The continued use of artificial intelligence (AI) in the world we live in cannot be ignored. In the world of consumers and purchasers of goods and services, AI is seemingly establishing its niche.

As a consumer of goods and services, one would choose to purchase one brand of a given good or service over another. In this way, we often identify the brands we like with certain symbols, signs, words etc. These marks may be registered as trademarks. A trademark can be defined as “a word, symbol, or phrase, used to identify a particular manufacturer or seller’s products [or service] and distinguish them from the products of another.”¹

Understanding trademark law and trademark protection

According to the World Intellectual Property Organization (WIPO) “trademark registration confers an exclusive right to the use of the registered trademark. This implies that the trademark can be exclusively used by its owner, or licensed to another party for use in return for payment. Registration provides legal certainty and reinforces the position of the right holder.”²

Where the rights awarded through trademark registration are violated, one can claim trademark infringement. As such, trademark infringement can be understood as “the unauthorized use of a trademark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services”³ to an average consumer. Courts will typically consider a number of factors when assessing whether there is a likelihood of confusion for an average consumer. These include: “(1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser/average consumer; and (7) the defendant’s intent.”⁴

AI and the Administration of Trademarks

One aspect of this discussion is how AI relates to the administration of trademark laws. AI has the ability to ‘streamline administrative tasks relating to registration, searches, the opposition of marks and other procedures.’⁵

1. Trademark Search

With AI, trademark owners can search for and identify potential trademarks for registration through the analysis of a wide range of variables related to the search process, such as ‘sight, sound, visual cues, classification of goods and services, and other trademark attributes like descriptiveness.’⁶ Other external considerations can also be included in the analysis such as ‘identifying geographic areas of potential growth, obstacles for trademark goodwill and other similar trademarks.’⁷ By using AI techniques, search and registration can be improved where machine learning can be relied upon to ‘identify semantically similar marks.’⁸

In trademark searches, AI can be used in the classification of goods and services where the AI algorithms are employed to ‘automatically recommend classes for goods and services contained in trademark applications.’⁹ For instance in Australia, the registry has implemented AI to support public trademark searches.¹⁰ The ‘TM Assist tool leverages AI to propose trademark classes based on a customer’s business in addition to providing image search capabilities.’¹¹ Bureaucratic classification enables efficient ‘searching by registries and third parties for conflicting prior marks in relation to identical or similar goods.’¹²

AI also plays an important role when it comes to identifying similar marks. Advancements have ‘expanded the scope of similarity searching across three dimensions.’¹³ Firstly, algorithms are developed to ‘assess the conceptual similarity between marks on the basis of shared or oppositional meanings.’¹⁴ For instance, a simple text search will not flag up the semantic similarity between the chemical composition of water, “H₂O”, and “water”. However, search technology based on semantic or conceptual similarity ‘considers synonyms or antonyms and comparable words in another language with similar meanings…’¹⁵

The second similarity comparison has to do with image search. Technology has made it possible for users to upload images in recognizable file formats such as JPG and PNG, and to search for similar images in the relevant database registry. In Norway, the use of AI-assisted trademark searching in its registry is reported to have improved the quality of trademark applications received with the overall effect of an increased probability of successful trademark registrations.¹⁶

2. Trademark Registration

Artificial Intelligence has the ability to significantly change the registration process of trademarks. This is especially applicable in automating the registration process and identifying ‘particular areas where there may be conflicting registrations and even drafting initial registrations or filings and general portfolio management.’¹⁷ Various experts on the efficiency of the use of AI in registration suggest that the AI tools can be used to clear proposed registration marks, and can ‘register marks with automated tools.’¹⁸

3. Trademark examination

The role played by AI in assessing the similarity of goods or services assists registries to process trademark applications more efficaciously. The Japanese Patent Office is a good example since it uses an AI-assisted goods and services similarity assessment tool so that ‘the examiners can identify the closest match between a new application and previously registered terms to describe goods and services.’¹⁹ The benefit of this is that it speeds up the process for checking ‘whether the correct product classes have been indicated in the application as well as the field of prior marks with which to compare the new application.’²⁰

AI use in trademark examination also plays an important role in speeding up the examination step for distinctiveness and this in turn reduces the turnaround time. For instance, the Intellectual Property Office of Singapore (IPOS) has been experimenting with using machine learning to ‘automatically measure the distinctiveness of a given word mark and to suggest evidence for the measurement.’²¹ The use of AI in trademark examination also transforms how the searches are done for instance in China, the “Smart Trademark Search” function ‘allows the use of AI to transform trademark examination work from manual searches to smart “search by image” searches.’²²

AI and Trademark Infringement

The other aspect of this discussion looks at the link between AI and trademark infringement. AI applications have important implications on who is considered the “average consumer” in trademark infringement proceedings and issues of liability.²³ Two key questions arise. Firstly, if an AI application purchases a product with little or no human involvement, who, or more importantly, what, is the average consumer? Secondly, who or what is liable for trademark infringements as a result?²⁴

Looking at the practice introduced by the Court of Justice of the European Union,²⁵ the average consumer is deemed reasonably well informed, reasonably careful, and observant, “but rarely has the chance to make direct comparisons between marks and must instead rely upon imperfect recollection of the relevant marks”.²⁶ Furthermore, the average consumer’s level of attention varies according to the category of goods or services in question. These are all inherent human “faults” built into trademark law.²⁷

However, “… when AI is the consumer, do these parameters still apply? Would AI be likely to suffer from imperfect recollection? Does an AI’s level of attention vary according to the product?”²⁸ Unlikely. AI does not have a memory like humans; it is a computer program and is capable of perfect recollection.²⁹

The concept of confusion or likelihood of confusion in trademark law, as to whether trademarks are considered similar, is unlikely to apply to AI.³⁰ If an AI program has a perfect recollection, it will not be confused with the brand name of a product.³¹ Therefore, if the AI program suggests a product that infringes a registered trademark or is a counterfeit, would the AI be deemed a secondary infringer?³² These questions are yet to be answered; it will therefore be interesting to see how these questions are tackled in the future and how these issues unfold.

This piece is part of our AI and IP series, where we have discussed the legal issues in AI and various intellectual property rights. See the piece on AI and Patents here and the piece on AI and Copyright here.

Image by OpenClipart-Vectors from Pixabay