Specialized Trademark Judiciaries?

John Crittenden Bulletin Editor in Chief Cooley Godward LLP

Few of us would disagree that trademark law is a dynamic and complex field in which disputes often turn on subtle arguments and subjective analysis. For that reason, many practitioners believe that trademark cases are best decided by experts. Recognizing this, at its meeting in November 2001, INTA's Board of Directors adopted a resolution supporting the submission of litigated trademark cases to judges "specializing in or having substantial experience in trademark matters."

The Emerging Issues Subcommittee of the Issues and Policy Committee, headed by Rodrick Enns of Enns & Archer, Winston-Salem, North Carolina, U.S.A., studied this issue extensively, concluding that where there are specialized intellectual property courts, there has been an "overwhelming vote of confidence" in support of them.

According to the subcommittee, those who have had experience with such specialized courts and judges generally rate them highly, reporting that they resolve IP disputes "efficiently and fairly," and generate "consistent case law" that "enhances understanding and certainty among owners and users of intellectual property."

It isn't necessary to set up special IP courts in order to get the benefit of focused expertise. Some jurisdictions have an "informal" specialized IP judiciary, whereby IP cases filed in a court of general jurisdiction are assigned to judges who develop experience in the field. The subcommittee found that these specialized judges are viewed with great favor as well.

Of course, a specialized IP judiciary that works effectively in one country may not be appropriate in another. Local custom and practice, budgetary constraints, constitutional and jurisdictional issues, among many other factors, may mean different paths to a specialized judiciary. But regardless of the form a specialized judiciary may take, the benefits are manifest.

In considering the subcommittee's study, the Board was keenly aware of the value of having judges who are not so narrowly focused on esoteric trademark issues that they lose perspective of the broader business context in which trademark disputes arise. As a result, the resolution leaves wide latitude for accommodating these concerns, by supporting flexibility in deciding how the goal of developing more trademark experience among the judiciary should be pursued in different jurisdictions.

Trademark disputes may be governed by a myriad of laws, treaties, rules, and principles that require extended study and experience to master. Having cases decided by judges who are experienced in the nuances of trademark law -- whether as part of specialized courts or by developing individual expertise -- can lead to more thoughtful, better-reasoned decisions. That helps not just the litigants, but trademark owners generally, by making for a more orderly application of trademark law and higher-quality precedent.

Accordingly, INTA supports and encourages the development and implementation by some means of specialized and experienced judiciaries to hear trademark matters.