CIPIL, University of Cambridge
November 18, 2014
Protecting Mickey Mouse and
the Mona Lisa in Perpetuity?
Prof. Martin Senftleben
VU University Amsterdam
Bird & Bird, The Hague
Contents
• The problem
• Available balancing tools
– Exclusion from protection
– Requirement of distinctive character
– Scope of protection
• Problem solved?
The problem
Copyright law: an inspiration system
public domain of cultural expression
(cultural heritage)
Trademark law: a transparency system
public domain of distinctive signs
(source identifiers)
Conflict between the protection systems
static trademark protection vs.
cyclic innovation in copyright
Risks
• drying-out of sources of inspiration
• monopolisation of building blocks of
new creations
= impediment of the cultural inspiration
cycle
Balancing tools
Available balancing tools
• exclusion of signs
• acceptance on certain conditions
• scope of protection
signs excluded
from protection
protection with
limited scope
requirement of distinctiveness
as a gatekeeper
Exclusion from protection
(unconditional exclusion)
Art. 3(1) TMD
The following shall not be registered or, if
registered, shall be liable to be declared
invalid:
f) trade marks which are contrary to public
policy or to accepted principles of
morality;...
Art. 3(1) TMD
The following shall not be registered or, if
registered, shall be liable to be declared
invalid:
g)trade marks which are of such a nature as
to deceive the public, for instance as to the
nature, quality or geographical origin of the
goods or service;...
Art. 3(1) TMD
The following shall not be registered or, if
registered, shall be liable to be declared
invalid:
h)trade marks which have not been authorised
by the competent authorities and are to be
refused or invalidated pursuant to Article
6ter of the Paris Convention for the
Protection of Industrial Property, hereinafter
referred to as the ‘Paris Convention’.
Art. 6ter PC
• exclusion of armorial bearings, flags, and other
State emblems of Union countries
• exclusion of armorial bearings, flags, other
emblems, abbreviations, and names, of
international intergovernmental organizations
Art. 3(2) TMD
Any Member State may provide that a trade
mark shall not be registered or, if registered,
shall be liable to be declared invalid where
and to the extent that:
c) the trade mark includes badges, emblems
and escutcheons other than those covered
by Article 6ter of the Paris Convention and
which are of public interest...
Extensions possible at the national level
Further exclusions
signs consisting of a shape
• resulting from the nature of the goods
themselves
• necessary to obtain a technical result
• giving substantial value to the goods
(Art. 3(1)(e) TMD)
Need for shape exclusions
• fundamental distinction between the
trademark and the product
• freedom of competition (need to keep
product features free)
• preservation of the public domain (no
conflict with cyclic innovation)
Example technical solutions
CJEU, 18 June 2002, case C-299/99,
Philips/Remington
‘… to prevent trade mark protection from granting
its proprietor a monopoly on technical solutions or
functional characteristics of a product which a user
is likely to seek in the products of competitors.’
(para. 78)
• no monopolisation of decisive product
features
• safeguarding freedom of competition
CJEU, 18 June 2002, case C-299/99,
Philips/Remington
‘In refusing registration of such signs, Article
3(1)(e), second indent, of the Directive reflects
the legitimate aim of not allowing individuals to
use registration of a mark in order to acquire or
perpetuate exclusive rights relating to technical
solutions.’ (para. 82)
• no artifical extension of the term of patent
protection
Example technical solutions
• patent protection expired
• reappropriation via trademark law?
CJEU, 14 September 2010, case C-48/09 P,
Lego/OHIM (Mega Brands)
‘…the prohibition on registration as a trade mark of
any sign consisting of the shape of goods which is
necessary to obtain a technical result ensures that
undertakings may not use trade mark law in order
to perpetuate, indefinitely, exclusive rights relating
to technical solutions.’ (para. 45)
• Lego brick qualified as functional
• shape alternatives not decisive (para. 55)
CJEU, 14 September 2010, case C-48/09 P,
Lego/OHIM (Mega Brands)
• result: technical know-how remains free
after patent expiry
• costs: risk of confusion/unfair free riding?
‘In the present case, it has not been disputed that
the shape of the Lego brick has become distinctive
in consequence of the use which has been made
of it and is therefore a sign capable of
distinguishing the appellant’s goods from others
which have another origin.’ (para. 40)
Example industrial design
Benelux Court of Justice, NJ 1989, 834,
Burberrys I
exclusion of substantial
value shapes
relevant:
irrelevant:
value due to
beauty or
attractiveness
value due to
trademark
recognition
CJEU, 20 September 2007, case C-371/06,
Benetton/G-Star
‘…the shape of a product which gives substantial
value to that product cannot constitute a trade mark
[…] where, prior to the application for registration, it
acquired attractiveness as a result of its recognition
as a distinctive sign following advertising campaigns
presenting the specific characteristics of the product
in question.’ (para. 28)
• traditional Benelux distinction overruled?
General Court, 6 October 2011,
case T-508/08, Bang & Olufson
General Court, 6 October 2011,
case T-508/08, Bang & Olufson
• need to prevent monopoly also in the case
of substantial value shapes
‘Like the ground for refusal to register that applies
to the shapes of goods which are necessary to
obtain a technical result, the ground that concerns
refusal to register signs consisting exclusively of
shapes which give substantial value to the goods
is to prevent the granting of a monopoly on those
shapes.’ (para. 66)
General Court, 6 October 2011,
case T-508/08, Bang & Olufson
• this need arises in particular in the case
of specific design
‘Indeed, the shape for which registration was
sought reveals a very specific design and the
applicant itself admits [...] that that design is an
essential element of its branding and increases
the appeal of the product at issue, that is to say,
its value.’ (para. 74)
General Court, 6 October 2011,
case T-508/08, Bang & Olufson
• this need arises in particular in the case of
specific design
‘Furthermore, it is apparent [...] that the aesthetic
characteristics of that shape are emphasised first
and that the shape is perceived as a kind of pure,
slender, timeless sculpture for music reproduction,
which makes it an important selling point.’
(para. 75)
CJEU, 18 September 2014, case C-205/13,
Hauck/Stokke
CJEU, 18 September 2014, case C-205/13,
Hauck/Stokke
rationales underlying
shape exclusions
competition:
term extension:
no monopoly on
essential product
characteristics
no evergreening of
rights with limited
period of protection
CJEU, 18 September 2014, case C-205/13,
Hauck/Stokke
• need to safeguard competition in case of
shape resulting from nature of the goods
• not only when indispensable (natural and
regulated products) but also when inherent
to the generic function
‘…that shapes with essential characteristics which
are inherent to the generic function or functions of
such goods must, in principle, also be denied
registration.’ (para. 25)
CJEU, 18 September 2014, case C-205/13,
Hauck/Stokke
• no artificial extension of limited protection
in the case of substantial value shapes
• catalogue of essential characteristics
– nature of the category of goods concerned
– artistic value of the shape in question
– dissimilarity from other shapes on the market
– substantial price difference
– promotion strategy accentuating aesthetic
characteristics (para. 35)
Example literary and artistic works
• copyright protection limited in time
• term extension via trademark law?
• accumulation of rights possible in many cases
Literary and artistic works
difference
justified
because of
substitutability?
Pierre Bourdieu
Lack of distinctiveness
(conditional acceptance)
Different degrees of distinctiveness
(-)
(+)
(-)
genericism
secondary meaning
dilution
Art. 3(1) TMD
The following shall not be registered or, if
registered, shall be liable to be declared
invalid:
b)trade marks which are devoid of any
distinctive character;...
Art. 3(1) TMD
The following shall not be registered or, if
registered, shall be liable to be declared
invalid:
c) trade marks which consist exclusively of
signs or indications which may serve, in
trade, to designate the kind, quality, quantity,
intended purpose, value, geographical origin,
or the time of production of the goods or of
rendering of the service, or other
characteristics of the goods or services;...
Art. 3(1) TMD
The following shall not be registered or, if
registered, shall be liable to be declared
invalid:
d)trade marks which consist exclusively of
signs or indications which have become
customary in the current language or in the
bona fide and established practices of the
trade;...
Art. 3(3) TMD
• in these cases, the exclusion from trademark
protection is less absolute
• backdoor: acquisition of distinctive character
in consequence of use in trade
‘A trade mark shall not be refused registration or be
declared invalid in accordance with paragraph 1(b),
(c) or (d) if, before the date of application for
registration and following the use which has been
made of it, it has acquired a distinctive character.’
Attempts to
register
cultural
heritage
signs
Risk of free riding
positive image
of cultural
symbols
Federal Patent Court of Germany,
25 November 1997, ‘Mona Lisa’
• The Mona Lisa is not
distinctive.
• The Mona Lisa has
become customary in
trade practices.
• But there is no conflict
with morality or public
order.
Guernica for weapons?
• distinctive?
• customary in trade practices?
Solveig’s song for beer?
• distinctive?
• customary in trade practices?
CJEU, C-283/01, Shield Mark/Kist
‘I find it more difficult to accept […] that a creation of
the mind, which forms part of the universal cultural
heritage, should be appropriated indefinitely by a
person to be used on the market in order to distinguish
the goods he produces or the services he provides with
an exclusivity which not even its author's estate enjoys.’
(Opinion A-G Colomer, 3 April 2003, para. 52)
Distinctiveness a sufficient safeguard?
Leaving the issue
to the marketing
efforts of the
industry?
Limited scope of
trademark rights
Limited scope of trademark protection
• principle of specialty (protection relating to
specific goods/services)
• notion of trademark use
– mere references to the trademark sufficient?
– cultural, political, religious, educational context
• but enhanced protection of well-known
marks
– may cover all kinds of goods and services
– proof of confusion not necessarily required
Broad notion of trademark use
• ECJ, C-63/97, BMW/Deenik
• ECJ, C-48/05, Adam/Autec
• ECJ, C-17/06, Céline
• ECJ, C-533/06, O2/Hutchison
• structural incentive: no harmonisation under
Art. 5(5) of the Trade Mark Directive
BGH, 3 February 2005, Lila Postkarte
‘It is calm above the tree
tops/Somewhere a cow is
bellowing/Moo.’
(Rainer Maria Milka)
• ornamental trademark use taking advantage
of the distinctive character of the Milka mark
Impact on cultural productions
deterrent effect of
potential trademark
infringement
Louis Vuitton v. Nadia Plesner
Plesner: Darfurnica (2010)
Low threshold of becoming well-known
• criterion: knowledge/recognition of the
mark amongst the public
• US: famous marks, niche fame (-)
• EU: marks having a reputation,
niche reputation (+)
Exceptions as a way out?
BGH, 3 February 2005, Lila Postkarte
‘It is calm above the tree
tops/Somewhere a cow is
bellowing/Moo.’
(Rainer Maria Milka)
• ornamental trademark use taking advantage
of the distinctive character of the Milka mark
• with due cause as it is justified by the
constitutional guarantee of freedom of arts
But which parody defence in
double identity cases?
identical signs
identical goods
or services
adverse effect on one of the
protected trademark functions,
including investment, advertising,
communication
Problem solved?
Cultural grounds for refusal necessary?
• risk of privatising (re-monopolising) parts
of the cultural heritage
• undesirable redefinition of important
cultural expressions in commerce
• free riding on the status, reputation and
favourable image of cultural expressions
• discouragement of ‘cultural heritage
grabbing’
Art. 3(2) TMD
Any Member State may provide that a trade
mark shall not be registered or, if registered,
shall be liable to be declared invalid where
and to the extent that:
b)the trade mark covers a sign of high
symbolic value, in particular a religious
symbol;...
Broader understanding of shape
exclusions?
signs consisting of a shape
• resulting from the nature of the goods
themselves
• necessary to obtain a technical result
• giving substantial value to the goods
(Art. 3(1)(e) TMD)
The end. Thank you!
For publications, search for
‘senftleben’ on www.ssrn.com.
contact: m.r.f.senftleben@vu.nl