Response paper for Advanced Trademark Law

By Wagisha (2021-1LLM-70) for Term end

On a traditional note, Trademark Law seeks to protect a mark’s capacity of distinction and
its indication of origin.1 yet on a closer note, the function of the said law seems to face many
more intricacies, especially when it comes to dealing with luxury goods. Understanding
these intricacies in the light of following aspects, thus, becomes a necessity:

Consumption decisions and cultural implications plays a very major role in

luxury goods’ trademark. Per Barton Beebe “ Trademark has a triadic structure- consisting
of a signifier (perceptible form of the mark), signifier (semantic concept of the mark viz.
goodwill) and a referent (the product or service to which the mark refers)” 2. On this note, a
doll is not just a doll when it is a Barbie doll because it signifies not just a class status but
also serves as an ideal model of “American Woman” or “Symbol of American girlhood”. 3
Same goes for those possessing bags of Louis Vuitton as it symbolises a culture of
sophistication and richness. On that note, Tan notes that “cultural studies recognises
consumers not just a mere audience rather an active participant in the Constitution of
cultural meaning.”4 “A discursive analysis” of the context to consider how power in society
is distributed and contested through process of production, circulation and consumption” 5 is
another contribution of such luxury goods.

Transcoding is another facet which needs to be looked upon in light of the

aforementioned concept. As can be seen from Tan’s work, the process of ‘transcoding’
seeks to take away an existing meaning and re-appropriating it for a new meaning in order
“to ‘reverse stereotypes, substitute negative portrayals with positive ones, or contest
subordinate representation from within”6. In trademark Law regime, this is often done
through parody.7 To that extent usage of marks of luxury goods are conferred as permissible
within the aegis of freedom of speech and expression either in and courts have often taken a

1
See for reference Article 15 of TRIPS, Section 2(z)(b) of the Trademark Act, 1999.
2
Barton Beebe, The semiotics Account of Trademark Doctrine and Trademark Culture, in TRADEMARK LAW
AND THEORY: A HANDBOOK OF CONTEMPORARY RESEARCH (Graeme B. Dinwoodie & Mark D. Janis eds.
2008).
3
See in Mattel Inc. v. MCA Records, Inc.
4
David Tan, The Semiotics of Alpha Brands: Encoding/decoding/recoding/transcoding of Louis Vuitton and
Implications for Trademark Laws, 32 (225) CARDOZO ART & ENTERTAINMENT 226 (2013).
5
Ibid.
6
Sonia K. Katyal, Performance, Property and the slashing of Gender in Fan Fiction, 14 AM. U. J. GENDER
SOC. POLICY & LAW, 1, 39-40 (2011).
7
see Onasis v. Christian Dior-New York, Inc.
liberal approach.8 However, the Indian Courts analysis were majorly based on the fact that
whether a particular reference to a brand is merely denominative or not (as in Tata Sons
case) unlike US court which examines the extent of commercial exploitation of luxury
goods in such satire and their possible tarnish of repute (as seen in Diggity dog case) and if
it relates to extreme level of tarnish when comparing a protect with sex-related products,
then it becomes impermissible.9 However, in ETW Corp. v. Jireh Publishing, it can also be
seen that court often tend to focus on intended outcomes without thorough examination of
cultural practices and consumption behaviour.

CONCLUSION

Hence, on a concluding note, the commercial nature of a brand only looks for the test of
‘likelihood of confusion’ in the mind of consumers while when it comes to non-commercial
functions, the intricacies surrounding luxurious goods becomes quite complex because they
have more affiliations to cultural distinctions than non-luxurious ones. It is in this light that
even Trademark law comes in direct loggerheads with the freedom of speech and
expression. Courts, are though in a process to evolve it, yet it will be possible to create a
settles way only when there would be thorough “consideration of the content, form and
context of each expressive use of luxury marks.”10

8
see “Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC; Tata Sons Limited v. Greenpeace
International; Ashutosh Dubey v. Netflix Inc.”
9
see V. Secret Catalogue v. Moseley.
10
Supra Note 4.