Vigeland and the Status of Cultural Concerns in Trade Mark Law – The EFTA Court Develops More Effective Tools for the Preservation of the Public Domain
Vigeland and the Status of Cultural Concerns in Trade Mark Law - The EFTA Court Develops More Effective Tools for the Preservation of the Public Domain
Martin Senftleben 0
0 M. Senftleben (&) Ph.D.; Professor of Intellectual Property and Director, Kooijmans Institute for Law and Governance, Vrije Universiteit Amsterdam; of Counsel, Bird & Bird , (The Hague , The Netherlands), Amsterdam , The Netherlands
The Vigeland decision of the EFTA Court is a milestone in the preservation of the public domain of cultural creations. It paves the way for an important and welcome recalibration of the copyright/trade mark interface. The Court departs from the traditional approach which relies on non-distinctiveness, descriptiveness or genericness to reject trade mark rights. Instead, the Court provides exemplary lines of argument for the application of considerations of public policy and principles of morality as grounds for refusal. As a refusal based on these grounds cannot be overcome through use in trade, this rejection of a registration request leads to an outright exclusion from trade mark protection and a robust preservation of a work's public domain status. National offices and courts should follow in the footsteps of the EFTA Court to avoid that trade mark law provides dysfunctional incentives for the re-privatization of cultural public domain material. In this way, they can also avoid that public money is wasted on the acquisition and maintenance of a costly trade mark portfolio relating to artworks.
Public domain preservation; Copyright/trade mark interface; Grounds for refusal; Public policy; Accepted principles of morality; Functionality doctrine
1 The Vigeland Case
In the Vigeland case,1 the Court of Justice of the European Free Trade Association
States (hereinafter EFTA Court) was called upon to assess an attempt to register
several artworks made by Gustav Vigeland – one of the most eminent Norwegian
sculptors – as trade marks. The reason for the initiative to acquire trade mark rights
was the expiry of the term of copyright protection.2 The prejudicial questions came
from the Norwegian Board of Appeal for Industrial Property Rights. The Board of
Appeal was wondering about the application of several grounds for refusal in this
case.3 Among other works, the underlying trade mark application concerned
Vigeland’s ‘‘Monolith’’ (Monolitten) and ‘‘Angry Boy’’ (Sinnataggen) – popular
works which feature prominently in the Vigeland Installation in the centre of Oslo’s
Frogner Park. Interestingly, the registration initiative was not taken by a trade mark
‘‘troll’’ seeking to obtain rights to popular artistic works for the sole purpose of
threatening users with infringement claims and pressing for excessive licence fees
without any intention to make genuine use of the works itself.4
By contrast, the trade mark application was filed by the Municipality of Oslo. In
respect of this remarkable step, the Municipality submitted arguments to the EFTA
Court which are derived from a distinction between Vigeland’s artistic work on the
one hand, and Oslo’s commercial marketing efforts on the other. In particular, the
city argued that ‘‘[a]ll of the shapes have been exclusively connected to, and used by
or through, the Municipality since the death of Gustav Vigeland in 1943. Many of
these shapes are well known and valuable, in particular, due to the efforts and
investments made by the Municipality.’’5
Hence it seems that from the perspective of the Municipality of Oslo, the rights to
Vigeland’s works ought to be due to the city – even after copyright expiry – because of
the efforts made to ensure that the works became well known. Oslo stated that against
this background no other entity could have justifiable interests in the commercial
exploitation of Vigeland’s works.6 The Municipality also pointed out that it had
specifically been chosen by Gustav Vigeland to administer and safeguard his artistic
reputation and memory.7 Nonetheless, considerations of art custodianship, such as the
need to preserve the genuine cultural meaning of Vigeland’s works by preventing third
1 EFTA Court, 6 April 2017, Case E-5/16, Municipality of Oslo (‘‘Vigeland’’); for the headnotes to this
decision see this issue of IIC at doi:10.1007/s40319-017-0629-3.
2 EFTA Court, ibid., para. 20. Gustav Vigeland died on 12 March 1943.
3 EFTA Court, ibid., paras. 28–30.
4 For a case that has arisen from this practice, see Dresden Court of Appeal, 4 April 2000, case 14 U
3611/99, ‘‘Johann Sebastian Bach’’, in: Neue Juristische Wochenschrift 2001, p. 615. The case concerned
the registration of the name and portrait of Johann Sebastian Bach as a trade mark for various goods and
services, including glassware, porcelain and crockery. While the trade mark proprietor had not
commenced using the sign himself, he systematically asserted his trade mark rights against users referring
to Johann Sebastian Bach. Cf. the background information given by
, p. 615.
5 Report for the Hearing, Judge-Rapporteur Baudenbacher, 5 October 2016, case E-5/16, Municipality of
Oslo (‘‘Vigeland’’), para. 32.
6 Report for the Hearing, ibid., para. 36.
7 Report for the Hearing, ibid., para. 36.
parties from attaching undesirable commercial connotations, did not play a central role
in the submission to the EFTA Court.8 Instead, the Municipality insisted that ‘‘it should
be assessed whether the value and fame of the work are related to characteristics and
qualities of the artwork alone, or if the value and renown may be attributed to
investments and efforts made by the Municipality.’’9
With this strategy, the city of Oslo had little success in its own country. The
Norwegian Industrial Property Office remained unimpressed and refused the trade
mark application on the grounds that Vigeland’s works were non-distinctive,
descriptive and functional. The shape of the works added substantial value to at least
some of the goods, in respect of which registration was sought.10 Instead of
dispelling these concerns, the Board of Appeal decided to supplement the list of
grounds for refusal with a further counterargument. It expressed the view that a
trade mark registration of works belonging to the cultural heritage may be contrary
to public policy or accepted principles of morality, and wondered which factors
should inform the decision on these grounds for refusal.11
Apart from this central point (which is the focus of the following discussion in
Sects. 2–5), the Board of Appeal asked whether the statutory exclusion of
substantial value shapes was applicable to two-dimensional representations of
sculptures, and how the distinctiveness of two- or three-dimensional representations
of sculptures should be assessed. These latter points will be revisited in Sect. 6
before drawing conclusions in Sect. 7.
2 Acceptance of Simultaneous and Subsequent Trade Mark Protection
Before turning to the decision of the EFTA Court, it is important to note that the
approach advocated by the Municipality of Oslo reflects the traditional carelessness
vis-a`-vis cultural concerns that often comes to the fore in decisions on cumulative
copyright and trade mark protection. While the functionality doctrine in EU trade
mark law prevents overlaps between patent and trade mark protection12 and ensures
a far-reaching separation of industrial designs and trade mark protection,13 a
comparably strong mechanism for policing the border between copyright and trade
mark protection has not evolved yet.14
On the contrary, the cumulation of copyright and trade mark protection is often
deemed unproblematic even though copyright law, as patent and industrial design
legislation, only offers a limited period of protection and rests on a clear quid pro quo:
in return for the grant of protection, the legislator expects an enrichment of the public
domain at the end of the term of copyright protection. Evidently, the acceptance of
8 Report for the Hearing, ibid., paras. 31–42.
9 Report for the Hearing, ibid., para. 37.
10 EFTA Court, 6 April 2017, case E-5/16, Municipality of Oslo (‘‘Vigeland’’), para. 27.
11 EFTA Court, ibid., paras. 28–30.
12 CJEU, 18 June 2002, case C-299/99, Philips/Remington, para. 82.
13 CJEU, 18 September 2014, case C-205/13, Hauck/Stokke, paras. 19–20.
a), pp. 814–817.
cumulative trade mark protection compromises this copyright policy because trade
mark law offers the option of indefinitely renewable rights. The Court of Justice of the
European Union (CJEU) is well aware of this dilemma. In Philips/Remington
(concerning the patent/trade mark interface), the CJEU already referred to the
‘‘legitimate aim of not allowing individuals to use the registration of a mark in order to
acquire or perpetuate exclusive rights relating to technical solutions.’’15 In Hauck/
Stokke (addressing the industrial designs/trade mark interface), the Court, even more
broadly, recognized the objective ‘‘to prevent the exclusive and permanent right which
a trade mark confers from serving to extend indefinitely the life of other rights which
the EU legislature has sought to make subject to limited periods.’’16
As explained, copyright is such a right with a limited period. To date, however,
the CJEU has not had the opportunity to invoke this line of reasoning to regulate the
relationship between copyright and trade mark protection. The General Court of the
European Union (GCEU) approached the question in the traditional, schematic way
in Danjaq/OHIM (Mission Productions). The case concerned an opposition brought
by Danjaq against Mission Production’s attempt to register the sign ‘‘Dr. No’’ – the
title of the first James Bond film and the name of James Bond’s antagonist – as a
trade mark. Commenting on the possibility of copyright/trade mark overlaps in this
context, the Court pointed out that
[t]he same sign may be protected as an original creative work by copyright and
as an indicator of commercial origin by trade mark law. It is therefore a matter
of different exclusive rights based on distinct qualities, that is to say the
original nature of a creation, on the one hand, and the ability of a sign to
distinguish the commercial origin of the goods and services, on the other.17
Hence, the Court readily accepted the protection overlap on the ground that trade mark
rights do not offer protection for a cultural creation as such, but only for certain functions
which the cultural creation fulfils as a distinctive sign in respect of goods and services to
which it is attached.18 In this vein, the Court stated that ‘‘only signs which develop
characteristic trade mark functions’’19 were eligible for trade mark protection. It rejected
trade mark rights to ‘‘Dr. No’’ because the sign would be perceived as a mere descriptive
reference to the film and not as an identifier of commercial source.20 Nonetheless, the
decision confirms the possibility of combining copyright and trade mark protection in
cases where a literary or artistic work also functions as a distinctive sign.
Similar considerations play a role in national court decisions. The Dutch
Supreme Court, for instance, traditionally permits the cumulative assertion of
copyright and trade mark claims.21 In recent decisions, the Court added that a holder
15 CJEU, 18 June 2002, case C-299/99, Philips/Remington, para. 82.
16 CJEU, 18 September 2014, case C-205/13, Hauck/Stokke, paras. 19–20.
17 GCEU, 30 June 2009, case T-435/05, Danjaq/OHIM (Mission Productions), para. 26.
, pp. 1090–1091 and
, pp. 111–113.
19 GCEU, ibid., para. 26.
20 GCEU, ibid., paras. 25–28.
21 Dutch Supreme Court, 16 April 1999, case number 9098 (R97/163HR), in: Nederlandse Jurisprudentie
1999, No. 697, Bigott-Batco/Doucal, para. 3.9. Cf.
Cohen Jehoram et al. (2010
), p. 556.
of rights under trade mark and copyright law could invoke both rights
simultaneously only if he had a distinct interest in the protection following from each
individual right.22 However, this additional condition need not constitute a
substantial hurdle. If the cumulation of rights is accepted on the ground that
copyright protects a cultural creation as such, whereas trade mark law protects
specific trade mark functions, it is easy to justify the assertion of trade mark rights
by pointing to the interest in preserving the trade mark features of the intellectual
creation concerned.23 The Dutch Supreme Court relied on similar considerations to
explain the acceptance of combined copyright and trade mark claims.24
The result is a rather low, if not negligible, threshold for the cumulation of
copyright and trade mark protection. If the difference between the purpose and
configuration of the two protection regimes is already sufficient to justify
overlapping rights, there seems to be no substantial obstacle to the assertion of
cumulative protection in case of subject matter capable of constituting both an
original work and a trade mark. In any case, courts do not seem hesitant to hear
claims based on cumulative copyright and trade mark protection. Without CJEU
decisions that curtail rights cumulation practices, judges are free to develop rather
elastic tests of eligibility for a combined claim, such as the test of ‘‘different
exclusive rights based on distinct qualities’’ used by the GCEU or the ‘‘distinct
interest in protection’’ requirement introduced by the Dutch Supreme Court.
The Vigeland case clearly shows the potentially corrosive effect of this approach
on the public domain of cultural creations. Strictly speaking, the situation that gave
rise to the prejudicial questions differed markedly from typical cumulation cases.
While the combination of copyright and trade mark rights has become a standard
strategy in the area of character merchandising (leading to simultaneous trade mark
protection and ‘‘true’’ cumulation of copyright and trade mark rights),25 it has not
become a widespread practice in the field of cultural heritage signs belonging to the
public domain (characterized by an attempt to obtain subsequent trade mark
protection after the expiry of copyright or in respect of cultural heritage material
that is older than any copyright statute).26 Until now, artists seeking to create new
22 Dutch Supreme Court, 8 September 2006, case LJN AV3384, Benetton/G-Star, para. 3.11. Cf.
, pp. 80–83.
, pp. 1090–1091 and
, pp. 111–113.
24 Dutch Supreme Court, 8 September 2006, case LJN AV3384, Benetton/G-Star, para. 3.11.
a), pp. 29–30. Examples can easily be found in trade mark registers. As to Mickey
Mouse, see http://www.wipo.int/romarin for the international registration No. 296478. As to Superman,
see https://register.dpma.de/DPMAregister/marke/einsteiger?lang=en for the German registration
DD643100. As to Miffy, see https://register.boip.int/bmbonline/intro/show.do for the Benelux registration
26 This is not to say that registrations of cultural heritage signs have not taken place at all; see Bugdahl
(2010), pp. 372–373. The central point is, however, that this has not yet become a standard practice in
respect of artworks in the public domain. For examples of registrations relating to the names of artists
(rather than their works), see CTM 001081314, BEETHOVEN; CTM 000945774, DESCARTES; CTM
001593128, ALBERT EINSTEIN; CTM 003805942, GOETHE; IR 0858800, HENRIK IBSEN; CTM
001358621, VINCENT VAN GOGH; CTM 005468996, MONA LISA; CTM 000021071 MOZART;
CTM 001334036, PICASSO; CTM 000119354, REMBRANDT; CTM 004278214, SHAKESPEARE;
CTM 003877354, GIUSEPPE VERDI; CTM 000047365, VERMEER; CTM 000996199, LEONARDO
DA VINCI; CTM 003437811, ANDY WARHOL.
literary and artistic works on the basis of public domain works are not regularly
confronted with trade mark infringement claims.
With the approach taken by the Municipality of Oslo, however, this status quo
could change soon. On its merits, the Municipality adopts the argument of
‘‘different exclusive rights based on distinct qualities’’ which is known from
character merchandising, and extends this approach to public domain works. As
explained, Oslo’s core argument is the effort made to enhance the reputation of
Vigeland’s works. According to the city, the commercial ‘‘value and renown’’
which Vigeland’s works enjoy, are attributable to investments and efforts made by
the Municipality.27 To obtain trade mark protection, the city of Oslo thus seeks to
separate artistic merit (the copyright aspect) from commercial selling power (the
trade mark aspect). As, in the city’s view, the latter aspect of Vigeland’s works is
due to Oslo’s marketing efforts, the intellectual property right relating to this aspect
– namely the trade mark right – must also be due to the city. Following this
approach, the schematic distinction between ‘‘different exclusive rights based on
distinct qualities’’ thus serves as a vehicle to re-appropriate artworks which have
already entered the public domain.
Admittedly, the Municipality of Oslo seems unlikely to behave like a typical cultural
heritage ‘‘grabber’’ or trade mark ‘‘troll’’. If, however, Oslo manages to register Vigeland’s
works as trade marks, this success may serve as an example for similar initiatives by
various other players. As an element of museum, city, region or nation branding,28 public
institutions ranging from museums to governments may seek trade mark protection for
artworks. In parallel, private enterprises could invest in cultural heritage signs with
favourable cultural connotations as part of their brand development strategy.
In consequence, the conditions surrounding the creation of derivative works would
change significantly. The use of cultural heritage works that have entered the public
domain would no longer be as free as it was in the past. Currently, artists can rely on
freedom of use when they base their creations on public domain works. As long as
public domain material remains unencumbered with intellectual property rights, the
risk of a lawsuit arising from unauthorized use can be excluded from the outset. With
the registration of cultural symbols as trade marks, this freedom is sacrificed in favour
of a scenario in which trade mark rights can serve as a basis for an infringement action.
If commercial entities and other public bodies follow Oslo’s example and start
investing in public domain works in order to acquire trade mark rights, the climate
change in respect of reuse and remix of cultural heritage material will be considerable.
In addition, the Vigeland case raises the question whether public money that is
invested in the acquisition and maintenance of a portfolio of trade-marked artworks
is well spent. The acquisition of trade mark rights requires investment in campaigns
that educate consumers to perceive the sign not only as an artwork but also as an
27 Report for the Hearing, Judge-Rapporteur Baudenbacher, 5 October 2016, case E-5/16, Municipality
of Oslo (‘‘Vigeland’’), para. 37.
28 For an example of such an initiative taken by the State of Bavaria in respect of Neuschwanstein Castle,
see the pending case before the CJEU, case C-488/16 P, Bundesverband Souvenir-
GeschenkeEhrenpreise/EUIPO (Neuschwanstein), which evolved from an appeal against the confirmation of trade
mark rights in GCEU, 5 July 2016, case T-167/15, Bundesverband Souvenir- Geschenke- Ehrenpreise/
identifier of commercial source. The maintenance of trade mark rights requires
genuine use of the artworks in the sense of trade mark law – use to create or
preserve an outlet for goods or services.29 Arguably, public bodies, in particular
museums and other cultural heritage institutions, contribute to the preservation of
cultural artefacts and support an open and well-informed communication process in
respect of artworks in a much more efficient way when they focus on their primary
tasks instead of becoming trade mark portfolio managers.
Finally, the prospect of public institutions enforcing trade mark rights that relate to
artworks gives rise to concerns about censorship. Intentionally or unintentionally, the
Municipality of Oslo may bring trade mark claims against those forms of unauthorized
use which, from its point of view, denigrate Vigeland’s works (and, therefore, damage
the reputation of its trade marks), whereas it may refrain from taking action against
artists who comply with its own understanding of the message and meaning of the
artworks (and, thus, are no threat to the ‘‘value and renown’’ of the trade marks).
3 Reliance on Checks and Balances in Trade Mark Law
Oslo’s plan to register several Vigeland masterpieces is not the first trade mark
registration initiative relating to cultural material that has given rise to these, or
similar, concerns. Posing its prejudicial questions, the Board of Appeal referred to
the CJEU case Shield Mark which concerned an attempt to register, among other
signs, the first nine notes of Beethoven’s piano piece ‘‘Fu¨ r Elise’’.30 Discussing the
registration of this melody, Advocate General Ruiz-Ja´rabo Colomer explicitly
addressed the public domain dimension of the case. He expressed the view that it
was 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.31
Concerns about the re-appropriation of cultural heritage material on the basis of
trade mark law have thus been expressed earlier at the EU level. Nonetheless, it
seems that there is still broad support for cumulative copyright and trade mark
3.1 Statements in Literature
In literature, a rather uncritical view seems to prevail. The possibility of combining
copyright and trade mark protection is often mentioned without much commentary
29 CJEU, 11 March 2003, case C-40/01, Ajax/Ansul, paras. 36 and 43. Cf.
Kur and Senftleben (2017)
30 EFTA Court, 6 April 2017, case E-5/16, Municipality of Oslo (‘‘Vigeland’’), para. 30.
31 Opinion of Advocate General Ruiz-Ja´rabo Colomer, 3 April 2003, case C-283/01, Shield Mark/Kist,
on the potential risks for cultural follow-on innovation, or is accepted on the ground
that trade mark rights do not offer protection for a cultural creation as such, but only
for certain functions which the cultural creation fulfils as a distinctive sign in respect
of goods and services to which it is attached.32 Arguing in favour of an entitlement
of rights owners to accumulate copyright and trade mark protection, Tobias Cohen
Jehoram, Constant van Nispen and Tony Huydecoper posit that
[i]n principle, there is no objection against cumulation or concurrence of
trademark rights and copyrights and the benefits of the two protection regimes
exist independently for the two rights. The proprietor of these rights satisfied
all requirements stipulated by the different laws, so that there is no reason to
limit the protection under one of the legal regimes for the sole reason that
another legal protection exists.33
Besides this maximalist view which readily accepts the cumulation of rights as a
corollary of formal eligibility for protection under copyright and trade mark law,
more nuanced approaches have also evolved in the debate. Annette Kur pointed out
that the cumulation of different intellectual property rights was only unproblematic
as long as the individual protection regimes involved were balanced in the sense that
the prerequisites for obtaining protection were appropriately aligned with the
contents and limits of exclusive rights.34 Cumulation thus required a thorough
scrutiny in the light of the checks and balances offered by the protection regimes
involved. If these checks and balances are sufficient to prevent excessive protection
that obstructs competition, the cumulation of copyright and trade mark rights is
acceptable.35 Otherwise, however, overlapping protection raises the problem of
‘‘asymmetric convergence’’ and requires appropriate countermeasures.36
Turning to the spectrum of critical statements, the position taken by Feer Verkade is of
particular interest. He expressed concerns about the corrosive effect of overlapping
protection on the individual balance and structure of copyright and trade mark law. Instead
of affording rights owners the opportunity to always enjoy the ‘‘best of both worlds’’, they
should be bound to accept the ‘‘one world’’ offered by each individual law.37 Hence,
potentially indefinite trade mark protection should not be available as a vehicle to
undermine the limited term of copyright protection and the absence of formalities in
copyright law should not allow the circumvention of the registration requirement in
(Benelux) trade mark law.38 Seeking to prevent one protection regime from blurring the
conceptual contours of the other, Verkade proposes to determine on a case-by-case basis
whether the trade mark or copyright aspect takes precedence.39 Following this approach, a
, pp. 1090–1091 and
, pp. 111–113.
33 Cohen Jehoram, van Nispen and Huydecoper 2010, p. 556.
, pp. 45 and 50. Cf.
, p. 9.
, p. 44.
, pp. 42–44; see also the analysis conducted by
, p. 774, who arrives at a
, p. 72.
, p. 72.
, p. 73.
rights owner would thus be prevented from asserting copyright and trade mark protection
cumulatively even if the intellectual creation concerned is eligible for protection under
both regimes. After the expiry of copyright protection, the fact that the work has entered
the public domain in accordance with the copyright rule of a limited term of protection
constitutes a factor weighing against ‘‘precedence’’ of trade mark protection – at least in
case of genuine cultural expressions, such as ‘‘Dik Trom’’, the main character and title of a
famous Dutch children’s book series.40
The critical comments on trade mark/copyright overlaps, finally, comprise
proposals seeking to eliminate cumulative copyright and trade mark protection for
literary and artistic works altogether. A categorical rejection of the cumulation of
rights can result from a strong preference for freedom of competition based on the
public interest in the optimal use of intellectual resources and the encouragement of
follow-on innovation after the expiry of the limited term of copyright protection.41
If the constant enrichment and cultivation of the public domain is qualified as an
element of the ordre public, an amalgam of copyright and trade mark rights which
allows the continuation of trade mark protection after copyright expiry can also be
deemed impermissible because it withholds literary and artistic works from the
public domain and causes a conflict with public order and morality for this reason.42
3.2 Approach Taken in Practice
In practice, however, the courts seem reluctant to adopt positions leading to the full
separation of copyright and trade mark protection.43 Even nuanced approaches, such
as Verkade’s proposal to determine the predominant protection aspect case-by-case,
have not made their way into court decisions. Instead, judges seem to favour the
rather uncritical attitude vis-a`-vis cumulative copyright and trade mark protection
that comes to the fore in many literature statements. The aforementioned GCEU
decision in Danjaq/OHIM (Mission Productions) clearly follows this approach.44
Hence, the question arises why – despite concerns about the re-privatization of
cultural heritage material and an impoverishment of the public domain of cultural
expression – the copyright/trade mark interface has not been recalibrated yet. On the
basis of Annette Kur’s assessment of the overlap problem,45 it may be said that, to
this day, judges seem to be confident that they can solve cases concerning
cumulative copyright/trade mark protection satisfactorily by employing the tools
available in the respective protection regimes.46 More concretely, they seem to
assume that the checks and balances in trade mark law are sufficient to prevent an
encroachment upon the public domain of cultural expression.
, p. 73.
, pp. 120–122 and 199–201.
Van Woensel (2007
), pp. 412–413;
Klinkert and Schwab (1999)
, p. 1073;
, p. 391
, pp. 102–103.
a), pp. 28–30.
44 GCEU, 30 June 2009, case T-435/05, Danjaq/OHIM (Mission Productions), para. 26.
45 Kur (2001), pp. 45 and 50.
46 See also ECS (2017), pp. 458–459, summarizing this practical approach.
Unfortunately, the ‘‘Fu¨ r Elise’’ application underlying the Shield Mark case did
not culminate in a CJEU statement addressing this point. The application for
registration was a test case seeking to explore the elasticity of the requirement of
graphical representation in the case of sound marks. Accordingly, the Court did not
discuss the validity of the policy argument advanced by Advocate General
RuizJa´rabo Colomer. Instead, it only clarified the practical point that, in the case of a
melody, the requirement of graphical representation could be satisfied by providing
standard musical notation.47 In its request for a prejudicial ruling in the Vigeland
case, the Norwegian Board of Appeal also mentioned the German Mona Lisa case
which concerned an attempt to register the famous da Vinci painting as a trade
mark.48 In this case, the traditional reliance on standard checks and balances of the
trade mark system clearly comes to the fore.
3.3 No Registration Because of Lack of Distinctiveness
Rejecting the Mona Lisa application, the German Federal Patent Court held that the
applicant had failed to establish the requisite distinctiveness. Because the painting was
frequently used by third parties in advertising, the public would regard the Mona Lisa as
a mere advertising instrument rather than as an indication of source.49 The Court also
held that, because of the frequent use in advertising, the painting had become customary
in established trade practices.50 However, the Court was unwilling to accept the further
argument that registration of the Mona Lisa was contrary to public policy or accepted
principles of morality. In the Court’s view, the appropriation of the Mona Lisa on the
basis of trade mark law would not violate the principle that cultural expressions should
remain freely available for the public after the expiry of copyright protection.51
Instead of openly addressing the cultural dimension of the trade mark application,
the German Federal Patent Court thus relied exclusively on the basic trade mark
requirement of distinctiveness. As a result, the decision seems detached from the core
problem of the case. The solution based on a lack of distinctiveness precludes a
meaningful discussion of the potential erosion of the freedom of using public domain
works without any fear of exposure to a trade mark infringement action. It also
precludes a discussion of the intention underlying the attempt to register the Mona
Lisa. The trader filing the application may seek to exploit the positive cultural
connotations and the popularity of the sign which is the result of its status in the cultural
domain. This may lead to an unfair commercial advantage and be qualified as unfair
free-riding in comparison with the efforts to be undertaken by other traders who must
develop the reputation of their trade marks ‘‘from scratch’’.
47 CJEU, 27 November 2003, case C-283/01, Shield Mark/Kist, para. 64.
48 EFTA Court, 6 April 2017, case E-5/16, Municipality of Oslo (‘‘Vigeland’’), para. 29.
49 German Federal Patent Court, 25 November 1997, case 24 W (pat) 188/96, Mona Lisa, in:
Gewerblicher Rechtsschutz und Urheberrecht 1998, pp. 1022.
50 German Federal Patent Court, ibid., 1023. For case comments, see
, pp. 102–104,
, p. 5,
Klinkert and Schwab (1999)
, p. 1067 and
51 German Federal Patent Court, ibid., 1023.
The basic requirement of distinctiveness is not the only feature of trade mark law
that is often presented as a sufficient safeguard against undesirable copyright/trade
mark overlaps. While the requirement of distinctiveness fulfils a gatekeeper
function and has the potential to prevent the acquisition of trade mark rights as long
as it is not overcome through use in trade,52 other checks and balances in trade mark
law concern the infringement criteria and the catalogue of limitations of the
exclusive rights enjoyed by the trade mark owner.
3.4 No Confusion Because of Cultural Significance
In the context of the infringement analysis, a sign’s cultural significance can tip the
scales against a finding of a likelihood of confusion. This became apparent in
Picasso/Picaro where the CJEU had to decide on an opposition against Daimler’s
application for registration of the sign PICARO for vehicles. The opposition had
been lodged by the Picasso estate arguing that PICARO was likely to cause
confusion with the earlier word mark PICASSO, which it had registered for various
goods, including vehicles.53 Discussing the criteria for a finding of a likelihood of
confusion in this context, the CJEU confirmed the first instance decision that in this
particular case, conceptual differences between the PICASSO mark and the
PICARO sign counteracted the low degree of visual and phonetic similarity.54
Conceptual differences could have this mitigating effect in cases where the meaning
of at least one of the two signs was ‘‘clear and specific’’ so that the relevant public
could grasp it immediately.55 As to the meaning of the PICASSO mark, the CJEU
recalled the factual assessment of the first instance court which had found that
confronted with the word sign PICASSO, the relevant public inevitably sees in
it a reference to the painter and that, given the painter’s renown with that
public, that particularly rich conceptual reference is such as greatly to reduce
the resonance with which, in this case, the sign is endowed as a mark, among
others, of motor vehicles.56
Hence, the fact that the name ‘‘Picasso’’ is well known as a reference to the
famous painter does not imply that the trade mark PICASSO is highly distinctive
and enjoys broad protection against confusion.57 The painter’s fame cannot simply
be transferred to the trade mark as an identifier of commercial source. By contrast,
the well-known cultural meaning of the sign reduces the risk of confusion because
its immediate impact on the perception of the public may outweigh visual and/or
aural similarities. A sign with a strong cultural connotation may thus constitute a
weak trade mark. In such a case, the scope of trade mark protection will remain
52 Article 3(3) former Trade Mark Directive 2008/95; Art. 4(4) new Trade Mark Directive 2015/2436.
53 CJEU, 12 January 2006, case C-361/04P, Picasso/Picaro, paras. 5–6.
54 CJEU, ibid., para. 20.
55 CJEU, ibid., para. 20.
56 CJEU, ibid., para. 27.
57 As to the rejection of this counterargument advanced by the Picasso estate, see CJEU, ibid., paras. 11
limited until use of the sign as a trade mark also becomes known to such an extent
that the commercial function of indicating the origin of goods and services becomes
strong enough to play an independent role besides the sign’s original cultural
3.5 Limitations Supporting Freedom of Expression
Considering the statutory limitations of trade mark rights, it is finally to be conceded
that even if prima facie infringement is found, use of trade-marked cultural material
may still be found permissible in the light of the defences of ‘‘due cause’’59 or
‘‘referential use’’.60 The case Lila Postkarte of the German Federal Supreme Court,
for example, concerned the marketing of postcards that alluded ironically to trade
marks and advertising campaigns of the chocolate producer Milka.61 On purple
background corresponding to Milka’s abstract colour mark, the postcard sought to
ridicule the nature idyll with cows and mountains that is evoked in Milka
advertising.62 It showed the following poem attributed to ‘‘Rainer Maria Milka’’:
‘‘U¨ ber allen Wipfeln ist Ruh/irgendwo blo¨ kt eine Kuh/Muh!’’63
Assessing this ironic play with Milka’s insignia, the Supreme Court held that for the
use of Milka trade marks to constitute relevant trade mark use in the sense of Art. 5(2) of
the former Trade Mark Directive 2008/95, it was sufficient that the postcard called to
mind the well-known Milka signs.64 Even though being decorative, the use in question
therefore gave rise to the question of trade mark infringement.65 Accordingly, the
German Federal Supreme Court embarked on a scrutiny of the trade mark parody in the
light of the infringement criteria of detriment to distinctive character or repute, and the
taking of unfair advantage.66 Weighing Milka’s concerns about a disparagement of the
trade marks against the fundamental guarantee of the freedom of art, however, the Court
finally concluded that the freedom of art had to prevail in the light of the ironic statement
made with the postcard.67 The use of Milka trade marks was thus found to have taken
place with ‘‘due cause’’ in the sense of Art. 5(2).68
58 With regard to examples of cases where this occurred, see
, pp. 2–3 and
, pp. 101–102.
59 Article 5(2) former Trade Mark Directive 2008/95; Art. 10(2)(c) new Trade Mark Directive
60 Article 14(1)(c) new Trade Mark Directive 2015/2436.
61 German Federal Supreme Court, 3 February 2005, case I ZR 159/02, ‘‘Lila Postkarte’’, in:
Gewerblicher Rechtsschutz und Urheberrecht 2005, p. 583.
62 German Federal Supreme Court, ibid., p. 583.
63 ‘‘It is calm above the tree tops, somewhere a cow is bellowing. Moo!’’ The attribution to ‘Rainer Maria
Rilke’ is an allusion to the famous German writer Rainer Maria Rilke. See German Federal Supreme
Court, ibid., p. 583.
64 German Federal Supreme Court, ibid., p. 584.
65 German Federal Supreme Court, ibid., pp. 584–585.
66 German Federal Supreme Court, ibid., pp. 584–585.
67 German Federal Supreme Court, ibid., pp. 584–585.
68 German Federal Supreme Court, ibid., p. 585.
Similar decisions may follow from the application of the defence of ‘‘referential
use’’ which was broadened in the framework of the EU trade mark law reform and is
now laid down in Art. 14(1)(c) of the new Trade Mark Directive 2015/2436.69 As the
decision Lila Postkarte shows, the requirement of ‘‘use as a trade mark’’ is applied
flexibly in the EU. It does not serve as a filter to exclude, from the outset, all instances
where the trade mark is not used in the traditional manner, i.e., to indicate the
commercial source of the user’s own goods or services.70 Instead, a mere reference to
the trade mark71 and a mere link with goods or services may be sufficient to trigger an
infringement action.72 In the light of the elastic standard developed by the CJEU, even
decorative use of a trade mark may amount to actionable trade mark use.73 Evidently,
this development is worrisome from the perspective of cultural follow-on innovation.
To exclude a trade mark action in cases of remix or reuse of trade-marked cultural
symbols in the artistic domain, it is no longer sufficient to argue that the use takes place
in a cultural context and, from the outset, does not constitute use ‘‘as a trade mark’’.
The moment the use establishes a link with a trade-marked cultural symbol, this
defence strategy may already fail.
If a reference to a trade-marked cultural symbol is qualified as actionable use ‘‘as
a trade mark’’, however, the broadened defence of referential use offers the
unauthorized user the opportunity to argue that the reference to the trade mark is the
result of an honest practice of using the sign. In the case of use in the cultural
domain, this line of reasoning finds support in Recital 27 of the new Trade Mark
Directive 2015/2436 which explicitly states that ‘‘[u]se of a trade mark by third
parties for the purpose of artistic expression should be considered as being fair as
long as it is at the same time in accordance with honest practices in industrial and
The referential use defence is thus intended to serve as a final resort in cases
where a conflict between trade mark rights and artistic freedom of expression
arises.74 Infringement claims following the registration of cultural heritage material
69 As to the considerations underlying this legislative change, see
Kur and Senftleben (2017)
70 This stricter test, however, was mentioned with regard to the traditional identification function of trade
marks in CJEU, 25 January 2007, case C-48/05, Adam Opel/Autec, para. 24.
71 CJEU, 23 October 2003, case C-408/01, Adidas/Fitnessworld, para. 39; CJEU, 10 April 2008, case
C-102/07, Adidas/Marca, para. 41.
72 CJEU, 11 September 2007, case C-17/06, Ce´line, paras. 21–23; CJEU, 19 February 2009, case C-62/08,
UDV/Brandtraders, para. 47. The emphasis on the criterion of a mere link with the goods or services offered
under a conflicting sign was confirmed in cases dealing with keyword advertising. See CJEU, 23 March
2010, cases C-236/08–238/08, Google/Louis Vuitton et al., para. 72; 12 July 2011, case C-324/09, L’Ore´al/
eBay, para. 92. For a discussion of this development, see
b), pp. 147–148.
73 See CJEU, 23 October 2003, case C-408/01, Adidas/Fitnessworld, para. 39-41, where the Court
established an ambiguous test by holding that ‘‘the fact that a sign is viewed as an embellishment by the
relevant section of the public is not, in itself, an obstacle to the protection conferred by Article 5(2) of the
Directive where the degree of similarity is none the less such that the relevant section of the public
establishes a link between the sign and the mark.’’ For decisions illustrating the weakness of the
descriptive use defence in this context, see CJEU, 10 April 2008, case C-102/07, Adidas/Marca, paras.
47–49; CJEU, 25 January 2007, case C-48/05, Adam Opel/Autec, para. 44; German Federal Supreme
Court, 24 November 2011, case I ZR 175/09, ‘‘Medusa’’, paras. 19–20.
74 For a more detailed discussion of this point, see Schovsbo (2018).
as a trade mark will thus fail if use of the trade-marked material for the purposes of
remix and reuse in the cultural domain is deemed permissible under Art. 14(1)(c).
At first glance, the described checks and balances in trade mark law – the
registration requirement of distinctiveness, the impact of cultural significance on the
infringement analysis and the defences of due cause and referential use – may
appear sufficiently robust to dispel concerns about a corrosive effect of cultural
heritage trade marks on freedom of expression in the cultural domain.
However, a closer look at these safeguards reveals how volatile they are. It also
shows the core problem underlying the debate: the traditional acceptance of trade mark
rights relating to cultural material is based on an understanding of trade marks as
source identifiers and trade mark rights as tools to ensure market transparency. After
the remarkable broadening of the concept of ‘‘use as a trade mark’’ in the jurisprudence
of the CJEU75 and the explicit recognition of advertising, investment and
communication functions as independent protection objectives,76 this traditional
understanding no longer corresponds with the current scope and reach of trade mark rights.
It is no longer sufficient that the public does not perceive use in the cultural
domain as an indication of commercial origin. Instead, use for cultural purposes
may be qualified as actionable use in the sense of trade mark law even if it merely
refers to a protected mark.77 As a result, the exercise of artistic freedom of
expression requires the invocation of defences against infringement claims which, in
turn, enhances the legal uncertainty surrounding unauthorized use and may have a
deterrent effect on cultural follow-on innovation. With the evolution of trade mark
rights of current proportions, the hypothesis of non-interference with artistic
creativity has become doubtful.
4.1 Registration Requirement of Distinctiveness
In the Mona Lisa case, the German Federal Patent Court relied on the basic
requirement of distinctive character and saw no need to invoke public policy and
accepted principles of morality as further grounds for refusal. This focus on
distinctiveness as sole gatekeeper has far-reaching consequences. The exclusion of
the Mona Lisa registration because of a lack of distinctive character following from
the painting’s widespread use in advertising is weak because non-distinctive,
descriptive and generic signs can acquire the requisite distinctive character as a
result of use in trade.78 The decision of the German Federal Patent Court thus offers
75 For a more detailed discussion of this development, see
Kur and Senftleben (2017)
, para. 5.14–5.15
76 CJEU, 18 June 2009, case C-487/07, L’Ore´al/Bellure, para. 58. Cf.
Kur and Senftleben (2017)
Kur and Senftleben (2017)
, para. 5.50–5.56; Derclaye and Leistner (2011), p. 328.
78 Article 3(3) former Trade Mark Directive 2008/95; Art. 4(4) new Trade Mark Directive 2015/2436.
the chance of overcoming the registration obstacle through intensive use in product
marketing and advertising. Once consumers have been taught to perceive the Mona
Lisa as a source identifier referring to the trade mark applicant, a registration of the
famous painting becomes possible.79
Viewed from this perspective, the Mona Lisa decision is unsatisfactory. While
the German Federal Patent Court may have felt that the distinctiveness test is
sufficient to keep signs with cultural significance free from trade mark protection,
the reliance on the basic protection requirement may have the opposite effect.
Enterprises may regard the prospect of acquiring trade mark rights as a result of use
in trade as an invitation to invest in marketing and advertising activities based on
cultural signs. They may strive to make a particular cultural heritage symbol part of
the trade mark experience they are offering to consumers. The mere possibility of
acquiring trade mark rights in consequence of use in trade may be sufficient to
support business activities that lead to the removal of cultural material from the
public domain instead of putting an end to attempts to obtain trade mark rights to
This risk must not be underestimated. Literary or artistic works in the public
domain, such as Vigeland’s creations, have rich and positive connotations. Investing
in the acquisition of trade mark rights in such a work, an enterprise can benefit from
the favourable image which the cultural material already has. Given the popularity
of the sign, the process of brand image creation, as already indicated above, need
not be started from scratch. The establishment of a link with the cultural work offers
the chance of an image transfer that may outweigh the costs of advertising necessary
to acquire distinctiveness through use in trade. The enhanced value to be gained
once trade mark protection is acquired may allow bigger investments than in regular
cases of brand development – investments capable of setting aside the cultural
renown and ‘‘particularly rich conceptual reference’’ which the CJEU qualified as an
obstacle to a strong distinctive character in Picasso/Picaro.81
Against this background, it is of particular interest that in the Vigeland case, the
Municipality of Oslo emphasized its continuous efforts and investments seeking to
make Vigeland’s works ‘‘well known and valuable’’.82 Even though the
Municipality is not a private business, it developed a line of argument that could serve as a
model for companies seeking to acquire trade mark rights in ‘‘their’’ preferred
cultural heritage symbol. The underlying logic is simple: as substantial investment
and marketing efforts have taken place, the cultural sign concerned is due to the
investor. The requirement of distinctive character is incapable of preventing the
evolution of this rights acquisition strategy.
79 For a detailed discussion of this conditional character of a refusal based on a lack of distinctiveness,
a), pp. 783–784 and
, p. 303.
, pp. 331–332 and
a), pp. 812–813;
, p. 1150 and
, p. 170. See also the ECS (2017), pp. 460–461.
81 CJEU, 12 January 2006, case C-361/04P, Picasso/Picaro, para. 27. Cf.
Wandtke and Bullinger (1997)
82 Report for the Hearing, Judge-Rapporteur Baudenbacher, 5 October 2016, case E-5/16, Municipality
of Oslo (‘‘Vigeland’’), para. 32.
In addition, it must be considered that the requirement of distinctiveness as a
basic threshold for the acquisition of trade mark rights fails to cover the entire
spectrum of cultural public domain material. The Mona Lisa case concerned a
famous cultural symbol belonging to mankind’s universal cultural heritage. In the
light of the popularity of the painting and its widespread use in advertising, the
Court could reject the registration attempt on the grounds that the sign had become a
customary marketing tool and constituted a non-distinctive, generic sign. In the case
of cultural material that is not well known, this line of argument is not available.83
For example, the registration of a culturally important, but not widely known
melody taken from a piece of classical music could hardly be rejected based on the
argument that the sign has been used so frequently in a commercial context that
consumers are unlikely to perceive it as a reference to an individual commercial
source.84 By contrast, even the assumption of inherent distinctiveness seems
inescapable when use of the melody for marketing purposes is new for the
consuming public. Once an exclusive link between the sign and an individual
commercial source is established in the minds of consumers, it makes no difference
from a trade mark perspective whether an enterprise develops its own melody for
advertising purposes or uses a pre-existing melody taken from the classical public
Moreover, a finding of inherent distinctive character may follow from use in a
context that creates a contrast with the genuine meaning of a cultural symbol. For
example, the requirement of distinctive character can hardly be invoked against an
applicant seeking to register a detail of Pablo Picasso’s painting ‘‘Guernica’’ in
respect of weapons and other ‘‘defence’’ technology and services. By contrast,
applicable trade mark standards offer room for arguing that the public would be able
to identify a company’s goods and services in this category on the basis of a sign
derived from the Picasso painting.
Considering these weaknesses of the requirement of distinctive character as a
safeguard against the re-appropriation of cultural material in the public domain,
court and office decisions denying trade mark rights on the ground that the requisite
distinctive character is missing must not hide the fact that trade mark law fails to
provide cultural grounds for refusal that would allow courts and offices to name the
true reason for not awarding trade mark rights. It would be desirable to have room in
trade mark law to articulate prevailing cultural concerns candidly, in particular the
risk of encouraging the privatization of parts of the cultural heritage, the undesirable
redefinition of important cultural expressions in commercial contexts, and unfair
free-riding on the status, reputation and favourable image of cultural creations.85
Klinkert and Schwab (1999)
, p. 1068, who express similar concerns. Cf. Senfteben 2010,
84 Examples of this kind are not of a theoretical nature. In Germany, for instance, the beer producer
Licher has consistently used ‘‘Solveig’s Song’’ from Edvard Grieg’s Peer Gynt Suite in advertising since
the 1990 s. See https://www.youtube.com/watch?v=dfGGjk1QEeM.
Wandtke and Bullinger (1997)
, p. 578 and
, pp. 103–104. For a solution based on
public order/morality considerations, see
Klinkert and Schwab (1999)
, p. 1073,
Van Woensel (2007
, pp. 102–103 and
, p. 391. See also the critique
, p. 207;
, p. 1018.
In comparison with these clear articulations of cultural reasons for denying trade
mark protection, the argument of a lack of distinctive character misses the point. In
the Mona Lisa case, the German Federal Patent Court rightly pointed out that the
famous painting was used frequently in marketing and advertising contexts.
Therefore, the Court had reason to assume widespread use by various enterprises
and a lack of distinctive character. From a cultural perspective, however, it is
cynical to solve the case on this basis. On its merits, the Court argued that the Mona
Lisa could escape registration as a trade mark because commercial use of this
cultural symbol had already become commonplace. The registration as a trade mark
is rejected because other traders may want to use the cultural symbol in their
advertising as well. However, the Court saw no reason to deny the trade mark
registration because free-riding on the sign’s reputation and positive image, the
attachment of commercial connotations, the blurring of the sign’s genuine cultural
meaning and the sign’s exposure to commercial marketing strategies were
In sum, the application of the basic requirement of distinctive character is thus
unsatisfactory. It is unreliable because a lack of distinctiveness can be overcome
through use in trade. In the case of relatively unknown cultural material, it may fail
to serve as a safeguard against the acquisition of trade mark rights altogether. The
assumption of inherent distinctive character may be inescapable when unknown
literary or artistic works are introduced as new source identifiers in trade. Finally,
the exclusion of cultural material from trade mark protection on the basis of the
requirement of distinctive character also prevents courts and trade mark offices from
clearly articulating prevailing cultural interests and concerns. Instead, they must
keep within the assessment standards offered by the test of distinctiveness, such as
widespread use in a commercial context implying a non-distinctive, descriptive or
generic character, or a need to keep the sign free for other traders who may want to
use the cultural symbol in advertising and product marketing as well. Given these
shortcomings, the problem of an undesirable re-appropriation of cultural public
domain material by virtue of trade mark law cannot be solved on the basis of the
requirement of distinctive character. It would be desirable to have more effective
tools to avoid the acquisition of trade mark rights.87
4.2 Impact of Cultural Significance on Infringement Analysis
In Picasso/Picaro, the CJEU held that the renown of a cultural creation may
constitute such a rich conceptual reference that it greatly reduces the recognition of
the sign as a trade mark.88 Hence, it seems that in the Court’s view, cultural
significance is a factor weighing against the assumption of a highly distinctive
, p. 5.
, pp. 331–332,
a), p. 34,
b), pp. 76–78 and
a), pp. 816–817 and 823–825. For an example of an outright exclusion (based on functionality
considerations) putting an end to further attempts to acquire trade mark rights, see German Federal Patent
Court, 26 September 2001, case 28 W (pat) 61/01, ‘‘Schmuckring’’. Cf. the discussion of this case and its
practical effect by
, p. 12.
88 CJEU, 12 January 2006, case C-361/04P, Picasso/Picaro, para. 27.
character. This, in turn, is a factor weighing against broad protection against
confusion and excluding protection against dilution.
Nonetheless, it would be wrong to jump to the conclusion that trade mark rights
relating to cultural signs are generally unproblematic because the scope of
protection against confusion and dilution will always remain limited. By contrast,
the elasticity of distinctive character as a parameter for determining the scope of
protection must be factored into the equation. In the Vigeland case, the statements
submitted by the Municipality of Oslo show clearly that the city is confident to have
invested enough to establish the works of the famous sculptor as strong source
identifiers.89 In fact, a relatively weak trade mark may be developed into a powerful
brand over time. This is inherent in the configuration of trade mark law. In addition,
the acquisition of a considerable degree of distinctive character and a broad scope of
trade mark protection does not seem particularly difficult when a trade mark consists
of a sign that has cultural significance but is not widely known among the
consuming public. A symbol, shape or melody stemming from a culturally
important but relatively unknown work is unlikely to have a strong cultural
connotation capable of weakening the recognition of the sign as an indication of
commercial origin. Who thinks of Nike, the Greek goddess of victory, when seeing
the trade mark NIKE?90 Who is aware of culturally important signs of indigenous
Given the relatively low threshold for acquiring anti-dilution protection in the
EU, there is also a substantial risk of unknown signs with cultural significance
becoming eligible for enhanced protection against dilution. In contrast to other trade
mark systems requiring recognition among the general consuming public, niche
reputation is sufficient under EU trade mark law.91 For a trade mark to constitute a
mark with a reputation, it must be known by the target group of the goods or
services marketed under the trade mark. In the case of specific products, this target
group may be a specialized public, such as traders in a specific sector. The required
degree of knowledge is reached when the mark is known by a significant part of the
Once reputation is established, EU trade mark law offers anti-dilution protection
covering blurring, tarnishment and unfair free-riding in competitive and
noncompetitive situations.93 The evidence to be produced need not necessarily include
89 Report for the Hearing, Judge-Rapporteur Baudenbacher, 5 October 2016, case E-5/16, Municipality
of Oslo (‘‘Vigeland’’), para. 32.
90 With regard to these and further examples, see
, pp. 2–3 and
, pp. 50–55,
, p. 1163 and
, p. 1157.
92 CJEU, 14 September 1999, case C-375/97, General Motors/Yplon, paras. 24 and 26. In respect of the
territorial expansion required, see CJEU, ibid., para. 28; CJEU, 6 October 2009, case C-301/07, Pago/
Lattella, para. 29.
93 Under the former Trade Mark Directive 2008/95, this followed from CJEU, 9 January 2003, case
C-292/00, Davidoff/Gofkid. It has been made explicit in Art. 10(2)(c) new Trade Mark Directive
2015/2436. As to the scope of protection offered in cases of marks having a reputation, see particularly
CJEU, 18 June 2009, case C-487/07, L’Ore´al/Bellure, and the comments by
a), p. 383;
Ohly (2009), pp. 711–712.
proof of a change in the economic behaviour of consumers.94 For a claim based on
the taking of unfair advantage, it suffices to argue that ‘‘a third party attempts,
through the use of a sign similar to a mark with a reputation, to ride on the coat-tails
of that mark.’’95 Moreover, the CJEU refuses to consider the need to keep protected
signs freely available in the context of the infringement analysis. In Adidas/Marca,
the Court explained that it was clear that the requirement of availability was
‘‘extraneous both to the assessment of the degree of similarity between the mark
with a reputation and the sign used by the third party and to the link which may be
made by the relevant public between that mark and the sign.’’96
In addition to these developments in the field of specific infringement criteria,
current EU trade mark law is an example of an advanced trade mark system in which
inherent limits of exclusive rights, such as the requirements of ‘‘use in the course of
trade’’ and ‘‘use in relation to goods or services’’ have lost much of their potential to
contain access to trade mark protection from the outset. As already indicated above,
the requirement of use in relation to goods or services is applied flexibly by the CJEU.
In principle, this general prerequisite for obtaining protection could be applied to
confine the scope of trade mark rights to instances where the senior user’s trade mark is
employed by a junior user as an identifier of commercial source with regard to its own
goods or services. Following this approach, the requirement of trade mark use could
serve as a filter to exclude claims that are unrelated to the identification and distinction
of goods and services from the outset. Considerable breathing space for freedom of use
in a cultural context could be created in this way.97
However, the CJEU takes the opposite approach, weakening the trade mark use
requirement instead of sharpening its conceptual contours. As explained, the Court
even expressed the view that, for satisfying the requirement of trade mark use, it was
sufficient that a mere link was established with the trade mark.98 In consequence,
94 This test applies in cases of blurring and tarnishment. See CJEU, 27 November 2008, case C-252/07,
Intel/CPM, para. 77; CJEU, 14 November 2013, case C-383/12 P, Environmental Manufacturing/OHIM,
para. 37. Cf.
Kur and Senftleben (2017)
, para. 5.223–5.228; Bouvel (2010), 123,
b), p. 799 and
Middlemiss and Warner (2009)
, pp. 331–332.
95 CJEU, 18 June 2009, case C-487/07, L’Ore´al/Bellure, para. 49. For a critical comment on intuitive
protection against free-riding as a species of unjust enrichment law, see
Lemley and McKenna 2010
96 CJEU, 10 April 2008, case C-102/07, Adidas/Marca, para. 43.
97 For a discussion of the concept of trade mark use in EU trade mark law, see
Kur and Senftleben
, para. 5.14–5.15 and 5.49–5.56; Kur (2008), p. 11;
, pp. 331–87;
Simon Fhima (2005
, p. 328. As to the recognition of a potential gatekeeper function of the trade mark
use requirement in US and EU law, see
b), p. 39; Dogan and Lemley (2008), p. 542: ‘‘By
maintaining the law’s focus on misleading branding, the trademark use doctrine keeps trademark law true
to its ultimate goal of promoting competitive markets.’’ However, see also
Dinwoodie and Janis (2007)
p. 773, p. 773. 1657–1658, who doubt that problems arising in the current ‘‘expansionist climate’’ could
be solved by recalibrating the notion of trade mark use: ‘‘Trademark use is simply too blunt a concept, no
matter how defined, to capture the full range of values at play in these debates.’’ For a summary of the
Davison and Di Giantomasso (2009
), p. 443;
, p. 773. For a fundamental
critique of the continuous expansion seeking to reduce the scope of trade mark protection to the
traditional origin function, see moreover
, pp. 96–107.
98 CJEU, 23 October 2003, case C-408/01, Adidas/Fitnessworld, para. 39; German Federal Supreme
Court, 3 February 2005, case I ZR 159/02, ‘‘Lila Postkarte’’, in: Gewerblicher Rechtsschutz und
Urheberrecht 2005, pp. 583 (584–585).
the purported threshold of establishing trade mark use does not prevent trade mark
owners from successfully pursuing third-party uses that are not – and are not
intended to be – perceived as indications of commercial source. On the contrary,
referential use is brought within the reach of the exclusive rights of trade mark
owners.99 The impact of this broad concept on use for cultural purposes is
considerable. As described above, even decorative use that merely calls to mind the
protected trade mark may give rise to an infringement action.
Surveying these developments, it can be said that the inherent limits of exclusive
trade mark rights – use in the course of trade, use as a trade mark, use likely to cause
confusion and use likely to cause dilution – have become elastic and unreliable
safeguards of freedom of use for cultural purposes. In many cases of use in a
cultural context, it will be difficult to rule out the threat of a trade mark claim on the
basis of these infringement criteria.100 For example, it is inaccurate to assume that
trade mark rights will hardly ever affect use in a cultural context because this type of
use is unlikely to constitute use in the course of trade. Cultural activities require not
only freedom to create new works on the basis of pre-existing material, but also
freedom to bring these new works to the attention of the public and create a market
for them. It is recognized in the context of the fundamental guarantee of artistic
freedom of expression that sufficient room must be offered not only for art creation
but also for art marketing. In Germany, for instance, it is established case law of the
Federal Constitutional Court that the freedom of art ‘‘protects a cultural activity as
such (‘Werkbereich’) but, in addition, also the performance and distribution of the
artwork which is necessary for the public’s encounter with art (‘Wirkbereich’).’’101
Hence, it would be wrong to confine the debate on a potential impediment of use
in a cultural context to the process of creation. It is not sufficient that an artist enjoys
the freedom of using trade-marked material in her atelier. The guarantee of freedom
of expression and freedom of art also requires freedom to sell and promote an
artwork. As with other inherent limits of trade mark rights, the basic infringement
criteria of ‘‘use in the course of trade’’ and ‘‘use in relation to goods or services’’,
therefore, do not constitute safeguards that are strong enough to declare trade mark
rights to cultural signs unproblematic.
4.3 Limitations of Trade Mark Rights Insufficient
This finding gives rise to the question whether the defences in EU trade mark law
are sufficient to eliminate the risk of a corrosive effect on artistic expression. The
amended EU trade mark legislation explicitly refers to freedom of expression as a
guiding principle in Recital 27 of the new Trade Mark Directive 2015/2436. The
fundamental guarantee of freedom of expression, however, is unlikely to prevent
trade mark owners from bringing a claim. The Dutch case Darfurnica can serve as
an example of a particularly aggressive enforcement strategy that included actions
Kur and Senftleben (2017)
, para. 5.50–5.54; Derclaye and Leistner (2011), p. 328.
b), pp. 52–54.
101 German Federal Constitutional Court, 31 May 2016, case 1 BvR 1585/13, ‘‘Metall auf Metall’’, para.
against use in the cultural domain. In this case, Louis Vuitton sued the painter Nadia
Plesner for infringement of industrial design rights relating to a Louis Vuitton
handbag. Nadia Plesner had included a poor black boy holding a Louis Vuitton
handbag in her painting ‘‘Darfurnica’’. Despite the artistic context of the use, Louis
Vuitton did not refrain from the infringement action.102 Before the The Hague
District Court, Nadia Plesner finally prevailed. The court deemed her use
permissible in the light of the guarantee of artistic freedom of expression.
Nonetheless, the case shows that the guarantee of freedom of expression does not
eliminate the risk of infringement claims.
This remaining risk – and the legal uncertainty arising from a potential lawsuit –
distinguishes the scenario in which a sign with cultural significance is in the public
domain, from the situation where the sign is re-appropriated as a result of a trade
mark registration. Once cultural heritage signs are registered, the scope of trade
mark protection creates considerable legal uncertainty. Given the described
elasticity of infringement criteria in modern trade mark law, the risk of infringement
can no longer be ruled out. This legal uncertainty is likely to have a deterrent effect
on cultural follow-on innovation even if the artist can rely on the defence of ‘‘due
cause’’ or ‘‘referential use’’. These defences merely add a further discussion point to
the list of legal arguments. The claimant will assert that the use at issue is excessive
and falls outside the scope of any defence. The defendant will seek to convince the
court that the defence is fully applicable.
In various areas of creative activity, concerns have been articulated about a
growing fear of artists to be sued for intellectual property infringement because of
the reuse of pre-existing cultural material that still enjoys protection.103 These fears
can have a chilling effect on creativity and cultural diversity. An artist seeking to
avoid potential lawsuits will refrain from the creation of works based on
preexisting material or limit takings from pre-existing material to an absolute
minimum.104 Therefore, the legal uncertainty arising from the elastic application of
trade mark infringement criteria in the jurisprudence of the CJEU leads to a climate
that is not conducive to new cultural productions. Instead, it is likely to impoverish
new cultural productions in terms of creative inputs.
In the above-described case Lila Postkarte, the defence of ‘‘due cause’’ finally
saved the artistic play with the Milka insignia. However, the fact remains that –
even though the use was found to constitute use in an artistic context – the elastic
concept of use as a trade mark developed by the CJEU prevented a judgment that
put an end to the infringement action at an early stage.105 The Court did not hold
102 The Hague District Court, 4 May 2011, case LJN BQ3525, Nadia Plesner/Louis Vuitton. For a case
, pp. 740–742.
, pp. 292–293;
, pp. 1206–1207 and 1224–1225;
, p. 913;
, p. 156;
Aufderheide and Jaszi (2004)
, pp. 29–30;
, pp. 185–188.
, p. 564;
, pp. 131–136;
, p. 1926;
, pp. 115–120 and 231–232.
105 As to the importance to provide mechanisms that, in cases involving artistic freedom of expression,
prevent lengthy lawsuits from the outset, see
, pp. 1224–1225;
that the use did not constitute actionable trade mark use from the outset. Instead, the
parodist had to invoke the defence of due cause and argue the case in several
instances until the German Federal Supreme Court took a final decision. The artistic
use at issue thus led to a complex lawsuit – even though the Milka trade marks had
not been used as identifiers of commercial source.
In many cases, artists will not have sufficient confidence and financial resources
to take the risk of a lengthy lawsuit. If the Municipality of Oslo sends a
cease-anddesist letter stating that a given form of using Vigeland’s works amounts to trade
mark infringement, this will often suffice to put an end to the use in a cultural
context.106 Discussing the constitutional guarantee of artistic freedom of expression,
the deterrent effect that arises from legal uncertainty surrounding a permitted use of
protected material has explicitly been recognized by the German Federal
Constitutional Court (the Supreme Court in matters of constitutional law) in Metall
auf Metall. The decision was triggered by the jurisprudence which the German
Federal Supreme Court (the Supreme Court in matters of civil law) had developed
with regard to sound sampling. The underlying lawsuit had been brought by the
iconic German electronic music pioneers Kraftwerk. They asserted copyright and
phonogram producer rights against the unauthorized use of a rhythmic sound
fragment of two seconds which served as the basis of a continuous rhythmic
sequence in Sabrina Setlur’s song ‘‘Nur mir’’. The sound fragment stemmed from
the piece ‘‘Metall auf Metall’’ in Kraftwerk’s 1977 album Trans Europa Express.
In its earlier decisions in the Metall auf Metall saga,107 the German Federal
Supreme Court had held that sound sampling fell outside the scope of permitted free
use and amounted to infringement of the neighbouring right of the phonogram
producer if the unauthorized user was capable of producing the desired sound
fragment himself.108 In a further decision, the Court had specified that this criterion
required an assessment of whether a sound producer with average equipment and
talent, at the time of unauthorized use, would have been capable of producing an
own recording which, from the perspective of the target audience, could be qualified
as equal to the original sound fragment.109
The German Federal Constitutional Court found that this assessment criterion
encroached upon the guarantee of free artistic expression because it created too
much legal uncertainty. The Court expressed the fear that
even in cases where the production of an equal recording is not possible,
artistic creators may refrain from use – which, in this case, would be
permissible in the opinion of the German Federal Supreme Court – because
106 For a more detailed discussion of the chilling effect of cease-and-desist strategies, see
a), pp. 31–32; McGeveran (2008), pp. 1206–1207;
, pp. 185–188.
107 For a more detailed discussion of the Metall auf Metall decisions in Germany, see
, pp. 772–777;
, p. 105;
Conley and Braegelmann (2009)
, p. 481.
108 German Federal Supreme Court, 20 November 2008, case I ZR 112/06, ‘‘Metall auf Metall I’’, p. 15,
published in: Gewerblicher Rechtsschutz und Urheberrecht 2009, p. 403.
109 German Federal Supreme Court, 13 December 2012, case I ZR 182/11, ‘‘Metall auf Metall II’’, p. 16,
published in: Gewerblicher Rechtsschutz und Urheberrecht 2013, p. 614.
the effort necessary to provide evidence of missing own production options
and the legal risk appear too big. The criterion based on the feasibility of
producing an equal sound thus has a deterrent effect which requires a
particularly efficient control in the light of constitutional law.110
Hence, the deterrent effect that arises from legal uncertainty surrounding a
permitted use must be factored into the equation. With regard to the attempt to
reappropriate works created by Gustav Vigeland, this means that the legal uncertainty
surrounding the invocation of available defences, such as ‘‘due cause’’ and ‘‘referential
use’’, is relevant to the assessment. It is not sufficient that the statutory law provides for
defences and that judges are willing to hear arguments based on these defences. It must
also be considered whether artistic creators may nevertheless refrain from permissible
use because the re-appropriation of an artwork as such leads to the acquisition of trade
mark rights and involves the risk of an infringement action. Even if courts may finally
manage to arrive at reasonable solutions in cases involving use of trade-marked
cultural material, the fundamental difference remains that legal uncertainty about a
potential trade mark claim is surrounding the use of cultural heritage material once it
has been re-appropriated. The risk of potential trade mark infringement is hanging
above use made of affected cultural creations like the sword of Damocles. From a
cultural perspective, the scenario in which an artwork belongs to the public domain
and is entirely free, is clearly preferable over a situation where trade mark rights are
granted and artists are exposed to the risk of an infringement claim.
5 The Vigeland Judgment of the EFTA Court
Against this background, it seems advisable to strike at the root of the problem and
pave the way for stricter access control that prevents the acquisition of trade mark
rights to cultural heritage material from the outset.111 In this respect, the Vigeland
decision of the EFTA Court is a milestone. The Court takes important steps in the
5.1 Legal Status Definition of the Public Domain
Firstly, it is noteworthy that the EFTA Court adheres to a legal status definition of the
public domain: for a cultural creation to be part of the public domain, it must be
unencumbered with intellectual property rights.112 This understanding of the public
110 German Federal Constitutional Court, 31 May 2016, case 1 BvR 1585/13, ‘‘Metall auf Metall’’, para.
111 For a more detailed discussion of this point, see
, pp. 331–332;
a), p. 34;
b), pp. 76–78;
a), pp. 816–817 and 823–825. With regard to the field of
traditional knowledge and traditional cultural expressions, see
, p. 83;
p. 433, discussing the concept of ‘‘cultural offence’’ in New Zealand and a sui generis protection regime
that would offer grounds for opposition under trade mark law.
112 EFTA Court, ibid., para. 66. For an overview of the different definitions of the public domain,
including more flexible approaches including well-established limitations of protection, see
c), pp. 112–138;
a), pp. 145–154;
b), pp. 13–17.
domain follows from the Court’s assumption that the public domain status of cultural
expressions is a corollary of the process of communicating literary and artistic works:
Once communicated, creative content belongs, as a matter of principle, to the
public domain. In other words, the fact that works are part of the public
domain is not a consequence of the lapse of copyright protection. Rather,
protection is the exception to the rule that creative content becomes part of the
public domain once communicated.113
From this perspective, the legal status of ‘‘absence of individual protection for, or
exclusive rights to, a work’’ is the normal status of literary and artistic works and the
period of copyright protection is an anomaly during which the work is withheld
from a free and entirely open communication process.114 Precursors of this approach
can be found in national law. The German Federal Supreme Court, for instance, also
held that a work, once published, becomes an independent factor influencing the
cultural and intellectual perception of its age which increasingly evaporates in the
process of its communication until the time of protection finally expires.115
Importantly, the understanding of the public domain as ‘‘absence of individual
protection for, or exclusive rights to, a work’’ implies that the public domain status
cannot artificially be simulated by adopting robust defences in trade mark law.116
Even if trade mark law provides for use privileges that support the reuse and
remixing of protected signs in the cultural domain, the fact remains that cultural
heritage signs no longer belong to the public domain once they are encumbered with
trade mark rights. The precondition of absence of protection is no longer fulfilled.117
To effectively preserve the public domain of literary and artistic works, it is thus
necessary to ensure that trade mark protection is not granted in the first place.
5.2 Rationales of Preserving the Public Domain
The EFTA Court also clarifies the policy objectives that form the basis of its
approach. In the Court’s view, the determination of a fixed time frame of copyright
protection after which anyone can draw from ideas and creative content of others
without limitation serves the principles of legal certainty and protection of
legitimate expectations.118 It also serves the general interest in ‘‘protecting creations
of the mind from commercial greed’’ and ‘‘ensuring the freedom of the arts’’.119
113 EFTA Court, 6 April 2017, case E-5/16, Municipality of Oslo (‘‘Vigeland’’), para. 66.
114 EFTA Court, ibid., para. 66.
, pp. 257–258;
, pp. 34–35.
116 For an alternative approach, recognizing robust user freedoms as part of the public domain, see
, pp. 362–363. Even if this broader understanding of the public domain is adopted,
however, the defences in trade mark law are not automatically sufficient safeguards. This is because the
legal uncertainty surrounding their application, ‘‘due cause’’ and ‘‘referential use’’ do not constitute ‘‘easy
cases’’ in the sense of Benkler’s concept. See the discussion of legal uncertainty in the preceding section.
117 EFTA Court, 6 April 2017, case E-5/16, Municipality of Oslo (‘‘Vigeland’’), para. 71.
118 EFTA Court, ibid., para. 65.
119 EFTA Court, ibid., para. 65.
These policy considerations are broader than the reasons given by the CJEU for
policing the border between trade mark rights and patent or industrial design
protection. The CJEU held that the shape exclusions in EU trade mark law served
the purpose of ensuring undistorted, free competition.120 In comparison with this
competition-based explanation of a dividing line between trade mark rights and
other forms of intellectual property protection, the EFTA Court’s reference to
‘‘commercial greed’’ and ‘‘freedom of the arts’’ adds important aspects. It includes
the need to prevent the pursuit of profit maximization from suppressing the
evolution of free, autonomous art.121 As a result, concerns about follow-on
innovation in the artistic domain can be factored into the equation. The analysis
need no longer be confined to competition-based considerations.
5.3 Assessment of Preservation Tools
The EFTA Court also recalls the remarkable development of EU trade mark
protection in recent years: from a protection system that focuses on the protection of
consumers against confusion of origin, to a protection regime that recognizes
investment in brand development as an independent objective of protection.122
While explicitly referring to remaining differences in the configuration of copyright
and trade mark protection,123 this modern understanding of the trade mark system
leads to a clear articulation of the risk of wrong incentives for investment in cultural
heritage grabbing: ‘‘The possibility of acquiring distinctiveness through use
provided for in Article 3(3) of the Trade Mark Directive may lead undertakings,
which seek to transfer the appeal of formerly copyright protected works to their
goods or services, to try to appropriate the work through targeted marketing
Therefore, the Court does not jump to the conclusion that trade mark protection
can hardly ever have a corrosive effect on cultural follow-on innovation because
trade marks are merely identifiers of commercial source. By contrast, the
understanding of trade mark law as an incentive and investment scheme – and
trade mark rights as brand exploitation instruments125 – yields the insight that the
mere possibility of acquiring distinctiveness through use can lead to rights
acquisition strategies that aim at the exploitation of positive cultural connotations
which are attached to signs with cultural significance. The warning against
120 CJEU, 18 September 2014, case C-205/13, Hauck/Stokke, paras. 18–20. Cf. CJEU, 18 June 2002, case
C-299/99, Philips/Remington, para.78; CJEU, 14 September 2010, case C-48/09 P, Lego/Mega Brands,
para. 43. For a detailed discussion of this policy background, see
, pp. 6–10.
121 For a theoretical underpinning of this concern about sufficient room for autonomous art, see
, pp. 25–28 on the basis of the sociological analysis of processes of creation by
/1999, pp. 103–105, 342–345 and 530–533.
122 EFTA Court, 6 April 2017, case E-5/16, Municipality of Oslo (‘‘Vigeland’’), para. 72. Cf.
, para. 1.12–1.39.
123 EFTA Court, ibid., para. 62.
124 EFTA Court, ibid., para. 75. As to the risk of dysfunctional cumulation, see also ECS (2017), p. 458.
125 Cf. Senftleben (2009), pp. 46–50, with further references.
‘‘targeted marketing campaigns’’ corresponds with the Court’s earlier reference to
the need to protect cultural creations from ‘‘commercial greed’’.126
This theoretical framework allows an adequate assessment of the potential of
different grounds for refusal for preventing the re-appropriation of cultural heritage
signs on the basis of trade mark law. Two questions are central to the Court’s
assessment: whether a ground for refusal can be overcome by demonstrating
distinctiveness acquired through use in trade; and whether the ground for refusal is
confined to specific goods or services.127
Viewed through the prism of these two parameters, it becomes clear that
nondistinctiveness, descriptiveness and genericness are weak safeguards against the risk of
re-privatizing the public domain.128 These grounds for refusal can be overcome through
use in trade. Moreover, their scope is confined to specific goods or services. Not
surprisingly, the EFTA Court concludes that Art. 3(1)(b)–(d) of the former Trade Mark
Directive 2008/95 (Art. 4(1)(b)–(d) of the new Trade Mark Directive 2015/2436) do not
ensure that ‘‘a particular sign is, in general, kept free for use. Thus, these provisions do
not guarantee that the work remains within the public domain.’’129
National decisions testify to the weakness of a refusal based on
nondistinctiveness, descriptiveness or genericness when it comes to signs with cultural
significance. The Marlene Dietrich decision of the German Federal Supreme Court
can serve as an example. The case concerned an attempt to register a portrait
photograph of the actress Marlene Dietrich as a trade mark in respect of
photographs, posters, postcards and goods of a similar nature. In contrast to the
Federal Patent Court,130 the German Federal Supreme Court saw no room for
applying the exclusion of shapes resulting from the nature of the goods in this
case.131 Instead, it relied on the requirement of distinctiveness to refuse trade mark
protection in respect of goods and services concerning the work and life of the
actress, such as books, magazines, photographs, posters, CDs, DVDs, musical
performances and film productions. In respect of these goods and services, the
public would perceive the portrait photograph as a mere indication of product
characteristics.132 Hence, the Court argued that the genuine cultural meaning
underlying the photograph – showing the head of Marlene Dietrich – rendered the
sign descriptive and incapable of serving as a trade mark in respect of goods and
services closely related to the work and life of the actress.
126 EFTA Court, ibid., para. 65.
127 EFTA Court, ibid., paras. 75–76.
128 EFTA Court, ibid., paras. 75–77.
129 EFTA Court, ibid., para. 78. As to the appropriateness of this conclusion, see
a), pp. 812–813;
, p. 1150;
, p. 170.
130 German Federal Patent Court, 9 November 2005, case 29 W (pat) 147/03, ‘‘Portra¨tfoto Marlene
Dietrich’’, in: Gewerblicher Rechtsschutz und Urheberrecht 2006, 333, para. 4.2.
131 German Federal Supreme Court, 24 April 2008, case I ZB 21/06, Marlene-Dietrich-Bildnis, para. 11.
132 German Federal Supreme Court, 24 April 2008, case I ZB 21/06, Marlene-Dietrich-Bildnis, paras.
12–15. For relevant case precedents, see German Federal Supreme Court, 5 December 2002, case I ZB
19/00, Winnetou, p. 6; German Federal Supreme Court, 23 January 2003, case I ZR 171/00, Winnetous
Ru¨ckkehr, p. 10.
This solution of the case has its price. In contrast to the shape exclusion which had
been invoked by the German Federal Patent Court, the hurdle of a lack of distinctiveness
because of descriptive character can be surmounted once the sign becomes distinctive as
a result of the use made of it in trade.133 Accordingly, the Federal Supreme Court had to
leave the door open to the possibility of the Marlene Dietrich photograph becoming
distinctive with regard to goods and services related to the life and work of the actress at a
later stage.134 The Court added that the portrait photograph was inherently distinctive
with regard to merchandising articles, such as scarves, hats, shirts and shoes. In this
respect, it rejected the view expressed by the Federal Patent Court that consumers would
perceive the portrait as a mere marketing tool and fail to understand that it served as an
indication of commercial source.135 The Federal Supreme Court emphasized instead
that the photograph did not necessarily need to be placed prominently on the articles. It
could also be used as a label attached to the goods. Given this option of use as a badge of
origin, distinctive character could not be denied.136
The photograph of Marlene Dietrich could thus be registered as a trade mark in
respect of merchandising articles which are only loosely connected with the actress.
A refusal practice focusing on non-distinctiveness, descriptiveness or genericness
thus opens the door for the acquisition of trade mark rights to names and symbols
with cultural significance. As long as the goods or services involved keep a
sufficient distance from the cultural meaning of affected signs and cultural
activities, trade mark offices and courts are incapable of preventing the
impoverishment of the public domain – understood as the legal status of being
unencumbered with intellectual property rights.137
The central risk factor, then, is the further development of the sign. Will use as a
trade mark for merchandising articles really be confined to use on labels attached to
scarves, hats, shirts and shoes, as assumed by the Federal Supreme Court in the
Marlene Dietrich case? Will the trade mark owner refrain from sending
cease-anddesist letters to competitors also selling merchandising articles with a portrait of the
actress as long as these competitors attach different labels to the goods to indicate a
different commercial origin? Will competitors be adventurous enough to run the risk
of infringement procedures once they receive such a letter? Or will they stop selling
their goods or take a licence to avoid the risk and costs of a potential lawsuit? Will
the trade mark owner also send cease-and-desist letters to authors and producers in
the core fields of music, books, films and photos even though trade mark rights have
been denied in this regard? Will affected authors and (potentially small) production
133 Article 3(3) former Trade Mark Directive 2008/95 (Art. 4(4) new Trade Mark Directive 2015/2436)
which governs the application of national trade mark law in the EU (and EEA) Member States explicitly
offers the possibility of acquiring distinctive character through use with regard to non-distinctive,
descriptive and generic signs.
134 German Federal Supreme Court, 24 April 2008, case I ZB 21/06, Marlene-Dietrich-Bildnis, para. 17.
135 German Federal Patent Court, ibid., paras. 8.1 and 8.2.
136 German Federal Supreme Court, ibid., paras. 19–22. See also the confirmation of this points in
German Federal Supreme Court, 31 March 2010, case I ZB 62/09, Marlene-Dietrich-Bildnis II, paras.
137 EFTA Court, ibid., para. 66.
companies simply ignore the threat of legal action after consulting the trade mark
register? Will the trade mark owner assert even broader protection going beyond the
list of registered goods and services by alleging that the trade mark has become a
mark with a reputation enjoying protection with regard to all kinds of goods and
services?138 How will affected authors and producers react to such a further
substantiation of the trade mark claim?
These questions shed light on the unreliability of the distinctiveness threshold.
The initial denial of trade mark rights in respect of music, books, films and photos in
Marlene Dietrich need not discourage further investment in the sign with regard to
culturally important market sectors. By contrast, the trade mark owner who already
acquired rights in respect of merchandising articles may see the option of
strengthening the sign’s distinctive character with regard to cultural productions
through use in trade as an invitation to make further investments presenting the
portrait photograph as a source identifier also in this core area of cultural activity. In
case of successful marketing and advertising efforts, trade mark rights may thus
finally be granted with regard to music, books, films and photos on the basis of
distinctive character acquired as a result of use. In this alternative scenario, the trade
mark owner would thus obtain trade mark rights which can have a direct impact on
the core area of cultural creativity related to the life and work of Marlene Dietrich.
Opting for an approach based on the requirement of distinctive character, the
German Federal Supreme Court thus solves the dilemma only provisionally. A
refusal based on a lack of distinctiveness does not offer a solution that is sustainable
in the sense that it also minimizes the risk of a corrosive effect on cultural follow-on
innovation for the future.
Irrespective of these deficiencies, it has become a widespread practice in the EU
to refuse trade mark rights in cultural material merely on the basis of a lack of
distinctiveness with regard to goods and services that are directly linked with the
cultural expression in question. A further example of this approach can be found in
the Benelux. In the Anne Frank cases between the Swiss Anne Frank Foundation
and the Benelux Office for Intellectual Property, the Brussels Court of Appeal had
to decide on the registration of the signs ‘‘Het dagboek van Anne Frank’’ (‘‘The
Diary of Anne Frank’’) and ‘‘Het achterhuis’’ (‘‘The Secret Annex’’) in respect of
books, films and guided tours. Similar to the Vigeland case, the reason for the trade
mark application was the fact that the 70-year copyright term relating to the literary
works of Anne Frank – held by the Swiss Anne Frank Foundation – was about to
expire.139 Anne Frank died in the concentration camp Bergen-Belsen in March
Deciding on the attempt to register ‘‘The Diary of Anne Frank’’ and ‘‘The Secret
Annex’’ as trade marks, the Brussels Court of Appeal followed a line of argument
similar to the approach taken in the German Marlene Dietrich decision. As the
goods and services in question – books, films and guided tours – were directly
138 Under the former Trade Mark Directive 2008/95, protection across all kinds of goods and services
followed from CJEU, 9 January 2003, case C-292/00, Davidoff/Gofkid. This broad scope has been made
explicit in Art. 10(2)(c) new Trade Mark Directive 2015/2436.
139 For further information on the background to this lawsuit, see Van Woensel 2013, pp. 372–373.
connected with Anne Frank’s writings and her account of the life of a Jewish family
hiding in concealed office rooms from the Nazi terror in Amsterdam, the Benelux
Office for Intellectual Property had refused the registration on the grounds that the
signs were descriptive and devoid of distinctive character.140 Confirming this office
decision, the Brussels Court of Appeal pointed out that the titles of literary works
constituted an integral part of the works themselves and created a link with their
contents.141 Against this background, the public would not perceive the signs as
identifiers of commercial source but as mere references to Anne Frank’s books. For
this reason, the signs ‘‘The Diary of Anne Frank’’ and ‘‘The Secret Annex’’ were
incapable of serving as distinctive signs with regard to books, films and guided
Agreeing also with the Benelux Office that the signs were descriptive, the Court
referred to the Philips/Remington decision of the CJEU and recalled the public
interest in keeping certain signs free for competitors and the public at large.143 The
Court warned of the risk of artificially perpetuating copyright exclusivity after the
expiry of copyright protection, and granting the Anne Frank Foundation an
indefinitely renewable exclusive right with regard to a work belonging to the
universal cultural heritage – a monopoly position which not even Anne Frank’s
heirs enjoy.144 Finally, the Court rejected the argument advanced by the Swiss Anne
Frank Foundation that the signs had acquired distinctive character vis-a`-vis books,
films and guided tours as a result of the use made of them in trade.145
The decision clearly reflects the Court’s intention to prevent an artificial
perpetuation of copyright exclusivity and keep the culturally important indications
‘‘The Diary of Anne Frank’’ and ‘‘The Secret Annex’’ free. Nonetheless, even this
court decision cannot fully conceal the weakness of the requirement of distinctive
character in comparison with an outright exclusion of trade mark protection. While
emphasizing the inaptness of the signs to distinguish books, films and guided tours
related to Anne Frank’s hiding place and writings, the Court also acknowledged that
a trade mark registration of book titles was possible in respect of goods and services
that are independent of the works they identify.146 As with the German Federal
Supreme Court in the Marlene Dietrich decision,147 the Brussels Court of Appeal
thus conceded that a trade mark registration in respect of merchandising articles was
140 Brussels Court of Appeal, 3 October 2013, cases 2013/7132 and 2013/7133, Anne Frank Foundation/
Benelux Office for Intellectual Property, para. 1.
141 Brussels Court of Appeal, ibid., para. 5.
142 Brussels Court of Appeal, ibid., paras. 6 and 10.
143 Brussels Court of Appeal, ibid., para. 7, and CJEU, 18 June 2002, case C-299/99, Philips/Remington,
144 Brussels Court of Appeal, ibid., paras. 7 and 10.
145 Brussels Court of Appeal, ibid., para. 8.
146 Brussels Court of Appeal, ibid., para. 5.
147 German Federal Supreme Court, 24 April 2008, case I ZB 21/06, Marlene-Dietrich-Bildnis, paras.
148 Brussels Court of Appeal, ibid., para. 5.
Moreover, the decision contains a separate section discussing whether ‘‘The
Diary of Anne Frank’’ and ‘‘The Secret Annex’’ had acquired distinctive character
vis-a`-vis books, films and guided tours through use in the course of trade.149 While
the Court finally denied this question, the attention devoted to this point clearly
shows that it cannot be ruled out that culturally important signs become distinctive
even in respect of goods and services that are directly connected with their cultural
meaning. At EU level, the registration of ‘‘Le Journal de l’Anne Frank’’ has even
been accepted in respect of films, books and theatre plays in the meantime.150
Considering this weakness of a refusal based on a lack of distinctiveness, it is of
particular importance that the EFTA Court clearly points out the volatility of a
refusal based on non-distinctiveness, descriptiveness or genericness.
In comparison with these distinctiveness-based grounds for refusal, the doctrine
of aesthetic functionality in EU trade mark law – the exclusion of signs that give
substantial value to the goods151 – offers a more robust ground for refusing trade
mark rights. In respect of products that incorporate Vigeland’s sculptures and
designs, such as decorative items and furniture, considerations of aesthetic
functionality can lead to a ban on trade mark protection that cannot be overcome
through use in trade.152 Nonetheless, the EFTA Court is critical about this refusal
option because services are not covered from the outset and a registration in respect
of goods that are unrelated to the sign’s initial context may have success.153
Therefore, the Court concludes that the exclusion of trade mark protection on the
basis of substantial value considerations ‘‘does not ensure that works, in general, are
kept within the public domain.’’154
In the light of the Marlene Dietrich decision of the German Federal Supreme
Court, a trade mark application also seems immune from a refusal based on
substantial value considerations when it is argued that the cultural signs concerned
would only be attached to the goods as a label. As explained, the Federal Supreme
Court emphasized in Marlene Dietrich that the portrait photograph at issue did not
have to be placed prominently on the articles. It could also be used as a label
attached to the goods.155 If merely used as a label, a cultural sign can hardly be
found to add substantial value to the goods. Otherwise, the brand value which the
sign represents in the form of the label, would be sufficient to assume aesthetic
functionality and invoke the exclusion based on substantial value considerations.
149 Brussels Court of Appeal, ibid., para. 8.
150 OHIM Board of Appeal, 31 August 2015, case R 2401/2014-4, Anne Frank Fonds (‘‘Le Journal
d’Anne Frank’’), paras. 32–36.
151 Article 3(1)(e)(iii) former Trade Mark Directive 2008/95 and Art. 4(1)(e)(iii) new Trade Mark
152 EFTA Court, ibid., paras. 79 and 81.
153 EFTA Court, ibid., para. 81.
154 EFTA Court, ibid., para. 81.
155 German Federal Supreme Court, 24 April 2008, case I ZB 21/06, Marlene-Dietrich-Bildnis, paras.
19–22. See also the confirmation of this points in German Federal Supreme Court, 31 March 2010, case I
ZB 62/09, Marlene-Dietrich-Bildnis II, paras. 20–28. However, see also CJEU, 26 April 2012, case
C-307/11 P, Deichmann/OHIM, paras. 54–56; and CJEU, 10 November 2016, case C-30/15 P, Simba
Toys/EUIPO (Rubik’s Cube), paras. 46–52, for a more concrete assessment of the method of use.
This, in turn, would lead to a circular line of reasoning and the exclusion of any sign
with brand value from trade mark protection. For example, the attachment of the
Coca Cola logo to soft drinks would also lead to an exclusion of trade mark rights
because the brand value of the logo adds substantial value to the product. To avoid
this absurd result, use as a label necessarily falls outside the scope of the exclusion
of signs giving substantial value to the goods. The EFTA Court thus has a point
when holding that considerations of aesthetic functionality are unreliable, weak
safeguards as well – even though they seem more effective than a refusal based on a
lack of distinctiveness.
5.4 Public Policy and Principles of Morality
In the Vigeland decision, the qualification of distinctiveness and aesthetic
functionality as insufficient guarantees of the public domain status (in the sense
of absence of any intellectual property protection) finally leads to a closer inspection
of the option to refuse registration because of a conflict with public order or
accepted principles of morality. This ground for refusal has the broadest
exclusionary effect: it cannot be overcome through use in trade, and it is not
confined to specific goods or services.156 The EFTA Court makes a first contribution
to the further development of this ground for refusal by clearly distinguishing its
two branches: a refusal based on grounds of public policy requires an assessment of
objective criteria, whereas a refusal based on accepted principles of morality implies
the examination of subjective values.157
As to the subjective criterion of a conflict with accepted principles of morality,
the Court underlines the necessity to examine on a case-by-case basis how the
relevant public would perceive the sign at issue. In line with previous EU case
law,158 the Court poses the question whether Vigeland’s works – in and of
themselves – would be considered offensive by reasonable consumers with average
sensitivity and tolerance thresholds.159 Quite clearly, this question can be answered
in the negative.160 The EFTA Court, however, goes beyond this standard analysis
and adds an important nuance by holding that
certain pieces of art may enjoy a particular status as prominent parts of a
nation’s cultural heritage, an emblem of sovereignty or of the nation’s
156 EFTA Court, ibid., para. 82. However, see also
, section 3(a) and (d), who recommends a
solution based on an assessment of bad faith instead of the invocation of public order or principles of
morality. As the bad faith assessment confines the solution to specific cases where bad faith can be found,
this alternative does not solve the problem of dysfunctional incentives for investment in the development
of cultural heritage trade marks and the described corrosive effect on cultural follow-on innovation. The
solution developed by the EFTA Court is thus preferable.
157 EFTA Court, ibid., paras. 84–86. As to the innovative character of the decision, see
section 3(a), and Geiger and Machado Pontes, pp. 11–12, who place the judgment in the context of
previous EU office and court practice.
158 For an overview, see
Geiger and Machado Pontes (2017
), pp. 8–11;
Kur and Senftleben (2017)
4.205–4.218; ECS (2017), pp. 459–460.
159 EFTA Court, ibid., paras. 89–90 and 93.
160 EFTA Court, ibid., para. 91.
foundations and values. A trade mark registration may even be considered a
misappropriation or a desecration of the artist’s work, in particular if it is
granted for goods or services that contradict the values of the artist or the
message communicated through the artwork in question. Therefore, the
possibility cannot be ruled out that trade mark registration of an artwork may
be perceived by the average consumer in the EEA State in question as
offensive and therefore as contrary to accepted principles of morality.161
This addition is remarkable. With this statement, the EFTA Court departs from
the traditional focus on the scandalous nature of the sign itself. A refusal based on
accepted principles of morality may also follow from a finding that the relevant
public perceives the trade mark registration of an artwork as offensive.162 In this
way, the EFTA Court substantially broadens the field of application of the ground
for refusal. While in the past the offensive nature of the sign was decisive, the
offensive nature of the registration attempt offers an alternative avenue for a refusal
in the view of the EFTA Court. In consequence, the assessment must take into
account the status or perception of the artwork in the relevant national context and
the nature of the goods or services for which registration as a trade mark has been
applied, ‘‘such that registration must be refused if the work is being
As to the second branch of the ground for refusal – the objective criterion of a
conflict with public policy – the EFTA Court notes that ‘‘public policy’’ refers to
principles and standards regarded to be of a fundamental concern to the State and
the whole of society. Therefore, a refusal based on public policy requires
exceptional circumstances, namely ‘‘a genuine and sufficiently serious threat to a
fundamental interest of society.’’164 Nonetheless, the Court sees room for applying
this ground for refusal in the context of artwork registrations: ‘‘An artwork may be
refused registration, for example, under the circumstances that its registration is
regarded as a genuine and serious threat to certain fundamental values or where the
need to safeguard the public domain, itself, is considered a fundamental interest of
The EFTA Court can hardly be expected to embark on a more concrete
assessment of the situation surrounding the application filed by the Municipality of
Oslo. Given the discretion enjoyed by the national authorities in this respect, it is for
the Norwegian office and courts to determine whether these requirements are met in
the Vigeland case. Interestingly, the Czech Republic had submitted a statement to
the EFTA Court referring to ‘‘a fundamental interest of society in leaving certain
famous pieces of art available to everyone, such as well-known and outstanding
161 EFTA Court, ibid., para. 92.
162 EFTA Court, ibid., para. 92. For a national precursor of this broad interpretation in the context of
religious signs, see
, section 3(a). For the discussion of a similar concept of ‘‘cultural
offensiveness’’ that has evolved in New Zealand in respect of signs of indigenous peoples, see Frankel
(2005), pp. 87–91.
163 EFTA Court, ibid., para. 93.
164 EFTA Court, ibid., paras. 94–96.
165 EFTA Court, ibid., para. 96.
creations of mind that are part of the universal cultural heritage.’’166 This statement
shows that national authorities may be willing to adopt the approach developed by
the EFTA Court in the Vigeland decision.
As in the context of accepted principles of morality, the EFTA Court states that a
genuine and serious threat to public policy can follow from the trade mark
registration of an artwork.167 Hence, the Court confirms that not only the nature of
the sign at issue but also the registration attempt as such can be sufficient to justify a
refusal based on Art. 3(1)(f) of the former Trade Mark Directive 2008/95 (Art.
4(1)(f) of the new Trade Mark Directive 2015/2436). The scope of the ground for
refusal is thus broadened substantially.
Furthermore, the EFTA Court provides exemplary lines of argument that could
support an exclusion of artworks from trade mark protection on the basis of public
policy or accepted principles of morality at the national level. In this way, the Court
paves the way for including principles of morality and public policy in the canon of
grounds for refusal that are relevant to the assessment of registration attempts
relating to signs with cultural significance. In the light of the described concerns
about an impediment of cultural follow-on innovation, this is a welcome and
overdue step in the right direction.
Ultimately, the EFTA Court also outlines the limits of its approach. The application of
public policy or principles of morality as grounds for refusal must not lead to a rejection
automatism. The Court makes it clear that ‘‘the fact that an artwork has previously enjoyed
copyright protection may not in itself form the basis for refusing trade mark
registration.’’168 Moreover, no threat to the need to safeguard the public domain can be
found in the case of works that were primarily created to serve as signs to be registered as
trade marks (where cumulative copyright and trade mark protection is merely incidental),
or in the case of signs which, albeit based on a work pertaining to the public domain,
contain additional elements that transform or diffuse the original work to such an extent
that consumers are unlikely to confuse the sign with the original creative work.169
6 Other Findings
In comparison with the fresh guidelines for the application of public policy and
principles of morality as grounds for refusal, the Vigeland decision does not yield
new insights with regard to the other points raised in the prejudicial questions. It
does not come as a surprise that the Court takes the view that the exclusion of
substantial value shapes in Art. 3(1)(e)(iii) of the former Trade Mark Directive
2008/95 is applicable to two-dimensional representations of three-dimensional
shapes, such as Vigeland’s sculptures.170 In the earlier case Pi-Design and Bodum/
166 Report for the Hearing, Judge-Rapporteur Baudenbacher, 5 October 2016, case E-5/16, Municipality
of Oslo (‘‘Vigeland’’), para. 118.
167 EFTA Court, ibid., para. 96.
168 EFTA Court, ibid., para. 88.
169 EFTA Court, ibid., paras. 97–98.
170 EFTA Court, ibid., paras. 112 and 115.
Yoshida, the GCEU had already taken the view that the wording of the shape
exclusions in EU trade mark law did not define the signs which had to be considered
as relevant shapes. The provision made no distinction between three-dimensional
shapes, two-dimensional shapes, or two-dimensional representations of
threedimensional shapes. For this reason, the GCEU had held that the exclusion of
technical shapes covered ‘‘any sign, whether two- or three-dimensional, where all
the essential characteristics of the sign perform a technical function.’’171 The
Vigeland decision is in line with this case precedent. Under Art. 4(1)(e)(iii) of the
new Trade Mark Directive 2015/2436, the question has become obsolete anyway.
The amended version of the EU functionality doctrine comprises not only the shape
of goods but also other characteristics, including two-dimensional features.
With regard to the clarification sought in respect of non-distinctiveness and
descriptiveness as grounds for refusal, the European Commission had submitted that
a relevant assessment factor could be whether the characteristics of a sign were, in
the public’s perception, purely attributable to the ornamental and decorative nature
of the goods, rather than indicating the commercial origin of the goods.172 The
EFTA Court, however, only clarified the interplay of the two grounds for refusal:
descriptiveness implies non-distinctiveness; non-descriptiveness does not preclude
an examination of non-distinctiveness.173
With regard to the preservation of the public domain of cultural creations, the
Vigeland decision of the EFTA Court is a milestone. It paves the way for an
important and welcome recalibration of the copyright/trade mark interface. The
Court departs from the traditional approach which relies on non-distinctiveness,
descriptiveness or genericness to reject trade mark rights. Instead, the Court
provides exemplary lines of argument for the application of considerations of public
policy or principles of morality as grounds for refusal. As a refusal based on these
grounds cannot be set aside once distinctiveness is acquired through use in trade, the
rejection of a registration request leads to an outright exclusion from trade mark
protection and a robust preservation of a work’s public domain status.
Moreover, considerations of public policy and principles of morality, as
interpreted by the Court, offer trade mark offices and courts room to clearly
articulate cultural concerns – in particular the need to prevent an impediment of
cultural follow-on innovation – in the context of a rejection of trade mark
protection. With the Vigeland decision, it becomes possible to state candidly that
trade mark law is not intended to serve as a basis for free-riding on the reputation
and positive image of cultural symbols, the blurring of a sign’s genuine cultural
meaning through the attachment of commercial connotations, the reduction of a
sign’s cultural value as a result of exposure to commercial marketing strategies, and
171 General Court, 8 May 2012, case T-416/10, Pi-Design and Bodum/Yoshida, paras. 24 and 27.
172 EFTA Court, ibid., para. 132.
173 EFTA Court, ibid., para. 141. Cf. ECS (2017), pp. 463.
the impairment of the unhindered, open communication process surrounding the
sign in the cultural domain.
With its decision, the EFTA Court also paves the way for the elimination of a
serious imbalance within the intellectual property system. Whereas the doctrine of
technical functionality can be employed to draw a boundary line between trade
mark and patent protection, and the doctrine of aesthetic functionality offers an
effective tool to police the border between trade mark and industrial design
protection, comparable instruments to separate trade mark protection from
copyright protection have not been developed yet. As in the case of overlaps with
patent and industrial design rights, however, indefinitely renewable trade mark
rights involve the risk of an artificial extension of the limited term of copyright
protection (in the case of simultaneous trade mark protection) and the
impoverishment of the public domain of cultural expressions (in the case of subsequent trade
The Vigeland decision has the potential to fill this gap. According to the EFTA
Court, public policy and principles of morality can serve as grounds for refusal not
only when a sign is perceived as problematic in and of itself, but also when the
registration of an artwork as a trade mark is deemed problematic. As a result of this
considerable broadening of the field of application, considerations of public policy
and principles of morality could play a role in policing the border between copyright
and trade mark protection that is comparable with the role fulfilled by the
functionality doctrine in respect of the patent/trade mark interface and the industrial
design/trade mark interface.
After all, it is difficult to understand why, to this day, there is broad consensus in
trade mark law that technical solutions, such as the Philishave razor system and the
Lego brick,174 must be kept free, whereas no clear-cut answer can be given when an
attempt is made to register a cultural creation, such as the Mona Lisa or Gustav
Vigeland’s Angry Boy. Is freedom to use technical solutions really so much more
important than freedom to use works of art? Even in the case of works belonging to
the universal cultural heritage?
To remedy this imbalance, national offices and courts should follow in the
footsteps of the EFTA Court. Invoking public policy and principles of morality, they
can avoid that trade mark law provides dysfunctional incentives for the
reprivatization of cultural public domain material. They can also avoid that public
money, such as the financial resources of the city of Oslo, is spent to acquire and
maintain a trade mark portfolio of artworks. Arguably, this money should be
invested in primary public tasks instead. Why not invest more in the work of art
academies and cultural heritage institutions, such as museums and archives?
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