Journal of Intellectual Property Law & Practice Advance Access first published online on May 23, 2008
This version published online on May 28, 2008
Journal of Intellectual Property Law & Practice, doi:10.1093/jiplp/jpn085
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© The Author (2008). Published by Oxford University Press. All rights reserved
Trade marks: not just for the rich and famous
Legal context: The undisputed existence of a multi-billion dollar market for the purchase of counterfeit trade marked products evidences a state of affairs in which counterfeiting though an ‘outlaw’ behaviour enjoys public support. Law reform aimed at positioning trade marks as something for everyone—not just for the rich and famous—while counter to the current trend of trade mark legal theory, would be a valuable step towards abatement of trade mark counterfeiting.
Key points: An ideal theory of trade marks for a society based on equal justice under law would give each trade mark an equal scope of legal protection, so that every trader, large and small, would see it in their interest to support the concept of trade mark enforcement. The alternative approach—more protection for those trade marks backed by the most massive financial resources—will lead to a polarized society of "trade mark haves" v "trade mark have-nots", with the "haves" being in the distinct minority and waging constant war against the "have-nots." The legislature and sometimes even the courts might be swayed to the side of the "haves," but they will nevertheless end up on the de facto losing side due to consequent widespread disrespect for law.
Practical significance: If any citizen could appreciate that the cost of registering and successfully enforcing a trade mark was within his or her means, and was not just something for billionaires and multinational corporations, respect for trade marks would be fostered. Reducing consumer willingness to accept knowingly counterfeit products may not win the war on counterfeiting entirely, but it may help force the counterfeiters into fighting a rear-guard action against public opinion.
Key Words: Legal protection for suggestive and descriptive trade marks should be lessened, rather than increased. • Advertising spending and sales volume as tests of trade mark strength should be abandoned. • Traders need to be incentivized to be creative in coming up with new trade marks, not just to spend a large budget in hopes of monopolizing common descriptive terms and basic colours and shapes
* Robert M Kunstadt is the managing attorney of R Kunstadt, PC, New York, NY; an Associate Member of the International Trademark Association and former Editor-in-Chief of the Trademark Reporter. This article is dedicated to the memory of the author's father, George H Kunstadt (1922–2008). Email: mail{at}rkunstadtpc.com.