EU Trade Marks and the Right to Freedom of Expression

A delicate balance of interests must be maintained between the fundamental human rights of freedom of expression and the rights of trade mark owners. 

This balance is crucial in limiting aggressive practices by trade mark rights holders seeking to push exclusivity beyond reasonable limits, which can result in a suppression of artistic uses of trade marks, public debate, or fair competition.  It is equally true, though, that the investment in developing, promoting and registering a trade mark should be able to avail of robust legal protection and should not be without recourse in the event of unfair commercial abuse or tarnishment.

The (relatively new) EU Trade Mark Regulations, effective since October 2017, explicitly acknowledges the importance of fundamental freedom rights and seeks to balance these principles with a catalogue of specific limitations. Recital 21 highlights that “this Regulation should be applied in a way that ensures full respect for fundamental rights and freedoms, and in particular the freedom of expression”. By combining principles with guidelines, the new Regulation provides Courts with both clarity and flexibility to resolve cases when trademark law and fundamental rights appear to be in conflict.

Freihaltebedürfnis: The Need to Keep Signs Free for Trade

Freedom of expression may impact on the registration, protection, and enforcement of trade marks. In particular, considerations around permitting the free use of customary language and signs underpins some of the most important rules concerning the registration of EU trade marks including Article 7(1)(b), 7(1)(c) and 7(1)(d) which prohibit the registration of marks which are non-distinctive, which serve only as designations of characteristics of the goods or services, or which have become generic or common in trade practice.

A seminal judgement predating the new Regulation, which was rooted in the promotion of the general public’s interest in freedom of expression, was the European Court of Justice in 2003 (C-104/01, Libertel Groep BV v Benelux-Merkenbureau) where Libertel Groep BV had applied to register the colour orange for telecommunications services. The Court refused to permit the registration on the grounds that it would be too generous a monopoly to grant as it would result in unfair restrictive on others. The judgement emphasized that "regard must be had to the general interest in not unduly restricting the availability of colours for the other traders who offer for sale goods or services of the same type as those in respect of which registration is sought."

Weighing Rights to Expression against Article 7(1)(f) EUTMR

Freedom of expression may also be a counter weight against public interest absolute grounds concerns. For example, in 2017 the Second Board of Appeal at EUIPO considered the refusal by an Examiner to allow the registration of the word mark ‘Brexit’ for goods in Classes 5, 32 and 34 under Article 7(1)(f) on the basis that citizens of the EU would be deeply offended by the registration and use as a product identifier. The Board found that the decision might be contrary to the freedom of expression and referred to ECHR case No 48876/08 which stated that freedom of expression also covers expressions that ‘offend, shock and disturb’.  Following this principle, ‘Brexit’ could not be barred registration even if it was offending or disturbing, and the Board annulled the decision of the Examiner. Since then however EUIPO have issued guidelines preventing registration of the word Brexit???

Limitations that apply to trade mark rights – legitimate commercial uses of trade marks by third parties

Article 14 of the EUTMR places limitations on the effect of trade marks, including permitting the use of the EUTM to identify or refer to goods or services as those of the proprietor of the trade mark, such as may be required in the course of trade by providers of repair and replacement services, or for comparative advertising. This limitation only applies where the use made by a third party is in accordance with honest commercial practices.

Artistic expression, Parody and Political and Social Debate

Recital 21 of the EU Trade Mark Regulation states that the use of an EU 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 commercial matters.’ 

This allows for the reproduction of marks by non-commercial users such as artists and members of the public who wish to share or exchange their personal views, and who use a trade mark in a manner devoid of an advertising function. Key considerations to be borne in mind when considering whether an expression is likely to be considered fair include:

-         The extent to which the expression has a commercial nature

-         The extent to which there is a general public interest or social relevance

-         The extent to which the expression has a real creative contribution or input

To look at some examples of how European authorities have interpreted these principles, it is useful to look to the decision of the Danish Complaints Board for Domain Names, Case no. 2000-208, lorteseat.dk, issued on 24 March 2003. The Board found that a private citizen who set up a domain www.lorteseat.dk did not infringe upon car manufacturer SEAT’s trade marks as the site was clearly recognizable as a “hate-site” and was not a commercial entity, therefore there was no likelihood of confusion. By contrast, the same Complaints Board one year on, considered the domain www.fuckseoghor.dk. In this case (Case no. 2004-536, Decision 2 December 2004) the site sold caps and hats marked with the name of the website and thence the website was held to act in the course of trade and the trade mark of the magazine SE og H?R was found to have been infringed. In this case, the domain name was transferred to the TM proprietor. 

A more recent high-profile trade mark infringement case involved Mo?t Hennessey Champagne Services who sought an injunction against Belgian artist Cedric from the Brussels Commercial Court. The artist had painted several works featuring the bottle and trade mark of Dom Pérignon champagne, and he also sold a range of sweaters and t-shirts bearing a stylised image of the paintings under the name “Damn Pérignon”. In the judgement, which issued on 12 April 2018, the Court considered that the use of the Dom Pérignon marks was not indicative of the commercial origin of the paintings. However, the Court found that the use of the figurative sign and the words Damn Pérignon on clothing constituted trademark use which took unfair advantage of the reputation of the Dom Pérignon trademarks and was deemed likely to dilute those marks and which tarnished Dom Pérignon's reputation (due to the offensive tone of the word 'damn' and the boudoir nature of the paintings). 

Summary

The EU Trade Mark Regulations clearly point to the need to balance the right to hold property with the right to freedom of expression. This logic underpins the absolute grounds for refusal to register a trade mark, stemming from the requirement to permit general use of customary and descriptive language. Morality and public order objections are tempered by the requirement to permit expression, even if it may cause some level of offence. Case law is helpful in pointing to where the border falls between artistic creation and the expression of a point of view, and commercial activities falling under the protection of trade mark law. There is a clear need for artists and activists, but also for rights holders, to be aware of their rights and responsibilities, so that each may enjoy his rights without encroaching upon the other.