Invisible and Subliminal Uses of Trade Marks

As a result of new technologies and new business practices they ways in which trademarks are used has dramatically changed. We have come a long way from the time where trade marks had to be directly marked on products, and are now at the point where we have to answer the difficult question of whether invisible and subliminal uses of trade mark could be sufficient to infringe the exclusive rights of its owner.

In a recent article by Jean-Sebastien Dupont two non-traditional ways of using trade marks are examined as a way to demonstrate some of the inherent flaws in the current approach to trade mark law by the Court of Justice of the European Union. The first non-traditional application of trade marks is that of ‘invisible use’. These are uses whereby consumers don’t actually see the trade marks but they exist in the background. For example the use of keyword advertising on internet search engines. This is when companies buy search terms so that their websites gain priority in the search results. A business can choose multiple keywords and more than one business is allowed to buy the same keywords. The legal issue arises from the fact that one can choose the registered trade marks of one’s competitors as keywords to trigger one’s own advertisement. Because the trade mark is not actually reproduced in the search advertisement, it becomes a more complex issue than simply and issue of visible use in advertisement.

More interestingly, the author provides a discussion of ‘subliminal uses’ of trademarks. This is when a trade mark is used in such way that it is not seen by the customer but nonetheless triggers in his mind an association or connection between the good or service and the owner of the trade mark. Although neither British courts or CJEU has directly dealt with issues in this realm yet, the rather unique Canadian case of Philip Morris and Marlboro Tobacco is used to facilitate this discussion

In this case, Philip Morris did not own the trade mark to Marlboro in Canada and instead created a cigarette package that was identical, but without any brand name, to that of the Marlboro package (which was not sold in Canada). Philip Morris admitted that their intention was to get consumers to associate the unnamed cigarette with the Marlboro cigarettes sold elsewhere in the world. The question was whether Philip Morris could be said to be ‘using’ the Marlboro trade mark by leaving the packaging blank.

Another example of subliminal use is that of Marlboro in Formula One advertising. Marlboro had sponsored a popular Formula One racing team for many years, however the implementation of the EU Tobacco Advertising Directive prevented all tobacco companies from sponsoring sporting or cultural events. Marlboro was no longer allowed to sponsor its team. However, they adapted a form of ‘alibi marketing’ whereby they simply replaced the brand name Marlboro on their cars and drivers with a bar code. The distinctive red and white colours remained but the words Marlboro were removed. Marlboro faced allegations from the media that they were trying to circumvent the tobacco advertising directive and created a sort of ‘inside joke’ between them and their fans.

The article describes the approaches taken by CJEU to situations of subliminal and invisible situations and makes claims that it is unsatisfactory. Instead the author claims that there must be a return to a simpler approach based on consumer perception and expectation that British courts had followed under previous legislation.

By Alexander McIsaac Southampton Solent Law Student

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