A perfect storm: similarity, reverse confusion and trade mark risk

The Cambridge dictionary defines a perfect storm as “an extremely bad situation in which many bad things happen at the same time”. This is a fair assessment of the trade mark conflict that kicked off last month between Taylor Swift’s LIFE OF A SHOWGIRL trade mark, and one Maren Flagg’s CONFESSIONS OF A SHOWGIRL.

There is a non-zero chance that Ms Swift’s lawyers did not spot the earlier trade mark registration for CONFESSIONS OF A SHOWGIRL. Searching algorithms make mistakes; lawyers miss things. More likely however, the earlier trade mark came up in a search but the view was taken that the risk it posed was not prohibitive. Any calculations around the risk not manifesting are obvious now shot. The assessment that the earlier rights holder “would not win in court” is now the citadel which must hold.

The dispute and governing law

The case has been brought in the United States District Court, Central District of California and so US law will decide who’s right and who’s wrong. However, much will turn on the question of how similar these trade marks are: CONFESSIONS OF A SHOWGIRL v LIFE OF A SHOWGIRL

If the case were brought in the UK, there would be three main angles of attack. All three rely on the trade marks being similar:

Section 10(2) of the Trade Marks Act 1994: similar marks, similar/identical goods/services plus a likelihood of confusion

Section 10(3), same act: similar marks, similar or different goods/services and the earlier trade mark has a reputation in the United Kingdom and the use of the later mark, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier trade mark.

Passing Off: earlier mark with goodwill, misrepresentation by later mark owner, leading to damage. Similarity is not strictly necessary but it’s near impossible to imagine establishing misrepresentation without it.

As established in Sabel BV v Puma AG, Rudolf Dassler Sport (Case C-251/95) similarity of trade marks is determined through three different lenses:

1. Visual
2. Phonetic
3. Conceptual

Visual similarity

Visually, the marks are quite similar:

CONFESSIONS OF A SHOWGIRL v LIFE OF A SHOWGIRL

However, the first part of the marks differ and there is much caselaw to support the argument that this is the more dominant and distinctive part of a mark (see for example: El Corte Inglés SA v OHIM (Joined Cases T-183/02 and T-184/02). The physical length of the marks is also different and this small point may assist with visual comparison.

Phonetically, the marks are obviously identical as far as the “OF A SHOWGIRL” elements are concerned. However, the first parts of the mark, namely CONFESSIONS and LIFE are obviously very different phonetically.

Conceptual similarity

Finally, the conceptual associations of the marks fall to be considered. The Cambridge Dictionary defines the words thus:

Life: the period between birth and death, or the experience or state of being alive
Confession: the act of admitting that you have done something wrong or illegal

These words clearly have different meanings and different emotive impacts. The word “confessions” admits of moral failing and misdeeds, the word “life” is simply the period between birth and death, a mere statement of fact, devoid of moral impact. Ms Swift’s lawyers may seek to play up seedy connotations to “confessions” against the wholesome alternative of “life”, and the brand identity of Taylor Swift generally. In the UK, one would be able to run a “conceptual counteraction” argument, claiming that the meanings were so different that they counteracted other similarities between the marks.

One could also run the argument that the “of a showgirl” element is descriptive of the subject matter covered by the goods and services, and should thus be disregarded, leaving only the distinctive (and different) elements to be considered.

A comparison between the relevant goods and services is also part of the assessment but in this case, the goods and services are practically identical. Of course, for a Section 10(3) case, similarity of goods or services is not needed.

The US case alleges that there is “… textbook reverse confusion: a junior user’s overwhelming commercial presence drowns out the senior user’s mark, until consumers begin to assume that the original is the imitation. What Plaintiff had built over twelve years, Defendants threatened to swallow in weeks”.

This argument has echoes of the “wrong way round confusion” alleged (and proven) in the Glee case (Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41). This argument can be run through the same grounds discussed above, as follows:

Section 10(2): the direction of confusion, who gets confused with whom, does not matter. The claim that later usage “drowns out” the earlier usage would be a valid argument, provided there is confusion as to origin.

Section 10(3): under this ground, the claim that the later usage “drowns out” the earlier, would need to be expressed as “takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the earlier trade mark”. Such usage must be “without due cause” but confusion is not necessary.

Passing Off: reverse passing off is well established and so an argument that later usage “drowns out” the earlier, could be run under passing off. The Glee case makes clear the importance of showing a misrepresentation, not just confusion.

Practical implications

This case is a cautionary tale for lawyers dealing with clearance searching. There are more registered trade marks now than ever. Lawyers routinely take commercial considerations into account, in order to clear a brand, even if legal risks persist.

There can be a temptation to think that, because your client is rich and famous, any problem can be overcome. Indeed I would wager that this problem will be overcome. However, there is a flipside to that, which is that the more resourceful a client is, the more sueable they. In addition, concepts like “wrong way round” confusion can be weaponised, jiu-jitsu like, to use a client’s own fame and reputation against it. For this reason, lawyers need to ensure that their legal risk assessment is sound enough to withstand challenge, even when the commercial calculations don’t.