MICHAEL SPENCE AT UCL" TRADE MARKS AS PROPERTY/TRADE MARKS AS EXPRESSION"

On Thursday the IPKat paid a visit to University College London to hear Michael Spence of the University of Oxford deliver one of the lectures in the Current Legal Problems series. Chaired by Lord Justice Jacob and speaking under the title “The Mark as Expression/The Mark as Property”, Dr Spence argued that freedom of expression could actually be used to justify greater protection for trade marks.

While justifications for trade marks have vacillated from the start between marks as expression and marks as property, the better justification rests on expression. Moreover, even though the broadened protection for trade marks in the form of absolute protection under s.10(1) of the Trade Marks Act 1994 and protection against dilution under s.10(3), may look like they are making trade mark rights more like property rights, it can be better justified by reference to free speech. This idea is drawn by reference primarily to a US free speech doctrine. The idea is that people (both natural and legal) could be able to control their own speech as part of their personal autonomy and should not be forced to express a message that they disagree with. For example, a US dilution case was brought in the past by the Girl Scouts of America, when their motto “Be Prepared” was used on a poster featuring a pregnant Girl Scout. Allowing the makers of the posters to use the Girl Scouts’ indicia would force the Girl Scout organisation to participate in the debate over teenage pregnancies and would “recode” the Girl Scout indicia so that it would communicate a different message to consumers.

Of course, it would need to be ensured that sufficiently wide defences were available when it was right to compel a mark-owner to have his mark enter into debate, particularly: (1) when the use of the mark was to comment on the goods of the mark owner himself, on the mark itself or on the mark-owner and (2) where the mark has become such a cultural icon that there is no substitute for the mark available on the market.


Michael Spence

The IPKat enjoyed this thought-provoking lecture. However, he’s not sure whether it’s right to use US free speech doctrine in the very different context of EU trade mark law. Trade mark law in the EU has a very specific background, since it grew up in the context of the regulation of on the internal market. What is recognised as a trade mark in the EU is a result of the ECJ’s determination to inflict the least damage possible on the area of free competition by only recognising the essential function of a trade mark as the legitimate scope of its protection. It is this essential function of a trade mark, rather than doctrines of free speech, that should be the starting point of understanding and justifying EU trade mark law.

Strange expressions here, here and here