Massimo Sterpi ; Thierry Calame
Trade marks have changed a lot over the last few years. While they started their honest career some centuries ago as a means to distinguish the origin of a product and to permit the satisfied consumer to buy again a product under that trade mark, modern marketing techniques have changed their nature. Most trade marks are now in fact used to convey to the potential consumer a series of associations, emotions and references to certain lifestyles: some being so charged with identifying characters that they become ‘avatars’. The informative content of the trade mark is no longer only ‘products under trade mark A come from Company B’ (indication of origin), but rather ‘by buying products under trade mark A, you will live this experience, be associated with these people or ideas and make this known to all others’ (identity function for the consumer).
Therefore, trade marks are now a summary of a vast array of meanings and references to other concepts, emotions, ideas, social groups, tastes, desires: all this concentrated into one or a few words or symbols, and conveyed to the public through carefully studied advertising campaigns and selected marketing channels.
But this has also changed the kind of attacks that trade marks can suffer. If the traditional mark as an indicator of origin can only be damaged by creating confusion about the origin of the products, the new functions of trade marks may be impaired in a variety of ways, namely by associating the mark with people, situations, or ideas that are contrary to the ones selected by the trade mark owner when building its brand.
For example, selling stocks of branded products through unauthorised and inappropriate sales channels, trade mark parody by political activists, fashion trade marks being used by members of an extremist party as their distinctive uniform, trade marks being criticised or put to shame by comedians. One also cannot forget the look-alike problem, that tries to circumvent trade mark protection while stealing most of the goodwill attached to the brand and the product it distinguishes. All these acts are now capable of creating much more harm to the target brand than plain old counterfeiting.
We should not forget, moreover, that in the current economy, where manufacture of products can be easily subcontracted thousands of miles away, ownership of a brand becomes the most important weapon to keep control over the market, so that most of the value of a business often concentrates now in the brand itself, rather than in the ownership of factories, machinery and even know-how. As brands become so fundamental in the modern economy, clearly they require day-by-day maintenance to protect their value.
While trade mark laws tend to be well equipped to react against traditional forms of infringement (ie those based on risk of confusion or association), they tend to contain very few weapons to oppose the new forms of attack, which are often countered under unfair competition or anti-defamation rules.
Trade mark litigation is therefore expanding into new territories, trying to cope with more sophisticated assaults on new trade marks and their functions. This is your guide to navigating this challenging field.
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