Trade marks as functioning brands: reconciling market realities and societal interests with industrial policy
Trade marks are expected to function as source identifiers enabling consumers to differentiate between goods and services in the marketplace – we can tell ‘Coke’ and ‘Pepsi’ apart by their marks. In the fictional realm of trade mark law, however, this proposition does not always reflect empirical, market realities. Rights are often granted ahead of commercial exploitation through registration, without a need to establish that real consumers, in marketplace conditions, effectively associate the underlying sign with an origin. By operating legal presumptions, we assume consumer behaviour to reduce transaction costs and grant registration as incentives to business expansion.
Nonetheless, this historical framing of trade marks as property, in which exclusionary rights stem from abstract information set out on a register, creates a tension with the market regulation role that they perform. The exercise of trade mark rights affects how markets operate, which an expansionary trajectory over the past decades has only exacerbated. The recognition of new categories of trade marks and of less conventional third-party uses that can be made of a sign brought about a set of policy concerns (e.g. preserving undistorted competition, freedom of expression) that the current system has limited ability to address. Granting exclusive use of the word ‘Coke’ to designate soft drinks may be unproblematic, yet trade mark rights associated with the shape of the contour bottle or with the colour red are different; they may reduce choices otherwise available to competitors, running the risk of a foreclosure effect. Likewise, a car manufacturer may attempt to enforce trade mark rights against third parties producing nearly-perfect toy replicas; a mobile company may turn against competitors using its mark in comparative advertising; referencing a mark in Internet memes and parody videos also may be enjoined.
Against this backdrop, this project investigates the doctrinal mechanisms that courts have devised in response to an expansionary trajectory within trade mark law in the recent past, while grappling with conceptual, practical and policy questions relating to the nature and role of registration. Concerns about an imbalanced system have tended to focus on whether to include or exclude certain types of subject matter, but redefining the scope of protection – after subject matter has been recognised as fitting within an individual IP regime – remains relatively underexplored. A more balanced, grounded (re)construction of infringement could improve our understanding of contested domains such as protection of non-traditional marks (e.g. shapes and colours), merchandising, referential use, and comparative advertising.
Luis H Porangaba, ‘Functions in Context: Reconceptualising the Scope of Trade Mark Infringement’ (monograph; work in progress)
Luis H Porangaba, ‘Acquired Distinctiveness in the European Union: When Nontraditional Marks Meet a (Fragmented) Single Market’ (2019) 109 Trademark Reporter 619
Luis H Porangaba, ‘A Contextual Account of the Trade Mark Functions Theory’  Intellectual Property Quarterly 230