Enhanced Distinctiveness and Why “Strong Marks” Are Causing Us All Confusion

Abstract

A “strong” trade mark, one which has a high level of distinctiveness, is entitled to a greater level of protection in the European Union, the United Kingdom and the United States than other weaker marks. The psychological and marketing evidence suggests that, in fact, stronger marks are less likely to be confused by consumers. Accordingly, courts and tribunals are required to find confusion in cases involving strong marks even where the facts do not support it. The antecedence for this legal fiction (normative correction or public policy choice) is confused, it makes the law conceptually uncertain and now that marks with a sufficient reputation are entitled to protection from dilution, the fiction has become unsupportable from a normative perspective. Indeed, it appears that a neutral approach – that is not taking into account that it is a “stronger” mark during any confusion analysis – does little, if any, harm to the proprietors of strong marks and clearly benefits competitors. It is argued therefore that the rule giving more protection to strong marks (whether it is inherent or acquired strength) should be abolished.