The Accountability of Trade Marks
| DOI | 10.1093/jiplp/jpy114 |
| Date | 01 August 2018 |
| Pages | 679-679 |
| Year | 2018 |
| Published By | Oxford University Press |
Editorial
The accountability of trade marks
Danny Friedmann
Here is a thought experiment. The policy goals of trade
mark law have evolved over the years, reflecting the needs
of society. Initially, trade mark law was based on the pro-
tection of producers against trade diversion to competi-
tors.
1
Later, the focus shifted to the protection of
consumers against confusion and of producers against
dilution. The public at large was underserved by trade
mark law. However, the quality of the trade mark hold-
ers’ goods does not only impact brands and consumers,
but can also touch the lives of the public at large. The
negative externalities of goods or the way goods have
been produced can affect consumers and non-consumers
alike.
While the trend in the world is informationally san-
guine and pursues more transparency, trade marks have
been used in an ever more informationally anaemic way;
the link between trade mark, source, goods and quality
has been significantly weakened over the years. As long as
the trade mark designates a constant source
2
that guaran-
tees the constant quality of the good, the prerequisites of
a trade mark are met.
3
Also, the prohibition against na-
ked licences is not about the level of quality, but about
the control and consistency of that quality. A desideratum
of our time could be to allow the public at large to obtain
transparent information about the negative externalities
of goods or their production methods. Besides certifica-
tion and collective marks, a recalibrated law of traditional
trade marks would be well positioned to help achieve this
transparency.
Adding an augmented reality layer to the trade mark
logo could inform the public at large about the underly-
ing goodwill of a company using a ranking as a proxy, or
warn them in real-time about a safety issue. In an ideal
world, consumers would be able to conveniently compare
the products and their rankings in regard of their ethical-
ity, making informed purchasing decisions. The ranking
of ethicality could take into account several factors: envi-
ronmental sustainability, labour rights, etc. Products that
are aggregated by different parts and have an aggregated
ranking could be tracked throughout the value-chain.
With the Internet of Things (the interconnection with
objects that have embedded information), this has come
within reach.
The trade mark holder has the right to control the
quality of the goods designated by its trade mark.
However, if trade mark holders deceive the public at
large, for example a car manufacturer in regard to the
level of emissions, a recalibrated trade mark could help
sanction these companies, ultimately by cancellation of
their trade mark, following for example a three-strikes
system. So far, trade mark law has been more concerned
with the question of whether a trade mark consists of im-
moral, deceptive or scandalous matter,
4
instead of
whether a trade mark holder behaves immorally,
deceitfully or scandalously. A recalibrated trade mark
law, encouraging trade mark holders to steer clear of
socially undesirable behaviours might be worthy of
consideration.
1 F. Schechter, The historical foundations of the law relating to trade-marksi
(Columbia University Press 1925), 20–21.
2 The anonymous source doctrine modified the term “coming from a sin-
gle source” (Coca-Cola Co. v. Koke Co. of America 254 U.S. 143, 41 S.Ct.
113, 65 L.Ed. 189 (December 6, 1920)) into anonymous source.
3 The actual quality of the goods is irrelevant; it is the control of quality
that a trade mark holder is entitled to maintain that matters. See El Greco
Leather Prod. Co. v. Shoe World, Inc., 806 F.2d 392, 395 (2d Cir. 1986);
Professional Golfers Association of America v. Bankers Life & Casualty Co.,
514 F.2d 665, 670–71 (5th Cir.1975).
4 For example, Article 7(1)(f)-(g) Regulation (EU) 2017/1001 of the
European Parliament and of the Council of 14 June 2017 on the
European Union trade mark, OJ L 154, 16.6.2017, p. 1–99; Article
4(1)(f)-(g) Directive (EU) 2015/2436 of the European Parliament and of
the Council of 16 December 2015 to approximate the laws of the
Member States relating to trade marks, OJ L 336, 23.12.2015, p. 1–26. See
also Lanham Act 15 U.S. Code § 1052(a). Justice Holmes already stated:
“When the mark is used in a way that does not deceive the public we see
no such sanctity in the word as to prevent its being used to tell the truth”
Prestonettes, Inc. v. Coty, 264 U.S. 359, 368, 44 S.Ct. 350, 351, 68 L.Ed.
731 (1924).
V
CThe Author(s) 2018. Published by Oxford University Press. All rights reserved. doi:10.1093/jiplp/jpy114
Journal of Intellectual Property Law & Practice, 2018, Vol. 13, No. 9 679EDITORIAL
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