Initial Interest Confusion Research Articles

Ilanah Fhima and Dev S. Gangjee, The Confusion Test in European Trade Mark Law, Oxford: Oxford University Press, 2019, 278 pp, hb £125.00.

Ilanah Fhima and Dev S. Gangjee, The Confusion Test in European Trade Mark Law, Oxford: Oxford University Press, 2019, 278 pp, hb £125.00.

Justifications for reconsidering initial interest confusion after Interflora

Justifications for reconsidering initial interest confusion after Interflora

Liability For Invisiblee Use of Trade Marks on the Internet

This article critiques the proposed introduction of a US style doctrine of initial interest confusion (IIC) into Australian trade mark law. Specifically, it rejects the proposal put forward by Mahmoud Mando in a previous issue of this journal that legislative recognition of an IIC doctrine is needed to proscribe unseen uses of a plaintiff’s mark by a defendant on the internet. It argues that the IIC doctrine is both doctrinally and normatively inconsistent with Australian trade mark law. In making this argument, this article provides an overview of the development of internet search technology and a review of the Australian case law relating to unseen trade marks under s 120 of the Trade Marks Act 1995 (Cth) (‘TMA’). It concludes by arguing that the creation or adoption of new laws for invisible trade mark use represents a form of reactionary ‘cyber-exceptionalism’ which has the potential to lead to the unnecessary distortion of robust legal principles developed in the analogue environment.

2016 Trademark Year in Review

This brief essay reviews some of the most significant developments in trademark law during the past year. In most cases we have interpreted “year” fairly liberally, particularly to highlight some longer-term trends. We focus on six areas: (1) the constitutionality of § 2(a) of the Lanham Act; (2) the Fourth Circuit’s Belmora decision and the availability of § 43(a) claims when the plaintiff has not used a mark in the United States; (3) the effect of BB (4) injunctive relief and the presumption of irreparable harm; (5) nominative fair use; and (6) initial interest confusion.

Court of Appeal quashes creative interpretations of Article 5(1)(a) and remits Interflora for retrial

In this decision, the Court of Appeal remitted Article 5(1)(a) of the Interflora litigation to the High Court for retrial, based on the first instance judge's erroneous interpretation of the law and assessment of the evidence in this complex area. In so doing, the Court of Appeal considered the key concepts of the average consumer, the burden of proof and initial interest confusion, as well as whether there is a duty for junior users to avoid confusion through negatively matching against third party trade marks in their online advertising.

Confusion or Mere Diversion? Rosetta Stone v. Google's Impact on Expanding Initial Interest Confusion to Trademark Use in Search Engine Sponsored Ads

Confusion or Mere Diversion? Rosetta Stone v. Google's Impact on Expanding Initial Interest Confusion to Trademark Use in Search Engine Sponsored Ads

Private Label Imitation of a National Brand: Implications for Consumer Choice and Law

In brand imitation lawsuits, the primary focus is on demonstrating harm as it relates to brand confusion. The authors' premise is that such a narrow focus does not capture the complete impact of brand imitation. They offer a broader, theory-based perspective of harm by proposing that brand imitation affects both brand consideration and preference in the consumer choice process. The authors establish a formal nexus between brand consideration and the legal doctrine “initial interest confusion.” Using choice experiments and statistical modeling, they show that brand imitation harms the imitated brand even after controlling for brand confusion. Moreover, brand imitation harms not only the imitated brand but also other national brands in the category that are not being imitated. To quantify brand consideration and preference harm in financial terms, the authors propose two metrics: choice share shift and share-equalizing price cut. The results show that brand imitation harms the national brand more when the imitating brand is not associated with a well-known retailer and that brand imitation harm extends beyond brand confusion. The proposed framework provides both legal and managerial guidance.

Staying well away from initial interest confusion

Staying well away from initial interest confusion

Initial interest confusion plus non-commercial freedom of speech: right or legitimate interest in an infringing domain name?

A domain name that infringes a trade mark but does not cause initial interest confusion, while promoting non-commercial freedom of speech, may constitute a defence based on a right or legitimate interest in the domain name.

Initial interest confusion

Ilanah Simon Fhima is Senior Lecturer and Co-director of the Institute of Brand and Innovation Law, Faculty of Laws, University College London.Traditionally, trade mark law in the United Kingdom has focused on confusion which occurs at the time of sale. However, in a number of recent decisions, most notably, Och-Ziff, it has been suggested that pre-sale or initial interest confusion may be actionable under registered trade mark law.Although initial interest confusion has had a recent ‘moment in the limelight’, there is authority to support its recognition dating back at least a decade. However, one of the main obstacles to the recognition of initial interest confusion is identifying the damage involved. This has caused particular difficulties in relation to passing off, which has been the subject of a previous article in this journal (see B. Allgrove & P. O'Byrne, ‘Pre-sale misrepresentations in passing off: an idea whose time has come or unfair competition by the back door?’ (2006) 1 JIPLP 413). The extent to which initial interest confusion can cause damage and whether damage is indeed needed for the confusion element of registered trade mark infringement is considered in this context.Recognition of initial interest confusion has a number of potential applications in both the online and offline world. However, it is argued that judging the merits of initial interest confusion in isolation is too limiting. Instead, any form of ‘operative confusion’, i.e., which has an effect on how consumers behave, should be actionable.

Trademark Strategy in the Internet Age: Customer Hijacking and the Doctrine of Initial Interest Confusion

Internet search engines allow rapid access to customers – and the potential for rapid loss of customers. “Search engine optimization” techniques create a direct mechanical pathway to inertial disruption, allowing a website owner to hijack “Firm A's” trademarks, then use those trademarks to steal Firm A's established customers. This article explains what marketers need to know about federal trademark law within an Internet context. The sequence and substance of the federal court's cyber-age infringement analysis is illustrated via examination of several recent cases. The purpose of this article is to (1) explain recent legal developments pertaining to Internet trademark use in terms accessible to non-lawyers; (2) provide guidance to practitioners on how to stop the exploitation of one's trademarks, and explain the legal limits on the use of another firm’ trademarks, and (3) demonstrate how Internet use of trademarks alters our theoretical understanding of retail equity and customer lifetime value. Recommendations for practice are discussed and theoretical implications outlined.

Limiting Initial Interest Confusion Claims in Keyword Advertising

Limiting Initial Interest Confusion Claims in Keyword Advertising

Initial interest confusion recognized by the English courts

Confusion prior to sale of services or goods has been recently accepted by the High Court of England and Wales as actionable in passing off and trade mark infringement, materially expanding the scope of these causes of action in English law.

A Comprehensive Solution for Trademark-Triggered Displays Online

This paper proposes a comprehensive solution to handling trademark-triggered display cases. The use of trademarks in triggered display programs, e.g. search engines and contextual advertising programs, has been the subject of great debate in trademark law. Courts are split on what the appropriate protection, if any, should be for trademark owners. While the courts struggle to find a solution, consumers are increasingly relying on these programs to provide information online. As such, there is a need for clarity in the law to protect consumers and trademark owners alike. As a starting point, this paper analyzes the economic effect of triggered display programs on the electronic marketplace. These programs provide great benefits by increasing competition and information dissemination. However, they can also be abused to the detriment of consumers, trademark owners, and the marketplace in general. As such, the paper differentiates between uses of trademarks in these programs that are either beneficial or detrimental. With this in mind, the paper then examines whether the current legal approaches to handling trademark-triggered displays are consistent with trademark law's normative goals of preventing deception and promoting economic efficiency. It concludes that neither the initial interest confusion doctrine nor the trademark use theory advance these goals. As such, the paper proposes that the solution is to refocus the analysis on the likelihood of consumer confusion. First, the trademark use doctrine must be disavowed as unnecessary and inconsistent with the Lanham Act. A confusion analyses can not only provide for a quick dismissal of frivolous claims, it also avoids the dangerous propensity of the use doctrine to under-protect trademark owners. Next, the initial interest confusion doctrine can survive as the appropriate doctrine but only if it is grounded in a proper likelihood of confusion analysis. To that end, this paper proposes a new multi-factor test to adequately measure the likelihood of consumer confusion in triggered display cases. The paper concludes that this approach will align trademark law with its normative goals and provide for much needed clarity in the area.

Google's Law

Google has become, for the majority of Americans, the index of choice for online information. Through dynamically generated results pages keyed to a near-infinite variety of search terms, Google steers our thoughts and our learning online. It tells us what words mean, what things look like, where to buy things, and who and what is most important to us. Google's control over results constitutes an awesome ability to set the course of human knowledge. As this paper will explain, fortunes are won and lost based on Google's results pages, including the fortunes of Google itself. Because Google's results are so significant to e-commerce activities today, they have already been the subject of substantial litigation. Today's courtroom disputes over Google's results are based primarily, though not exclusively, in claims about the requirements of trademark law. This paper will argue that the most powerful trademark doctrines shaping these cases, initial interest confusion and trademark use, are not up to the task they have been given, but that trademark law must continue to stay engaged with Google's results. The current application of initial interest confusion to search results represents a hyper-extension of trademark law past the point of its traditional basis in preventing consumer confusion. Courts should reject initial interest confusion doctrine due to its tendency to grant trademark owners rights over search results that could easily operate against the greater public interest. On the other hand, the recent innovation of trademark use doctrine improperly relieves trademark law of any role in the supervision of the shape of Google's search results. The absence of any state involvement in the shape Google's results will effectively cede the structure of our primary online index to Google's law. Google may enjoy substantial public goodwill, but what is best for Google will not always be what is best for society. Part I of this article describes the history of Google and its business model. Google is not the only search engine today, but it is the leading search engine in terms of United States market share. Additionally, Google is playing the most important role today in search engine litigation. It is a unique search engine in many respects. During its evolution, Google followed a very different path than many of its competitors. Today its competitors are largely imitating its model, yet are unable to dethrone its centrality in search. Understanding how Google rose to prominence is essential to understanding its motives and how it might act in the future. Part II of this article sets forth the contemporary law pertaining to search results. It begins with a short discussion of recent (failed) attempts to regulate Google's results through laws other than trademark. It then describes current theories of trademark law. It concludes by summarizing how trademark law has been applied to search engines, starting with early meta tag cases and concluding with Google's current attempts to insulate itself from liability under an expanded doctrine of trademark use. Part III criticizes the current application of trademark law to search engines. It argues that the judicial innovations of both initial interest confusion and trademark use are inconsistent with the traditional purpose of trademark law and the new realities of the e-commerce marketplace. It concludes that a simple focus on the likelihood of confusion standard, which some courts have already supported, is overdue. It concludes by explaining why, despite the fact that trademark law today will likely permit Google's current practices, Google's bid for the carte blanche freedom permitted by trademark use doctrine should be rejected by courts. In its relatively new role as a protector of the social value of indices, trademark law must retain the ability to curb potential abuses of the commercial power enjoyed by Google.

Misappropriation of Trademark

The dominant view of misappropriation doctrine fits trademark law poorly. It is at odds with contemporary theory and the reasons for protecting intellectual property. A more nuanced view of the Supreme Court's germinal misappropriation case leads to a misappropriation doctrine consistent with both externality theory and public goods theory. IP theory and misappropriation doctrine then lead to rules reflecting a balance between incentive creation and free access. Applying this nuanced interpretation to the issue of Internet initial interest confusion suggests that keyword advertising promotes competition and reduces search costs more than it interferes with incentives to engage in trademarking activity.

Initial Interest Confusion in Metatag Cases: The Move from Confusion to Diversion

Initial Interest Confusion in Metatag Cases: The Move from Confusion to Diversion

Trademarks and Cyberspace

Trademark law aids consumers who use trademarks in the marketplace to identify swiftly and without problems a product they liked or disliked in the past, distinguishing among the different competing manufacturers of a product. No one is entitled to sell or deliver commodities under the appearance that the commodities derive from someone else. The importance of consumer protection cannot be over-emphasized and the average consumer standard should remain the central point of the inquiry, even under domain name litigation. Replacing the initial interest confusion doctrine is one decisive step, along with the introduction of a doctrine representing the fact that there should be no confusion at the point the sale, and this doctrine would intervene to allow for the capacity of the consumer to choose freely the products they want.

Marketing and the Law: The Initial Interest Confusion Doctrine: Are Consumers Being Informed, Confused, or Hijacked on the Information Superhighway?

Marketing and the Law: The Initial Interest Confusion Doctrine: Are Consumers Being Informed, Confused, or Hijacked on the Information Superhighway?