TRADE MARKS AS SOCIAL CHARACTERS: the new legal issues of identity protection

The IPKat’s latest guest blogger is Massimo Sterpi. Massimo, a partner in the Turin-based IP practice of Jacobacci e Associati, is a member of the editorial board of the European Copyright and Design Reports; he is also an active member of the MARQUES council. Massimo writes:

“Over the years, trade marks have evolved from distinctive signs applied on products to highlight their origin, to brands (i.e. to signs symbolising also the goodwill attached to the trade mark) and, eventually, to “avatars”, i.e. to kind of fictional characters which impersonate the lifestyle, set of values and emotions embedded in the trade mark.

In other words, trade marks have matured from distinctive signs ancillary to a product (trade marks), to economic entities valuable per se (brands), to proper “social personae”, having their own identity and character (avatars).

In a sense, it is no longer the trade mark that distinguishes the product, but it is the product which impersonates the brand/avatar. As one commentator said talking about the Lacoste crocodile logo: “the crocodile has eaten the T-shirt”.

Such a revolution cannot be ignored when trying to protect the new brands/avatars.

Whereas a traditional trade mark, i.e. a sign intended to distinguish a product of a business from identical or similar products of other businesses, should be protected only against strict risk of confusion or association, brands – and especially famous brands – have to be protected also against dilution, i.e. uses of identical/similar signs for dissimilar goods that are likely to take undue advantage of or cause prejudice to the reputation of the brand.

Now, if we consider that the latest trade marks have become “avatars” – i.e. social personae impersonating the lifestyle, set of values and emotions embedded in the trade mark – their protection cannot be any longer restricted to avoid risk of confusion/association or to prevent dilution, but it must become a kind of identity protection. In other words, to properly protect the avatar’s identity, it will no more be sufficient to protect it against other identical or similar signs used commercially for similar or dissimilar products. In fact, the identity of the avatar – as the one of a physical person – may be tarnished also by non-commercial uses of same (satire, public criticism, use in undesirable contexts).

The best evidence that trade marks are now considered as powerful social players (and therefore, as avatars) is the kind of criticism they received in the last years. Books such as No Logo by Naomi Klein have strongly criticised the “new” trade marks as they become mere representation of lifestyle (Nike, Gap), loosing their original function of identification of origin and, rather, permitting the true origin of the product (whose fabrication is often delocalised in the third world) to be hidden. “Sucks” sites are often devoted not that much to the quality of the products under the criticised trade mark, but rather to the trade mark owner corporate policies or to the lifestyle they symbolise.

Currently, owners of the new brands/avatars have to study how to protect the “identity” of their trade marks. Old means such as watch services on new trade mark filings and patrolling of the markets is no longer enough to protect this identity.

Patrolling must be now extended to the press, product placements in films, use of brands in artworks, boycotts, and symbolic attacks.

Proper legal remedies – other than trade mark infringement actions – and public relation strategies are to be devised to protect the brand identity and reputation.

It is now clear that damages to the brands do not come only from counterfeiting and strict (commercial) infringement, but also from any form of libel or bad public relation deriving from consumers’ boycott, sabotage, satire, public criticism.

Now more than ever, trade marks rights (including the new “identity” right) may however conflict with other fundamental rights such as the right of free speech or the artistic freedom of expression. A proper balance between these rights has to be found on a case by case basis”.