Mutation of the trademark doctrine: analysing actionable use to reconcile brand identities with constitutional safeguards

Abstract

Trade marks serve as a storehouse of information, assuring consumers about the quality of a product by ensuring that products bearing the trade mark originate from a consistent source. The trade mark doctrine has accommodated this position as its underlying thesis for several decades, and consumer confusion has served as a touchstone for trade mark liability. However, given the configurations of the modern marketplace, trade marks transcend their role as source- identifiers and are framed in the language of relationships rather than transactions. With continuous and consistent use, trade marks can come to signify opulence, luxury, dependability, and become cultural icons. The modern trade mark doctrine must accommodate these realities of the marketplace while, at the same time, accommodating the flourishing exchange of expressive uses through unauthorised use of trade marks. This push-and-pull has resulted in the complete obliteration of what were already obscure boundaries between the expressive and marketing spheres of trade mark law. The present study examines the normative foundations of the modern trade mark doctrine, drawing from American, English, and European trade mark jurisprudence. These foundations are then extrapolated to Indian trade mark law to create a workable limitation of the mutating trade mark doctrine through recalibrating the actionable use requirement. The authors attempt to discern the normative foundations of the individual cause of actions in the infringement liability and argue that such foundations should serve to delimit the scope of protection offered therein. Given the relevance of expressive uses in trade mark law, the present study also examines the relevance of constitutional and policy-based arguments in determining trade mark infringement liability. We find that within Indian judicial discourse, there is an alarming disconnect between the normative foundations of infringement liability and their interpretation. This affects the interpretation of the limitations offered by the trade mark statute and can potentially push trade mark law in troubling directions.