The right to speak a brand: rethinking the interaction between trade marks and freedom of expression in the age of expressive branding

Thesis

Trade marks no longer serve solely a source-identifying function, but rather have evolved to perform a plethora of functions. These range from signalling information about quality or reputation to conveying complex and varied meanings that can be relied upon by different individuals for expressive purposes. Because marks can be used expressively, courts and scholars are devoting increased attention to elucidating the relationship between marks and speech. An analysis of European and US case law reveals that the conceptual frameworks employed to date have a tendency to oversimplify their relationship. This is due, at least in part, to the widespread misconception that the interaction between marks and speech operates unidirectionally, in the sense that the protection afforded under freedom of expression advances solely the interests of one type of mark user. In infringement litigation involving use of recoded (i.e. modified) marks for expressive purposes (usually for parody or commentary), invocation of free speech is understood to advance only the expressive interests of recoders. By contrast, in litigation dealing with the validity of refusals to register marks or of measures encroaching on trade mark use, freedom of expression is conceived of as advancing solely the interest of trade mark applicants or owners, respectively. This view, however, fails to take into consideration the expressive richness involved in the use of trade marks –an expressive richness that allows individuals other than recoders and applicants/owners to make expressive use of marks to pursue their preferred identity projects. By factoring in all the expressive interests involved in trade mark use, this thesis advances a reconceptualization of the interaction between marks and speech that has the potential to bring more nuance and clarity to the adjudication exercise. Perhaps more importantly, it ensures adequate enforcement of human rights guarantees in interaction cases. In combination, these improvements can lead to better balanced, fairer outcomes, as well as increased consistency.

Authors: Fernandez-Mora, A

• Type of award: DPhil
• Level of award: Doctoral
• Awarding institution: University of Oxford
• Language: English
• Keywords: comparative law; intellectual property law and human rights; intellectual property; freedom of expression; law; US law; branding; human rights; EU law; trade mark
• Subjects: Intellectual Property Law and Human Rights; Law; Intellectual Property Law; Human Rights