Artificial intelligence (AI) has an unparalleled potential for facilitating intellectual property (IP) administration processes, in particular in the context of examining trademark applications and assessing prior marks in opposition and infringement proceedings. Several stakeholders have developed AI-based algorithms that are claimed to enhance the productivity of trademark professionals by carrying out, without human input, (parts of) the legal tests required to register a trademark, oppose it, or claim an infringement thereof. The goal of this chapter is to assess the functionality of the AI tools currently used and to highlight the possible limitations of AI tools to carry out autonomously the legal tests enshrined in trademark law. In fact, many of these tests are rather subjective and highly depend on the facts of the case, such as an assessment of the distinctive character of a mark, whether the relevant public is likely to be confused or whether a third party has taken unfair advantage of a mark. The chapter uses doctrinal research methods and interview data with fourteen stakeholders in the field. It finds that AI tools are so far unable to reflect the nuances of the subjective legal tests in trademark law and, it is argued, even in the near future, AI tools are likely to carry out merely parts of the legal tests and present information that a human will have to assess, taking prior doctrine and the circumstances of the case into account.
Artificial Intelligence and Intellectual Property Law
