Introduction

Although trade marks and brands are broadly concerned with the same subject matter, it is often felt that there is a disjunction between what trade mark law protects and what trade mark owners need, not just to protect their trade marks as legal phenomena, but also their brands as holistic, socially constructed entities. This chapter tracks the development of two lines of the Court of Justice of the European Union (CJEU)'s case law. These suggest that trade mark law is moving towards protecting aspects of image and branding in a way that recognises how consumers respond to trade marks and the brands that they are a part of, while at the same time acknowledging what trade mark owners need in order to preserve the relationship between their brands and consumers. In the first line of case law, the CJEU is moving relatively rapidly towards protecting trade marks not just as indications of trade origin, but also as carriers of a protectable image built up through promotion and advertising. However, there is a mismatch between the principle, which the Court recognises, and what the court is willing to offer in terms of concrete protection in individual examples of harm to a brand's image. In the second line of case law, which is very much at its starting point, the CJEU is beginning to show a willingness to treat aspects of brand image as a holistic whole in judging distinctiveness, use and infringement, allowing brand owners more successfully to capture the benefit of the entirety of their brand, rather than just the individual elements that are registered as trade marks.

Brand image

While trade mark lawyers think of product names, logos and other characteristics as indicators of trade origin, marketers think of them as contributing to brand equity, defined by Aaker as ‘a set of assets (and liabilities) linked to a brand's name and symbol, that add to (or subtract from) the value provided by a product or service to a firm and/or that firm's customers’. Brand equity contributes to a brand's ‘identity’ – a set of associations connected to the brand that, if favourable, will influence purchasing decisions and differentiate a brand owner's product from other physically similar products, allowing the brand owner to charge a price premium. Trade mark law has primarily concerned itself with the source-signifying functions of the constituents of brands.