University of SheffieldJune 30, 2015

The Copyright/ Trademark Interface

Prof. Martin Senftleben VU University Amsterdam

Bird & Bird, The Hague

Contents

• The problem

• Available balancing tools

– Exclusion from protection

– Requirement of distinctive character

• Problem solved?

The problem

public domain of cultural expression

(cultural heritage)

Copyright law: an inspiration system

public domain of distinctive signs

(source identifiers)

Trademark law: a transparency system

static trademark protection vs.

cyclic innovation in copyright

Conflict between the protection systems

• drying-out of sources of inspiration

• monopolisation of building blocks of

new creations

= impediment of the cultural inspiration

cycle

Risks

Balancing tools

signs excluded from protection

protection with limited scope

requirement of distinctiveness as a gatekeeper

• exclusion of signs

• acceptance on certain conditions

• scope of protection

Available balancing tools

Exclusion from protection

(unconditional exclusion)

signs consisting of a shape

• resulting from the nature of the goods

themselves

• necessary to obtain a technical result

• giving substantial value to the goods

(Art. 3(1)(e) TMD)

Further exclusions

• fundamental distinction between the

trademark and the product

• freedom of competition (need to keep

product features free)

• preservation of the public domain (no

evergreening conflicting with cyclic

innovation)

Need for shape exclusions

Example technical solutions

‘… to prevent trade mark protection from granting

its proprietor a monopoly on technical solutions or

functional characteristics of a product which a user

is likely to seek in the products of competitors.’

(para. 78)

• no monopolisation of decisive product features

• safeguarding freedom of competition

CJEU, 18 June 2002, case C-299/99, Philips/Remington

‘In refusing registration of such signs, Article 3(1)

(e), second indent, of the Directive reflects the

legitimate aim of not allowing individuals to use

registration of a mark in order to acquire or

perpetuate exclusive rights relating to technical

solutions.’ (para. 82)

• no artifical extension of the term of patent

protection

CJEU, 18 June 2002, case C-299/99, Philips/Remington

• patent protection expired

• reappropriation via trademark law?

Example technical solutions

‘…the prohibition on registration as a trade mark of

any sign consisting of the shape of goods which is

necessary to obtain a technical result ensures that

undertakings may not use trade mark law in order

to perpetuate, indefinitely, exclusive rights relating

to technical solutions.’ (para. 45)

• Lego brick qualified as functional

• shape alternatives not decisive (para. 55)

CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)

• result: technical know-how remains free

after patent expiry

• costs: risk of confusion/unfair free riding?

‘In the present case, it has not been disputed that

the shape of the Lego brick has become distinctive

in consequence of the use which has been made

of it and is therefore a sign capable of

distinguishing the appellant’s goods from others

which have another origin.’ (para. 40)

CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)

Example industrial design

exclusion of substantial value shapes

relevant:

value due to beauty or

attractiveness

irrelevant:

value due to trademark recognition

Benelux Court of Justice, NJ 1989, 834, Burberrys I

‘…the shape of a product which gives substantial

value to that product cannot constitute a trade mark

[…] where, prior to the application for registration, it

acquired attractiveness as a result of its recognition

as a distinctive sign following advertising campaigns

presenting the specific characteristics of the product

in question.’ (para. 28)

• traditional Benelux distinction overruled?

CJEU, 20 September 2007, case C-371/06, Benetton/G-Star

General Court, 6 October 2011, case T-508/08, Bang & Olufson

General Court, 6 October 2011, case T-508/08, Bang & Olufson

• need to prevent monopoly also in the case

of substantial value shapes

‘Like the ground for refusal to register that applies

to the shapes of goods which are necessary to

obtain a technical result, the ground that concerns

refusal to register signs consisting exclusively of

shapes which give substantial value to the goods

is to prevent the granting of a monopoly on those

shapes.’ (para. 66)

General Court, 6 October 2011, case T-508/08, Bang & Olufson

• this need arises in particular in the case

of specific design

‘Indeed, the shape for which registration was

sought reveals a very specific design and the

applicant itself admits [...] that that design is an

essential element of its branding and increases

the appeal of the product at issue, that is to say,

its value.’ (para. 74)

General Court, 6 October 2011, case T-508/08, Bang & Olufson

• this need arises in particular in the case of

specific design

‘Furthermore, it is apparent [...] that the aesthetic

characteristics of that shape are emphasised first

and that the shape is perceived as a kind of pure,

slender, timeless sculpture for music reproduction,

which makes it an important selling point.’

(para. 75)

CJEU, 18 September 2014, case C-205/13, Hauck/Stokke

rationales underlying shape exclusions

competition:

no monopoly on essential product

characteristics

term extension:

no evergreening of rights with limited

period of protection

CJEU, 18 September 2014, case C-205/13, Hauck/Stokke

CJEU, 18 September 2014, case C-205/13, Hauck/Stokke

• need to safeguard competition in case of

shape resulting from nature of the goods

• not only when indispensable (natural and

regulated products) but also when inherent

to the generic function

‘…that shapes with essential characteristics which

are inherent to the generic function or functions of

such goods must, in principle, also be denied

registration.’ (para. 25)

CJEU, 18 September 2014, case C-205/13, Hauck/Stokke

• no artificial extension of limited protection

in the case of substantial value shapes

• catalogue of essential characteristics

– nature of the category of goods concerned

– artistic value of the shape in question

– dissimilarity from other shapes on the market

– substantial price difference

– promotion strategy accentuating aesthetic

characteristics (para. 35)

• copyright protection limited in time

• term extension via trademark law?

• accumulation of rights possible in many cases

Example literary and artistic works

difference

justified

because of

substitutability?

Literary and artistic works

Pierre Bourdieu

Lack of distinctiveness

(conditional acceptance)

Attempts to register cultural heritage signs

positive image

of cultural

symbols

Risk of free riding

Federal Patent Court of Germany, 25 November 1997, ‘Mona Lisa’

• The Mona Lisa is not

distinctive.

• The Mona Lisa has

become customary in

trade practices.

• But there is no conflict

with morality or public

order.

Guernica for weapons?

• distinctive?

• customary in trade practices?

Solveig’s song for beer?

• distinctive?

• customary in trade practices?

CJEU, C-283/01, Shield Mark/Kist

‘I find it more difficult to accept […] that a creation of the

mind, which forms part of the universal cultural heritage,

should be appropriated indefinitely by a person to be used

on the market in order to distinguish the goods he

produces or the services he provides with an exclusivity

which not even its author's estate enjoys.’

(Opinion A-G Colomer, 3 April 2003, para. 52)

Leaving the issue

to the marketing

efforts of the

industry?

Distinctiveness a sufficient safeguard?

Art. 3(3) TMD

• in these cases, the exclusion from trademark

protection is less absolute

• backdoor: acquisition of distinctive character

in consequence of use in trade

‘A trade mark shall not be refused registration or be

declared invalid in accordance with paragraph 1(b),

(c) or (d) if, before the date of application for

registration and following the use which has been

made of it, it has acquired a distinctive character.’

Limited scope of

trademark rights

• principle of specialty (protection relating to

specific goods/services)

• notion of trademark use– mere references to the trademark sufficient?

– cultural, political, religious, educational context

• but enhanced protection of well-known

marks

– may cover all kinds of goods and services

– proof of confusion not necessarily required

Limited scope of trademark protection

Louis Vuitton v. Nadia Plesner

Plesner: Darfurnica (2010)

Better solution?

• risk of privatising (re-monopolising) parts

of the cultural heritage

• undesirable redefinition of important

cultural expressions in commerce

• free riding on the status, reputation and

favourable image of cultural expressions

• discouragement of ‘cultural heritage

grabbing’

Cultural grounds for refusal necessary?

Art. 3(2) TMD

Any Member State may provide that a trade

mark shall not be registered or, if registered,

shall be liable to be declared invalid where

and to the extent that:

b)the trade mark covers a sign of high

symbolic value, in particular a religious

symbol;...

The end. Thank you!For publications, search for

‘senftleben’ on www.ssrn.com.

contact: m.r.f.senftleben@vu.nl