cipil, university of cambridge november 18, 2014 protecting mickey mouse and the mona lisa in...
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CIPIL, University of CambridgeNovember 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
public domain of cultural expression
(cultural heritage)
Copyright law: an inspiration system
public domain of distinctive signs
(source identifiers)
Trademark law: a transparency system
static trademark protection vs.
cyclic innovation in copyright
Conflict between the protection systems
• drying-out of sources of inspiration
• monopolisation of building blocks of
new creations
= impediment of the cultural inspiration
cycle
Risks
Balancing tools
signs excluded from protection
protection with limited scope
requirement of distinctiveness as a gatekeeper
• exclusion of signs
• acceptance on certain conditions
• scope of protection
Available balancing tools
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’.
• 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. 6ter PC
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
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)
Further 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)
Need for shape exclusions
Example technical solutions
‘… 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
CJEU, 18 June 2002, case C-299/99, Philips/Remington
• patent protection expired
• reappropriation via trademark law?
Example technical solutions
‘…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)
CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)
Example industrial design
exclusion of substantial value shapes
relevant:
value due to beauty or
attractiveness
irrelevant:
value due to trademark recognition
Benelux Court of Justice, NJ 1989, 834, Burberrys I
‘…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?
CJEU, 20 September 2007, case C-371/06, Benetton/G-Star
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
rationales underlying shape exclusions
competition:
no monopoly on essential product
characteristics
term extension:
no evergreening of rights with limited
period of protection
CJEU, 18 September 2014, case C-205/13, Hauck/Stokke
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)
• copyright protection limited in time
• term extension via trademark law?
• accumulation of rights possible in many cases
Example literary and artistic works
difference
justified
because of
substitutability?
Literary and artistic works
Pierre Bourdieu
Lack of distinctiveness
(conditional acceptance)
secondary meaning
genericism
dilution
(-)
(+)(-)
Different degrees of distinctiveness
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.’
positive image
of cultural
symbols
Risk of free riding
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)
Leaving the issue
to the marketing
efforts of the
industry?
Distinctiveness a sufficient safeguard?
Limited scope of
trademark rights
• 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
Limited scope of trademark protection
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
• ornamental trademark use taking advantage
of the distinctive character of the Milka mark
‘It is calm above the tree
tops/Somewhere a cow is
bellowing/Moo.’
(Rainer Maria Milka)
BGH, 3 February 2005, Lila Postkarte
deterrent effect of
potential trademark
infringement
Impact on cultural productions
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?
• 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
BGH, 3 February 2005, Lila Postkarte
‘It is calm above the tree
tops/Somewhere a cow is
bellowing/Moo.’
(Rainer Maria Milka)
identical signs identical goods or services
adverse effect on one of the
protected trademark functions,
including investment, advertising,
communication
But which parody defence in double identity cases?
Problem solved?
• 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’
Cultural grounds for refusal necessary?
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;...
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)
Broader understanding of shape exclusions?
The end. Thank you!For publications, search for
‘senftleben’ on www.ssrn.com.
contact: [email protected]