Trademarks and Territory: Detaching Trademark Law from the Nation-State

Abstract

It is an axiomatic principle of domestic and international trademark law that trademarks and trademark law are territorial. This paper critiques the principle of territoriality in four ways. First, I suggest that statements about trademark territoriality mask a variety of related propositions. In disaggregating the "principle of territoriality" into its component parts, it becomes apparent that different rules of trademark law possess a territorial character for different reasons. For example, common law trademark rights are territorial because the intrinsic purpose of trademark law suggests extending (and limiting) rights to the geographic reach of goodwill. In contrast, registration systems designed to promote economic expansion derive their territorial character from their grounding in economic policymaking, effected by institutions that focus on the regulation or development of discrete economic regions. And rules regarding the enforcement of trademark rights assume their territorial quality because of their connection to political institutions with territorially defined sovereignty. Thus, some aspects of territoriality are rooted in social and commercial practices that dictate the reach of a brand, while other aspects are a function of political or policymaking authority. In an era of global trade and digital communication, social and commercial practices are less territorially confined and less commensurate with the nation-state. But economic policymaking and political institutions may prove more resistant to change than social or commercial behavior. Second, I argue that although the principle of trademark territoriality has nominally remained constant since the conclusion of the Paris Convention, recent developments at both the national and international level suggest that the principle may have a different intensity today. Third, the paper begins an investigation of the ways in which the principle of territoriality should be revisited in light of the globalization of markets and concomitant changes in modern marketing practices. Although the multidimensional nature of the territoriality principle suggests that an overarching reconfiguration would be unwise and perhaps impossible, some shared dilemmas can be derived from analysis of discrete rules. If the territorial character of a rule reflects the intrinsic purpose of trademark law and is thus rooted in social practices that are already in flux, the character of these doctrines will almost inevitably mutate as the notion of territoriality evolves in line with social change. Such revisions will swim with the current of socially constructed territoriality. If, however, the territoriality of a doctrine instead mirrors the national nature of economic and political institutions, then efforts to revise the doctrines will first require altering the underlying institutional and policymaking apparatus. Moreover, in deciding whether particular territorial aspects of trademark law warrant reassessment, it is important to consider whether trademark law should be structured reactively to protect whatever consumer understandings or producer goodwill develops, or should it instead proactively seek to shape the ways in which consumers shop and producers sell or seek to acquire rights, thus shaping how the economy functions? Finally, the paper briefly highlights the extent to which there is, or should be, an assimilation of the "territorial" and the "national." Analysis of the choices facing trademark law might be better achieved by consciously separating nationality and territoriality. Recognition of the territoriality of goodwill is linked to the basic purposes of trademark law, while nationality-grounded doctrines are more likely driven by economic policy and by institutional issues such as the practical demands of current political structures. Recognizing this distinction would assist in highlighting where reform is likely to be evolutionary and where modification of political structures - whether judicial or administrative - must first occur.

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