A case that should provide guidance on whether trademark 'tacking' should be adjudicated by a judge or jury looks to be going in favour of a jury, it has been claimed.
Yesterday (December 3), the US Supreme Court heard oral arguments in the Hana Financial v Hana Bank case, which centres on 'tacking', a practice that allows a party to 'tack' the use of an older trademark onto a new mark to determine priority.
The dispute at issue was triggered by banking company Hana Financial suing Korea-based Hana Bank for its use of the mark 'Hana Bank'.
Despite the Korean company first using its mark after Hana Financial, Hana Bank claimed that it actually had priority due to tacking and had earlier registrations for variations of the mark including 'Hana Overseas Korean Club' and 'Hana World Center'.
A jury at the US District Court for the Central District of California sided with Hana Bank, as did the US Court of Appeals for the Ninth Circuit.
Hana Financial then appealed to the Supreme Court, which heard arguments yesterday about whether such disputes should be heard by a judge or jury.
Evan Gourvitz, counsel at law firm Ropes & Gray, told WIPR that tacking is not one of the most "critical questions" in trademark law, but that the issue of whether a revised version of a mark should be able to claim the priority date of the original version does arise from time to time.
"There's a split among appeals courts as to whether tacking is a question of fact or law, so the court's decision should provide a degree of clarity for practitioners going forward," he said.
Gourvitz said the Supreme Court's nine justices seemed engaged and interested on the subject but that they "honed in the same key point".
That point, he said, was that if there is a dispute about confusion, then a jury would be best equipped to decide.
"Overall, the justices seemed inclined to find that tacking should be considered a question of fact. That would follow the general consensus among trademark practitioners and authorities," Gourvitz said.
The court should issue a decision next year.
(Source: WIPR)
