Playing Frankenstein with trademark law

Every now and again, a new term pops up in trademark law. Usually they are not very exciting – terms like ‘hologram trademark’ or ‘olfactory’ – but occasionally you’ll come across something mysterious and intriguing like ‘Frankensteining’. This term was recently used for the first time by the Court of Gelderland.

To Frankenstein is a verb. Apparently it is also used outside of trademark law to refer to something that can be revived with an electrical charge, as in: “Wait a minute, my phone is empty, I just have to Frankenstein it”. It is certainly a very useful expression. In trademark law, however, the verb refers to the part of Mary Shelley’s story that precedes the electrical charge: the combining of used parts.

Frankensteining may be authorised or unauthorised. The Court of Gelderland’s judgment concerned a dispute between two IT firms, a manufacturer and a middleman. The manufacturer claimed that the middleman had been guilty of parallel imports constituting an infringement; or in other words, the importing of branded products which the trademark owner – the manufacturer – had previously sold outside the protected EU/EEA market.

Their modification of the manufacturers’ servers using illegally imported components constituted the unauthorised Frankensteining of branded products. The manufacturer said that they “have no objection to the modification of servers by, for example, adding extra storage capacity, something that often happens in practice, provided that this does not involve using new or used parts from servers obtained via unauthorised parallel import and that the original serial number is left intact”.

Authorised Frankensteining therefore becomes unauthorised Frankensteining if the parts were obtained illegally, for example, by trademark infringement. (Obviously, in the book and film all the parts were obtained illegally).

This is a curious but beguiling term. It is also eminently applicable to other issues related to trademarks, whether authorised or unauthorised. There have recently been a number of cases, one of which involved Ferrari and the use of spare parts to Frankenstein a ‘dull’ Ferrari to transform it into a more exciting version, and another in which branded drinks were Frankensteined to make mixed drinks. Yet another example is the jackets of fashion designer Duran Lantink, who cuts up unsold clothing from major brands and Frankensteins the pieces into new items of clothing.

Hopefully, this colourful term is here to stay.