Mutation of The Trademark Doctrine: Analysing Actionable Use to Reconcile Brand Identities with Constitutional Safeguards
M.P. Ram Mohan and Aditya Gupta
With continuous and consistent use, trademarks can come to signify opulence, luxury, and dependability; and become cultural icons. The modern trademark doctrine must accommodate these realities of the marketplace while, at the same time, accommodating the flourishing exchange of expressive uses through unauthorised use of trademarks. This push-and-pull has resulted in the complete obliteration of what were already obscure boundaries between the expressive and marketing spheres of trademark law. The present study examines the normative foundations of the modern trademark doctrine, drawing from American, English, and European trademark jurisprudence. These foundations are then extrapolated to Indian trademark law to create a workable limitation of the mutating trademark 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 trademark law, the present study also examines the relevance of constitutional and policy-based arguments in determining trademark 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 trademark statute and can potentially push trademark law in troubling directions.