The Concept of Reliance in Trade Mark Law: CIPIL Evening Webinar

Speaker: Dr Emily Hudson, Dickson Poon School of Law, Kings College London

Biography: Dr Emily Hudson joined King’s College London in January 2015, having previously held academic posts at the University of Melbourne, University of Queensland (with whom she maintains an association) and University of Oxford. She holds a BSc (Hons), LLB (Hons), LLM and PhD from the University of Melbourne. Prior to her embarking on an academic career, Emily was a solicitor at Minter Ellison Lawyers. Emily is Director of Undergraduate Studies and Chair of Assessments.

Abstract: This talk relates to a new project that asks whether reliance is a useful and desirable organising concept for assessing the registerability of signs in trade mark law. The immediate inspiration for this project was the judgments of Justice Arnold and the Court of Appeal in Nestlé v Cadbury. In that case, Nestlé had applied to register the 'naked' shape of KitKat: the shape of the chocolate bar without any words written on the fingers. The registrar had held that the shape could not be registered as it was not inherently distinctive and had not acquired this characteristic through use. Justice Arnold and the Court of Appeal upheld this conclusion. A key issue was the legal significance of evidence that many consumers recognised the shape that Nestlé had sought to register as a KitKat. The UK courts, purporting to apply guidance from the CJEU, placed weight on whether consumers perceived the shape as a badge of origin and relied on it. They held that this was not made out. For those concerned with trade mark overreach, reliance could help prevent the registration of weak 'limping' marks, about which there is long-standing concern. But if we take reliance seriously, it could have huge consequences. For instance, if applied to other signs, then under the logic of Nestlé v Cadbury all slogan trade marks would be invalid. And how does "reliance" map onto evidence from psychology and neuroscience in relation to how consumers perceive and process signs? This presentation will discuss the first stage of doctrinal work in this project, including analysis of the consumer psychology literature and a systematic analysis of case law from the UK, EU, Singapore and New Zealand. It will also note the broader themes raised by the project, including the role of distinctiveness in trade mark law.

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