[Book Review] Research Handbook on the History of Trademark Law

This is a review of the new book, Research Handbook on the History of Trademark Law, edited by Lionel Bently (University of Cambridge) and Robert G. Bone (University of Texas). 

The volume would fit nicely under a
normal-sized Christmas tree

Readers of this blog know that trade mark law is rife with new developments and heated debates. But as the editors highlight in their introduction, there has been limited attention to trade mark history (in contrast to the extensive scholarly attention to the history of patent and copyright law). There is great value in exploring the history of trade mark law, so the editors have brought together 14 substantive contributions that cut across different themes, jurisdictions, and time periods.

As a research handbook, the volume is not just concerned with exploring some fascinating episodes from trade mark history. It also helps us to think about methodology and the future directions for historical research into trade mark law. The chapters are organised into three parts, of which this review will highlight a sample of the contributions to give readers a taste of the insights contained in this volume.

Part 1 - Ideas, Beliefs, and Concepts

Dev Gangjee (University of Oxford) opens this part of the book with "A distinctive absence: registrable trade marks in 1875". The chapter examines the surprising absence of a distinctiveness requirement - in the sense of a mark's ability to indicate commercial origin - in first legislation to create a registration system in the UK. This arose because the law focused on "relative" distinctiveness, rather than assessing marks in isolation, which led to challenges for registering word marks. In terms of methodology, the chapter illustrates how archival records can help us understand the logics behind the drafting and application of previous legislation, and to question the current approaches to statutory interpretation.

Part 2 - Regulatory Models and Rule Choices

Robert Burrell (University of Oxford) and Michael Handler (University of New South Wales) discuss "The garden path and the road not taken: the Australian approach to trade mark ownership and its connection with a lost model of trade mark registration". The chapter explores how Australian trade mark law briefly took the approach of providing "strong but narrow" protection in cases of substantially identical marks, and a "passing off" model of protection for deceptively similar marks. The chapter illustrates how a close engagement with early legislative debates and case law can help us to dissect the purpose(s) of trade mark protection, as well as to explore the ways (former) colonies may innovate or deviate from the Imperial Parliament's legislative models.

Part 3 - Social, Economic, and Political Context

David Higgins (Newcastle University) discusses the history of the famous Irish stout beer in ""Pure genius?" Guinness and trade mark protection, c. 1890-1914". The chapter examines the success of the brand despite the fact that Guinness never advertised before 1914. Instead, the company focused on quality control throughout the supply chain, which partly relied on litigation to protect its trade marks using the law of passing off, enforcement of its registered trade marks (generally resolved through settlements), and criminal actions under the Merchandise Marks Acts, as well as the use of a trade mark label agreement. The chapter offers a fascinating example of using corporate archives for historical research and the challenges that arise from this methodology.

Many chapters contain
images from the archives.

Michael Birnhack (Tel Aviv University) explores the "Emergence of a brand: a case of Jaffa Oranges from Mandate Palestine". The Palestine trade mark registry did not survive after the end of the British Mandate (1917-1948), so this chapter is one output from an impressive project to reconstruct the registry. The trade mark data and other archival sources are used to trace how economic conditions and the different business models adopted by Arab and Jewish traders influenced their decisions to register their trade marks, or rely on unregistered markas, to market and export their Jaffa Oranges (in the absence of geographical indications protection at the time). The chapter also explores the important topic of how brands can become political symbols, showing how Jaffa Oranges have come to represent national identities and evoke very different meanings for Israelis and Palestinians.

Amanda Scardamaglia (Swinburne University of Technology), makes use of an unlikely source to explore how trade marks can serve functions other than indicating origin. Her chapter, entitled "Historical trade mark form and function: Swedish Match labels", shows how Swedish Match matchbox labels adopted imagery of the British Empire to convey ideas of royalty and patriotism to appeal to certain export markets, like Australia. The chapter challenges the idea that the enlarged function of a trade mark is a modern development through the example of matchbox labels that appeared to lack any distinctive character and "instead were used as a medium to inform and persuade." 

Concluding Thoughts

As this sample of the contributions shows, this new volume illustrates different methods for conducting historical research of trade mark law. This edited collection also makes an important call-to-action for more scholarly engagement with trade mark history. The chapters show that stories with ongoing relevance to present-day debates might remain hidden in archives, or in case law that has since been forgotten, and sometimes in places that we might not expect. The volume prompts us to consider that looking back might help trade mark law to move forward. This Kat certainly looks forward to seeing what research into trade mark history might be spurred [Merpel: or "purred"?] by this volume.

Details

Publisher: Edward Elgar, 2024

Extent: 488 pages

Format: Hardback and eBook

ISBN: 978 1 78897 309 0