From Brand Performance to Consumer Performativity: Assessing European Trade Mark Law after the Rise of Anthropological Marketing
| Published date | 01 December 2015 |
| Date | 01 December 2015 |
| Author | Luke McDonagh |
| DOI | http://doi.org/10.1111/j.1467-6478.2015.00727.x |
JOURNAL OF LAW AND SOCIETY
VOLUME 42, NUMBER 4, DECEMBER 2015
ISSN: 0263-323X, pp. 611±36
From Brand Performance to Consumer Performativity:
Assessing European Trade Mark Law after the Rise of
Anthropological Marketing
Luke McDonagh*
Since the 2009 CJEU decision in L'OreÂal v. Bellure, the idea that a
brand's image is the property of the trade mark owner has become
increasingly entrenched within European trade mark law. Brand image
is now protected even where there is no harm to the underlying mark.
However, the courts have largely failed to acknowledge the radical
ways in which the marketplace for goods bearing trade marks has
changed in the past three decades. One key shift is that businesses and
marketers no longer view the brand creation process from a top-down
`brand performance' persp ective, but, rather, thro ugh the prisms of
`anthropological marketing' and `consumer performativity'. Through
an interdisciplinary approach, this article dissects the process of brand
creation in the context of European trade mark law, and argues that
the law must take account of consumer agency when the question of
who should own brand image arises.
INTRODUCTION
It would be an understatement to say that European trade mark (TM) law is
at something of a crossroads; the truth is that the law has already moved
some way down a previously uncharted path. Since the 2009 Court of Justice
of the European Union (CJEU) decision in L'Ore
Âal v. Bellure, the notion that
the brand's image is the property of the trade mark owner ± apparently
justified by the investment in the mark by its owner ± has become
611
*City University London, Northampton Square, London EC1V 0HB,
England
luke.mcdonagh@city.ac.uk
I wish to thank the following people for their support and helpful comments during the
process of writing this article: the anonymous JLS reviewers, Rothna Begum, Marc
Mimler, Mara Malagodi, Kenneth Madden, Jonathan Griffiths, Martin Senftleben, Alain
Pottage, Peter Ramsay, and Dev Gangjee.
ß2015 The Author. Journal of Law and Society ß2015 Cardiff University Law School
increasingly entrenched within EU trade mark law.
1
Indeed, the law now
protects brand image even where there is no harm to the underlying mark.
Yet, while the boundaries of trade mark protection have undoubtedly been
expanded since 2009, the CJEU has not adequately theorized or explained
why this expansion has occurred from the point of view of trade mark
doctrine; nor, given the commonly accepted distinction between the trade
mark and the wider brand concept, have the courts properly explained why it
is right that trade mark owners should be able to use trade mark law to claim
all aspects of valuable brand image.
2
Finally, this judicial expansion of the
law has occurred without any real analysis of the radical ways in which the
marketplace for goods bearing trade marks has changed during the past three
decades; indeed, the courts have failed to take account of the fact that there
has been a paradigm shift in marketing literature and practice ± a move from
a top-down `b rand perfo rmance' per spective to a n `anthrop ological
marketing' framework centring on `consumer performativity' of brands
and co-creation of brand image.
3
The failure of the courts to provide a
satisfactory explanation for the expansion of trade mark law to protect brand
image raises significant questions about the nature of the relationship
between trade mark law and brands. This article asks, first, who creates
brand image; and second, who, if anyone, should own brand image?
In addition to providing a legal analysis of the key issues, the article
attempts to answer these questions by examining relevant literature outside
the legal and marketing fields, including works of feminist, sociological, and
anthropological scholarship, and by reflecting on these insights to assess
what role European trade mark law ought to play in the context of brand
protection.
4
The first part of this article explores the underlying justificatory rationales
of trade mark law in the context of L'Ore
Âal and related cases, noting that the
612
1L'Ore
Âal SA v. Bellure NV (C-487/07) [2009] ETMR 55; L'Ore
Âal v. Bellure [2010]
EWCA Civ 535. See, also, D. Gangjee and R. Burrell, `Because you're worth it:
L'Ore al and the prohibition on free-riding' (2010) 73 Modern Law Rev. 282 and
D.R. Desai, `From Trademarks to Brands' (2012) 64 Florida Law Rev. 981.
2 T. Aplin and J. Davis, Intellectual Property Law: Texts, Cases and Materials (2013,
2nd edn.) 377±90. See, generally, L. Bently et al. (eds.), Trade Marks and Brands:
An Interdisciplinary Perspective (2008).
3 C. GroÈnroos, `From marketing mix to relationship marketing: towards a paradigm
shift in marketing' (1994) 2 Asia-Australia Marketing J. 9, at 9±11. See, also, P.
Fawkes, `How IKEA Wins Business Through Co-creation & Collaboration'
Professional Search For Knowledge (PSFK), at
ikea-brand-strategy.html>
4 J. Butler, `Performative Acts and Gender Constitution: An Essay in Phenomenology
and Feminist Theory' (1988) 40 Theatre J. 519, at 519±23; M. Callon, C. Me adel,
and V. Rabeharisoa, `The economy of qualities' (2002) 31 Economy and Society
194, at 194±9; C. Nakassis, `Brand, Citationality, Performativity' (2012) 114 Am.
Anthropologist 624, at 629.
ß2015 The Author. Journal of Law and Society ß2015 Cardiff University Law School
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