The Average Consumer and Its More or Less Distant Cousins

Laustsen, Rasmus Dalgaard

doi:10.1007/978-3-030-26350-8_6

The Average Consumer and Its More or Less Distant Cousins

Rasmus Dalgaard Laustsen ORCID: orcid.org/0000-0002-5099-8820²

Chapter
First Online: 07 November 2019

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Abstract

Legal fictions are also found in EU design law and European patent law operating respectively, “the informed user” and “the person skilled in the art.” Further, outside of intellectual property law, in tort law, “the reasonable person” is used to decide the standard of care. Outside of law, in economics, a fiction (or a model) is the “rational actor model.” This chapter compares the average consumer in European trademark law with these other fictions.

This chapter concludes that the intellectual property law legal fictions have similar functions in their respective legal environments, i.e. they are calibration mechanisms for the senior and junior owners in registration and infringement.

As for the comparison with the reasonable person, both are fictions, but the reasonable person is closer intertwined with the reasonableness standard than the average consumer with the likelihood of confusion standard. Further, that the reasonable person to a further extent is based on objective circumstances.

It makes sense to talk about the average consumer metaphorically as the “not so distant cousin” of the rational actor model. But, the generalisations inherent in the average consumer are not allowed, as suggested by some, because of its resemblance with the rational actor.

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Notes

1.
Specifically, LJ Lewison referred to “internet users” in trademark law, but for this reference, this seemed to encompass the “character” usually “inhibiting” trademark law, i.e. the average consumer. Interflora v. Marks & Spencer, [2012] EWCA Civ 1501, para 13.
2.
See PepsiCo v. Grupo Promer, Case C-281/10 P, [2011] ECR I-10153, in particular paras 53 and 59. “Sectoral expert” is another phrasing used to describe the “person skilled in the art” in patent law. Discussing the subject of the laws of patents, designs and trademarks, Pila has recently also linked the “fellow fictions” in these areas of law, holding that “it is clear that the ability of a certain hypothetical intelligent individual to single out each subject matter for which protection is sought as a distinct object of perception is central to its legal status as a subject matter of protectable type.” Pila, Justine, ‘The Subject Matter of Intellectual Property’, (1st edn, Oxford University Press, 2017), p. 18.
3.
On those findings based on case law, see among others, Heymann, Laura A., ‘The Reasonable Person in Trademark Law’, Saint Louis University Law Journal, vol. 52/no. 3, (2008), pp. 781, p. 782 and Kirkpatrick, Richard L., ‘Likelihood of Confusion in Trademark Law’, (1st edn, Practising Law Institute, 1995), p. 24-25, including footnote 76 of the text.
4.
See below, Sect. 6.5.
5.
See for instance, Gut Springenheide and Tusky, Case C-210/96, [1998] ECR I-4657, para 37 (italics added).
6.
Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs, [2002] OJ L 3/1.
7.
EP and Council Directive 98/71/EC of 13 October 1998 on the legal protection of designs, [1998] OJ L 289/28.
8.
The European Patent Convention 16th edition of June 2016.
9.
The definition of “European patents” is below in footnote 72.
10.
Dam, Cees van, ‘European Tort Law’, (2nd edn, Oxford University Press, 2013), p. 130. Van Dam continues in an almost poetic way holding that “[a]cademic bees are tirelessly collecting the pollen of national flowers and bringing it to the European hive where the queen bee of European harmony is looking on with approval.” Ibid.
11.
Von Bar, Christian et al eds., ‘Principles, Definitions and Model Rules of European Private Law – Draft Common Frame of Reference (DCFR) Outline Edition’, (1st edn, Sellier European Law Publishers, 2009).
12.
European Group on Tort Law, Principles of European Tort Law, of May 2005, available at: http://civil.udg.edu/php/biblioteca/items/283/PETL.pdf (last visited 26 May 2019).
13.
See Dam, Cees van, ‘European Tort Law’, (2nd edn, Oxford University Press, 2013), chapters 2 – 6. In van Dam’s words the broader principles, e.g. expressed in DCFR and PETL, should only be “the new starting points for discussion.” According to van Dam, differences between various jurisdictions are a symptom of underlying differences “economically, culturally, and politically.” These general differences are addressed for the relevant trademark law jurisdictions in Chap. 2, Sect. 2.3. These differences in tort law should be appreciated in “respect for the role each system can play in an ever growing and intense discourse on the way forward in a diverse European tort law.” Ibid, p. 163-164. The analysis in this section is intentionally kept at the overall European level of principles (the start point level).
14.
Davis, Jennifer, ‘Revisiting the Average Consumer: An Uncertain Presence in European Trade Mark’, Intellectual Property Quarterly, no. 1, (2015), pp. 15, p. 16 (italics added). See also Trzaskowski, Jan, ‘Behavioural Economics, Neuroscience, and the Unfair Commercial Practises Directive’, Journal of Consumer Policy, vol. 34/no. 3, (2011), pp. 377, p. 386-387 and Incardona, Rossella, and Poncibò, Cristina, ‘The Average Consumer, the Unfair Commercial Practices Directive, and the Cognitive Revolution’, Journal of Consumer Policy, vol. 30/no. 1, (2007), pp. 21, p. 30 referring to Posner. Concluding their analysis, Incardona and Poncibò have claimed that “[t]he average consumer test reflects the economists’ idealistic paradigm of a rational consumer in an efficient marketplace.” Ibid, p. 35.
15.
For a definition of the “rational actor model” and the challenges of this model, see Parisi, Francesco, ‘The Language of Law and Economics. A Dictionary’, (1st edn, Cambridge University Press, 2013), p. 245-246.
16.
On this phrasing, see below Sect. 6.6.2.
17.
Commission Green Paper on the legal protection of industrial design No 111/51311/91 of June 1991.
18.
Ibid, p. 2.
19.
Ibid, p. 33.
20.
Campinos, António, ‘Foreword’, in Hasselblatt, Gordian N. ed., Community Trade Mark Regulation (EC) no 207/2009: A Commentary (1st edn, Beck/Hart, 2015), p. vii.
21.
The total number of trademark filings (direct and through international designations) was 146,409 and ditto design filings 109,728. See 2017 EUIPO Annual Report, available at: https://euipo.europa.eu/tunnel-web/secure/webdav/guest/document_library/contentPdfs/about_euipo/annual_report/annual_report_2017_en.pdf (last visited 26 May 2019), respectively p. 19 and 22.
22.
A search conducted in the CURIA database indicates that in 2017 the number of trademark cases heard by the Court of Justice, including appeals and preliminary rulings, was 49 for trademarks and 3 for designs.
23.
Cf. art. 1(2)(a) of the Design Regulation.
24.
Cf. art. 1(2)(b) of the Design Regulation. Unlike the EU Trademark, the EU unified design right still bears the prefix Community.
25.
Cf. art. 2 of the Design Directive, the directive applies to the registered design rights.
26.
Cf. art. 16 of the Design Directive on the “[r]elationship to other forms of protection”
“The provisions of this Directive shall be without prejudice to any provisions of Community law or of the law of the Member State concerned relating to unregistered design rights, trade marks or other distinctive signs, patents and utility models, typefaces, civil liability or unfair competition.”
27.
Cf. art. 3(a) of the Design Regulation and art. 1(a) of the Design Directive.
28.
Some general commentaries on the informed user: on the Design Regulation: in Stone, David, ‘European Union Design Law. A Practitioners’ Guide’, (2nd edn, Oxford University Press, 2016), p. 209-229 and Hasselblatt, Gordian N., ‘Article 5: Novelty’, in Hasselblatt, Gordian N. ed., Community Design Law: A Commentary (1st edn, Beck/Hart, 2015), 67, p. 71-72 and Brückner-Hofmann, Johanna, ‘Article 6: Individual Character’, in Hasselblatt, Gordian N. ed., Community Design Law: A Commentary (1st edn, Beck/Hart, 2015), 78, p. 81-82. A Danish perspective: Schovsbo, Jens, and Svendsen, Niels Holm, ‘Designret: Designloven Med Kommentarer’, (2nd edn, Jurist- og Økonomforbundets Forlag, 2013), p. 122-125.
29.
Registration: art. 6(1) of the Design Regulation and art. 5(1) of the Design Directive. Infringement: art. 10(1) of the Design Regulation and art. 9(1) of the Design Directive.
30.
Art. 4(1) of the Design Regulation and art. 3(2) of the Design Directive. As for the novelty requirement, it appears in art. 4 of the Design Directive that “[a] design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. Designs shall be deemed to be identical if their features differ only in immaterial details.” Also, art. 5(1)(b) and (2) of the Design Regulation.
31.
Cf. art. 6(1) of the Design Regulation and art. 5(1) of the Design Directive.
32.
Recital 14 of the Design Regulation and recital 13 of the Design Directive. Reference to the “freedom of the designer” is also found in the legislation as such for registration: art. 6(2) of the Design Regulation and art. 5(2) of the Design Directive. For infringement: art. 10(2) of the Design Regulation and art. 9(2) of the Design Directive. On the understanding of “freedom of the designer,” see in particular PepsiCo v. Grupo Promer, Case C-281/10 P, [2011] ECR I-10153, paras 43-45.
33.
There are several grounds for invalidity. One of them is that the design lacks novelty and individual character, cf. art. 25(1)(b), cf. arts. 4, 5 and 6 of the Design Regulation and art. 11(1)(b), cf. arts. 3, 4 and 5 of the Design Directive.
34.
Cf. art. 10(1) of the Design Regulation and art. 9(1) of the Design Directive (italics added).
35.
Brückner-Hofmann, Johanna, ‘Article 6: Individual Character’, in Hasselblatt, Gordian N. ed., Community Design Law: A Commentary (1st edn, Beck/Hart, 2015), 78, p. 80-81.
36.
See Stone, David, ‘European Union Design Law. A Practitioners’ Guide’, (2nd edn, Oxford University Press, 2016), p. 206 and Brückner-Hofmann, Johanna, ‘Article 6: Individual Character’, in Hasselblatt, Gordian N. ed., Community Design Law: A Commentary (1st edn, Beck/Hart, 2015), 78, p. 116.
37.
See Van Bennekom, Case 227/82, [1983] ECR 3883, para 18 (italics added). On the development of the average consumer by the Court of Justice, see Chap. 8.
38.
The directive was introduced after all the decisions mentioned in Chap. 8 on “the early days of the average consumer,” and before Sabel from November 1997 and Gut Springenheide from 1998.
39.
The latter part of the heading is inspired by the Pepsi slogan from 1996 “Change the Script.”
40.
One of the most significant voices in European design practice and literature.
41.
Stone, David, ‘European Union Design Law. A Practitioners’ Guide’, (2nd edn, Oxford University Press, 2016), p. 214-215. Stone has based his findings on the case law of the courts of England and Wales and Austria. Since it is beyond this book to go into national case law on design law, no independent analysis of the national decisions is conducted. Stone has also detected some positive definitions in national case law of the informed user.
42.
See Chap. 10.
43.
The legal basis for the invalidation claim was art. 25(1)(b) and (d) of the Design Regulation. “Article 25 (1) A Community design may be declared invalid only in the following cases: (b) if it does not fulfil the requirements of Articles 4 to 9; (…) (d) if the Community design is in conflict with a prior design which has been made available to the public after the date of filing of the application or, if a priority is claimed, the date of priority of the Community design, and which is protected from a date prior to the said date by a registered Community design or an application for such a design, or by a registered design right of a Member State, or by an application for such a right;” It will be recalled that “individual character” decided referring to the informed user is decided under art. 6 of the Design Regulation.
44.
For further on the background of the decision, see PepsiCo v. Grupo Promer, Case C-281/10 P, [2011] ECR I-10153, paras 9-35.
45.
Ibid, paras 47-61.
46.
Ibid, para 47.
47.
Ibid, para 48. As party to the case, OHIM supported Pepsi’s argument. Ibid, para 51.
48.
Ibid, para 52. Although Grupo Promer did not explicitly state that the consequence of being a matter of fact was that, the Court of Justice had to not assess the issue. However, this is the consequence of factual of matters, unless the facts have been distorted. See also Chap. 1, Sect. 1.5.4.
49.
Ibid, para 53 (italics added). Reference is also made by the Court of Justice to the opinion of Advocate General Mengozzi preceding the decision, i.e. PepsiCo v. Grupo Promer, Case C-281/10 P, [2011] ECR I-10153, (opinion of AG Mengozzi), paras 43-44. Recently, the Court of Justice has confirmed this finding in Easy Sanitary Solutions v. Group Nivelles, Joined Cases C-361/15 P and C-405/15 P, [2017], para 124. See also Herbert Neuman and Andoni Galdeano v. OHIM, Joined Cases C-101/11 P and C-102/11 P, [2012], para 53. Interestingly, to support his opinion in PepsiCo v. Grupo Promer, Mengozzi referred to the preparatory works of the Commission Proposal for a European Parliament and Council Regulation on the Community Design COM(93) 342 final-COD 463 of 3 December 1993, (the “Design Regulation Proposal”), p. 20. As referred to by Mengozzi: “The person on whom an overall impression of dissimilarity must be made is an “informed user”.” This may be, but is not necessarily, the end consumer who may be unaware of the appearance of the product for example if it is an internal part of a machine or a mechanical device replaced in the course of a repair. In such cases, the “informed user” is the person replacing the part. A certain level of knowledge or design awareness is presupposed depending on the character of the design. But the term “informed user” should indicate also that the similarity is not to be assessed at the level of “design experts”. The Design Regulation Proposal, p. 12 referred to by Mengozzi in his opinion para 44, including footnote 16 of the opinion. It also appears in the proposal, elaborating on the scope of protection, that “the overall impression created on an ordinary consumer, in the sense that the “informed user” may find striking differences, which would totally escape the attention of an ordinary consumer. Much depends on the character of the design.” The Design Regulation Proposal, p. 15-16.
50.
PepsiCo v. Grupo Promer, Case C-281/10 P, [2011] ECR I-10153, para 55. The Court of Justice referred to Mengozzi holding that in case where “designs relating to goods which – because of their large size or because they have to be placed far apart – can never, generally speaking, be set alongside one another: an informed user will not always be in a position to make a direct comparison of, for instance, two boats or two large items of industrial equipment.” PepsiCo v. Grupo Promer, Case C-281/10 P, [2011] ECR I-10153, (opinion of AG Mengozzi), para 51. Consequently, it may have to be decided based on the facts of the case that no side-by-side comparison will be made by the informed user. Ibid, para 52. See also the Court of Justice in Karen Millen v. Dunnes Stores, Case C-345/13, [2014], paras 26-27.
51.
PepsiCo v. Grupo Promer, Case C-281/10 P, [2011] ECR I-10153, para 54, cf. Grupo Promer v. OHIM, Case T-9/07, [2010], ECR II-981, para 64. The quote is taken from the General Court’s decision. The Board of Appeal stated that the informed user “could be a child in the approximate age range of 5 to 10 years, since the products are promotional items intended for young children. Alternatively, the informed user could be a marketing manager in a company that makes biscuits or potato snacks, since these are the typical products which are promoted by giving away small flat disks known in Spanish as tazos and in English as ‘rappers’ or ‘pogs’.” Pepsi v. Grupo Promer, Case R 1003/2005-3, [2006], para 16.
52.
This finding was more or less repeated verbatim by the General Court. Grupo Promer v. OHIM, Case T-9/07, [2010], ECR II-981, para 65. It was furthermore stated by the Board of Appeal that “[t]he appellant [Pepsi] proved by means of documents annexed to its reply that it has been marketing its tazos since 1995 and that Spanish newspapers were talking about tazomanía as early as 1998.” Pepsi v. Grupo Promer, Case R 1003/2005-3, [2006], para 17. The General Court did not explicitly refer to this finding but more general to paras 16-17 of the Board of Appeal decision.
53.
PepsiCo v. Grupo Promer, Case C-281/10 P, [2011] ECR I-10153, para 59. This finding was confirmed by the Court of Justice in Easy Sanitary Solutions v. Group Nivelles, Joined Cases C-361/15 P and C-405/15 P, [2017], para 125.
54.
Ibid, para 60. As for the specific comparison of the designs by the General Court with a “view from above,” Pepsi held that the facts had been distorted allowing the Court of Justice to replace the factual assessment. The Court of Justice rejected this argument. See ibid, paras 76-82.
55.
Fromer, Jeanne C., and Lemley, Mark A., ‘The Audience in Intellectual Property Infringement’, Michigan Law Review, vol. 112/no. 7, (2014), pp. 1251, p. 1252. See Chap. 1, Sect. 1.1.
56.
Stone, David, ‘European Union Design Law. A Practitioners’ Guide’, (2nd edn, Oxford University Press, 2016), p. 210. See also Bently, Lionel, Sherman, Brad, Gangjee, Dev and Johnson, Phillip ‘Intellectual Property Law’, (5th edn, Oxford University Press, 2018), p. 775.
57.
Brückner-Hofmann, Johanna, ‘Article 6: Individual Character’, in Hasselblatt, Gordian N. ed., Community Design Law: A Commentary (1st edn, Beck/Hart, 2015), 78, p. 82-83 (italics added). Similarly, the informed user is called in a “fictitious person” in the EUIPO guidelines of EU designs. See Guidelines for Examination of Registered Community Designs EUIPO on the Examination of Design Invalidity Applications, Draft Version 1.0 of 1 October 2018 are available at: https://euipo.europa.eu/ohimportal/da/draft-design-guidelines-2018 (last visited 26 May 2019), p. 34.
58.
Stone, David, ‘European Union Design Law – Highlights of Recent Case Law from the Court of Justice’, IP Litigator, vol. January/February (2013), pp. 32, p. 33. See also Stone, David, ‘European Union Design Law. A Practitioners’ Guide’, (2nd edn, Oxford University Press, 2016), p. 219.
59.
Stone, David, ‘European Union Design Law – Highlights of Recent Case Law from the Court of Justice’, IP Litigator, vol. January/February (2013), pp. 32, p. 220. Stone builds his arguments in this context on findings of national courts.
60.
Ibid, p. 222.
61.
Stone, David, ‘European Union Design Law. A Practitioners’ Guide’, (2nd edn, Oxford University Press, 2016), p. 222 (italics added) and earlier Stone, David, ‘European Union Design Law – Highlights of Recent Case Law from the Court of Justice’, IP Litigator, vol. January/February (2013), p. 33. See also Brückner-Hofmann holding that “this person [the informed user] is fictional, a legal construct and it is not defined in the CDR [Design Regulation].” Brückner-Hofmann, Johanna, ‘Article 6: Individual Character’, in Hasselblatt, Gordian N. ed., Community Design Law: A Commentary (1st edn, Beck/Hart, 2015), 78, p. 81.
62.
Stone, David, ‘European Union Design Law. A Practitioners’ Guide’, (2nd edn, Oxford University Press, 2016), p. 229.
63.
Davis, Richard, St Quintin, Thomas and Tritton, Guy, ‘Tritton on Intellectual Property in Europe’, (5th edn, Sweet & Maxwell, 2018), p. 696-697.
64.
Musker, David C., ‘Community Design Regulation, Art. 6’, in Gielen, Charles and von Bomhard, Verena eds., Concise European Trade Mark and Design Law (2nd edn, Kluwer Law International, 2017), 640, p. 640.
65.
DOCERAM v. CeramTec, Case C-395/16, [2018], para 16.
66.
DOCERAM v. CeramTec, Case C-395/16, [2018] (opinion of AG Saugmandsgaard Øe), para 55. Saugmandsgaard Øe noted that the defendant introduced the “objective observer” terminology into the case based on legal literature and one OHIM Board of Appeal decision. Ibid, para 56.
67.
Ibid, para 58. This observation, Saugmandsgaard Øe based on General Court case law. See, ibid, including footnote 68 of the opinion.
68.
Ibid, para 61.
69.
DOCERAM v. CeramTec, Case C-395/16, [2018], paras 37-38.
70.
PepsiCo v. Grupo Promer, Case C-281/10 P, [2011] ECR I-10153, para 53 referring to the opinion of Advocate General Mengozzi preceding the decision, i.e. Pepsi v. Grupo Promer, Case C-281/10 P, [2011] ECR I-10153, (opinion of AG Mengozzi), paras 43-44. See also footnote 49 above.
71.
It appears in art. 27(1) of the TRIPS Agreement that, subject to certain discretionary exemptions, “patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.”
72.
“European patents” are defined in art. 2 of the EPC: “(1) Patents granted under this Convention shall be called European patents. (2) The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State, unless this Convention provides otherwise.”
73.
Waelde, Charlotte, Brown, Abbe, Kheria, Smita et al, ‘Contemporary Intellectual Property: Law and Policy’, (4th edn, Oxford University Press, 2016), p. 374.
74.
Decisions of the EPO (the examining and opposition divisions) may be appealed to the boards of appeal. There are 28 technical boards of appeal, a legal board of appeal, the Enlarged Board of Appeal and finally the Disciplinary Board of Appeal. For a fuller description of the boards of appeals, see: https://www.epo.org/about-us/boards-of-appeal.html (last visited 26 May 2019).
75.
I.e. respectively “formal patent law” and “substantial patent law.” Schovsbo, Jens, Rosenmeier, Morten and Petersen, Clement Salung, ‘Immaterialret: Ophavsret, Patentret, Brugsmodelret, Designret, Varemærkeret’, (5th edn, Jurist- og Økonomforbundets Forlag, 2018), p. 232.
76.
Mainly the provisions in part II, chapter III of the EPC. See also Arnold, Sir Richard, ‘An Overview of European Harmonization Measures in Intellectual Property Law’, in Ohly, Ansgar and Justine Pila eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 25, p. 27.
77.
EP and Council Regulation (EU) No 1257/2012 of 17 December 2012 implementing enhanced cooperation in the creation of unitary patent protection, [2012] OJ L361/1 (“Unitary Patent Regulation”) having regard to art. 118(1) of the TFEU on the creation and uniformly protecting European intellectual property rights. Furthermore, Council Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the creation of unitary patent protection regarding the translation arrangements, [2012] OJ L361/89 (the “Patent Translations Regulation”) having regard to art. 118(2) of the TFEU on establishment of “language arrangements for the European intellectual property rights.” On art. 118 of the TFEU, see Chap. 4, Sect. 4.2.1.
78.
Council Agreement on a Unified Patent Court (2013/C 175/01) of 20 June 2013, [2013] OJ C 175/1 (the “Agreement on the Patent Court”). The agreement was signed by 25 EU member states. For an overview of the signatories see: https://www.unified-patent-court.org/about (last visited 26 May 2019). For a recent analysis of the EU Patent Court and its procedural rules, see Plesner, Peter-Ulrik et al, ‘Den Europæiske Patentdomstol: Retsplejen ved den Fælles Patentdomstol’, (1st edn, Jurist- og Økonomforbundets Forlag, 2018) and for an analysis of the EU Patent Package, see the edited book by Ballardini, Rosa Maria, Marcus, Norrgård and Bruun, Niklas eds., Transitions in European Patent Law: Influences of the Unitary Patent Package (1st edn, Wolters Kluwer, 2015).
79.
Recital 2 of the Agreement on the Patent Court.
80.
Recital 5 of the Agreement on the Patent Court.
81.
As per art. 18(2) of the Unitary Patent Regulation and art. 7(2) of the Patent Translations Regulation, the regulations will enter into force from the date of the Agreement on the Patent Court enters into force. The Agreement on the Patent Court will enter into force when minimum 13 states have ratified the agreement. See recital 14 of the Agreement on the Patent Court. As of July 2018, 16 states have ratified the agreement, but no firm start date of the Unified Patent Court has been confirmed. For a status of the ratification visit: http://www.consilium.europa.eu/en/documents-publications/agreements-conventions/agreement/?aid=2013001 (last visited 26 May 2019).
82.
As it appears in art. 2(c) of the Unitary Patent Regulation, a European patent with unified effect is to be understood as “a European patent which benefits from unitary effect in the participating Member States by virtue of this Regulation [the Unitary Patent Regulation].”
83.
Hence, recital 7 of the Unitary Patent Regulation states, that “[t]o ensure the uniform substantive scope of protection conferred by unitary patent protection, only European patents that have been granted for all the participating Member States with the same set of claims should benefit from unitary effect.” For a thorough account of the background of the EU Patent Package, see Pila, Justine, ‘An Historical Perspective I: The Unitary Patent Package’, 9, chapter 2 and Wadlow, Christopher, ‘An Historical Perspective II: The Unified Patent Court’, 33, chapter 3, both in in Pila, Justine and Wadlow, Christopher eds., The Unitary EU Patent System (1st edn, Hart, 2015).
84.
Art. 24(1)(C) of the Agreement on the Patent Court. Art. 24 more broadly sets out the sources to be applied by the Unified Patent Court.
85.
See generally on the application by the Unified Patent Court of the legal sources, Plesner, Peter-Ulrik et al, ‘Den Europæiske Patentdomstol: Retsplejen ved den Fælles Patentdomstol’, (1st edn, Jurist- og Økonomforbundets Forlag, 2018), p. 36-40.
86.
Arnold, Sir Richard, ‘An Overview of European Harmonization Measures in Intellectual Property Law’, in Ohly, Ansgar and Justine Pila eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 25, p. 27.
87.
Guidelines for Examination in the European Patent Office of November 2017, available at: https://www.epo.org/law-practice/legal-texts/guidelines/archive/guidelines-2017.html (last visited 26 May 2019).
88.
Case Law of the Boards of Appeal of the European Patent Office 8th Edition of July 2016, available at: https://www.epo.org/law-practice/case-law-appeals/case-law.html (last visited 26 May 2019). The EPO Case Law has recently been supplemented by Supplement to the EPO Case Law published in Supplementary publication 3, Official Journal EPO 2018 (the “EPO Case Law Supplement”), available at: http://www.epo.org/law-practice/legal-texts/official-journal/2018/etc/se3/2018-se3.pdf (last visited 26 May 2019).
89.
Arnold, Sir Richard, ‘An Overview of European Harmonization Measures in Intellectual Property Law’, in Ohly, Ansgar and Justine Pila eds., The Europeanization of Intellectual Property Law: Towards a European Legal Methodology (1st edn, Oxford University Press, 2013), 25, p. 27.
90.
Cf. art. 52(1) of the EPC. As per art. 52(2) of the EPC “[t]he following in particular shall not be regarded as inventions within the meaning of paragraph 1: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information.”
91.
Novelty is defined in art. 54 of the EPC. For instance, “[a] document takes away the novelty of any claimed subject-matter derivable directly and unambiguously from that document including any features implicit to a person skilled in the art in what is expressly mentioned in the document.” EPO Guidelines, Part G – Chapter VI-2 (italics added).
92.
Cf. art. 56 of the EPC (italics added). For an analysis of inventive step test as laid by the EPO Guidelines, Björkwall, Pia, ‘The Unified Patent Court and the Inventive Step’, in Ballardini, Rosa Maria, Norrgård, Marcus and Bruun, Niklas eds., Transitions in European Patent Law: Influences of the Unitary Patent Package (1st edn, Wolters Kluwer, 2015), 85, p. 85-89. See also the references to the person skilled in the art in, Schovsbo, Jens, Rosenmeier, Morten and Petersen, Clement Salung, ‘Immaterialret: Ophavsret, Patentret, Brugsmodelret, Designret, Varemærkeret’, (5th edn, Jurist- og Økonomforbundets Forlag, 2018), p. 242-243, Lindgreen, Nicolai, Schovsbo, Jens and Thorsen, Jesper, ‘Patentloven med Kommentarer’, (2nd edn, Jurist- og Økonomforbundets Forlag, 2018), p. 276-278 and Riis, Thomas and Trzaskowski, Jan, ‘Det markedsretlige persongalleri’, in Dahl, Børge, Riis, Thomas and Trzaskowski, Jan eds., Liber Amicorum: Peter Møgelvang-hansen (1st edn, Ex Tuto Publishing, 2016), pp. 439, p. 457-462.
93.
Musker, David C., ‘Community Design Regulation, Art. 6’, in Gielen, Charles and von Bomhard, Verena eds., Concise European Trade Mark and Design Law (2nd edn, Kluwer Law International, 2017), 640, p. 640.
94.
Kroher, Jürgen, ‘Article 56: Inventive Step’, in Singer, Margarete and Stauder, Dieter eds., European Patent Convention: A Commentary: Volume 1 (1st edn, Sweet & Maxwell, 2003), 141, p. 142.
95.
Ibid, p. 143.
96.
Pagenberg, Jochen, ‘the Evaluation of the “Inventive Step” in the European Patent System – More Objective Standards Needed: Part One’, International Review of Industrial Property and Competition Law, vol. 9/no. 1, (1978), pp. 1 and Pagenberg, Jochen, ‘the Evaluation of the “Inventive Step” in the European Patent System – More Objective Standards Needed: Part Two’, International Review of Industrial Property and Competition Law, vol. 9/no. 2, (1978), pp. 121.
97.
Pagenberg, Jochen, ‘the Evaluation of the “Inventive Step” in the European Patent System – More Objective Standards Needed: Part One’, International Review of Industrial Property and Competition Law, vol. 9/no. 1, (1978), pp. 1, p. 16 (italics added).
98.
Ibid, p. 17 (italics added). As for the use of expert opinions as part of framing the skilled person, Pagenberg claimed that “[i]nstead of answering questions of fact, they give their opinion as to the legal question of whether the invention was obvious to an average person or not.” Pagenberg, Jochen, ‘the Evaluation of the “Inventive Step” in the European Patent System – More Objective Standards Needed: Part Two’, International Review of Industrial Property and Competition Law, vol. 9/no. 2, (1978), pp. 121, p. 143 (italics added).
99.
Kransell, Arne, ‘The Average Expert’, NIR, vol. 2 (1982), pp. 196.
100.
This wording is in accordance with the legislative and judicial versions of this “person:” Sweden (“fackman,” cf. e.g. § 8(2) of the Swedish Patent Act), Denmark (“fagmand,” cf. e.g. § 8(2), of the Danish Patent Act) and Norway (“fagmann,” cf. e.g. § 8(2) of the Norwegian Patent Act).
101.
Cf. art. 100(a), cf. art. 52(1), cf. art. 56 of the EPC.
102.
Cf. art. 101(2) of the EPC.
103.
Cf. art. 138(1)(a), cf. art. 52(1), cf. art. 56 of the EPC. See more broadly on revocation, Schennen, Detlef, ‘Chapter II: Revocation and Prior Rights’, in Singer, Margarete and Stauder, Dieter eds., European Patent Convention: A Commentary: Volume 2 (1st edn, Sweet & Maxwell, 2003), 560, p. 560-561.
104.
For infringement, see art. 64(3) of the EPC.
105.
Davis, Richard, St Quintin, Thomas and Tritton, Guy, ‘Tritton on Intellectual Property in Europe’, (5th edn, Sweet & Maxwell, 2018), p. 145-146.
106.
Fromer, Jeanne C., and Lemley, Mark A., ‘The Audience in Intellectual Property Infringement’, Michigan Law Review, vol. 112/no. 7, (2014), pp. 1251, p. 1262-1263. According to Kitch, this has been viewed as the “reward theory.” Kitch, Edmund W., ‘The Nature and Function of the Patent System’, the Journal of Law & Economics, vol. 20/no. 2, (1977), pp. 265, p. 266. It is beyond the scope of this book to analyse the rationales of patent law. For an overview of the rationales, see Fromer, Jeanne C., and Lemley, Mark A., ‘The Audience in Intellectual Property Infringement’, Michigan Law Review, vol. 112/no. 7, (2014), pp. 1251, p. 1262-1267, including the sources referred to in this text. For another recent account, see also Burk, Dan L. ‘Law and Economics of Intellectual Property: In Search of First Principles’, Annual Review of Law and Social Science, vol. 8/(2012), pp. 397.
107.
Fromer, Jeanne C., and Lemley, Mark A., ‘The Audience in Intellectual Property Infringement’, Michigan Law Review, vol. 112/no. 7, (2014), pp. 1251, p. 1263.
108.
For an account of the different approaches to demarcating the “edge” of the patentee’s rights: See from a US perspective on a “metes and bounds” (also “fence posting”), see Burk, Dan L., and Mark A. Lemley, ‘Fence Posts or Sign Posts? Rethinking Patent Claim Construction’, University of Pennsylvania Law Review, vol. 157 (2009), pp. 1743, p. 1744 and p. 1766-1777. The different “core/gist” approach (also “sign posting”) opens for expanding the patent outside of the “fence posts” of the claims. Art. 69 of the EPC on interpretation of patent claims is said to lie somewhere between these approaches. Lindgreen, Nicolai, Schovsbo, Jens and Thorsen, Jesper, ‘Patentloven med Kommentarer’, (2nd edn, Jurist- og Økonomforbundets Forlag, 2018), p. 407-409. On the historical development, see also Stenvik, Are, ‘Protection for Equivalents Under Patent Law – Theories and Practice’, IIC, vol. 32/no. 1, (2001), pp. 1, p. 4-6. The significance of patent claims differs from trademark infringement where trademarks roughly are compared with other trademarks. Schovsbo, Jens, Rosenmeier, Morten and Petersen, Clement Salung, ‘Immaterialret: Ophavsret, Patentret, Brugsmodelret, Designret, Varemærkeret’, (5th edn, Jurist- og Økonomforbundets Forlag, 2018), p. 338-339. Germany is one jurisdiction said to have practiced the “core/gist” approach before the introduction of the EPC. Bleken, Håkon, ‘Ekvivalens i Norsk Patentrett’, NIR, vol. 2 (2010), pp. 108. For a brief account of the differences between the approach of Germany and English common law, see Lindgreen, Nicolai, Schovsbo, Jens and Thorsen, Jesper, ‘Patentloven med Kommentarer’, (2nd edn, Jurist- og Økonomforbundets Forlag, 2018), p. 408-409, including the sources referred to here.
109.
I.e. Protocol on the Interpretation of Article 69 EPC of 5 October 1973 as revised by the Act revising the EPC of 29 November 2001.
110.
Cf. art. 1 of the EPC Protocol.
111.
Bently, Lionel, Sherman, Brad, Gangjee, Dev and Johnson, Phillip ‘Intellectual Property Law’, (5th edn, Oxford University Press, 2018), p. 660.
112.
Stauder, Dieter, ‘Article 64: Extent of Protection’, in Singer, Margarete and Stauder, Dieter eds., European Patent Convention: A Commentary: Volume 1 (1st edn, Sweet & Maxwell, 2003), 236, p. 240.
113.
Cf. art. 2 of the EPC Protocol. Also, that the EPC Protocol is an integral part of the EPC, cf. art. 164(1) of the EPC.
114.
See Stauder, Dieter, ‘Article 64: Extent of Protection’, in Singer, Margarete and Stauder, Dieter eds., European Patent Convention: A Commentary: Volume 1 (1st edn, Sweet & Maxwell, 2003), 236, p. 245-246, Kemppinen et al, in Ballardini et al 2015, chapter 9, Bently, Lionel, Sherman, Brad, Gangjee, Dev and Johnson, Phillip ‘Intellectual Property Law’, (5th edn, Oxford University Press, 2018), p., p. 659-666, Visser, Derk, ‘The Annotated European Patent Convention’, (23rd edn, H.Tel., 2015), p. 80-83.
115.
Kemppinen, Hikki, Kemppinen, Jukka and Kemppinen, Seppa, ‘The Doctrine of Equivalents and the Interpretation of the Extent of Protection Conferred by a Patent’, in Ballardini, Rosa Maria, Marcus, Norrgård and Bruun, Niklas eds., Transitions in European Patent Law: Influences of the Unitary Patent Package (1st edn, Wolters Kluwer, 2015), 167, p. 175.
116.
See for instance, Sequis v. Inex, T 4/98, [2001] OJ 496813, para 12.3 and Suimitomo Rubber v. Michelin, T 676/94, [1996], para 10.
117.
See for instance, Lucent Technologies, T 1364/05, [2007], para 2.35. The collective quote is taken from the EPO Guidelines, Part G – Chapter VII-3 (italics added). See also EPO Case Law, p. 188.
118.
Alza v. Elf, T 26/98, [2002], para 6.2 referring to Fives-Cail Babcock v. Fontanié, T 32/81, [1982].
119.
In Gerber Scientific Instrument v. Rudolf Hell, T 222/86, [1987] related to a patent in the field of laser engraving of transmitted pictures, the EPO Board of Appeal held: “In the opinion of the Board, laser engraving represents an advanced technology, where it is appropriate to identify the skilled person to be a production team of these experts: a physicist, who is competent for the laser, an expert in electronics, who is competent for the scanning and modulation, and a chemist, who is competent for the photosensitive layer of the recording carrier.” Ibid, para 4.2.1. See also the EPO Guidelines Part G – Chapter VII-3.
120.
The applicant made a claim for an invention consisting of a method with technical and non-technical features. Part of the issue was whether differences to prior art were non-technical driven by business considerations, which (if so) would disqualify for inventive step. CardinalCommerce Corporation, T 1463/11, [2016], para 12. In this context, the EPO board of appeal found that it had to be determined what the “business person” could “give to the technically skilled person”. Ibid, para 13. See also the EPO Case Law Supplement, p. 12.
121.
CardinalCommerce Corporation, T 1463/11, [2016], para 15 (italics added).
122.
For instance, in Bayer Pharma v. Leon Farma, T 637/09, [2013], para 4.5.3 where it was held by the EPO Board of Appeal: “Thus, the technical knowledge of a particular scientific team which had been acquired during the development of a particular substance, but which has not been published at the time of the effective date of filing of the patent in suit does not reflect the knowledge of the notional skilled person to be taken into account for the assessment of inventive step.” See also, EPO Board Appeal Case Law 2016, p. 188-189.
123.
Hospira v. Genentech, [2014] EWHC 3857 (Pat), para 225. The appeal, dealt with recently by the Court of Appeal turning on obviousness, was rejected. Hospira v. Genentech, [2016] EWCA Civ 780. Essentially, what is “obvious” does not involve an inventive step. “Obviousness” is taken in the EPO guidelines to mean “that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art, i.e. something which does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the art.” EPO Guidelines, Part G – Chapter VII-4.
124.
“Keine deutet an, daß er [the person skilled in the art] über erfinderische Fähigkeiten verfügt. Ganz im Gegenteil ist es eben das Vorhandensein solcher Fähigkeiten, das den Erfinder vom sogenannten Fachmann unterscheidet.” Allied Colloids v. SNF Floerger, T 39/93, [1996], para 7.8.4. See also EPO Case Law, p. 188-189.
125.
In German (original language of the text): “Wenn man also die Fähigkeiten eines solchen Erfinders als Maßstab benutzen würde, dann würden wohl die meisten, wenn nicht gar alle technischen Entwicklungen, nicht auf einer erfinderischen Tätigkeit im Sinne von Artikel 56 EPÜ [EPO] beruhen.” Allied Colloids v. SNF Floerger, T 39/93, [1996], para 7.8.4.
126.
Mills & Rockley v. Technograph, [1971] FSR. 188, (UKSC), p. 193 (italics added).
127.
As he was then, when he was sitting at the bench of the UK Court of Appeal.
128.
Rockwater v. Technip, [2004] EWCA Civ 381, para 7.
129.
Ibid, para 10.
130.
As he was then, when he was sitting at the bench of the UK Court of Appeal.
131.
Hence, Pill LJ held that Jacob LJ had suggested, “that he [the skilled person] is part of the way to being an android.” Referring to a dictionary, Pill LJ held that a “nerd” is ““a person who lacks social skills or is boringly studious” and an ‘android’, in the same work, as “(in science fiction) a robot with a human appearance”. I hope that those working in this field will not regard “men skilled in the art” as figures from science fiction who lack social skills. Jacob LJ, will think me less than supportive of the development of the language of the law but I do respectfully prefer, for its clarity, Lord Reid’s terminology cited at paragraph 7 of the judgment.” I.e., the wording used by Lord Reid in Mills & Rockley v. Technograph, [1971] FSR. 188, (UKSC), p. 193. See the main text at footnote 126 above. Rockwater v. Technip, [2004] EWCA Civ 381, para 135. In a post on the IPKat blog made by Phillips after participating in an event where Jacob LJ elaborated on Rockwater v. Technip, it was put in a humorous way that: “The IPKat overheard a suggestion that the true definition of “nerd” is “anyone who looks up the word ‘nerd’ in a dictionary.” Unfortunately, the post does not say if the suggestion came from Jacob LJ. See Phillips, Jeremy (responsible for the post), ‘A Nerd By Any Other Name’, The IP Kat (28 October 2004): http://ipkitten.blogspot.dk/2004/10/nerd-by-any-other-name.html (last visited 26 May 2019).
132.
Rockwater v. Technip, [2004] EWCA Civ 381, para 11.
133.
The evidential side of the average consumer is addressed in Chap. 1, Sect. 1.5.4.
134.
In similar veins, Björkwall has argued that it is important to understand the characteristics of the person skilled in the art in the assessment of inventive step, since “the relative level within certain technological fields will depend on how this fictive person is visualized in the mind of the examiner or judge in a specific technological context.” Björkwall, Pia, ‘The Unified Patent Court and the Inventive Step’, in Ballardini, Rosa Maria, Norrgård, Marcus and Bruun, Niklas eds., Transitions in European Patent Law: Influences of the Unitary Patent Package (1st edn, Wolters Kluwer, 2015), 85, p. 98.
135.
References to “senior owner” and “junior owner” is upheld for the consistency with similar references under trademark law. Often the “senior patent owner” is called the “patentee.” Groves, Peter, ‘A Dictionary of Intellectual Property Law’, (1st edn, Edward Elgar, 2011), p. 236.
136.
Stenvik, Are, ‘Protection for Equivalents Under Patent Law – Theories and Practice’, IIC, vol. 32/no. 1, (2001), pp. 1, p. 6. In this process, different documentation according to Stenvik, may be considered, such as “the description, drawings, examination process history and other objective circumstances.” Ibid, p. 6-7.
137.
Also called “literal infringement” or “textual infringement.” Ibid, p. 7.
138.
This uncertainty was pointed out by Stenvik in 2001, but still remains. Ibid. Mainly, the uncertainty on a European level seems to relate to the requirements for protection against equivalent inventions, not if there is a protection against such equivalents at all. More certainty in European law was created with the significant UK Supreme Court decision Actavis v. Eli Lilly, where Lord Neuberger (giving the principle decision) and a unanimous court clarified that protection may be extended outside the claims. See Actavis v. Eli Lilly, [2017] UKSC 48, para 66, questions i)-iii), and subsequently Justice Arnold applied this in Generics Trading, Synthon v. Yeda Research and Development and Teva Pharmaceuticals, [2017] EWHC 2629 (Pat), para 160. Despite the certainty added by Actavis v. Eli Lilly, Jadeja et al have pointed out that “Lord Neuberger’s attempt at harmonizing the scope of protection across Europe therefore appears to have encountered a shaky start.” Jadeja, Nicole et al, ‘Cast back into the sea of uncertainty – A doctrine of equivalents in UK law? The Supreme Court ruling in Actavis v Eli Lilly’, Journal of Intellectual Property Law & Practice, vol. 13/no. 7, (2018), pp. 564, p. 568. Before Actavis v. Eli Lilly, the uncertainty was manifested in Kirin-Amgen v. Hoechst from 2004 (and previous decisions), when Lord Hoffmann e.g. stated that “article 69 [of the EPC] which, as it seems to me, firmly shuts the door on any doctrine which extends protection outside the claims.” Kirin-Amgen v. Hoechst, [2004] UKHL 46, (UKSC), para 44.
139.
For an analysis of the various European jurisdictions, in particular the UK, Germany and Finland, see Kemppinen, Hikki, Kemppinen, Jukka and Kemppinen, Seppa, ‘The Doctrine of Equivalents and the Interpretation of the Extent of Protection Conferred by a Patent’, in Ballardini, Rosa Maria, Marcus, Norrgård and Bruun, Niklas eds., Transitions in European Patent Law: Influences of the Unitary Patent Package (1st edn, Wolters Kluwer, 2015), 167, chapter 9. It should be mentioned that the analysis was made before the UK Supreme Court decision in Actavis v. Eli Lilly, [2017] UKSC 48 (see the foregoing footnote). For a recent analysis of the German and UK doctrine of equivalents after this decision, see Widera, Philipp, ‘Has Pemetrexed revived the Doctrine of Equivalence?’, Journal of Intellectual Property Law & Practice, vol. 13/no. 3, (2018), pp. 238.
140.
Stenvik, Are, ‘Protection for Equivalents Under Patent Law – Theories and Practice’, IIC, vol. 32/no. 1, (2001), pp. 1, p. 7 and also more recently in his Norwegian book on patent law in 2013. See Stenvik, Are, ‘Patentrett’, (3rd edn, Cappelen Damm, 2013), p. 359-389.
141.
Eisai v. Krka, HR-2009-1735-A, [2009], NOSC, paras 29-30.
142.
Actavis v. Eli Lilly, [2017] UKSC 48, para 66, question i)-iii).
143.
In the decision, the DK Supreme Court found that in determining the scope of the patent protection: i) account should be taken of what was “technical similar – equivalent – to the elements of the patent claims” and ii) that in this assessment it should be considered if the alleged infringing invention before the senior patentee obtained his right was part of the prior art. If the patent claims were unclear, it should be considered had the patentee himself interpreted the claims narrowly to fulfil the novelty and inventive step requirements. Hedegaard v. Hardi, U.2014.488H, [2013], DKSC, p. 528-529. With this decision, Schovsbo has held that the Danish state of the law was brought somewhat in compliance with the Norwegian, and hence the European law. Schovsbo has pointed out though, that it is regrettable that the Danish courts in contrast with the Norwegian are more “taciturn” and hence not as explicit in stating the law. Schovsbo, Jens, Rosenmeier, Morten and Petersen, Clement Salung, ‘Immaterialret: Ophavsret, Patentret, Brugsmodelret, Designret, Varemærkeret’, (5th edn, Jurist- og Økonomforbundets Forlag, 2018), p. 344-346. In Actavis v. Eli Lilly, Lord Neuberger (giving the principal judgement) recently analysed the applicability of a doctrine of equivalents in France, Germany, Italy, the Netherlands and Spain. See Actavis v. Eli Lilly, [2017] UKSC 48, paras 44-52.
144.
Bleken, Håkon, ‘Ekvivalens i Norsk Patentrett’, NIR, vol. 2 (2010), pp. 108, p. 120. The decision is also commented on by Ørstavik, Inger Berg, ‘Ekvivalenslærens Innhold som Rettsnorm i Norsk Patentrett’, NIR, vol. 2 (2010), pp. 134, p. 134-149.
145.
Stenvik, Are, ‘Protection for Equivalents Under Patent Law – Theories and Practice’, IIC, vol. 32/no. 1, (2001), pp. 1, p. 8-9. In Norwegian “den frie teknikk.” Stenvik, Are, ‘Patentrett’, (3rd edn, Cappelen Damm, 2013), p. 381-382.
146.
Stenvik, Are, ‘Protection for Equivalents Under Patent Law – Theories and Practice’, IIC, vol. 32/no. 1, (2001), pp. 1. In Norwegian “varianten må ha vært nærliggende for en fagmann.” Stenvik, Are, ‘Patentrett’, (3rd edn, Cappelen Damm, 2013), p. 359-389.
147.
Stenvik, Are, ‘Protection for Equivalents Under Patent Law – Theories and Practice’, IIC, vol. 32/no. 1, (2001), pp. 1, p. 12-13. In Norwegian: “inngrepsgjenstanden må løse samme problem som oppfinnelsen.” Stenvik, Are, ‘Patentrett’, (3rd edn, Cappelen Damm, 2013), p. 368-372. Eisai v. Krka, HR-2009-1735-A, [2009], NOSC, para 32. Eisai v. Krka could be read as if the NO Supreme Court introduces a fourth criterion, namely that the alleged infringing invention is a modification to the senior patented invention. See Eisai v. Krka, HR-2009-1735-A, [2009], NOSC, para 32 and the analyses of the decision in Bleken, Håkon, ‘Ekvivalens i Norsk Patentrett’, NIR, vol. 2 (2010), pp. 108, p. 125 and 133 and Østravik NIR 2010, p. 149. Kemppinen et al have argued that there are four questions, i.e. “there is no infringement if the allegedly infringing object does not: (I) lead to the same end result; (2) by the same means as the patented invention, and if the infringing object also (3) is part of the state of art; and (4) the person skilled in the art is not able to deduct it by looking at the patent.” However, as held by the authors, the questions seem to be covered by i.a. Stenvik’s questions. Kemppinen, Hikki, Kemppinen, Jukka and Kemppinen, Seppa, ‘The Doctrine of Equivalents and the Interpretation of the Extent of Protection Conferred by a Patent’, in Ballardini, Rosa Maria, Marcus, Norrgård and Bruun, Niklas eds., Transitions in European Patent Law: Influences of the Unitary Patent Package (1st edn, Wolters Kluwer, 2015), 167, p. 180.
148.
Stenvik, Are, ‘Protection for Equivalents Under Patent Law – Theories and Practice’, IIC, vol. 32/no. 1, (2001), pp. 1 and Stenvik, Are, ‘Patentrett’, (3rd edn, Cappelen Damm, 2013), p. 381.
149.
Stenvik, Are, ‘Protection for Equivalents Under Patent Law – Theories and Practice’, IIC, vol. 32/no. 1, (2001), pp. 1, p. 9-12.
150.
Stenvik, Are, ‘Patentrett’, (3rd edn, Cappelen Damm, 2013), p. 376-378.
151.
An analysis of the role of the Court of Justice under the EU patent system is found in Dimopoulos, Angelos, ‘An Institutional Perspective II: The Role of the CJEU in the Unitary (EU) Patent System’, in Pila, Justine and Wadlow, Christopher eds., The Unitary EU Patent System (1st edn, Hart, 2015), 57, chapter 5. Dimopoulos concludes that the Unified Patent Court, on matters of EU law, is subordinated to the Court of Justice, but not that the Court of Justice should be seen as an appeal court to the Unified Patent Court. On matters of EU law, the Unified Patent Court will be under the obligation to preliminarily refer questions to the Court of Justice under art. 267 of the TFEU procedure. References also encompass “EU or national patent law, the interpretation of which may conflict with TRIPS or another international agreement concluded by the EU.” Ibid, p. 64. According to Dimopoulos this follows from art. 207 of the TFEU, under which the “EU holds exclusive competence over commercial aspects of IP.” Ibid, p. 68.
152.
An analysis of the role of the EPO under the EU patent system is found in Luginbuehl, Stefan, ‘An Institutional Perspective I: The Role of the EPO in the Unitary (EU) Patent System’, in Pila, Justine and Wadlow, Christopher eds., The Unitary EU Patent System (1st edn, Hart, 2015), 45, chapter 4. Because of potential inconsistencies of substantial patent law due to the EU patent, Luginbuehl finds that “[t]his is certain to reopen the question of if the EPO and its Boards of Appeal should not in the long term be integrated into the EU system, provoking difficult political and institutional decisions on the part of the EPO Contracting States that are not members of the EU.” Ibid, p. 56.
153.
This is in accordance with the definition of “legal standards” in Chap. 5, Sect. 5.2.
154.
See below in Chap. 11.
155.
Stone, David, ‘European Union Design Law. A Practitioners’ Guide’, (2nd edn, Oxford University Press, 2016), p. 221.
156.
See below Chap. 11.
157.
Examples of the plural form of the average consumer is found by the court e.g. in Freixenet v. OHIM, Joined cases C-344/10 P and C-345/10 P, [2011] ECR I-10205, para 46.
158.
For other use by the EU legislature of the average consumer term, see above Chap. 1, Sect. 1.5.5.
159.
See above Sect. 6.3.1.
160.
The reasonable person is also denoted “bonus pater familias” or the “reasonable man.” On the differences between those terms, including “reasonable person,” see Calabresi, Guido, ‘Ideals, Beliefs, Attitudes, and the Law: Private Law Perspectives on a Public Law Problem’, (1st edn, Syracuse University Press, 1985), Chapter 2, in particular p. 23-24. Use of the term reasonable man has caused debate on whether that is acceptable. Among others, McGinley in a US common law context have addressed the debate on the distinction between a reasonable man and reasonable woman. McGinley, Ann C., ‘Reasonable Men?’, Connecticut Law Review, vol. 45/no. 1, (2012), pp. 1, p. 24. See also, Horsey, Kirsty, and Erika Rackley, ‘Tort Law’, (4th edn, Oxford University Press, 2015), p. 212-213 and Cane, Peter, ‘The Anatomy of Tort Law’, (1st edn, Hart, 1997), p. 43-44. Herbert has described the reasonable man as “an ideal, a standard, the embodiment of all those qualities which we demand of the good citizen.” Herbert, A. P., ‘Uncommon Law – being Sixty-Six Cases Revised and Collected in One Volume, Including Ten Cases Not Published before’, (6th edn, Methuen & Co. Ltd, 1948), p. 2. In addition, Herbert has stated that “I have called him a myth; and, in so far as there are a few, if any, of his mind and temperament to be found in the ranks of living men, the title is well chosen. But it is a. myth which rests upon solid and even, it may be, upon permanent foundations.” Ibid, p. 4. Since the reasonable person term is a model mainly stemming from the “bonus pater” in civil law countries and “reasonable man” in common law, this term is used to refer to the standard of care in tort law since it is the most neutral. Bussani, Mauro, and Infantino, Marta, ‘The Many Cultures of Tort Liability’, in Bussani, Mauro and Sebok, Anthony J. eds., Comparative Tort Law: Global Perspectives (1st edn, Edward Elgar, 2015), 11, p. 29, including footnote 84 of the text. That said, as pointed out by Horsey and Rackley that the “reasonable person” is not entirely neutral, since it still may be questioned, “what is her or his race, religion, class, sexual orientation, age, education and so on?” Horsey, Kirsty, and Erika Rackley, ‘Tort Law’, (4th edn, Oxford University Press, 2015), p. 212.
161.
See below Chap. 1, Sect. 1.3.2.
162.
Moran has addressed other purposes of tort law, such as “deterrence” (p. 31-34), “compensation” (p. 34-39) and “equality” (p. 49-54). All page numbers refer to Moran, Mayo, ‘Rethinking the Reasonable Person: An Egalitarian Reconstruction of the Objective Standard’, (1st edn, Oxford University Press, 2003).
163.
Beebe, Barton, Thomas F. Cotter, Mark A. Lemley, et al, ‘Trademarks, Unfair Competition, and Business Torts’, (1st edn, Aspen, 2011), p. 176-177. Other terminology used to describe this “reasonable purchaser” is according to Heymann’s analysis of case law, the “reasonably prudent consumer,” “reasonable consumer” or “reasonable person.” Heymann, Laura A., ‘The Reasonable Person in Trademark Law’, Saint Louis University Law Journal, vol. 52/no. 3, (2008), pp. 781, p. 781. See also Austin, Graeme W., ‘Trademarks and the Burdened Imagination’, Brooklyn Law Review, vol. 69/no. 3, (2004), pp. 827, p. 832.
164.
Heymann, Laura A., ‘The Reasonable Person in Trademark Law’, Saint Louis University Law Journal, vol. 52/no. 3, (2008), pp. 781, p. 782-783. The backing for this finding, Heymann has found in Austin’s article from 2004 (right below) and Kaplow’s analysis of the differences between rules and standards referred to above in Chap. 5, Sect. 5.2. Wallberg has made a similar comparison between the average consumer in European trademark law and the reasonable person. Wallberg, Knud, ‘Brug af Andres Varemærker i Digitale Medier: Et Bidrag til Afklaring af Varemærkerettens Indhold og Grænseflader’, (1st edn, Jurist- og Økonomforbundets Forlag, 2015), p. 211, including footnote 614 of the text.
165.
In addition, Austin has stated that the trademark law model “minimize the relevance of consumers’ own independent thinking” since this model “is very often less than prudent, exhibiting instead unthinking and irrational responses to branding messages.” Austin, Graeme W., ‘Trademarks and the Burdened Imagination’, Brooklyn Law Review, vol. 69/no. 3, (2004), pp. 827, p. 832.
166.
Heymann, Laura A., ‘The Reasonable Person in Trademark Law’, Saint Louis University Law Journal, vol. 52/no. 3, (2008), pp. 781, p. 783, including footnote 8 of the text.
167.
As explained in the introduction, reasonableness is infused into the average consumer since its characteristics are “reasonably well-informed and reasonably observant and circumspect.” See Sect. 6.1 of this chapter.
168.
In Danish: “vedkommende forbrugerkreds” and “en slags “bonus pater” skøn i varemærkeretten, der bl.a. tilsiger at opfange og eliminere den almindelige købers “normalfejl”.” Koktvedgaard, Mogens, ‘Konkurrenceprægede Immaterialretspositioner: Bidrag til Læren om de Lovbestemte Enerettigheder og Deres Forhold til den Almene Konkurrenceret’, (1st edn, Juristforbundet, 1965), p. 176-177. See also, ibid, p. 123.
169.
Cf. art. 1:101(1) of the PETL.
170.
Cf. art. 1:101(2)(a) of the PETL. See also art. VI.–1:101 of the DCFR.
171.
Cf. art. VI. – 2:101 of the DCFR. See in general chapter 2 of the DCFR and chapter 2 of the PETL.
172.
Cf. art. 3:101 of the PETL. See in general chapter 3 of the PETL and chapter 4 of the DCFR.
173.
Italics added. In the assessment of foreseeability, it has to be taken “into account in particular the closeness in time or space between the damaging activity and its consequence, or the magnitude of the damage in relation to the normal consequences of such an activity.” Cf. art. 3:201 of the PETL.
174.
Cf. art. 4:101 of the PETL. See also chapter 3 on “accountability” of the DCFR.
175.
Cf. art. VI. – 3:102(a) of the DCFR.
176.
Ripstein, Arthur, ‘Reasonable Persons in Private Law’, in Bongiovanni, Giorgio, Sartor, Giovanni and Valentini, Chiara eds., Reasonableness and Law (1st edn, Springer, 2009), 255, p. 257.
177.
Cane, Peter, ‘The Anatomy of Tort Law’, (1st edn, Hart, 1997), p. 37.
178.
Ibid, p. 40.
179.
Cf. art. VI. – 3:102(b) of the DCFR.
180.
Cf. art. 4:102(1) of the PETL.
181.
Cf. art. 4:102(2) of the PETL. For similar adjustment for children under 18, see art. VI. – 3:103 of the DCFR.
182.
See Widmer, Pierre, ‘Liability Based on Fault: Introduction’, in European Group on Tort Law ed., European Group on Tort Law: Principles of European Tort Law: Text and Commentary (1st edn, Springer, 2005), 64, p. 65-66. See also Koziol, Helmut, ‘Liability Based on Fault: Subjective or Objective Yardstick?’, the Maastricht Journal of European and Comparative Law, vol. 5 (1998), pp. 111, p. 112 and 128.
183.
Bar, Christian von, and Clive, Eric, ‘Principles, Definitions and Model Rules of European Private Law Draft Common Frame of Reference (DCFR)’, (1st edn, Oxford University Press, 2010), p. 3278. Horsey and Rackley have stated that it must be decided “what level of care and skill did the activity the defendant was undertaking require?”, Horsey, Kirsty, and Erika Rackley, ‘Tort Law’, (4th edn, Oxford University Press, 2015), p. 213. In a US context Famsworth and Grady have similarly seen “[n]egligence as conduct, not state of mind” and held that “[a] bad state of mind is neither necessary nor sufficient to show negligence,’ and conduct is everything.” Furthermore, that “[t]he legal concept of negligence as unduly risky conduct distinct from state of mind reflects the law’s strong ·commitment to an objective standard of behavior.” Farnsworth, Ward and Grady, Mark F., ‘Torts: Cases and Questions’, (2nd edn, Aspen, 2009), p. 275. Von Eyben and Isager explain that under Danish law, the defendant’s behaviour (the tortfeasor) as part of the negligence standard is not to be viewed as an “average behaviour” (“gennemsnitsadfærd”), but as a matter of whether the defendant’s action or omission deviate from recognised behavioural patterns – e.g. recognised in legislation, case law or customs. Eyben, Bo von, and Isager, Helle, ‘Lærebog i Erstatningsret’, (8th edn, Jurist- og Økonomforbundets Forlag, 2015), p. 91.
184.
Dam, Cees van, ‘European Tort Law’, (2nd edn, Oxford University Press, 2013), p. 235. It has also been claimed by Cane that “[r]easonableness is an “objective” (as opposed to a “subjective”) standard – the test is not whether the defendant thought any precautions taken were reasonable, but whether the court thinks so.” Cane, Peter, ‘The Anatomy of Tort Law’, (1st edn, Hart, 1997), p. 40-41.
185.
Dam, Cees van, ‘European Tort Law’, (2nd edn, Oxford University Press, 2013), p. 266. In a section on “objective typical care” (In German: “Objectiv-typisierte Sorgfalt (Gruppenfahrlässigkeit)”), it has been explained by Deutsch that this objectified person may in various instances have different characteristics, e.g. in some instances characteristics of an amateur and in other those of a professional. See Deutsch, Erwin, ‘Allgemeines Haftungsrecht’, (2nd edn, Heymanns, 1996), p. 259-260.
186.
Cane, Peter, ‘The Anatomy of Tort Law’, (1st edn, Hart, 1997), p. 38.
187.
Ripstein, Arthur, ‘Reasonable Persons in Private Law’, in Bongiovanni, Giorgio, Sartor, Giovanni and Valentini, Chiara eds., Reasonableness and Law (1st edn, Springer, 2009), 255, p. 276. Similarly, Moran has held that the reasonable person may illustrate the forming of “the boundary between the core concerns of negligence: liberty and security.” As illustration of this, Moran has referred to the use of the reasonable person in relation to the mentally disabled. Moran, Mayo, ‘Rethinking the Reasonable Person: An Egalitarian Reconstruction of the Objective Standard’, (1st edn, Oxford University Press, 2003), p. 6.
188.
Ripstein, Arthur, ‘Reasonable Persons in Private Law’, in Bongiovanni, Giorgio, Sartor, Giovanni and Valentini, Chiara eds., Reasonableness and Law (1st edn, Springer, 2009), 255, p. 269. In similar veins, Widmer has held that the reasonable person may also be seen as a significant calibration device balancing the ““activity interest” which corresponds to the liberty of developing one’s personality and displaying economic, sportive or artistic activities” with “the “integrity interest”, corresponding to the liberty to enjoy one’s own physical and psychic capacities and one’s property without being disturbed.” Widmer, Pierre, ‘Liability Based on Fault: Introduction’, in European Group on Tort Law ed., European Group on Tort Law: Principles of European Tort Law: Text and Commentary (1st edn, Springer, 2005), 64, p. 76.
189.
Moran, Mayo, ‘Rethinking the Reasonable Person: An Egalitarian Reconstruction of the Objective Standard’, (1st edn, Oxford University Press, 2003), p. 2.
190.
Samuel, Geoffrey, ‘Is Law a Fiction?’, in Del Mar, Maksymilian and Twining, William eds., Legal Fictions in Theory and Practice (1st edn, Springer, 2015), 31, p. 47.
191.
See Chap. 1, Sect. 1.2 and Chap. 5.
192.
This statement only addresses the starting point for assessing negligence and does not consider the defenses of the injurer. Such defenses could be “self-defense” and “self-help,” cf. respectively art. 7:101(1)(a) and (b) of the PETL.
193.
This was introduced in the introduction, Sect. 6.1 of this chapter.
194.
Bar, Christian von, and Clive, Eric, ‘Principles, Definitions and Model Rules of European Private Law Draft Common Frame of Reference (DCFR)’, (1st edn, Oxford University Press, 2010), p. 3279. Another reason is that arbitrariness blurs the distinction between negligence and strict liability.
195.
Heymann, Laura A., ‘The Reasonable Person in Trademark Law’, Saint Louis University Law Journal, vol. 52/no. 3, (2008), pp. 781, p. 783, including footnote 8 of the text (italics added).
196.
This point is addressed below through a discussion of the importance of considering the value of the non-confused consumers in assessing likelihood of confusion. See Chap. 12, Sect. 12.5.
197.
The lacking steer in a purely normative fiction has been illustrated by Trzaskowski holding that “the average consumer is in fact merely a ‘normative abstraction’ setting a standard for; not how consumers do behave, but how they should behave. This resembles the notion of the Bonus Pater Familias in tort law, and which represent how (an average) citizen should behave in order not to be met with civil liability.” Trzaskowski, Jan, ‘The Unfair Commercial Practices Directive and Vulnerable Consumers’, Conference Paper, (2013), pp. 1, p. 10. This finding is addressed in the following chapter.
198.
Samuel, Geoffrey, ‘Is Law a Fiction?’, in Del Mar, Maksymilian and Twining, William eds., Legal Fictions in Theory and Practice (1st edn, Springer, 2015), 31, p. 33.
199.
Samuel, Geoffrey, ‘Is Law a Fiction?’, in Del Mar, Maksymilian and Twining, William eds., Legal Fictions in Theory and Practice (1st edn, Springer, 2015), 31, p. 33-34. In describing the difference between “hard science” and “soft science,” Jacoby has stated: “Because the phenomena (e.g., atoms, planets, genes, the heart) that are the focus of the natural (biological and especially physical) sciences are tangible and generally permit relatively precise measurement, they are usually are referred to as the “hard” sciences. In contrast, many of the phenomena studied in the behavioral and social sciences are more “fuzzy,” defined by people rather than nature.” Jacoby, Jacob, ‘Trademark Surveys Volume I: Designing, Implementing, and Evaluating Surveys’, (1st edn, American Bar Association, 2013), p. 191. On models of microeconomics, see Pindyck, Robert and Rubinfeld, Daniel, ‘Microeconomics’, (9th edn, Pearson, 2018), p. 27-28.
200.
See Chap. 1, Sect. 1.1.
201.
Jacoby, Jacob, ‘Trademark Surveys Volume I: Designing, Implementing, and Evaluating Surveys’, (1st edn, American Bar Association, 2013), p. 191. Although Jacoby writes on using surveys in trademark law, reference here to “confusion” is not merely to the legal sense of the word. Hence, the full list of examples is “motives, morale, creativity, frustration, confusion, deception, etc.” Ibid (italics added).
202.
The quote continues: “or a canary in a cage, taken down the coal mine to see if the air is wholesome.” If the canary survives, the air is wholesome. As further explained by Phillips, the miners represent the alleged infringer, i.e. the junior trademark owner, using a trademark potentially being confusingly similar to that of the senior trademark owner. Phillips finished by holding that “[n]either the consumer nor the canary derives any personal benefit from its experience.” Of course, scholarly metaphors should not be overanalysed (including that of Phillips) one of the most influential intellectual property personalities in past years. However, given this chapter on models in law and more broadly in science, the metaphor overlooks a profound difference between models in law and the hard sciences. Phillips, Jeremy, ‘Trade Mark Law a Practical Anatomy’, (1st edn, Oxford University Press, 2003), p. 20. This has been reiterated by Phillips the IP Kat blog. See Phillips, Jeremy (responsible for the post), ‘The Consumer Protection Function of Trade Marks: Just so?’, The IP Kat (21 November 2014): http://ipkitten.blogspot.dk/2014/11/the-consumer-protection-function-of.html (last visited 26 May 2019).
203.
Arguably, a pH test is a method for testing the model of pH value and measurement.
204.
The term “rational actor” is used by among others Parisi, Francesco, ‘The Language of Law and Economics. A Dictionary’, (1st edn, Cambridge University Press, 2013), p. 245-246, Finkelstein, Claire, ‘Legal Theory and the Rational Actor’, in Mele, Alfred R. and Rawling, Piers eds., The Oxford Handbook of Rationality (1st edn, Oxford University Press, 2004), 399, chapter 21, Jacoby, Jacob, ‘Is it Rational to Assume Consumer Rationality? Some Consumer Psychological Perspectives on Rational Choice Theory’, Roger Williams University Law Review, vol. 6 (2000-2001), pp. 81, p. 127 and Elster, Jon, ‘Reason and Rationality’, (1st edn, Princeton University Press, 2009), p. 2 and 6. For use of the term “homo oeconomicus/economicus,” see Sibony, Anne-Lise, ‘Can EU Consumer Law Benefit from Behavioural Insights? An Analysis of the Unfair Practices Directive’, in Mathis, Klaus ed., European Perspectives on Behavioural Law and Economics. Foundations and Applications (1st edn, Springer, 2015), 71, p. 72, Ross, Alf, ‘Legal Fictions’, in Hughes, Graham ed., Law, Reason, and Justice: Essays in Legal Philosophy, (1st edn, Springer, 1969), 217, p. 231, Golecki, Mariusz J., ‘Homo Economicus Versus Homo Iuridicus Two Views on the Coase Theorem and the Integrity of Discourse Within the Law and Economics Scholarship’, in Mathis, Klaus ed., Law and Economics in Europe: Foundations and Applications (1st edn, Springer, 2014), 69, chapter 4, and Engelbrekt, Antonina Bakardjieva, ‘The Scandinavian Model of Unfair Competition Law’, in Hilty, Reto M. and Henning-Bodewig, Frauke eds., Law Against Unfair Competition: Towards a New Paradigm in Europe? (1st edn, Springer, 2007), 161, p. 173. For use of the term “Rational man,” see Posner, Richard A., ‘Rational Choice, Behavioral Economics, and the Law’, Stanford Law Review, vol. 50 (1997-1998), pp. 1551, p. 1559. In this book, the terms are regarded as interchangeable.
205.
Incardona, Rossella, and Poncibò, Cristina, ‘The Average Consumer, the Unfair Commercial Practices Directive, and the Cognitive Revolution’, Journal of Consumer Policy, vol. 30/no. 1, (2007), pp. 21, p. 29. The authors refer to Rewe-Zentral AG v. Bundesmonopolverwaltung für Branntwein, Case 120/78, [1979] ECR 649, X (Nissan), Case C-373/90, [1992], ECR I-131, Schutzverband v. Yves Rocher, Case C-126/91, [1993] ECR I-2361, Verband Sozialer Wettbewerb v. Clinique Laboratoires, Case C-315/92 [1994] ECR I-317 and Verein gegen Unwesen in Handel und Gewerbe v. Mars, Case C-470/93, [1995] ECR I-1923.
206.
Wilhelmsson, Thomas, ‘The Average European Consumer: A Legal Fiction?’, in Wilhelmsson, Thomas, Paunio, Elina and Pohjolainen, Annika eds., Private Law and the Many Cultures of Europe (1st edn, Kluwer Law International, 2007), 243, p. 262. The decision is dealt with below in Chap. 8, Sect. 8.6 in the analysis of the judicial history of the average consumer pre Sabel. For a recent reference to these decisions, given the rationality, see Mak, Vanessa, ‘The Consumer in European Regulatory Private Law’, in Leczykiewicz, Dorota, and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 381, p. 384 – 389. See also on consumers in unfair trading law, Engelbrekt, Antonina Bakardjieva, ‘Fair Trading Law in Flux? National Legacies, Institutional Choice and the Process of Europeanisation’, (1st edn, Stockholm University, 2003), p. 82 and p. 524-525.
207.
Estée Lauder, Case C-220/98, [1999] ECR I-117, (opinion of AG Fennelly), para 26 (italics added). Davis tacitly makes the point in her 2015 article where she refers to her findings in her 2005 article on the average consumer as supporting the argument of a rational consumer model. See Davis, Jennifer, ‘Revisiting the Average Consumer: An Uncertain Presence in European Trade Mark’, Intellectual Property Quarterly, no. 1, (2015), pp. 15, p. 21, where she in footnote 54 of that text refers to her 2005 article p. 197, where she in footnote 77 of that text has set out the quote by Fennelly from Estée Lauder.
208.
Incardona, Rossella, and Poncibò, Cristina, ‘The Average Consumer, the Unfair Commercial Practices Directive, and the Cognitive Revolution’, Journal of Consumer Policy, vol. 30/no. 1, (2007), pp. 21, p. 30. Referring to Posner, the authors have explained that “[i]n this model, consumers are viewed as rational actors able to estimate the probabilistic outcomes of uncertain decisions and to select the outcome which maximises their sense of well-being at the time the decision is made. As a consequence of their assumed rationality, consumers would largely be held responsible for their own actions, and the potential liability for the company would be greatly reduced.” Ibid. See also Mak, Vanessa, ‘The Consumer in European Regulatory Private Law’, in Leczykiewicz, Dorota, and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 381, p. 385.
209.
Mak, Vanessa, ‘The Consumer in European Regulatory Private Law’, in Leczykiewicz, Dorota, and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 381, p. 384.
210.
Davis, Jennifer, ‘Revisiting the Average Consumer: An Uncertain Presence in European Trade Mark’, Intellectual Property Quarterly, no. 1, (2015), pp. 15, p. 16.
211.
Ibid, p. 25.
212.
Abbamonte, Guiseppe B., ‘The Unfair Commercial Practices Directive and its General Prohibition’, in Weatherill, Stephen and Ulf Bernitz eds., The Regulation of the Unfair Commercial Practices Under EC Directive 2005/29 (1st edn, Hart, 2007), 11, p. 24.
213.
Alvisi, Chiara, ‘The Reasonable Consumer Under European and Italian Regulations on Unfair Business-to-Consumer Commercial Practices’, in Bongiovanni, Giorgio, Giovanni Sartor and Chiara Valentini eds., Reasonableness and Law (1st edn, Springer, 2009), 283, p. 292. Alvisi’s findings are based on an analysis of the average consumer under the UCPD. However, the findings turn around some of the general characteristics of the average consumer also known to the trademark law version of the average consumer.
214.
Golecki, Mariusz J., ‘Homo Economicus Versus Homo Iuridicus Two Views on the Coase Theorem and the Integrity of Discourse Within the Law and Economics Scholarship’, in Mathis, Klaus ed., Law and Economics in Europe: Foundations and Applications (1st edn, Springer, 2014), 69, p. 72. Referring to misleading advertisement, Bagardgjieva has held that “[t]he average consumer is, however, not seen as a rational ‘homo economicus’ fully detached from reality. This consumer is considered not to have particular experience of the product in question and is presumed to read adverts casually. Therefore it is the aggregate overall impression by casual contact that is important.” Engelbrekt, Antonina Bakardjieva, ‘The Scandinavian Model of Unfair Competition Law’, in Hilty, Reto M. and Henning-Bodewig, Frauke eds., Law Against Unfair Competition: Towards a New Paradigm in Europe? (1st edn, Springer, 2007), 161, p. 173.
215.
Davis, above in footnote 207 and Davis, Jennifer, ‘Revisiting the Average Consumer: An Uncertain Presence in European Trade Mark’, Intellectual Property Quarterly, no. 1, (2015), pp. 15, p. 25.
216.
The phrase “moron in a hurry” originates from Morning Star v Express Newspapers, a media case involving two newspaper publications. The telling quote from the Justice Foster goes: “[i]f one puts the two papers side by side, I for myself would find that the two papers are so different in every way that only a moron in a hurry would be misled.” Morning Star v. Express Newspapers, [1979] FSR 113, (EWHC), p. 117 (italics added). As for the reference to “Homer Simpson,” it originates in the Canadian decision Atomic Energy v. Areva, where Zinn J, after referring to the “moron in a hurry,” held that “[i]n this industry [the nuclear power industry], the fact that Homer Simpson may be confused is insufficient to find confusion.” Atomic Energy v. Areva, [2009] FC 980, para 28. Corbin has elaborated on these cases in an article on the Canadian version of the average consumer. Corbin, Ruth M., ‘The Moron in a Hurry – a Creature of Law Or Science?’, in Archibald, Todd L. and Echlin, Randall Scott eds., Annual Review of Civil Litigation 2015 (1st edn, Carswell, 2015), 43, p. 43. See also Beebe, Barton, ‘Trademark Law: An Open-Source Casebook’, Trademark Infringement (V3 edn, 2016), p. 49.
217.
Estée Lauder, Case C-220/98, [1999] ECR I-117, (opinion of AG Fennelly), para 26 and see above footnote 207.
218.
As explained by Devlin, a Pareto improvement is understood as “given a pre-existing resource distribution, an exchange effect a Pareto improvement if it satisfies at least one person’s preference without making any other individual worse off.” Devlin, Allan, ‘Fundamental Principles of Law and Economics’, (1st edn, Routledge, 2014), p. 32. Kaldor-Hicks efficiency emerges “when an action increases the net welfare of society, but harms at least one person.” Ibid, p. 33. See also Parisi, Francesco, ‘The Language of Law and Economics. A Dictionary’, (1st edn, Cambridge University Press, 2013), p. 162, Posner, Richard A., ‘Economic Analysis of Law’, (9th edn, Aspen, 2014), p. 14-15 and Griffiths, Andrew, ‘An Economic Perspective on Trade Mark Law’, (1st edn, Edward Elgar, 2011), p. 40.
219.
It cannot be ruled out that the Danish translation is purely an example of an imprecise translation. Other linguistic versions use words similar to “utility,” hence Deutsh (“nuttigst”), French (“utile”), German (“Nutzen”) and Swedish (“nytta”).
220.
Burk, Dan L. ‘Law and Economics of Intellectual Property: In Search of First Principles’, Annual Review of Law and Social Science, vol. 8/(2012), pp. 397, p. 398.
221.
Stigler, George J., ‘Economists and Public Policy’, AEI Journal on Government and Society, vol. May/June (1982), pp. 13, p. 16 (italics added). In similar veins Ramsay has held that “[e]ach individual in the market is assumed to be the best judge of his own interests and to act rationally, maximising his utility (or personal satisfaction) within the constraints of his economic resources.” Ramsay, Iain, ‘Consumer Law and Policy: Text and Materials on Regulating Consumer Markets’, (3rd edn, Hart, 2012), p. 47. Reference at this point is made to a previous book of his from 1984, Ramsay, Iain, ‘Rationales for Intervention in the Consumer Marketplace’, (1st edn, Office of Fair Trading, 1984), p. 22-24. It is based on this finding that Mak has made her finding referred to above that consumers in EU law are assumed to be rational actors. Mak, Vanessa, ‘The Consumer in European Regulatory Private Law’, in Leczykiewicz, Dorota, and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 381, p. 384.
222.
Posner, Richard A., ‘Economic Analysis of Law’, (9th edn, Aspen, 2014), p. 3. See also Parisi, Francesco, ‘The Language of Law and Economics. A Dictionary’, (1st edn, Cambridge University Press, 2013), p. 245 and Ariely, Dan, ‘The Upside of Irrationality: The Unexpected Benefits of Defying Logic at Work and at Home’, (1st edn, Harper Perennial, 2010), p. 5-6. It should be mentioned though that Ariely is not supportive of this kind of rationality assumption.
223.
Cooter, Robert, and Ulen, Thomas, ‘Law and Economics’, (6th edn, Pearson, 2014), p. 13.
224.
Jacoby, Jacob, ‘Is it Rational to Assume Consumer Rationality? Some Consumer Psychological Perspectives on Rational Choice Theory’, Roger Williams University Law Review, vol. 6 (2000-2001), pp. 81, p. 87.
225.
Ibid, p. 88.
226.
Posner, Richard A., ‘The Problems of Jurisprudence’, (1st edn, Harvard University Press, 1990), p. 353.
227.
Jacoby, Jacob, ‘Is it Rational to Assume Consumer Rationality? Some Consumer Psychological Perspectives on Rational Choice Theory’, Roger Williams University Law Review, vol. 6 (2000-2001), pp. 81, p. 94.
228.
Economides, Nicolas, ‘The Economics of Trade Marks’, Trademark Reporter, vol. 78 (1987), pp. 523, p. 528 (italics added).
229.
Burk, Dan L. ‘Law and Economics of Intellectual Property: In Search of First Principles’, Annual Review of Law and Social Science, vol. 8/(2012), pp. 397, p. 410.
230.
The economic function of trademarks as lowering consumer search costs is addressed in Chap. 1, Sect. 1.3.2. Within intellectual property management, it has been suggested that trademarks are key business assets. By way of the goodwill attached to trademark, it is possible for the trademark owner to create a strong brand and to leverage from existing markets (so-called “red ocean markets”) into new markets (so-called “blue ocean markets”). Trademarks also facilitate the process for the owner of a patent protected invention in the duration of the protection to increase demand not only for the protected invention, but also for the brand under which it is sold. Thereby it is possible for the patent owner to leverage protection outside the duration of the patent protection, increasing market shares in existing markets. This mechanism of trademarks has been analysed further in the following article: Conley, James G., Bican, Peter M., and Ernst, Holger, ‘Value Articulation: A Framework for the Strategic Management of Intellectual Property’, California Management Review, vol. 55/no. 4, (2013), pp. 102. See also Posner, Richard A., ‘Intellectual Property: The Law and Economics Approach’, the Journal of Economic Perspectives, vol. 19/no. 2, (2005), pp. 57, p. 67.
231.
Stigler, George J., ‘Economists and Public Policy’, AEI Journal on Government and Society, vol. May/June (1982), pp. 13, p. 17.
232.
Friedman, Lawrence M. ‘Law, Economics and Society’, Hofstra Law Review, vol. 39 (2010-2011), pp. 487, p. 489.
233.
Cooter, Robert, and Ulen, Thomas, ‘Law and Economics’, (6th edn, Pearson, 2014), p. 12.
234.
Stigler, George J., ‘Economists and Public Policy’, AEI Journal on Government and Society, vol. May/June (1982), pp. 13, p. 17.
235.
Mathis, Klaus, ‘Efficiency Instead of Justice – Searching for the Philosophical Foundations of the Economic Analysis of Law’, (1st edn, Springer, 2009), p. 14 (italics added).
236.
Below, the meaning of the term “average” as part of the average consumer is discussed, given a numerical average, where it is concluded that the term is not to be understood as a numerical average. See Chap. 11, Sect. 11.2.2.
237.
Towfigh, Emanuel V. and Petersen, Niels, ‘Economic Methods for Lawyers’, (1st edn, Edward Elgar, 2015), p. 177. See also Mathis, Klaus ed., European Perspectives on Behavioural Law and Economics. Foundations and Applications (1st edn, Springer, 2015), foreword, p. ix-xi.
238.
Posner, Richard A., ‘Rational Choice, Behavioral Economics, and the Law’, Stanford Law Review, vol. 50 (1997-1998), pp. 1551, p. 1559.
239.
Towfigh, Emanuel V. and Petersen, Niels, ‘Economic Methods for Lawyers’, (1st edn, Edward Elgar, 2015), p. 18.
240.
Weatherall, Kimberlee, ‘The Consumer as the Empirical Measure of Trade Mark Law’, Modern Law Review, vol. 80/no. 1, (2017), pp. 57. See also Sibony, Anne-Lise, ‘Can EU Consumer Law Benefit from Behavioural Insights? An Analysis of the Unfair Practices Directive’, in Mathis, Klaus ed., European Perspectives on Behavioural Law and Economics. Foundations and Applications (1st edn, Springer, 2015), 71.
241.
Thaler, Richard H. and Sunstein, Cass R., ‘Nudge: Improving Decisions about Health, Wealth, and Happiness’, (1st edn, Yale University Press, 2008).
242.
Thaler, Richard, ‘Toward a Positive Theory and Consumer Choice’, in Kahneman, Daniel and Tversky, Amos eds., Choices, Values, and Frames (1st edn, Cambridge University Press, 2000), 269, p. 269. For the divide between positive and normative analysis, see also Pindyck, Robert and Rubinfeld, Daniel, ‘Microeconomics’, (9th edn, Pearson, 2018), p. 28-29.
243.
Thaler has built his argument around an example by Milton Friedman and Savage referring to the predictability of a billiard player’s next shots. With that in mind, Thaler has held that there are expert and novice players. However, his argument has broader implications going beyond the billiard example. Thaler, Richard, ‘Toward a Positive Theory and Consumer Choice’, in Kahneman, Daniel and Tversky, Amos eds., Choices, Values, and Frames (1st edn, Cambridge University Press, 2000), 269, p. 286-287 (italics added).
244.
Ibid, p. 269 (italics added).
245.
Jacoby, Jacob, ‘Is it Rational to Assume Consumer Rationality? Some Consumer Psychological Perspectives on Rational Choice Theory’, Roger Williams University Law Review, vol. 6 (2000-2001), pp. 81, p. 90. Burk has furthermore held that “[a]s it does in other areas of law, behavioral law and economics is challenging rational actor models in intellectual property to offer a more nuanced, realistic account of incentives and their effects.” Burk, Dan L. ‘Law and Economics of Intellectual Property: In Search of First Principles’, Annual Review of Law and Social Science, vol. 8/(2012), pp. 397, p. 412. Along those lines, Laurence Friedman has held that “some human behavior is culturally determined, and all human behavior is culturally grounded. Human behavior always depends on time and place. None of it takes place in that clean, clear, abstract world which mathematical models describe. Not that these models do not work at all, but their zone is distinctly limited. The domain of free choice, of rational behavior, can expand or contract.” Friedman, Lawrence M. ‘Law, Economics and Society’, Hofstra Law Review, vol. 39 (2010-2011), pp. 487, p. 491 and also p. 494.
246.
Sunstein, Cass R., ‘Why Nudge? The Politics of Libertarian Paternalism’, (1st edn, Yale University Press, 2014), p. 11.
247.
Posner, Richard A., ‘Rational Choice, Behavioral Economics, and the Law’, Stanford Law Review, vol. 50 (1997-1998), pp. 1551, p. 1559. This countering argument by Posner emerged as part of a response to one of the bedrock articles on behavioral economics, the article from 1998 by Jolls, Christine, Sunstein, Cass R. and Thaler, Richard, ‘A Behavioral Approach to Law and Economics’, Stanford Law Review, vol. 50/no. 5, (1998), pp. 1471.
248.
Hence, it has recently been claimed by Sibony and Helleringer that the average consumer “is deemed to have enough slack in his bandwidth to be ‘reasonably well-informed and reasonably observant and circumspect’.” Sibony, Anne-Lise, and Helleringer, Geneviève, ‘EU Consumer Protection and Behavioural Sciences: Revolution Or Reform?’, in Alemanno, Alberto and Sibony, Anne-Lise eds., Nudge and the Law: A European Perspective (1st edn, Hart, 2016), 209, p. 214.
249.
Mak (in a similar way analysing the rational consumer in EU law) has held that in areas of intellectual property law, besides trademark law, the “standard of informed reasonable behaviour from the consumer (…) is higher than that of the ‘average consumer,’ albeit to different degrees.” Mak, Vanessa, ‘The Consumer in European Regulatory Private Law’, in Leczykiewicz, Dorota, and Weatherill, Stephen eds., The Images of the Consumer in EU Law: Legislation, Free Movement and Competition Law (1st edn, Hart, 2016), 381, p. 386. Mak at this point refers to an “informed consumer” and then refers to Herbert Neuman and Andoni Galdeano v. OHIM, Joined Cases C-101/11 P and C-102/11 P, [2012] – a design case where the court of justice essentially has referred to the informed user as set out in Pepsi v. Grupo Promer. See for instance PepsiCo v. Grupo Promer, Case C-281/10 P, [2011] ECR I-10153, para 53.
250.
Lloyd Schuhfabrik Meyer v. Klijsen Handel BV, Case C-342/97, [1999] ECR I-3819, para 26. See also recently the General Court in BMB v. EUIPO, Case T-695/15, [2017], para 32 and Şölen Çikolata Gıda Sanayi ve Ticaret v. EUIPO, Case T-794/16, [2018], para 29.
251.
See for instance, Adidas v. OHIM (Shoe Branding), Case T-145/14, [2015], para 33. The decision relates to sports shoes and clothing in class 25 of the Nice Agreement.
252.
See for instance, Mederer v. OHIM (Gummy), Case T-210/14, [2016], para 28. The decision relates to certain confectioneries in class 30 of the Nice Agreement. The level of attention of the average consumer is dealt with further in Chap. 11.

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IPR & Compliance, Group Legal, Grundfos Holding A/S, Bjerringbro, Denmark
Rasmus Dalgaard Laustsen

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Laustsen, R.D. (2020). The Average Consumer and Its More or Less Distant Cousins. In: The Average Consumer in Confusion-based Disputes in European Trademark Law and Similar Fictions . Springer, Cham. https://doi.org/10.1007/978-3-030-26350-8_6

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DOI: https://doi.org/10.1007/978-3-030-26350-8_6
Published: 07 November 2019
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