Abstract This author The author holds a master’s degree in law from Jagiellonian University in Cracow, Poland, where he is a PhD candidate; he holds an LL.M. in IP and Comp. Law from Munich Intellectual Property Law Center (Max Planck Inst. for IP and Comp. Law, TUM and the GW Law School) in Munich, Germany, where he currently lectures and is a member of the alumni advisory board. This article Results of an analysis of the subject of socialistic brands, a unique group of signs with shared historical pedigree, carry implications for the functioning of the trade mark system. It follows that the current legal framework is ineffective in preventing grants of trade marks contrary to the purpose of trade mark law and its competition-neutral nature. On the basis of these findings, it is argued that, in interpreting trade mark law, it is necessary to recognize fully the diversity of stakeholders and the various social, cultural and economic interests at issue. Socialistic brands is a term used by this author for a group of signs with peculiar and unique characteristics resulting from their shared historical pedigree. The notion of a brand should be understood broadly here, namely as encompassing all signs used to distinguish commodities offered during the period of socialism within a given territory belonging to the Socialist Bloc. Due to cultural, historical, political and geographical differences, each such territory has its own, unique socialistic brands.1 For decades, these signs were subject to particularities of socialist culture, socialist market rules and various inconsistent legal rules. It was not uncommon for a given socialistic brand to be used by multiple partially- or fully separate actors2 within each country. Further, markets of socialist countries were embedded in state ideology. Focused on rituals of production and with obsessive emphasis on physical and industrial labour,3 these markets allowed few intra-product alternatives for commodities which were typically offered under socialistic brands. The extremely limited end-user choice and general scarcity of goods were often the main reasons why consumers sought out products branded with these signs.4 Thanks to long-term use under such circumstances, socialistic brands today occupy a singular place in the collective memories of post-socialist societies.5 This observation pertains both to socialistic brands that were abandoned, either with the fall of communism in 1989 or thereafter, as well as brands that have remained in continuous use since the transformations these markets underwent with the fall of the Eastern Bloc. This powerful bond between socialistic brands and consumers in post-socialist countries is based on a highly complex relationship with the socio-economical particularities of socialism. Indeed, that very bond strongly resonates with and informs the contemporary culture of their societies. The responses that socialistic brands evoke in the minds of consumers can be attributed to feelings of nostalgia, national sentiment, status of the purchaser or a longing for a past that offers a national identity which has since changed or even vanished altogether.6 The numerous and noteworthy instances of socialistic brands’ usage and their successful re-registration as trade marks demonstrate a continued, invested interest in them. Taking into account that the primary goal of modern capitalist undertakings is to maximize profit, it follows that the bond between these signs and their consumers should translate to their selling power. Figure 1. View largeDownload slide Poster of the Second National Exhibition of Graphic Signs (‘II Ogólnopolska Wystawa Znaków Graficznych’). It showcases designs of some of the most prominent socialistic brands from Poland. Source/design: Pan Tu Nie Stał. Figure 1. View largeDownload slide Poster of the Second National Exhibition of Graphic Signs (‘II Ogólnopolska Wystawa Znaków Graficznych’). It showcases designs of some of the most prominent socialistic brands from Poland. Source/design: Pan Tu Nie Stał. In the contemporary world, trade marks no longer play a simple role of lifeless symbols. As part and parcel of our modern culture of consumption, trade marks have become autonomous, complex figures that carry within themselves a personal relationship with the end-user.7 These signs, like the language and culture they effect and inhabit, cannot exist without the people who use them. It is only with the answerability of a sign in the mind of the user that a sign might gain life, shape and meaning. All of this, in effect, signals that today’s consumers use the trade marks attached to that which they consume in order to communicate with each other8 and, through such use, the extent of our involvement with these trade marks invariably shifts the meaning and selling power of these signs. It is commonly recognized that modern branding aims to create an active emotional response9 in consumers by utilizing the distinctiveness and uniqueness of signs. This is accomplished most effectively when an understanding of the brand in users’ minds is contrived through an appeal to their memory, identity and feelings.10 With this in mind, one might argue that the special selling power of socialistic brands derives from their high differential value11 as compared to other signs, resulting from their cultural bond with the users. Socialistic brands offer certain unique messages that work to convey or support an identity—these tend to vary from an endorsement of national history, sophistication expressed through vintage commodities, a style that mirrors bygone days or simply an identity that is rooted in past personal or group experiences. What is more, observations by sociologists, psychologists and anthropologists reveal that, due to the mechanisms that forge such bonds between sign and consumer, the effect of socialistic signs on a post-communist society is far from limited to the part of society that experienced socialism first-hand.12 Socialistic brands differ from the so-called ‘vintage brands’, which have acquired their selling power over the years of being used on prized products on the free market. The selling power of socialistic brands did not result from the efforts of their proprietors, but rather from their collective cultural use in particular historical circumstances. The ideological realities of socialism meant that for many decades there were meagre to no incentives for improving or changing the commodities or their branding. In fact, if there was any competition between undertakings, it took the form of bargaining for and procurement of materials necessary for producing the given commodities. The branded commodities themselves were often of inferior quality and, if they are fondly remembered, it is mostly due to nostalgic reproduction and falsification of the experiences of the past.13 The omnipresence of so-called emotional branding in contemporary marketing might also help to explain how the particular character of socialistic brands translates to their selling power. As emotional branding accelerates the process of blurring the line between the cultural and commercial meanings of trade marks, undertakings demonstrate a strong preference towards signs with unique connections to consumers, signs which can be used to engage their emotions.14 In contemporary practice, the main goal of any trade mark strategy is to establish, strengthen and stabilize associations in the minds of end users.15 For example, a sign characterized by strong cultural connotations formed through long-lasting use resonates especially well within the minds of consumers. In order for a sign to acquire a strong cultural connotation, it either needs to be used for an extensive period of time or has to be used in a sufficiently intense manner if it is to lead to far-going exposition to consumers. Today this is achieved through extensive marketing. Signs which already carry unique and strong cultural meanings—which translate to their bond with consumers—are sought after due to the time and resources necessary to form such bonds in the first place. For empirical proof, we need not look further than the practice commonly employed by trade mark proprietors to use phrases such as since or established in, which are meant to contrive a stronger association with the product in the minds of the consumers. The role of the modern trade mark in branding could be described as that which obscures the origin of the commodity and conjures up an origin myth for it16—the origin function is effectively obfuscated by layers of connotation which work to create a superior myth. Very often the trade mark no longer tells the end user where the product bearing its insignia has been produced17 or who designed or created it, but rather suggests that the trade mark itself produced the commodity.18 Socialistic brands are, then, signs that naturally, due to their accumulated cultural connotations, communicate such a mythical origin. The strong and uniquely acquired cultural meaning of socialistic brands stands at the centre of their bond with consumers, which significantly contribute to the selling power of the commodities affixed with these brands today. As indicated, the unique characteristics of these signs derive from their collective use by a particular society within a peculiar historical circumstance rather than from the efforts of past or current proprietors. Thanks to such conditions, it is clear that an undertaking entitled to legally sanctioned exclusivity over these signs might hold a uniquely advantageous position for a given post-socialist territory where these socialistic brands were also used during communism.19 In the European Union (EU), trade mark law is recognized as an essential part of a system of undistorted competition.20 It is argued that this is due to the fact that the protection of trade mark rights tends to lower consumer search costs as they minimize the time required to search for a commodity.21 Further, because such rights serve as an incentive for proprietors to invest in the quality of the product, they tend to encourage competition.22 A trade mark proprietor no doubt reaps the ‘goodwill’ and ‘attraction of custom’ enjoyed by the mark. It is in the fulfilment of these goals that trade mark rights might be extended indefinitely. To accommodate these goals, the trade mark system should be competition-neutral and should not facilitate obtaining an unjust competitive advantage. This is because consumer search costs are minimized only to the extent that a trade mark actually refers to a product or source for which the end user is searching, and the quality of product is enhanced only to the extent that the owner of a trade mark attaches that trade mark to products whose quality it actually controls.23 Taking into account the peculiar characteristics of socialistic brands, it is natural to question in which instances, bearing in mind the rationale behind trade mark protection, trade mark exclusivity over socialistic brands should be allowed. In a very general sense, it could be argued that registrations should be allowed in cases of clear and direct succession between the registrant and the entity which was originally entitled to the sign. Such a grant would very likely limit the consumer search cost because it would indicate which company is the legal successor. Similarly, this would incentivize the successors to invest further in the quality of the marked commodities. With this in mind, it could be argued that there is a strong public policy interest in preventing cases of registration where there is no clear case of succession between the registrant and the original socialist user, especially if the brand has since been abandoned. Allowing for such registrations would most likely be in conflict with the need for the trade mark system to remain competition-neutral. The granting of rights would be unjustifiable as it does not reward the ‘labour’ of the registrant but rather a savvy business decision of appropriating a sign24 with strong cultural bond with the public. The advantage would be gained by the proprietor from this system while consumers might see no tangible benefit, just as a selling power of proportional strength today would had to have been ‘earned’ through years of providing consumers with quality commodities. In the EU, trade mark law has been harmonized to a large extent on the basis of the trade mark directive.25 This legal act sets forth grounds of trade mark revocation and invalidation,26 the implementation of which is either mandatory or optional for EU Member States, many of which are post-socialist countries. In cases of unjustifiable registration of socialistic brands, there are several grounds that could potentially be invoked. This group includes: registration of a sign in bad faith, registration contrary to public policy, a ban from registering signs of high symbolic value or of signs that would deceive the public. Unfortunately, analysis of the different types of public policy that each of these grounds embody and the relevant case law demonstrate that current legislation might at best provide a precarious patchwork solution for addressing cases of unjustifiable appropriation of socialistic brands.27 One of the many reasons is that the application of these grounds necessarily exists in reference to non-legal norms, such as those of conduct or other social norms, which in practice lead to substantial uncertainties as to how we construe the concepts underlying these grounds. These uncertainties are impossible to overcome without a policy-level acknowledgement that trade mark policy is also cultural policy.28 This means there is a high risk that registrations contrary to the justification of trade mark protections (such as some re-registrations of abandoned socialistic brands) are permissible based on currently applicable law. Socialistic brands are a unique group of signs shaped by their distinctive historical pedigree. That being said, the implications that arise from their analysis are universal. To be sure, analysis of socialistic brands lays bare that which trade mark law does not fully recognize. The selling power of a sign results not only from the efforts of past or current proprietors, but also from their collective use and the cultural implications of trade mark exclusivity. This is because the core of trade mark law in its current form was neither designed with its implications for the public domain in mind,29 nor did it anticipate the ever-intensifying use of trade marks or their mutability in the age of information speculation. If today it is impossible to imagine using a trade mark in its advertising or investment functions without relying on a network effect (eg via social media, profiling or employing big data), it is perhaps high time we take up the communitarian insight to revisit our understanding of the origin function and extent of trade mark exclusivity. A good first step would be to allow for an interpretation of the law that recognizes the diversity of stakeholders and the various social, cultural and economic interests at work as identified by commentators.30 However appealing it may be for trade mark proprietors, trade mark law was not created to facilitate such ‘remonopolization’. Allowing for grants of exclusivity over such aspects of signs is contrary to the very purpose of trade mark law and its competition-neutral nature. Footnotes 1 Examples of such brands include the Slovak and Czech Horalka Tatransky wafer brand, Russian Stolichnaya Vodka spirit brand, Hungarian Tisza Cipő streetwear brand, Polish Pewex shops brand, German Halloren Kugeln chocolate brand and Romanian Arctic household appliance brand. Examples of designs of socialistic brands can be seen in Figure 1. 2 For example, some of the socialistic brands were used by multiple entities within one country, belonging to large and concentrated industrial conglomerates, known as ‘combines’. 3 D Berdahl, ‘“(N)Ostalgie” For The Present: Memory, Longing, and East German Things’ (1999) 64 Ethnos 2, 193. 4 ibid 198. 5 ibid 203. 6 ibid 200. 7 P Manning, ‘The Semiotics of Brand’ (2010) 39 The Annual Review of Anthropology, 45. 8 J Bosland, ‘The Culture of Trade Marks: An Alternative Cultural Theory Perspective’ (2005) 10 Media & Arts Law Review 99, 13; also see B Beebe, ‘The Semiotic Account of Trademark Doctrine and Trademark Culture’ in G Dimwoodie, M Jamis (eds), Trade Mark Law and Theory: A Handbook of Contemporary Research (Cheltenham 2008) 45. 9 Berdahl (n 3) 195. 10 M Bakhtin, Speech Genres and Other Late Essays (VW McGee tr, C Emerson and M Holquist eds, University of Texas Press 2006) 163. 11 Beebe (n 8) 52. 12 For more on this see: M Rogowski, Socialistic Brands, A Unique Category of Vintage Brands (Nomos 2017) 44 and next. 13 Berdahl (n 3) 202. 14 LR Bradford, ‘Trade Mark Dilution and Emotion’ (2009) Berkley Technology Law Journal (forthcoming); George Mason Law & Economics Research Paper No 09-08. Available at SSRN <https://ssrn.com/abstract=1334925> accessed 30 April 2018, 5; Also in general see EL Bernays, Biography of an Idea: Memoirs of Public Relations Counsel (Simon and Schuster 1965). 15 R Moore, ‘From Genericide to Viral Marketing: On “Brand”’ (2003) Language & Communication 23, 343. 16 Beebe (n 8) 52. 17 B Beebe, ‘The Semiotic Analysis of Trademark Law’ (2004) 51 University of California at Los Angeles Law Review 3, 646; G Dinwoodie, ‘Reconceptualizing the Inherent Distinctiveness of Product Design Trade Dress’ (1997) 75 North Carolina Law Review 2, 483. 18 Beebe (n 8) 52, Manning (n 7) 45. 19 For more on this see: Rogowski (n 12). 20 Study on the Overall Functioning of the European Trade Mark System, Max Planck Institute for Innovation and Competition Law Munich 2011), para 1.28. <http://www.ip.mpg.de/fileadmin/user_upload/mpi_final_report.pdf> accessed 30 April 2018. 21 WM Landes and RA Posner, ‘The Economics of Trademark Law’ (1988) 78 The Trademark Reporter 3, 267. 22 GA Akerlof, ‘The Market For “Lemons”: Quality Uncertainty and the Market Mechanism’ (1970) 84 Quarterly Journal of Economics 3, 500. 23 Beebe (n 8) 48. 24 K Assaf, ‘The Dilution of Culture and the Law of Trade Marks’ (2009) 49 IDEA – The Intellectual Property Law Review 1, 77. 25 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, 1–26. 26 ibid, arts 4, 5. 27 For more on this see: Rogowski (n 12) 51. 28 Beebe (n 8) 59; W Sakulin, Trade Mark Protection and Freedom of Expression: An Inquiry Into the Conflict Between Trade Mark Rights and Freedom of Expression under European Law (Kluwer Law International 2011) 6. 29 MRF Senftleben ‘Trade Mark Law and the Public Domain’ in D Beldiman (ed), Access to Information and Knowledge: 21st Century Challenges in Intellectual Property and Knowledge Governance (Edward Elgar Publishing 2013) 2. 30 A Kur and MRF Senftleben, European Trade Mark Law (OUP 2017) para 1.46. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices)
Journal of Intellectual Property Law & Practice – Oxford University Press
Published: May 17, 2018
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