal Context
Likelihood of Confusion (henceforth LOC), is used in the assessment of similar or
identical marks and goods in relation to opposition proceedings (Section 5(2) (a) and
(b) of The TMA 1994), and infringement proceedings (Section 10(2) of the same Act)8.
In the leading case of Sabel v Puma 1997 9, the courts outlined a relevant test in which
suitable areas of assessment are required for consideration to ascertain whether a LOC
has occurred. In assessing a similar or identical mark, the courts stated that, The global
appreciation test of the visual, aural or conceptual similarity of the marks in question
must be based on the overall impression given by the marks, bearing in mind, in particular,
their distinctive and dominant components10. These factors should be considered
globally with regard to the notion of the average consumer.
Linguistics is relevant to the concept of LOC with respect to the assessment of similar
marks.
1.2 Linguistic Context
A linguist may be called upon to comment on visual aspects under the global
appreciation test, however, trade mark law recognises the importance of focussing on
aural features just as much as visual features because one should be relying on the ear
as well as the eye11. I will therefore mainly be concentrating on the aural aspect as this
factor is most notable to the argument of the need for linguistics in trade mark Law.
This point is further supported by the fact that the average consumer makes an
assessment on a mark in its overall entirety and is expected to distinguish between two
marks with an imperfect recollection of both, reflecting that aural features between
marks would be a substantial factor in causing LOC. This was acknowledged in Lloyd
Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV 199912 (following interpretation of
Art.5(1)(b) of the Council Directive 89/104), where it was the opinion of Mr Advocate

TMA 1994, s 5.2 (a)(b), s. 10.2


Sabel BV v Puma AG [1997] E.C.R. I-6191
10 Council Directive 89/104 Art.4(1)(b)(2)
11 Westlaw
<http://login.westlaw.co.uk/maf/wluk/app/document?&srguid=ia744d05e000001453b869994a0e090a
5&docguid=ID52885C3830611E09EA5E2CE47FFAFF2&rank=4&spos=4&epos=4&td=4&crumbaction=append&context=32&resolvein=true> (accessed 05/03/2014)
12 Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV [1999] All E.R. (EC) 587
8
9

5
General Jacobs that, it is possible that mere aural similarity between trade marks may
create a likelihood of confusion13.
In practise, in-depth aural investigation can provide better insight into the context of
use and understanding of a word mark from the perspective of the average consumer
rather than general evidence gathering techniques currently employed (e.g. surveys). In
the above case, the claimant believed that their mark Lloyd was aurally similar to the
defendants use of Loint, and would therefore cause LOC amongst consumers.
The courts referred back to statistics gathered in 1995, where a survey found that
recognition of the Lloyd mark was 36% of 14 to 64 year olds14. It was then
questionable whether this 36% would be grounds for LOC because by using surveys in
this way, It is not possible to state in general terms, for example by referring to given
percentages relation to the degree of recognition attained by the mark within the relevant
section of the public, when a mark has a strong distinctive character15.
Across in depth analysis, a linguist will relay percentages of phonetic similarity in
looking at sound distinctions and similarities between both marks taking into account
factors such as plurality, context and the understanding and characteristics of nouns
and verbs when examining meaning16.
Therefore, the level of comprehensive detail which a linguist could explore would have
been helpful in the Lloyd Shuhfabrik17 case by analysing the direct morpheme
comparison in terms of percentage in which they occur in each mark and considering
the dialect in which these are spoken in terms of whether this would change the quality
of the word and vowels contained within, and not just by providing incomprehensive
data on recognition.
Linguistic analysis of aural features has previously helped courts to make more
informed decisions, as in Ford Motor Co v OHIM 201118, the marks: KA (a make of car
under the Ford brand) and CA (a range of car parts under the Alkar brand), were
compared for similarity and the phonetic analysis found that: it is not necessarily the
start of the word which is most important, and that if the consumer were to read as a
word and not an abbreviation, the overriding phonetic feature is the vowel. Even though
the vowel is significant, due to the fact that, the overall perception of the consonant and
Westlaw
<http://login.westlaw.co.uk/maf/wluk/app/document?&srguid=ia744d05f000001453ba9d8611dd9046
6&docguid=IE203D390E42711DA8FC2A0F0355337E9&hitguid=IE203D390E42711DA8FC2A0F035533
7E9&rank=1&spos=1&epos=1&td=2&crumb-action=append&context=72&resolvein=true> (accessed
05/03/2014)
14 Evans, G, RELATIVE GROUNDS FOR REFUSAL OF REGISTRATION: Part 1, in, MSC TRADEMARKS
2013, Trademeark Law and Management In the United Kingdom: Problems, Cases and Commentary
(unpublished).
15 Ibid: 11
16 Shuy, (n2)
17 Lloyd Shuhfabrik (n13)
18 Ford Motor Co v OHIM (T-486/07) [2011] ECR 11000581
13

6
the vowel mustbe taken into account in the assessment of the phonetic similiarity19, it
was still concluded that the phonetic similarity was not notable"20.
Ultimately; despite the phonetic analysis, the case chose to deal with KA and CA as
abbreviations due to the average consumers possible perception of the differential
graphical representation. Therefore, although helpful; linguistic findings in LOC cases do
not always form the substantive basis of the result of the case, but are certainly not
overlooked, the degree of phonetic similarity between the marks at issue must be
recognised21.
1.3 strength of the mark
An important aspect of LOC is strength of the mark, as noted in Sabel v Puma 199722; the
mark should be perceived as a whole and the issue of the strength of the mark is thus
enabling of such a perception. A mark must therefore be distinctive.
Linguists are often consulted in such matters because the notion of strength of the
mark is an area which is concerned with assessing morphology. Linguists are also
called to discuss the lexicography of marks in strength of the mark cases (assessing data
such as dictionaries and etymology of a word to analyse its meaning), should a
distinction not be immediately apparent between two similar or identical words23.
1.4 The requirement for a mark to be distinctive
In the case of Canon. Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc 1998 24, the
importance of a distinctive character was called into question. It was determined that
the more distinctive the earlier mark, the greater the LOC. This is because where an
earlier mark has built up a distinctive character or strong reputation, they benefit from
broader scope of protection than a less distinctive mark, Similar marks may more
readily be distinguished when one of them is very well-known, especially where one of
them has a clear and specific meaning, so that the public is capable of grasping it
immediately 25. The confusion which may arise between two similar or identical marks
could lead the public to question whether there is a commercial connection26

IPKat <ipkitten.blogspot.co.uk/2011/03/sleep-of-reason-brings-forth-monstrous.html> (accessed


08/03/2014)
20 Ibid
21 Ibid
22 Sabel (n9)
23 Butters, R, Trademark Linguistics, Trademarks: Language that one owns, in Coulthard, M & Johnson,
A, The Routledge Handbook of Forensic Linguistics, Routledge, 2010
19

Canon. Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc [1998] All E.R. (EC) 934
Westlaw
<http://login.westlaw.co.uk/maf/wluk/app/document?&srguid=ia744d065000001453c31bdc7ac1de31
2&docguid=IBEDBE9032A3211E1981DCFBA69790184&rank=2&spos=2&epos=2&td=4&crumbaction=append&context=154&resolvein=true> (accessed 05/03/2014).
26 Ibid
24
25

7
Similarity of marks is assessed with the view that when the relevant public are
confronted by a sign, they do not tend to analyse it in detail. Instead, they are thought to
concentrate on the distinctive and dominant components of signs27, explaining why the
strength of the mark is so important considering it is regarded as a whole by the
average consumer.
The strength of the mark depends on what type of mark it may be and there are several
different types; from strongest to weakest: fanciful, arbitrary, suggestive, descriptive
and generic. Fanciful and arbitrary are strongest as they satisfy the requirement of
distinctiveness as neither of them have, a denotative or strong connotative relationship
to products or services they refer to28 ; traits inherent in marks with a lack of distinctive
character such as descriptive and generic marks.
Due to their weakness in respect of distinctiveness, the above two marks tend to be the
main culprits requiring linguistic analysis under trade mark law29, specifically because
there is a great deal of ambiguity as to which of these two types a mark may fall under:
Many trademarks appear to have characteristics of more than one strength-of-mark
category. Thus, deciding where a mark fits bestfrequently leads to occasions for
litigation in which one side argues that the other sides mark is too weak to be afforded
protection30. As a result of their frequent association with linguistic analysis, I shall be
focussing on the linguistic examination of these particular marks.
1.5 Descriptive marks and secondary meaning
A descriptive mark falls under grounds for refusal of registration in Section 3.1(C) of the
1994 Act31 and is where a mark explicitly refers to the, purpose, function, or use of the
goods; of the size of the goods, of the class of uses of the goods, or desirable characteristic
of the goods, or the end effect upon the user32. Descriptive and generic marks often fail
to pass opposition stage (and are therefore rarely seen to infringe due to
unregisterability). The only ways in which a mark of this type can become registered is
if it has been registered for some time or has acquired secondary meaning33.
The very idea of secondary meaning (a strong independent semantic association of the
mark and the particular company that offers the product and service34), is evidence of
linguistics in action because it shows a true understanding of words in the market place,
and how they are perceived by the consumer in a social context when competing against
other word marks35. What Dinwoodie appears to be saying here is that the very reason

OHIM (n8)
Butters (n24):358
29 Butters, R, Imaginative Leaps in trademark law
<http://trademarklinguistics.com/Publications_and_Links_files/Butters%20Imaginative%20Leaps%20C
OMPLETE.pdf> (accessed 21/01/2014)
30 Butters, R, Linguistic Analysis of Disputed Meanings: Trademarks, in Chapelle C, The Encyclopedia of
Applied Linguistics, Wiley-Blackwell, 2012: 4
31 TMA 1994, s 3.1 (c)
32 Shuy (n2): 32
33 Hart, T, Fazzani L et al, Intellectual Property Law, Palgrave Macmillan, 5 th Edition, 2009
34 Butters, (n31) : 4
35 Dinwoodie, (n1)
27
28

8
Marks may not be registered based on descriptiveness is that they, fail immediately to
act as source identifiers36.
Furthermore, Durant (sited in Dinwoodie37) believes that trade mark litigators should
broaden their interpretation and understanding of the term descriptive. Where
previously, descriptive has been taken quite literally, the fact it is such a broad term is
advantageous because it can build upon, complex linguistic understanding of the term in
the context of establishing rights38to a more expansive market than just to that of
consumer understanding, as is currently the case in trade mark law.
1.6 Generic marks
Generic Marks fall under grounds for refusal of registration in section 3.1 (d) of the
Act39 and are impermissible for registration because they are distinctively weak in that,
there would be no straightforward way for their competitors to refer to their own
products. This would not only be confusing to the purchasing public, but it would also give
the ownersunfair advantage in the marketplace40.
Though sometimes there is a reverse affect, marks can become weaker if they have
acquired genericness along the way, even if they began as strong marks. So called,
Genericide is where a brand is so well known that all products like it actually become
known as it eg. Hoover. Interestingly, In the UK [hoover] has become genericized to the
extent that, in common speech, it is often used as a verb for the process of using a vacuum
cleaner41.
This is not true of all major brands where it is also an established principle of trade
mark law that a mark will not be considered generic if the public in general know and
recognise it as a brand name, i.e. if "the primary significanceis not the product but the
producer, this is true of well-known brands such as Kleenex42.
Once a Mark has acquired genericness and where the brand is famous, strength of mark
is considered in dilution cases. This is a growing area for the recognition of linguistics
within the law, Forensic linguists have long been accepted as legitimate social-science
expert witnesses on such trademark matters as strength of mark and likelihood of
confusion. but very rarely have they opined directly on dilution issues, where the
technicality of Linguistics is greatly apparent43. I shall now go on to discuss the
linguistic influence in dilution cases.

Ibid : 143
Ibid
38 Ibid :146
39 TMA 1994, s 3.1 (d)
40 Butters (n25) : 359
41 Ibid
42 Butters, R, Linguistic look at trademark dilution, in, Santa Clara Computer and High Technology Law
Journal, Santa Clara University School of Law, Volume 24, Number 3, 2007-2008 : 514
43 Ibid: 508
36
37

2
Dilution
Dilution can occur when a mark which is well-known within its field of activity44 is
blurred or tarnished by the existence of a similar mark. The issue of dilution falls under
s. 5(3) and 10(3)45 for relative grounds for opposition and infringement respectively
and affords the proprietor of a mark with a well-known reputation further protection
beyond that of LOC because it considers similar marks which are outside of its field of
activity (unlike LOC which considers visual, aural and conceptual, combined with
evidence that the marks being compared are associated with identical, competing, similar
or related goods/services 46), which would mean for cases assessed under LOC, two
marks in distinguishable goods or service areas could co-exist. It is the aim with dilution
that this eventuality could not occur for the proprietor of the well-known mark.
The issue of tarnishment falls under the comprehensive understanding of dilution and
occurs when an infringing mark is associated with poor or inappropriate goods or
services therefore, destroy[ing] the commercial value of the mark because people will
associate the lack of quality of the infringers goods with the plaintiffs unrelated
goods47In Moseley v. V Secret Catalogue, Inc 200348 The claimant (Victorias Secret; a
lingerie shop), felt that the defendants use of Victors Little Secret for adult novelty
goods would tarnish their reputation. Butters argues that as tarnishment may be
detrimental to the earlier mark, it is grounds enough to argue the need for linguistic
analysis because of the strong linguistic features which tarnishment encompasses
when assessing similarity between the marks; semantics for instance (which considers
meaning in context) 49.
In Mead Data Cent.. Inc. v. Toyota Motor Sales 198950, the claimant bought action against
Toyota for their use of LEXUS (applied to a range of cars), arguing that it diluted their
well-known LEXIS mark for computer assisted legal researchservices51. Due to such
strong similarity caused by the vowel quality, linguistic analysis was certainly needed in
this case. Butters explains that the two marks can be pronounced the same by changing
the vowel quality of both I or U in the respective marks, depending on the level of
stress placed on either. More technical analysis was drawn upon in the case though has
been omitted from this report to make clearer to the non-linguist the general concepts.

Jenkins http://www.jenkins.eu/mym-autumn-2003/trade-mark-dilution-in-the-uk.asp (accessed


07/04/2014)
45 TMA 1994, s 5(3) and 10(3)
46 INTA <http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkDilution.aspx>(accessed
07/04/2014)
47IPWatch <http://www.ipwatchdog.com/2010/10/21/trademark-tarnishment-trademark-law-dirtylittle-secret/id=12905/>(accessed 02/04/2014)
44

Moseley v. V Secret Catalogue, Inc. - 537 U.S. 418 (2003)


Butters, (n44)
50 Mead Data Cent.. Inc. v. Toyota Motor Sales. U.S.A .. Inc., 875 F.2d 1026 (2d Cir. 1989).
51 Heinonline
<http://heinonline.org/HOL/LandingPage?handle=hein.journals/thetmr79&div=40&id=&page=>
(accessed 01/04/2014)
48
49

10
This case was poignant for the recognition of the importance of linguistics for trade
mark law because, testimony, admitted as "expert," about the linguistic phonological
differences between two marks at least marginally affected the decision in a dilution caseand was considered important enough to be quoted in the majority opinion52, a move
which all linguists aim to push for in trade mark law.

52

Butters (n44): 12

11

Passing Off
The issue of passing off does not fall under trade mark law per se, but is an intellectual
property issue covered under common law which provides rights to unregistered
marks. It describes the situation where one trader trades under the same intellectual
identity as another trader so as to associate their goods with those of the earlier, where
the earlier mark may perhaps be of superior quality, leading to instant sales due to
confusion on the consumers part of false recognition53. Put quite simply; it is where one
party is passing off the goods of another as their own.
In order for passing off action to take place, requirements were stipulated by Lord
Oliver in: Reckitt & Colman Products Ltd v. Borden Inc 199054, that there must be:
existence of plaintiffs goodwillmisrepresentation anddamage (or likely damage) to
the plaintiffs goodwill or reputation55.
Under the doctrine of passing off, misrepresentation arises when a similar mark can
cause harm to the goodwill of another due to the particular inferior quality or origin of
those goods or services56 and does not need to be an intentional act and where found,
can show a likelihood of deception[if]the claimant was likely to suffer genuine and
substantial damage to its reputation and goodwill by reason of the material
misrepresentation57. Misrepresentation is most important for Linguistic debate58 due to
the fact that assessment between similar marks is required.
Misrepresentation can lead to confusion amongst consumers59; going someway in
explaining the need for linguistic interpretation. This was demonstrated in: Neutrogena
Corp & Another v Golden Ltd and Another 199660 where, following linguistic
investigation, it was found that the prefix Neutr (used for similar products by the
defendant Neutralia) would cause confusion amongst consumers ruling that: the legal
test on the issue of deception was whether, on a balance of probabilities, a substantial
number of members of the public would be misled into purchasing the defendants product
in the belief that it was the plaintiffs 61due to phonetic similarity. Following this, the
court held that confusion would occur; a decision arrived at as a result of the detailed
phonetic comparison relayed by the linguist.

Hart, (n35)
Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873
55 Hart, (n35): 126
56 Ibid
57 Law Gazette < http://www.lawgazette.co.uk/law/law-reports/trademark/5039608.article> accessed
07/04/2014
58 Butters, (n32)
59 Hart (n35)
60 Neutrogena Corporation v. Golden [1996] RPC 473
61 Hart, (n35): 130
53
54

12

4
Everyday Practise
As has been discussed, there are many legal areas of trade mark law and of common law
which are more informed as a result of linguistics, though areas such as administration
processes relating to marks may also benefit from the linguistic discipline. My
discussion shall now briefly touch upon other such areas.
4.1 Registration Practise
It is common practise for those seeking to register a mark to search the trade mark
database to determine if similar marks exist. This is because the owner of an earlier
mark will seek to oppose the registration or, if the later mark is registered, bring
infringement proceedings. The use of linguistics in this area of Trade Mark practise is
argued to be a required one by scholars who criticise the current system for the lack of
accuracy that comparative searches yield62.
It is suggested that algorithms within language should be used in these searches by
relying on particular patterns: those that determine word similarity by examining the
order of their letters, and those that rely principally on phonetics63. The source even
recommends making the search system more salient and comprehensive by combining
many databases, not just the ROMARIN64, but various systems which support these two
algorithms. It is suggested that this move would be of benefit to the search process by
covering a larger base for probable similarities.
By searching for marks based on algorithms, it increases the chances of spotting
phonetically similar matches because risks are identified in the first instance. Marks
would therefore be stronger. This identification would be aided by certain algorthims
such as the N-Gram, which finds phonetic similarity patterns within word marks by
calculating the difference between broken down components of the words and which
are said to , correlate effectively with the risk of human trademark confusion65.
It is suggested that without these sources merging, as it stands the current free systems
yield results which may omit or fail to display exact matches, and are not sufficiently
intelligent enough to realise the need for comparison of certain marks because their
compositions may not be the same even though phonetically identical; potentially
leading to future infringement. eg. Lab max (two words), versus labmax (one word), or
basic and bas!c (typographical features creating confusion). The report urges for a
more unified system to be adopted, a balance needs to be found with precision, lest the
user has to go through a huge amount of irrelevant data66. This is one perspective. I shall
Fall, C & Giraud-Carrier, Searching Databases for verbal similarities, in, World Patent Information,
Elsevier, Volume 27, 2005
63 Ibid: 138
64 ROMARIN is a search service provided by the World Intellectual Property Organisation which contains
all international registrations (Ibid).
65 Ibid: 142
66 Ibid
62

13
now go on to discuss the various viewpoints of linguistic scholars and intellectual
property scholars regarding their opinions on linguistics within trade mark law.

14

5
Perspectives
Many professionals in the Intellectual Property field find that ideas of linguistic clarity
and understanding tend to Over-intellectualise67. Though Shuy stresses that linguists
look at their data in an important way, the type of patterns linguists look for are often
very minute and unseen by non-specialists68, arguing a clear need for technical fact
during discussion over similar or identical marks.
Linguists believe that over-simplifying things could be detrimental to the case result as
the findings may not be comprehensively accurate enough. Butters criticises current
court room methods of consulting dictionaries for word definitions explaining that it
doesnt provide sufficient evidence about the meaning of a mark69.
The idea that linguists over-complicate things should be re-evaluated. Table 1 helps to
show that during a case where the marks Healthy Choice v Health Selections were
compared70, the linguist consulted dismantled the meanings of the words into a
graduation of semantics in assessing whether the marks were synonymous in context at
a basic level (in an effort to show the narrow meaning of the term choice).
Table 1
In context
Actual Meaning
This choice is yours
The addressee can make it
This selection is yours
The selection was made by someone else,
not the addressee
The gallery has a choice of paintings by
The choice of what to look at can be made
Monet
by the addressee
The gallery has a selection of painting by
The selection was made by the gallery, not
Monet
by the addressee
Healthy Choice
The addressee can make it
Health Selections
Someone else made the selections, not the
addressee
71

This not only reflects the comprehensive level to which a linguist works in order to
assess similarities and differences which may not be realised otherwise, but also reflects
that linguistic evidence can be simplified to the needs of relevant audiences.
As a result of the simple linguistic approach taken in Table 1, it lead the judge to a better
understanding and the linguistic knowledge presented was solely drawn upon by the
judge in his conclusion; that Healthy Choice was descriptive and thus is a weak mark
IPKat (n21)
Shuy (n2) :
69 Butters (n25)
70 In ConAgra, Inc. v. Geo. A. Hormel & Co., 784 F.Supp. 700 (1992)
71 Shuy (n2) : 79
67
68

15
because the mark conveys, the healthy characteristics of the goods simply by looking at
the mark72
Technicality is only used where required. In Little Dolly v Little Debbie, the linguist
reported that the sounds of Little Dolly were only 13 percent different from those used in
the name of his client, Little Debbie73. To some this may seem technical, though to
others it shows a level of accuracy, fine detail and adaptation to what level of discussion
is required, and as such, linguists should perhaps be given more credit for their adaptive
assistance to a case.
Putting technical criticism aside, many believe that courts are too easily swayed or that
cases lose their direction through phonetic analysis (as in the case of Codorniu Napa v
OHIM - Bodegas Ontaon74), where a well-known internet blog complained of such loss of
focus considering the marks were figuratively different75, and so the consumers would
be able to distinguish between the two.
Shuy defends this, disputing that linguists become controlling in forcing opinion of their
own understanding of a word over the publics understanding of a word by explaining
that a linguist merely presents facts, allowing others to reach their own conclusions 76.
Dinwoodie largely attacks a future of trademark law where linguistics does not feature
more prominently; arguing that the current legal approaches create unnecessary
expense because of a lack of socio-linguistic understanding of words in context. Costs
such as the administration of surveys which test for consumer understanding in terms
of whether a word has gained secondary meaning; knowledge which; should linguistic
expertise be more common, may already be realised without the need for more
extensive research measures.
Dinwoodie further argues that trade mark law is currently too concerned with
consumer association and with the reality that words in context present, and that this
issue could be tackled if Linguists [were] to teach attorneys, judges, and/or juries about
the qualities and claims of lexicographical practice, and to convey technical linguistic
information77 so that it could be practically applied to the law.

Ibid: 80
Ibid: 75
74 T-35/08 Codorniu Napa v OHIM - Bodegas Ontaon (ARTESA NAPA VALLEY)(2010)
75 IPKat (n21)
76 Shuy (n2)
77 Dinwoodie, (n1) : 169
72
73

16

II
Conclusion
Various poignant points of discussion within the main sections of this paper have
highlighted that there is and will always be a need for linguistic analysis within trade
mark law. The fact that it is so well known that aural similarity can cause a LOC means
there must be acknowledgement for requirement of further investigation and analysis
(if such a case should render), using the tools of linguistics.
Furthermore, such long existing ambiguity of strength of mark cases between
descriptive and generic marks which (discussed in Chapter 1), should portray the need
for the discipline of linguistics to be more highly regarded because it is only through
comprehensive assessment of phonetic similarity that the distinctions between such
types of marks can be better realised.
Whilst I hope to have highlighted to the reader that linguistics plays a bigger part in
trade mark law than perhaps initially considered, it must be stressed that linguistics is
not and will never be above the law in determining a case. That is to say that linguistics
can only go so far as to present scientific findings where required, and can by no means
act as the basis for a result. Yet it is as a result of linguistic analysis that more informed
decisions can be made due to the enhanced scrutiny and technical information for
which the linguist has provided.
In many of the areas discussed we have seen that linguistics helps to put a real world
spin on things by assessing the true nature of words in a social context.
Linguists are therefore calling for an understanding and further implementation of
linguistics and assert that in order for linguistics and trade mark law to work together,
marks need to be observed as tools of Language in use as their key function, and to
focus more on contextual use of word marks to get a clearer understanding of meaning
as currently; trade mark law focusses on inherent meaning of words in isolation.
Moving forward, it is suggested that as the nature of marks change over time and the
understanding of them and their use changes, linguistics can help this progress more
effectively and as such, is required more than ever within the field of trade mark law as
a discipline supportive and complementary to it.

17

III
Bibiliography
Primary Sources
Table of Cases and Legislation
UK cases
Reckitt & Colman Ltd v Borden Inc [1990] 1 All ER 873
European cases
Canon. Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc [1998] (C-39/97) All ER (EC) 934
Codorniu Napa v OHIM - Bodegas Ontaon (ARTESA NAPA VALLEY)(2010) (T-35/08)
Ford Motor Co v OHIM [2011] (T-486/07) ECR 11000581
Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV [1999] (C-342/97) All ER
(EC) 587
Sabel BV v Puma AG [1997] (C-251/95) E.C.R. I-6191
International cases
ConAgra, Inc. v. Geo. A. Hormel & Co., 784 F.Supp. 700 (1992)
Mead Data Cent.. Inc. v. Toyota Motor Sales. U.S.A .. Inc., 875 F.2d 1026 (2d Cir. 1989).
Moseley v. V Secret Catalogue, Inc. - 537 U.S. 418 (2003)
Neutrogena Corporation v. Golden [1996] RPC 473
Table of Legislation: UK
Trade Marks Act 1994
Council Directive 89/104

Secondary Sources
Books
Bently, Davis et al, Trade Marks and Brands: an Interdisciplinary Critique, CUP, 2008
Chapelle C, The Encyclopedia of Applied Linguistics, Wiley-Blackwell, 2012

18
Coulthard, M & Johnson, A, The Routledge Handbook of Forensic Linguistics,
Routledge, 2010
Evans, G, Trademark Law and Management In the United Kingdom: Problems, Cases and
Commentary (unpublished).
Hart, T, Fazzani L et al, Intellectual Property Law, Palgrave Macmillan, 5th Edition, 2009
Shuy, R, Linguistic Battles in Trademark Disputes, Palgrave Macmillan, 2002
Journal Articles
Santa Clara Computer and High Technology Law Journal, Santa Clara University School
of Law, Volume 24, Number 3, 2007-2008 : 514
World Patent Information, Elsevier, Volume 27, 2005
Websites
Heinonline
<http://heinonline.org/HOL/LandingPage?handle=hein.journals/thetmr79&div=40&id
=&page=> (accessed 01/04/2014)
Imaginative Leaps in trademark law
<http://trademarklinguistics.com/Publications_and_Links_files/Butters%20Imaginativ
e%20Leaps%20COMPLETE.pdf> (accessed 21/01/2014)
INTA
<http://www.inta.org/TrademarkBasics/FactSheets/Pages/TrademarkDilution.aspx>(
accessed 07/04/2014)
IPKat
<ipkitten.blogspot.co.uk/2011/03/sleep-of-reason-brings-forth-monstrous.html>
(accessed 08/03/2014)
IPWatch
<http://www.ipwatchdog.com/2010/10/21/trademark-tarnishment-trademark-lawdirty-little-secret/id=12905/>(accessed 02/04/2014)
Jenkins
http://www.jenkins.eu/mym-autumn-2003/trade-mark-dilution-in-the-uk.asp
(accessed 07/04/2014)
JSTOR (Similarity as a risk factor in drug name confusion errors)
<http://www.jstor.org/discover/10.2307/3766938?uid=3738032&uid=2&uid=4&sid=
21103807671907> accessed (05 March 2014)

19

Law Gazette
< http://www.lawgazette.co.uk/law/law-reports/trademark/5039608.article>
(accessed 07/04/2014)
Office For Harmonization in the Internal Market
<http://oami.europa.eu/en/mark/marque/pdf/part%202%202.C-EN.pdf > (accessed
26 March 2014)
Westlaw
<http://login.westlaw.co.uk/maf/wluk/app/document?&srguid=ia744d05e000001453
b869994a0e090a5&docguid=ID52885C3830611E09EA5E2CE47FFAFF2&rank=4&spos
=4&epos=4&td=4&crumb-action=append&context=32&resolvein=true> (accessed
05/03/2014)