Trade Marks and Brands: An Interdisciplinary Critique – edited by Lionel Bentley, Jennifer Davis and Jane C. Ginsburg (Cambridge University Press, US$130)
This volume grew out of two workshops held at Emmanuel College, Cambridge, in 2005 and 2006. It is interdisciplinary in its approach and addresses the following topics: legal and economic history, current positive law in the E.U. and the U.S., linguistics, marketing, sociology, law and economics, philosophy, anthropology and geography.
Readability and the inter-relation of themes are much enhanced by the “Noah’s ark” progression of the book: each section brings on board a pair of contributions on one of the above-named topics. The writers, all experts in their fields, consistently refer to, argue against or support the other contribution in their section, also linking it to other parts of the book, making the work more of a seamless whole and avoiding the impression of discontinuity that can so easily occur in such volumes.
The broad picture evoked for developed countries is that marks and signs, up to 19th and later 20th century trademark norms and practice, were in some way “badges of origin” and ultimately a means of quality control. But after this, business and trade orientation increasingly distances rights-owners from consumers and raises questions as to whom trademark institutions now effectively assist – rights-owners, actual producers, consumers, trade competitors? Are consumers unduly manipulated? Should the law treat them as “rational sovereigns” or “gullible fools”?
Initially, as goods increasingly crossed national frontiers, national, then international legal instruments such as the Madrid Agreement for the International Registration of Marks (1891), facilitated enforcement by recognized registration, which first provided prima facie evidence of exclusive rights to marks. This exclusivity nonetheless left room for fair competition (viz. Kellogg vs. National Biscuit Co., 1938, for the allowable use of the shape and term of SHREDDED WHEAT).
The volume demonstrates progressively restrictive interpretations of law in European and U.S. courts, as to similarities claimed to be “dilution or blurring” or “tarnishment” of existing marks, seen here to correspond to evolving trading practices and globalization. Whereas, previously, registries and courts more visibly safeguarded the need for unfallacious signs and for non-descriptive and non-generic words, thus also protecting language in the public domain, contributors show them as now faced with applications for signs once probably inadmissible, such as the color orange. It appears that owners’ rights to the use of words may only stop “where third party artistic and political speech begins”: humor, satire and distinct use won against a dilution claim in Louis Vuitton Malletier SA vs. Haute Diggity Dog (2007), the latter having produced animal accessories such as CHEWNEL NO. 5, CHEWY VUITON and DOG PERIGNONN!
In analyzing change, considerable weight is given to the phenomena of franchising and branding. Rights-owners profit from franchising by the grant of licenses, now on a planetary scale: it is startling to read that franchised business represents 38 percent of all US retail sales. A brand is a wider concept than a mark, encompassing an advertising function that can project good reputation, desirable life-style, even spirituality. Upheld by the imagery and other subliminal messages of advertising, it can make suggestive claims that are not legally binding. Furthermore, the diversification of single companies, whose branding can cover thousands of product lines, enables a wealthy giant to render prohibitive the innovatory and financial input necessary for newcomers to compete.
On geographical indications, a case for the excessively static concept of place (considering other factors such as external human influences) and for the substitution of marks or certificates of origin is persuasively countered by another contributor. He outlines interesting 19th and 20th century historical background on the French Apellation d’origine contrôlée, indicating that legislation was prepared by due consideration of some of the very factors his colleague believes were excluded. He also argues for current applicability to developing countries and the greater suitability of this sui generis approach to establish a many-sided authenticity, given that marks are priority-based.
The editors’ claim in the preface of the uniqueness of this work, on the basis of the broad, inter-related range of contributions, is largely justified. Throughout this volume, contributors bear in mind that legislation is inevitably behind constantly-evolving developments, and draw readers into considering the challenges ahead. This work will no doubt be useful to scholars and students as well as to non-specialists wishing to broaden their knowledge on the subject.