Dr Barry Scannell

Good idea: Getting a well-trained lawyer to represent you in a trademark dispute. Bad idea: Having ChatGPT represent you in a trademark dispute.

In an unusual turn of events, Dutch entrepreneur Tom Grashof chose to list ChatGPT as his legal representative in a high-profile trademark dispute with Penguin Books Limited. This unusual approach, which saw AI-generated arguments formally submitted to the Benelux Office for Intellectual Property (BOIP), became a focal point of the case.

The decision, handed down on 22 November 2024, upheld Penguin Books’ opposition to Grashof’s trademark application for “ARTPENGUIN”, citing a likelihood of confusion with Penguin’s established trademarks.

The use of ChatGPT in this context added an extraordinary dimension to an otherwise routine intellectual property matter. Grashof submitted arguments entirely crafted by the AI, which analysed the visual, phonetic and conceptual differences between the marks. It argued that the term “ARTPENGUIN” distinguished itself sufficiently from “PENGUIN” through the inclusion of “ART” and a modernised penguin design.

These points, while coherent, failed to sway the BOIP, which ruled that the similarities between the marks were substantial enough to mislead consumers.

The decision explicitly addressed the AI’s contributions, highlighting both their strengths and shortcomings. On the one hand, ChatGPT produced arguments that were logical and structured, effectively emulating the style and format expected in legal submissions. On the other hand, the BOIP found significant gaps in the AI’s analysis.

For example, the AI underestimated the weight given to conceptual identity in trademark disputes, particularly the fact that both marks referenced the same animal — creating a direct link in consumers’ minds. Moreover, ChatGPT’s arguments downplayed the dominance of the term “PENGUIN” within “ARTPENGUIN”, which the BOIP concluded was the primary driver of confusion.

The ruling also noted inconsistencies in ChatGPT’s reasoning, particularly its misinterpretation of case law and its failure to address the broader consumer perception of the marks.

At one point, the AI incorrectly compared “ARTPENGUIN” to “Penguin Books” as a composite trademark, despite the latter not being among the specific trademarks cited by Penguin Books Limited. This misstep highlighted the limitations of relying on AI without human oversight.

The BOIP’s critique underscores the challenges of deploying generative AI in legal proceedings. While ChatGPT demonstrated an ability to replicate the procedural mechanics of legal argumentation, it lacked the nuanced understanding of trademark law necessary to respond effectively to Penguin Books’ claims.

The decision ultimately reflects the gap between AI’s capacity to process and present information and its ability to engage in strategic, context-aware reasoning.

Having said that — not bad for a legal representative that only turned two years old last week.

• Dr Barry Scannell is a partner in the technology department at William Fry LLP.