How Trademark Registration Criteria Protect Brand Identity

(a) Critically discuss how the criteria for the registration of trademarks enable them to protect brand identity (b) and explain, using case studies, how they can be used to preserve traditional cultural expressions

With a view to critically discussing as to how the criteria for the registration of trademarks allows them to protect both brand identity and traditional cultural expressions, it will be shown that if businesses are to survive in an ever more competitive marketplace they will be required to create brands to guarantee that there is a resilient segregation in the market and attract customers to their particular brands. At the same time, however, it will be shown as to how many cases that have come before the courts portray the problems that are involved with recognising a brand identity derived from the use of trademarks along with the problems associated with the representation of traditional cultural expressions. In addition, it will also be recognised that to be able to better protect brand identity the best policy is to look to register it as a trademark in view of the added protection that will then be provided to, whilst it will also be considered as to whether and how the law as it stands can then be used to preserve traditional cultural expressions from exploitation by corporate forces. Finally, this essay will conclude with a summary of the key points derived from this discussion in relation to the value of trademarks for protecting brand identity and preserving traditional cultural expressions.

A trademark has been legally defined as being represented by any word, name, symbol, or device, or any combination thereof that can be used to identify and distinguish goods from those manufactured or sold by others. [1] Therefore, unlike patents and copyrights, as a form of intellectual property, trademarks serve to represent a distinct asset to a business since they can potentially last for a period ad infinitum so long as the trademark is used in a particular case and safeguarded against negative use by third parties. That trademarks are such valuable business assets is also supported by the fact that their appearance can be updated so as to take advantage of popular trends or new imaging methods usually without a loss of the value of the rights that they have taken on. [2] This is because, aside from the goods or services that trademarks are attached to, a company’s trademarks have been recognised as specifically the most public representation of its business’ identity and reputation since brand names have taken the place of company names for the purposes of reputation. [3] For example, it is arguable that although the general public may not know the exact name or location of the company that manufactures an iPod, but they usually recognise its trademark and its value for representing a company heavily involved in the advancement of technology.

In addition, it has also been recognised that trademarks could be effectively exploited as a designator for particular products beyond what are seen as their initial uses. Then it has also come to be understood that a strong trademark identity for one line of goods or services can be expanded and used on another line allowing a company to leverage reputation from one field to another. For example, Sir Richard Branson and his company Virgin have been able to do this successfully in a variety of fields from mobile phones to airlines by way of diversification for the purposes of ongoing economic growth and business advancement. [4] Therefore, there can be no denying that the brand and image that are established for a particular company or given product or service that is produced by them is essential to its overall success for the purpose of then generating greater trust amongst customers for the purpose of achieving greater economic growth. For example, it has been recognised that the recognition of the value of commercial branding is an given economy’s ‘atomic core’ that are now being subject to a degree of significant criticism from an array of hostile forces in what is very often considered to be a somewhat ‘confused’ and ‘diffused’ marketplace evolving somewhat quicker than the brands populating it. [5]

On this basis, as has already been alluded to a given company’s brand identity is considered intellectual property and so a number of academics have looked to affirm the idea that the effective development of trademark law both within a domestic legal system as well as more internationally is a powerful ally that can be used to safeguard a given brand identity [6] . For example, numerous disputes arose between Apple Computer Company (now Apple Inc) and Apple Corporation that had been formed by the popular music group ‘The Beatles’ in 1968 as a result of using similar trademarks between 1978 and 2006. [7] An agreement eventually was reached between the parties whereby it was determined that Apple Computer Company would no longer look to use its logo of an apple with a bite mark in it to promote music sales through the company. [8] However, in 2006, with a view to endorsing its new iTunes products, the aforementioned logo was used once again and Apple Corporation sued Apple in the UK courts for its infringement of the original agreement. [9] But the judge in this case disagreed. Instead they recognised that Apple’s logo did not serve to suggest a relevant connection with the creative work as a representation of the fact that there is a fine line between a strong brand and a weak trademark – although a final settlement was not reached until the start of 2007. [10]

Such a view was then only further supported by the decision of the European Court of Justice (ECJ) in the case of Libertel Groep BV v. Benelux-Merkenbureau [11] that served to enhance recognition of the fact that the best means for defending a trademark against imitation by a third party is by registering it. However, in this case the state Trademark Office refused Libertel’s request to register the colour orange as a trademark for the purposes of safeguarding telecommunications goods and services. [12] This because the ECJ recognised in this case that single colours are only capable of being trademarks for the purpose of registration so long as they are defined in what is considered to be a sufficiently clear manner. [13] Therefore, the Court held that for Libertel to execute its position as a registered trademark it must be perceived unambiguously and uniformly so a trademark as an indication of origin is then guaranteed. [14] The decision of the ECJ was then only confirmed in the case of Heidelberger Bauchemie GmbH [15] and extended in relation to the understanding of ‘colour marks’ and their relationship with a trademark’s purpose since it was held “application for registration includes a systematic arrangement associating the colours concerned in a predetermined and uniform way”. [16]

As has already been recognised, the strongest form of protection for a brand is a registered trademark with particular rules that serve to simplify the way in which a brand can be protected. This is because, although unregistered trademarks can also be protected, a registered trademark makes enforcing rights relatively straightforward. Therefore, this explains why businesses should look to purchase registered trademarks to protect their brands with every country having its own system of trademark registration. At the same time, however, trademarks can also be registered internationally by the ‘Madrid System’ [17] that served to permit a trademark to be registered across multiple jurisdictions having been established under the Madrid Agreement 1891 and the Madrid Protocol 1989 and administrated by the World Intellectual Property Organization, whilst the Community Trademark System also functions on the foundation of guidelines emanating from the EU. However, the reality is this system has proved to be somewhat lacking in its scope in view of the fact critics have argued both these systems are not fully international so a trademark owner may be vulnerable to their intellectual property rights being breached.

With regards to the matter of as to how trademarks can be used to protect traditional cultural expressions, it is arguable to benefit fully from the protection of the law, in view of the costs involved with the recognition of these intellectual property rights, it is better to sign over rights to a much larger private enterprise and take a royalty than have little or no hope of protecting their rights effectively. [18] Such a view is aptly illustrated by an example taken from impoverished Madagascar where shaman had used the rosy periwinkle for therapeutic purposes traditionally so, in more recent time, the US based Eli Lilly & Company resolved to use it to treat Hodgkin’s disease so this traditional cultural knowledge was soon worth $100 million annually to the company. [19] Problems arose because of the fact it has been recognised that a fraction of the company’s vast profit would have provided a vital lift to Madagascar’s economy, but through the problematic nature of intellectual property law the nation’s people obtained nothing and this is just one of many similar cases to have arisen. [20]

Nevertheless, despite the nature and scope of such problems, traditional cultural expressions have been recognised as works that consist of a given indigenous community’s traditional artistic heritage. [21] To this effect it is clear the law as it relates to the protection of trademarks can be effectively used with a view to then better protect certain examples of cultural expressions including designs and symbols that have been derived from times long since passed with either dying or dead cultures. For example, in Greece, the Law 3028/2002 on the Protection of Antiquities & Cultural Heritage in the country has served to provide that traditional cultural expressions’ protection including fables, customs, dances, music, songs or techniques that constitute testimonies of the traditional culture dating back to the time of Ancient Greece and the long since passed civilisation.22 In addition in the case of Milpurrurru v. Indofurn Property Ltd [22] Justice von Doussa recognised as part of his judgement that the sacred and religious significance of the items in question along with the restrictions which Aboriginal law and culture imposes on their reproduction is only now being understood in the western world. [23] The reasoning for this is then largely founded upon the fact that movements made in support of the use of trademarks have looked to focus upon the apparent psychological harms that could be caused by cultural misrepresentation. [24] For example, the Native American Crazy Horse’s descendants have sought to make a claim for a ‘right of publicity’ to prevent the use of any aspect of his persona to advertise and sell alcohol especially since one of the thins Crazy Horse was renowned for was seeking to combat alcoholism. [25]

To conclude, it is clear trademarks can be used to protect cultural expressions since indigenous customary laws can be used to effectively protect indigenous people’s rights in this regard. This is because indigenous peoples have the right to both practice and revitalise their cultural traditions that also includes the right to maintain, protect and further develop their culture. [26] Indigenous customary law has served to protect the traditional cultural expressions of their communities against their exploitation by corporate enterprises for economic growth and commercial success. However, whilst there can be no denying challenges to the implementation of indigenous customary laws exist, they are not insurmountable. The reality is that such challenges are either considered to be identical to (or no worse than) those that may be posed by existing intellectual property rights or sui generis solutions with a genuine desire to safeguard indigenous people’s traditional cultural expressions in any given environment. This is reflective of the fact that it has been recognised as imperative to look to protect all companies brand identities following both national and international principles of trademark law in view of the EU’s efforts at harmonising the law. Such a view is supported by the fact that the ECJ’s decisions have proved essential to the development of trademark law because of their direct effect in Member States such as in the UK under the remit of the European Communities Act 1972 in keeping with the nature of the EC Treaty within the EU. [27]