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The Protection of Non-Traditional TrademarksCritical Perspectives$

Irene Calboli and Martin Senftleben

Print publication date: 2018

Print ISBN-13: 9780198826576

Published to Oxford Scholarship Online: February 2019

DOI: 10.1093/oso/9780198826576.001.0001

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A Clash of Culture and Commerce

A Clash of Culture and Commerce

Non-Traditional Marks and the Impediment of Cyclic Cultural Innovation

Chapter:
(p.309) 16 A Clash of Culture and Commerce
Source:
The Protection of Non-Traditional Trademarks
Author(s):

Martin Senftleben

Publisher:
Oxford University Press
DOI:10.1093/oso/9780198826576.003.0017

Abstract and Keywords

Non-traditional marks offer enhanced possibilities for the cumulation of copyright and trademark rights. With the recognition of shape, sound, and motion marks, new areas of overlap emerge that affect traditional work categories, in particular sculpture and plastic art, musical compositions, and audiovisual creations. Discussing the corrosive effect of this growing area of overlap on cultural follow-on innovation, the chapter yields the insight that it is advisable to recalibrate the copyright/trademark interface. Instead of relying on distinctiveness as a gatekeeper and volatile infringement criteria and defenses within trademark law, more robust mechanisms are necessary to prevent the acquisition of trademark rights to cultural signs from the outset—grounds for refusal that apply across all goods and services and cannot be overcome through use in trade. The chapter explores the room for the development of these more robust mechanisms. It brings a refusal based on public order or morality into focus.

Keywords:   non-traditional mark, copyright, protection overlap, public domain, freedom of expression, cultural follow-on innovation, distinctiveness, public order, morality

I. Introduction

In intellectual property law, overlaps of exclusive rights that stem from different protection regimes raise difficult questions. In Dastar v. Twentieth Century Fox, the United States (U.S.) Supreme Court held that overlaps between trademark and copyright or patent protection can have a corrosive effect on the “carefully crafted bargain” under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will.1 The Court of Justice of the European Union (CJEU) expressed similar concerns in Hauck v. Stokke, where it explained that the functionality doctrine in trademark law served the purpose of preventing the exclusive and permanent right that a trademark confers “from serving to extend indefinitely the life of other rights which the [European Union (EU)] legislature has sought to make subject to limited periods.”2

Despite the awareness of the potential corrosive effect of protection overlaps on both sides of the Atlantic, the intellectual property system fails to draw a clear boundary line between the subject matter of copyright and trademark protection. Instead, character merchandising leads to cumulative copyright and trademark protection of contemporary cultural symbols (Mickey Mouse).3 In principle, it is also possible to acquire trademark rights to cultural heritage symbols once distinctive character is acquired through use in trade (Mona Lisa).4 The situation differs (p.310) markedly from the status quo reached in respect of patent–trademark overlaps. At the intersection of these two protection regimes, the doctrine of technical functionality prevents the cumulation of exclusive rights.5 Similarly, the doctrine of aesthetic functionality can be employed to arrive at a far-reaching separation of trademark and industrial design protection.6

In respect to the copyright–trademark interface, by contrast, the recognition of non-traditional trademarks even broadens the area of overlap and aggravates the problems arising from cumulative protection.7 Three-dimensional objects may (p.311) serve as shape marks. A short melody may constitute a sound mark.8 A computer animation may qualify as a motion mark. Even single colors—indispensable raw material of artistic creativity—are registrable.9 Given this broad range of signs qualifying as trademarks, new areas of double protection emerge and affect traditional work categories, in particular sculpture and plastic art, musical compositions, and audiovisual creations.

The outlined problem of copyright–trademark overlaps is not merely of a theoretical nature. The friction between copyright and trademark policies clearly comes to the fore in case law that evolved from attempts to register non-traditional marks with cultural significance. Relevant decisions shed light on the tension between the limited term of copyright protection and the trademark rule of indefinitely renewable rights: while copyright law aims at the continuous enrichment of the public domain, the grant of trademark rights entails the risk of an undesirable re-appropriation of public domain material. The famous Shield Mark decision of the CJEU, for example, concerned the registration of the first nine notes of Beethoven’s piano piece “Für Elise” as a sound mark.10 Discussing this registration initiative, Advocate General Ruiz-Járabo Colomer explicitly addressed the public domain dimension of the case. He stated 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.11

In the Vigeland case,12 the Court of Justice of the European Free Trade Association States (EFTA Court)13 was called upon to assess an attempt to register several sculptures made by Gustav Vigeland—one of the most eminent Norwegian sculptors—as shape marks. The reason for the initiative to acquire trademark rights was the expiry of the term of copyright protection.14 The municipality of Oslo sought to secure exclusive trademark rights even though Vigeland’s creations had entered the public domain.15 Among other works, the trademark application concerned Vigeland’s “Monolith” (Monolitten) and “Angry Boy” (Sinnataggen)—popular works that feature prominently in the Vigeland Installation in the centre of Oslo’s Frogner Park. (p.312) Discussing this registration attempt, the EFTA Court could not rule out that the grant of trademark rights may lead to a conflict with public policy:

An artwork may be refused registration [because of a conflict with public policy], 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 society.16

Non-traditional marks with cultural significance can thus give rise to concerns about an encroachment of trademark rights upon the public domain of cultural expressions. Nonetheless, concerns about an impediment of literary and artistic creativity do not always lead to deference to cultural policies in court decisions and literature statements.

By contrast, an uncritical attitude vis-à-vis cumulative copyright and trademark protection seems to prevail, as outlined in Section II. Given the fundamental importance of a rich and robust public domain as a reservoir for cultural follow-on innovation, this uncritical approach is questionable. In particular, it is wrong to assume that copyright–trademark overlaps are less problematic than patent–trademark overlaps. Similar to technical solutions, literary and artistic works are not substitutable in the context of innovation processes leading to derivative creations. For an artist who wants to base her own work on a specific pre-existing creation, it makes a difference whether the desired source for a derivative work is in the public domain or on the trademark register. Once trademark rights are granted, the use of cultural public domain material is no longer as free as it was before. 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 signs as trademarks, this absolute freedom is sacrificed in favor of a scenario in which trademark rights can serve as a basis for an infringement action, as addressed in Section III. The climate change with regard to the reuse and remix of cultural material is considerable. Artists are exposed to the risk of an infringement action. Moreover, the attachment of commercial marketing messages may blur a sign’s genuine cultural meaning and devaluate it for purposes of cultural follow-on innovation. These concerns are the focus of Sections IV and V. A proposal for more robust grounds for refusal that allow the categorical exclusion of signs with cultural significance from trademark protection follows in Sections VI and VII.

II. Traditional Acceptance of Copyright–Trademark Overlaps

Despite the friction between divergent policies that may arise from cumulative copyright and trademark protection, a rather uncritical acceptance of overlaps seems to prevail in literature and court decisions. The possibility of combining copyright and trademark protection is often mentioned without much commentary on potential risks for cultural follow-on innovation, or accepted on the ground that trademark (p.313) rights do not offer protection for a cultural creation as such, but only for certain functions which the cultural creation fulfills as a distinctive sign in respect of goods and services to which it is attached.17 Arguing in favor of an entitlement of rights owners to accumulate copyright and trademark 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.18

Besides this maximalist view, which readily accepts the cumulation of rights as a corollary of formal eligibility for protection under copyright and trademark law, more nuanced approaches have 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.19 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 were sufficient to prevent excessive protection that would obstruct competition, the cumulation of copyright and trademark rights could be deemed acceptable.20 Otherwise, however, overlapping protection raised the problem of “asymmetric convergence” and required appropriate countermeasures.21

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 trademark 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.22 Hence, potentially indefinite trademark 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) trademark law.23 Seeking to prevent one protection regime from blurring the conceptual contours of the other, Verkade (p.314) proposes to determine on a case-by-case basis whether the trademark or copyright aspect takes precedence.24

The critical comments on trademark–copyright overlaps, finally, comprise proposals seeking to eliminate cumulative copyright and trademark 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.25 If the constant enrichment and cultivation of the public domain is qualified as an element of the ordre public, an amalgam of copyright and trademark rights that allows the continuation of trademark 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.26

In practice, however, judges seem reluctant to adopt positions leading to the separation of copyright and trademark protection.27 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 favor the rather uncritical attitude vis-à-vis cumulative copyright and trademark protection that comes to the fore in many literature statements. In Danjaq LLC v. OHIM (“Mission Productions”), the General Court of the European Union (GCEU) clearly followed this uncritical approach.28 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 trademark. Commenting on the possibility of copyright and trademark overlaps in this context, the GCEU 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.29

Hence, the GCEU readily accepted the protection overlap on the ground that trademark rights do not offer protection for a cultural creation as such, but only for certain functions which the cultural creation fulfills as a distinctive sign in respect of (p.315) goods and services to which it is attached.30 In this vein, the GCEU stated that “only signs which develop characteristic trade mark functions”31 were eligible for trademark protection. It rejected trademark 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.32 Nonetheless, the decision confirms the possibility of combining copyright and trademark 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 trademark claims.33 In recent decisions, the Court added that a holder of rights under trademark and copyright law could invoke both rights simultaneously only if he had a distinct interest in the protection following from each individual right.34 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 trademark law protects specific trademark functions, it is easy to justify the assertion of trademark rights by pointing to the interest in preserving the trademark features of the intellectual creation concerned.35 The Dutch Supreme Court relied on similar considerations to explain the acceptance of combined copyright and trademark claims.36

The result is a rather low, if not negligible, threshold for the cumulation of copyright and trademark 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 trademark. In any case, courts do not seem hesitant to hear claims based on cumulative copyright and trademark protection. Instead, they favor 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.

III. Corrosive Effect on Cultural Follow-On Innovation

As pointed out above, the acceptance of copyright–trademark overlaps is highly problematic when it comes to signs with cultural significance. Pierre Bourdieu’s (p.316) sociological analysis of the field of literary and artistic production provides a useful theoretical framework in this context. His analysis of cyclic innovation processes in the artistic domain leads to the insight that the room for possible new positions in the creation of art—the range of options available for the establishment of a new avant-garde—depends on the positions that have already been taken by previous artists.37 For a new generation of artists to challenge the leading avant-garde, it must detect the structural gaps within the texture of already known aesthetic positions. It must formulate an alternative artistic position in the light of the weaknesses and contradictions of the present state of the art.38 The positions that have already been taken in the literary and artistic field thus constitute potential lines of development and potential starting points for new literary and artistic productions.

This description of cyclic innovation in the artistic domain makes it possible to draw a parallel between copyright and patent law. Evidently, innovation in the field of technology is also the result of the use of pre-existing technical solutions for the purpose of developing new know-how. With regard to the regulation of overlaps with trademark protection, this functional parallel has important repercussions: the fact that both copyright and patent law regulate processes of cyclic innovation may imply that the same effort must be made to safeguard the respective cyclic innovation processes when it comes to overlaps with indefinitely renewable trademark rights. In this vein, the U.S. Supreme Court emphasized in Dastar that it was necessary to shield the quid pro quo underlying both—copyright and patent law—from the corrosive effect of protection regimes with potentially indefinite rights:

The rights of a patentee or copyright holder are part of a “carefully crafted bargain,” under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. Thus, in construing the Lanham Act, we have been “careful to caution against misuse or over-extension” of trademark and related protections into areas traditionally occupied by patent or copyright.39

However, the argument of a need to safeguard the cultural inspiration cycle (copyright law) to the same extent as the technical innovation cycle (patent law) rests on the assumption that the respective processes of cyclic innovation are vulnerable to a comparable degree. This raises the question whether coexisting trademark protection is likely to harm the cyclic evolution of new cultural productions to the same extent as it would harm the cyclic evolution of new technical knowledge.

The answer to this question seems to be influenced by general perceptions of the domain of technology on the one hand, and the domain of culture on the other. While technical knowledge is seen as the result of exact, objective science, cultural productions are often portrayed as the result of subjective, intuitive imagination.40 This fundamental difference—the objective domain of technology and the subjective (p.317) domain of culture—may be understood to justify the further assumption that there is also a fundamental difference with regard to the substitutability of intellectual creations stemming from these distinct domains. Whereas it is often readily accepted that a technical problem can only be solved by applying one particular patent, the same assumption may appear less plausible when it comes to literary and artistic works. If a particular literary or artistic work is not available even though copyright protection has already expired, the view may be held that it can easily be replaced with a comparable work that also fits in the envisaged cultural production.

The exact, objective nature of technical know-how and the subjective, imaginative nature of artworks may thus predetermine our assessment of the need to ensure the availability of intellectual resources in the respective domains of technology and culture when it comes to overlaps with trademark law: whereas technical knowledge may be regarded as non-substitutable to an extent that justifies strong measures to keep it freely available for technical follow-on innovation, the existence of alternatives for a literary or artistic work is often readily assumed without considering a potential corrosive effect on the evolution of new cultural productions. In the context of assessing the vulnerability of processes of technical and cultural innovation, this may lead to the conclusion that technical innovation will inevitably be frustrated if a particular technical solution is not available because of coexisting trademark protection. Cultural innovation, by contrast, may be deemed unaffected even if a particular work is not available as a result of trademark protection.

This conclusion, however, is false. According to Bourdieu, it is naïve to assume substitutability of literary and artistic works in the context of the production of new works. As explained, his analysis shows that the room for the evolution of new directions in the creation of art depends on the range of options that is available in the light of the positions that have already been taken by previous artists.41 For an artist seeking to formulate a new artistic position in the light of an aesthetic position reflected in a particular pre-existing work, the conditions of use surrounding this pre-existing work are crucial. If the work is not available as a basis for a derivative work, the envisaged cultural innovation step will simply not take place. In other words, every pre-existing aesthetic position that is not freely available for cultural follow-on innovation reduces the range of options that later generations of artists have at their disposal to find and formulate new aesthetic positions. When placed in the context of the rule of indefinitely renewable trademark rights, it can thus be said that every literary and artistic work that does not enter the public domain after the expiry of copyright protection reduces the resources that are readily available for cultural follow-on innovation.

The dilemma arising from copyright–trademark overlaps is thus not much different from the scenario in the field of technology. The objectivity of the technological domain on the one hand, and the subjectivity of the cultural domain on the other, does not imply that the cultural innovation cycle is less vulnerable than the technical innovation cycle. Nor does it imply that literary and artistic works are (p.318) substitutable to a larger extent. By contrast, it simply means that the assessment of non-substitutability is objective in the case of technical solutions, whereas it is subjective in the case of literary and artistic works. For determining whether a given technical solution is unique, pioneering, and non-substitutable, an objective assessment can be made. Persons skilled in the respective field of technology may reach agreement on non-substitutability on the basis of objective criteria. This, however, is fundamentally different in the field of culture. As the creation of new literary and artistic works is subjective, the assessment of pre-existing “masterpieces” that are indispensable (and thus non-substitutable) for follow-on creativity is subjective as well. Every artist will make her own, subjective assessment of pre-existing aesthetic positions and identify those that are relevant to her own creativity on the basis of this subjective assessment.

In contrast to specialists in a particular field of technology who can rely on objective assessment criteria, artists specializing in a particular field of art do not have shared objective criteria at their disposal because of the subjectivity of the domain of culture and creativity. Consequently, artists are unlikely to generally agree on the non-substitutability of a given literary and artistic work. A cultural expression that may be non-substitutable for one artist may appear unimportant and substitutable for another.

In terms of vulnerability of innovation processes in the domains of culture and technology, this insight does not permit the conclusion that cultural follow-on innovation need not be shielded from potential corrosive effects of trademark protection to the same extent as technical follow-on innovation. By contrast, even broader measures are necessary to safeguard cultural follow-on innovation because it is not foreseeable which aesthetic positions reflected in a literary or artistic work will be non-substitutable from the perspective of later generations of artists. As it is possible to identify unique, non-substitutable technical solutions on the basis of objective criteria, efforts to inhibit protection overlaps from interfering with technical follow-on innovation, at least theoretically, could be confined to these unique, non-substitutable solutions.42 However, the subjectivity of the decision on relevant source materials in the field of cultural productions makes it impossible to reach general agreement on unique, non-substitutable cultural expressions. Efforts to prevent protection overlaps from interfering with cultural follow-on innovation, thus, cannot be confined to specific literary and artistic works. In principle, each aesthetic position may become indispensable for the creation of a new work. Therefore, it is wrong to assume that the cultural innovation cycle is less vulnerable than the technical innovation cycle when it comes to protection overlaps that may restrict the intellectual resources available for follow-on creativity. As technical solutions, literary and artistic works are non-substitutable.

(p.319) IV. Reliance on Checks and Balances in Trademark Law

From the perspective of cultural innovation, cumulative copyright and trademark protection is thus undesirable and the acceptance of non-traditional marks is particularly problematic because it broadens the potential corrosive effect of trademark protection by extending the reach of trademark law to more and more categories of artistic creativity. Once this starting point is accepted, the practical impact of trademark protection on remix and reuse in the cultural domain becomes a center of gravity in the debate. Evidently, the described cultural concerns only carry weight if it is right to assume that trademark protection reduces the potential of affected literary and artistic creations to serve as a basis for new works. Surprisingly, many judges and commentators seem to be confident that they can prevent an encroachment upon cultural remix and reuse by employing balancing tools that are available in trademark law.43 The registration requirement of distinctiveness, the impact of cultural significance on the infringement analysis, and defenses to trademark infringement claims play a central role in this context.

A. No registration because of lack of distinctiveness

To illustrate the reliance on the basic threshold requirement of distinctiveness in the context of signs with cultural significance, the Mona Lisa decision of the German Federal Patent Court can serve as an example. The case concerned an attempt to register the famous Leonardo da Vinci painting as a trademark.44 Rejecting the 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.45 The Court also held that, because of the frequent use in advertising, the painting had become customary in established trade practices.46 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 trademark law would not violate the principle that cultural expressions should remain freely available for the public after the expiry of copyright protection.47 Instead of openly addressing the cultural (p.320) dimension of the trademark application, the Court thus relied exclusively on the basic requirement of distinctiveness.

Interestingly, this focus on distinctiveness also comes to the fore in decisions on non-traditional trademarks. Regulating access to trademark protection for shape marks and color per se, the CJEU relies on distinctive character as a central gatekeeper. In Henkel v. DPMA, the CJEU pointed out that average consumers were not “in the habit of making assumptions about the origin of goods based on the shape of their packaging, in the absence of any graphic or word element.”48 Therefore, it could prove more difficult, according to the CJEU, to establish distinctive character in the case of product packaging for which trademark protection is sought. Only a trademark that significantly departed from the norm or customs of the sector and thereby fulfilled the function of an indication of commercial origin was not devoid of distinctive character.49 In Libertel v. Benelux-Merkenbureau, the CJEU invoked the same line of argument with regard to color per se.50 Distinctiveness without any prior use was inconceivable, save in exceptional circumstances, and particularly where the number of goods or services for which the mark was claimed was very restricted and the relevant market very specific.51

If an application concerns a non-traditional mark with cultural significance, such as an application for registering a famous sculpture as a shape mark, the criterion of acquired distinctive character will thus play a crucial role. Instead of openly addressing cultural concerns, such as 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 favorable image of cultural creations,52 judges are likely to hide behind considerations relating to a sign’s degree of distinctiveness.53

B. No confusion because of cultural significance

If trademark protection is granted, a sign’s cultural significance can tip the scales against a finding of a likelihood of confusion in the context of the infringement analysis. In the EU, this became apparent in Picasso v. OHIM, where the CJEU had to decide on an opposition against defendant Daimler’s application for registration of the sign PICARO for vehicles. The opposition had been lodged by the Picasso (p.321) estate, arguing that PICARO was likely to cause confusion with the earlier word mark PICASSO, which it had registered for various goods, including vehicles.54 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.55 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.56 As to the meaning of the PICASSO mark, the CJEU recalled the factual assessment of the GCEU, 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.57

Hence, the fact that the name “Picasso” is well known as a reference to the famous painter does not imply that the trademark PICASSO is highly distinctive and enjoys broad protection against confusion.58 The painter’s fame cannot simply be transferred to the trademark 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 trademark.59

C. Limitations supporting freedom of expression

Considering the statutory limitations of trademark rights, it is finally to be conceded that even if prima facie infringement is found, use of trademarked cultural material may still be found permissible in the light of available defenses, such as the defenses of “due cause”60 and “referential use”61 in EU trademark legislation. The case Lila Postkarte of the German Federal Court of Justice, for example, concerned the marketing of postcards that alluded ironically to trademarks and advertising campaigns of the chocolate producer Milka.62 On purple background corresponding to Milka’s abstract color mark, the postcard sought to ridicule the nature (p.322) idyll with cows and mountains that is evoked in Milka advertising.63 It showed the following poem attributed to “Rainer Maria Milka”:

Über allen Wipfeln ist Ruh/

irgendwo blökt eine Kuh/

Muh!64

Assessing this ironic play with Milka insignia, the German Federal Court of Justice held that for the use of Milka trademarks to constitute relevant trademark use in the sense of EU trademark law, it was sufficient that the postcard called to mind the well-known Milka signs.65 Even though being decorative, the use in question therefore gave rise to the question of trademark infringement.66 Accordingly, the Court embarked on a scrutiny of the trademark parody in the light of the infringement criteria of detriment to distinctive character or repute, and the taking of unfair advantage.67 Weighing Milka’s concerns about a disparagement of the trademarks against the fundamental guarantee of the freedom of art, the Court finally concluded that the freedom of art had to prevail in light of the ironic statement made with the postcard.68 The use of Milka trademarks was found to have taken place with “due cause.”69

Similar decisions may follow from the application of the defense of “referential use,” which was broadened in the framework of the EU trademark law reform and is now laid down in Article 14(1)(c) of the EU Trade Mark Directive 2015/2436 (EUTMD) and Article 14(1)(c) of the EU Trade Mark Regulation 2017/1001 (EUTMR).70 If a reference to a trademarked cultural symbol is qualified as actionable trademark use, this broadened defense of referential use offers the unauthorized user the opportunity to argue that the reference to the trademark 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 EUTMD and Recital 21 of the EUTMR, which explicitly state 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 commercial matters.71

V. Critique

At first glance, the described checks and balances may appear sufficiently robust to dispel concerns about a corrosive effect of trademark rights on remix and reuse in (p.323) the cultural domain. However, a closer look at the described safeguards reveals how volatile they are. It also shows the core problem underlying the debate: the traditional acceptance of trademark rights relating to cultural material is based on an understanding of trademarks as source identifiers and trademark rights as tools to ensure market transparency. After the remarkable broadening of the concept of “use as a trademark” in advanced trademark systems, such as the EU trademark system,72 and the explicit recognition of advertising, investment, and communication functions as independent protection objectives,73 this traditional understanding no longer corresponds with the current scope and reach of trademark rights.74

A. 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.75 The decision of the German Federal Patent Court thus offers 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 trademark applicant, a registration of the famous painting becomes possible.76

(p.324) 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 of trademark protection, the reliance on the basic protection requirement may have the opposite effect. Enterprises may regard the prospect of acquiring trademark 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 trademark experience they are offering to consumers. The mere possibility of acquiring trademark 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 trademark rights to cultural creations.77

This risk must not be underestimated. Literary and artistic works in the public domain have rich and positive connotations. Investing in the acquisition of trademark rights to such a work, an enterprise can benefit from the favorable image that the cultural material already has. Given the popularity of the sign, the process of brand image creation 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 trademark 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” that the CJEU qualified as an obstacle to a strong distinctive character in Picasso v. OHIM.78

In addition, the requirement of distinctiveness as a basic threshold for the acquisition of trademark 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.79 For example, the registration of a culturally important but not widely known melody taken from a classical piece of 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.80 Moreover, distinctive character may be found when the goods or services, in respect of which trademark (p.325) protection is sought, are unrelated to the cultural domain and the genuine meaning of a cultural symbol.

The distinctiveness-based jurisprudence concerning non-traditional marks does not offer starting points for a satisfactory application of distinctiveness as a regulatory tool either. As explained above, the CJEU held in Henkel and Libertel that consumers were not in the habit of perceiving non-traditional marks as source identifiers and insisted on a showing of acquired distinctiveness.81 This additional hurdle can be regarded as the result of an effort made to safeguard the public domain. The CJEU acknowledged in Libertel that there was a public interest in not unduly restricting the availability of colors for competitors.82 As in the case of traditional marks with cultural significance, however, the effectiveness of this effort to keep signs available is doubtful. The mere prospect of acquiring trademark rights in consequence of use in trade may encourage marketing campaigns based on product packaging or color per se—marketing efforts that aim to change the perception of consumers. The more often the public is confronted with a shape mark or abstract color mark, the more alert it will be to the fact that, besides standard word and figurative marks, shapes and color per se may also indicate the commercial source of goods and services. The CJEU may thus have to revise its own assumptions about the distinctiveness of shapes and color per se in the near future. Arguably, the assumption of consumers not being “in the habit” of perceiving signs of this type as a badge of origin becomes more and more doubtful with every trader who succeeds in linking a specific shape or color with her enterprise as the origin of goods or services in the minds of consumers.83

The jurisprudence on distinctiveness in the case of non-traditional marks may even provide additional incentives for the adoption of artworks as trademarks—at least in the field of shape marks. As mentioned above, the CJEU stated in Henkel that only a shape that significantly departs from the norm or customs of the sector and thereby fulfills the function of an indication of commercial origin is not devoid of distinctive character.84 Traders seeking to surmount the hurdle of distinctive character may thus look for shapes that are original enough to achieve a significant departure from shapes that are regularly used in the sector concerned. This could bring artworks into focus that are not widely known and unlikely to be qualified as descriptive or generic because of their widespread use in advertising.

The reliance on distinctive character as a gatekeeper may thus be highly problematic when it comes to non-traditional marks, particularly shape marks. However, (p.326) it must not be overlooked that in this area, distinctiveness is not the only threshold requirement. When it comes to shape marks, the functionality doctrine enters the picture as an additional ground for refusal that offers a more robust solution than a rejection based on a lack of distinctiveness: the rejection of trademark protection because of functionality cannot be overcome through use in trade.85 A broad concept of aesthetic functionality can thus constitute an important tool to keep sculptures and other works of plastic art outside trademark law.

Against this background, it is promising that the CJEU opted for a relatively broad concept of aesthetic functionality in Hauck v. Stokke. The case concerned trademark protection for the so-called “Tripp Trapp” children’s chair consisting of sloping uprights and an L-shaped frame of uprights and sliding plates—a minimalist design that is not only aesthetically appealing but also offers other advantages, such as flexibility, safety, and comfort. Given this mix of values inherent in the chair design, the lawsuit about the validity of a trademark registration which Stokke had obtained in the Benelux gave rise to the question whether, for invoking the exclusion of a shape giving substantial value to the goods (which represents the doctrine of aesthetic functionality in EU trademark law), it was necessary that the shape’s artistic or ornamental value constituted the main or predominant value.86

In answering this question, the CJEU made it clear that the scope of the exclusion of substantial value shapes could not be limited “purely to the shape of products having only artistic or ornamental value.”87 Otherwise, there was a risk that products having essential functional characteristics as well as a significant aesthetic element would not be covered, which, in turn, could compromise the objective to prevent the use of trademark law as a means of artificially extending the term of intellectual property rights, which the legislator had limited in time.88 The Court thus rejected the argument that the exclusion of substantial value shapes should only cover designs with predominant artistic or ornamental value. This decision gave rise to the further question which assessment criteria had to be taken into account when applying the shape exclusion. In this regard, the CJEU clarified that the presumed perception of the design by the average consumer was not decisive but constituted a relevant assessment criterion.89 Other criteria to be factored into the equation included the nature of the category of goods concerned; the artistic value of the shape in question; the dissimilarity of the shape from other shapes in common use on the market concerned; a substantial price difference in relation to similar products; and the development of a promotion strategy which focuses on accentuating the aesthetic characteristics of the product in question.90

Hence, there can be little doubt that the CJEU aims at an open, flexible application of the doctrine of aesthetic functionality. With the development of a whole list of assessment criteria in Hauck v. Stokke, the CJEU clearly expressed the need for a comprehensive analysis based on various factors. A trader adopting an artwork (p.327) as a shape mark to surmount the hurdle of a significant departure from the “norm or customs of the sector” in the sense of Henkel may thus have difficulty to escape a finding of aesthetic functionality in the light of the flexible criteria established in Hauck v. Stokke, including the factor of “dissimilarity of the shape from other shapes in common use on the market concerned.” As a result, the shape mark jurisprudence of the CJEU obliges traders to navigate between Scylla and Charybdis: while a significant departure from the norm may be necessary to satisfy the test of distinctiveness, it may culminate in a finding of aesthetic functionality and exclude trademark protection from the outset. Given this status quo, the risk of widespread use of sculptures and other works of plastic art as trademarks seems to have been contained in the EU.

However, the described mitigating effect of the doctrine of aesthetic functionality seems to remain confined to three-dimensional creations that are employed as shape marks, even though current EU trademark legislation has extended the scope of the doctrine to other product characteristics in Article 4(1)(e) of the EUTMD and Article 7(1)(e) of the EUTMR. The German Marlene Dietrich decisions shed light on the limits of the approach. Discussing a request to register a portrait photograph of Marlene Dietrich with respect to photographs, posters, postcards, and goods of a similar nature, the German Federal Patent Court argued that the photograph of the famous actress constituted a mere reproduction of these goods, and invoked the exclusion of “the shape which results from the nature of the goods themselves” to deny registration.91 Hence, the German Federal Patent Court was of the opinion that the mark was functional because it consisted of the product itself and sought to use the shape exclusion as a vehicle to prevent the acquisition of trademark rights.

However, the decision was overruled by the German Federal Court of Justice, which tersely concluded that the sign consisted of the reproduction of the head of Marlene Dietrich and did not consist of a shape resulting from the nature of a photograph, poster, or postcard, as such.92 Seeing no room for the application of the exclusion of shapes resulting from the nature of the goods in this case, the German Federal Court of Justice relied on the requirement of distinctiveness. It refused trademark protection with respect to goods and services concerning the work and life of the actress, such as books, magazines, photographs, posters, CDs, DVDs, musical performances, and film productions. With respect to these goods and services, the public would perceive the portrait photograph as a mere indication of product characteristics.93 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 trademark with respect to goods and services that are closely related to the work and life of the actress.

This solution of the case has its price. In contrast to the shape exclusion that had been invoked by the German Federal Patent Court, the hurdle of a lack of (p.328) distinctiveness because of descriptive character can be surmounted once the sign becomes distinctive as a result of the use made of it in trade.94 Accordingly, the German Federal Court of Justice had to leave open the backdoor of acquired distinctive character: as a result of use in trade, the Marlene Dietrich photograph may become distinctive with regard to goods and services related to the life and work of the actress at a later stage.95 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 German 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.96 The German Federal Court of Justice 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.97 Rejecting a broader application of considerations of functionality, the decision thus leaves open several avenues for the acquisition of trademark rights to signs with cultural significance.

B. Impact of cultural significance on infringement analysis

In Picasso v. OHIM, 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 trademark.98 Hence, it seems that in the CJEU’s view, cultural significance is a factor weighing against the assumption of a highly distinctive 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 trademark 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. A relatively weak trademark may be developed into a powerful brand over time. This is inherent in the configuration of trademark law. In addition, the acquisition of a considerable degree of distinctive character and a broad scope of trademark protection does not seem particularly difficult when a trademark consists of a sign that has cultural significance but is not widely known among the consuming public. A symbol, shape, or melody (p.329) 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 trademark NIKE?99 Who is aware of culturally important signs of indigenous communities?

Given the relatively low threshold for acquiring anti-dilution protection in many trademark systems, such as the EU system, there is also a substantial risk of unknown signs with cultural significance becoming eligible for enhanced protection against dilution. In contrast to the U.S. trademark system, requiring recognition among the general consuming public, niche reputation is sufficient under EU trademark law.100 For a trademark to constitute a mark with a reputation in the sense of EU trademark law, it must be known by the target group of the goods or services marketed under the trademark. 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 relevant public.101

Once reputation is established, EU trademark law offers anti-dilution protection covering blurring, tarnishment, and unfair free-riding in competitive and non-competitive situations.102 The evidence to be produced need not necessarily include proof of a change in the economic behavior of consumers.103 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 (p.330) of that mark.”104 Moreover, the CJEU refuses to consider the need to keep protected signs freely available in the context of the infringement analysis. In Adidas v. Marca Mode, the Court stated 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.”105

In addition to these developments in the field of specific infringement criteria, current EU trademark law is an example of an advanced trademark 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 trademark protection from the outset. 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 trademark rights to instances where the senior user’s trademark 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 trademark 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.106

However, the CJEU takes the opposite approach, weakening the trademark use requirement instead of sharpening its conceptual contours. As the above-described German decision Lila Postkarte shows, the requirement of “use as a trademark” is applied flexibly in the EU. It does not serve as a filter to exclude, from the outset, all instances where the trademark is not used in the traditional manner, that is to indicate the commercial source of the user’s own goods or services.107 Instead, a mere reference to the trademark108 and a mere link with goods or services may be sufficient to satisfy the trademark use requirement and trigger an infringement action.109 (p.331) In the light of the elastic standard developed by the CJEU, even decorative use of a trademark may amount to actionable trademark use.110 Evidently, this development is worrisome from the perspective of cultural follow-on innovation. To exclude a trademark action in cases of remix or reuse of trademarked cultural symbols in the artistic domain, it is no longer sufficient to argue that the use takes place in a cultural context and does not constitute use “as a trademark.” The moment the use establishes a link with a trademarked cultural symbol, this defense strategy may already fail because of the broad concept of actionable trademark use in the EU that includes mere references to cultural signs enjoying trademark protection.111 As a result of this inclusion of referential use in the concept of use “as a trademark,” the requirement of trademark use does not prevent trademark owners from bringing lawsuits against artistic 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 trademark owners.112 The impact of this broad concept on use for cultural purposes is considerable.

Surveying these developments, it can be said that the inherent limits of exclusive trademark rights—use in the course of trade, use as a trademark, 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 trademark claim on the basis of these infringement criteria.113

C. Limitations of trademark rights insufficient

Hence, the question arises whether the defenses in trademark law are sufficient to eliminate the risk of a corrosive effect on artistic expression. As already pointed out above, 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 trademark protection. Given the described elasticity of infringement criteria in advanced trademark systems, the risk of infringement can no longer be ruled out. This legal uncertainty is likely to (p.332) have a deterrent effect on cultural follow-on innovation even if the artist can rely on a defense, such as the EU defenses of “due cause” or “referential use.” These defenses 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 defense. The alleged infringer will seek to convince the court that the defense 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.114 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 pre-existing material or limit takings from pre-existing material to an absolute minimum.115 Therefore, the legal uncertainty arising from the elastic application of trademark infringement criteria 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 many cases, artists will not have sufficient confidence and financial resources to take the risk of a lengthy lawsuit. If a powerful trademark owner sends a cease-and-desist letter stating that a given form of artistic use amounts to trademark infringement, this will often suffice to put an end to the use in a cultural context.116

Hence, the legal uncertainty surrounding the invocation of available defenses, such as “due cause” and “referential use,” must be factored into the equation. It is not sufficient that the statutory law provides for defenses and that judges are willing to hear arguments based on these defenses. It must also be considered whether artistic creators may nevertheless refrain from permissible use once the registration of an artwork leads to the acquisition of trademark rights and involves the risk of an infringement action.117 Even if courts may finally manage to arrive at reasonable solutions (p.333) in cases involving use of trademarked cultural material, the fundamental difference remains that legal uncertainty about a potential trademark claim is surrounding the use of cultural material once it has been re-appropriated. The risk of potential trademark infringement is hanging above use made of affected cultural creations like the sword of Damocles.

VI. Need for More Robust Grounds for Refusal

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 trademark rights to signs with cultural significance from the outset.118 To effectively ban the risk of impeding cultural follow-on innovation, it is necessary to go beyond distinctiveness-based grounds for refusal and develop more robust mechanisms to arrive at an outright exclusion of signs with cultural significance from trademark protection.

A. Functionality doctrine not sufficient

Despite the results that have been achieved with regard to the separation of trademark protection from patent protection, the functionality doctrine in trademark law does not seem an appropriate vehicle to also separate trademark protection from copyright protection. As discussed above, considerations of aesthetic functionality may lead to an effective ban on trademark protection with respect to products that incorporate an artwork, such as decorative items and furniture. However, a trademark application seems immune from a refusal based on aesthetic functionality when it is argued that the cultural signs concerned would only be attached to the goods as a label—a line of reasoning that was decisive in the German Marlene Dietrich decisions.119

If merely used as a label, a cultural sign can hardly be found to be functional. Otherwise, the brand value that the sign represents in the form of the label would be sufficient to assume aesthetic functionality. This, in turn, would lead to a circular line of reasoning and the exclusion of any sign with brand value from trademark protection. For example, the attachment of the Coca-Cola logo to soft drinks would also lead to an exclusion of trademark rights because the brand value of the logo adds (p.334) substantial value to the product. Therefore, use as a label necessarily falls outside the scope of an outright exclusion of trademark protection based on considerations of aesthetic functionality. The same may be said about the use of a melody with cultural significance as a sound mark for goods. As the sign is not incorporated in the product itself, the doctrine of aesthetic functionality is not applicable as a tool to exclude trademark rights.

B. Public order and morality

This insight brings other grounds for refusal into focus. In particular, an effective separation of copyright and trademark protection for signs with cultural significance could follow from the invocation of reasons of public order and morality. A refusal based on these grounds leads to an outright exclusion of trademark protection that cannot be overcome through use in trade and is not confined to situations where a sign with cultural significance constitutes a decisive element of the goods themselves. With regard to the further development of this ground for refusal, the aforementioned Vigeland decision of the EFTA Court120 is of particular interest. Seeking to obtain trademark rights to several artworks of Gustav Vigeland, the municipality of Oslo argued in this case 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.121

With this argument, the city of Oslo had little success in its own country. The Norwegian Industrial Property Office remained unimpressed and refused the trademark 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, with respect to which registration was sought.122 Instead of dispelling these concerns, the Norwegian Board of Appeal decided to supplement the list of grounds for refusal with a further counterargument. It expressed the view that a trademark 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.123

Addressing this question, the EFTA Court contributed to the further development of public policy and principles of morality as grounds for refusal by clearly distinguishing its two branches. In the EFTA Court’s view, 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.124

(p.335) As to the subjective criterion of a conflict with accepted principles of morality, the EFTA Court underlined 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,125 the Court posed the question whether Vigeland’s works, in and of themselves, would be considered offensive by reasonable consumers with average sensitivity and tolerance thresholds.126 Quite clearly, this question could be answered in the negative.127 The EFTA Court, however, went beyond this standard analysis and added 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 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.128

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 trademark registration of an artwork as offensive.129 In this way, the Court substantially broadens the field of application of the ground of 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. Consequently, 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 covered by the trademark application, “such that registration must be refused if the work is being misappropriated.”130

As to the second branch of the ground for refusal—the objective criterion of a conflict with public policy—the EFTA Court noted that “public policy” referred 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 required exceptional circumstances, namely “a genuine and sufficiently serious threat to a fundamental interest of society.”131 Nonetheless, the EFTA Court saw room for applying this ground for refusal in the context of artwork registrations. As already pointed out above, it held that an artwork may be refused registration if its registration is regarded as a genuine and serious threat to fundamental values, or if the need to safeguard the public domain is considered a fundamental interest of society.132

(p.336) As in the context of accepted principles of morality, the EFTA Court stated that a genuine and serious threat to public policy could follow from the trademark registration of an artwork.133 Hence, the Court confirmed that not only the nature of the sign at issue but also the registration attempt as such could be sufficient to justify a refusal based on public policy. The scope of the ground for refusal was thus broadened substantially.

VII. Conclusion

Non-traditional types of marks offer enhanced possibilities for the cumulation of copyright and trademark rights. With the recognition of shape, sound, and motion marks, new areas of overlap emerge that affect traditional work categories, in particular sculpture and plastic art, musical compositions, and audiovisual creations. Given this growing area of overlap, the time is ripe to recalibrate the copyright–trademark interface. Instead of relying on distinctiveness as a threshold criterion and volatile checks and balances within trademark law, more robust mechanisms should be developed to exclude the acquisition of trademark rights to cultural signs from the outset—grounds for refusal that apply across all goods and services and cannot be overcome through use in trade. In the Vigeland decision, the EFTA Court took important steps in this direction. The decision provides exemplary lines of argument that can support an exclusion of trademark protection on the basis of public policy or accepted principles of morality. This is a welcome impulse for the future regulation of copyright–trademark overlaps.

Notes:

(1) Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 33–34 (2003).

(2) Case C-205/13, Hauck GmbH & Co. KG v. Stokke A/S, ¶¶ 19–20 (CJEU Sept. 18, 2014).

(3) Cf. Irene Calboli, Overlapping Trademark and Copyright Protection: A Call for Concern and Action, 2014 ILL. L. REV. SLIP OPINIONS 25, 29–30 (2014). Examples can easily be found in trademark registers. See, e.g., Mickey Mouse, WIPO: ROMARIN, http://www.wipo.int/romarin/result.xhtml (International Registration No. 296478); Superman, DPMA REG., https://register.dpma.de/DPMAregister/marke/register/DD643100/DE (German Registration DD643100); Miffy, BENELUX OFF. FOR INTELL. PROP., https://register.boip.int/bmbonline/intro/show.do (Benelux Registration No. 0653451).

(4) For example, see CJEU, Case C-488/16 P, Bundesverband Souvenir—Geschenke—Ehrenpreise v. EUIPO (CJEU Jan. 9, 2017) (concerning “Neuschwanstein” as an indication of Neuschwanstein Castle), which evolved from an appeal against the confirmation of trademark rights in the General Court of the European Union, Case T-167/15, Bundesverband Souvenir—Geschenke—Ehrenpreise v. EUIPO (July 5, 2016) (Neuschwanstein); Cases 2013/7132 and 2013/7133, Anne Frank Found. v. Benelux Office for Intell. Prop. (Court of Appeals of Brussels Oct. 3, 2013) (concerning the book titles “The Diary of Anne Frank” and “The Secret Annex”) and Case R 2401/2014-4, Anne Frank Fonds, ¶¶ 32–36 (OHIM App. Bd. Aug. 31, 2015) (granting trademark rights to the French indication “Le Journal d’Anne Frank”); Bundesgerichtshof [BGH] [Federal Court of Justice] Apr. 24, 2008, Case I ZB 21/06, Marlene-Dietrich-Bildnis (Ger.) (concerning a portrait photograph of the actress) [hereinafter Marlene Dietrich]; Bundespatentgericht [BPatG] [Federal Patent Court] Nov. 25, 1997, 1998 GEWERBLICHER RECHTSSCHUTZ UND URHEBERRECHT [GRUR] 1022, Case 24 W (pat) 188/96, Mona Lisa (Ger.) (concerning the Mona Lisa painting) [hereinafter Mona Lisa]. However, see also EFTA Court, Case E-5/16, Municipality of Oslo (EFTA Apr. 6, 2017) [hereinafter Case E-5/16, Vigeland Judgment], which seems to pave the way for a more restrictive approach based on public order and morality.

For case comments, see: Martin Senftleben, 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, 48 INT’L REV. OF INTELL. PROP. & COMPETITION L. 683 (2017); Martin Senftleben, Der kulturelle Imperativ des Urheberrechts, in KUNST IM MARKT—KUNST IM RECHT 75, 102–04 (Matthias Weller et al. eds., 2010); Katjia Assaf, Der Markenschutz und seine kulturelle Bedeutung: Ein Vergleich des deutschen mit dem US-amerikanischen Recht, 1 GRUR: INTERNATIONALER TEIL 5 (2009); Ansgar Ohly, Von einem Indianerhäuptling, einer Himmelsscheibe, einer Jeans und dem Lächeln der Mona Lisa: Überlegungen zum Verhältnis zwischen Urheber- und Kennzeichenrecht, in GRUNDLAGEN UND GRUNDFRAGEN DES GEISTIGEN EIGENTUMS, FESTGABE FÜR DIETHELM KLIPPEL ZUM 65. GEBURTSTAG 203 (Louis Pahlow & Jens Eisfeld eds., 2008); Friedrich Klinkert & Florian Schwab, Markenrechtlicher Raubbau an gemeinfreien Werken—ein richtungsweisendes Machtwort durch den Mona Lisa-Beschluss des Bundespatentgerichts?, 12 GRUR 1067 (1999); Wilhelm Nordemann, Mona Lisa als Marke, in WETTBEWERB IN RECHT UND PRAXIS 389 (1997).

(5) Case C-299/99, Koninklijke Philips Electronics NV v. Remington Consumer Prods. Ltd., ¶ 82 (CJEU June 18, 2002).

(6) See generally Hauck, supra note 2. This is not to say that the doctrine of aesthetic functionality has not been criticized. See, e.g., Graeme B. Dinwoodie, The Death of Ontology: A Teleological Approach to Trademark Law, 84 IOWA L. REV. 611, 685–91 (1999); Annette Kur, Too Pretty to Protect? Trade Mark Law and the Enigma of Aesthetic Functionality 6–12 (Max Planck Inst. for Intellectual Prop. & Competition Law, Paper No. 11-16, 2011) [hereinafter Kur, Enigma of Aesthetic Functionality]. The central point here is, however, that in practice, the application of the functionality doctrine can have the effect of separating the protection regimes to a considerable extent.

(7) With regard to the trend of recognizing more and more non-traditional types of marks in the EU, see Ivo Lewalter & Paul T. Schrader, Die Fühlmarke, 6 GRUR 476 (2005); Felix Hauck, Aktuelle Entwicklungen bei der Eintragung von Farbmarken, 5 GRUR 363 (2005); Annette Kur, Alles oder Nichts im Formmarkenschutz?, 9 GRUR: INTERNATIONAL TEIL 755 (2004); Adrien Bouvel, Qu’importe le flacon … Le droit des marques malmené par les emballages, 13 PROPRIÉTÉS INTELLECTUELLES 863 (2004); Ruth Arnet, Markenschutz für Formen, 11 SIC! 829 (2004); Jochen Pagenberg, Trade Dress and the Three-Dimensional Mark: The Neglected Children of Trademark Law?, 35 INT’L REV. OF INTELL. PROP. & COMPETITION L. 831 (2004); Markus Bölling, Der EuGH und die abstrakte Farbmarke: Von der bewussten Entwertung einer Markenform, in MARKENRECHT 384 (2004); Senta Bingener, Das Wesen der Positionsmarke oder Wo die Positionsmarke hingehört, in MARKENRECHT 377 (2004); Alison Firth, Ellen Gredley, & Spyros M. Maniatis, Shapes as Trade Marks: Public Policy, Functional Considerations and Consumer Perception, 23 EUROPEAN INTELL. PROP. REV. 86 (2001).

(8) Case C-283/01, Shield Mark BV v. Joost Kist (CJEU Nov. 27, 2003).

(9) Case C-104/01, Libertel Groep BV v. Benelux-Merkenbureau (CJEU May 6, 2003).

(10) Vigeland Judgment, supra note 4.

(11) Shield Mark, supra note 8, ¶ 52 (Opinion of Advocate General Ruiz-Járabo Colomer delivered on Apr. 3, 2003).

(12) Vigeland Judgment, supra note 4.

(13) The EFTA Court is the Supreme Court in matters concerning the interpretation of the Agreement on the European Economic Area with regard to the EFTA States Iceland, Liechtenstein, and Norway. See EFTA COURT, http://www.eftacourt.int/ (last visited Nov. 18, 2017).

(14) Vigeland Judgment, supra note 4 ¶ 20. Gustav Vigeland died on Mar. 12, 1943.

(15) Case E-5/16, Municipality of Oslo, ¶¶ 36–37 (Report for the Hearing, Judge-Rapporteur Baudenbacher, delivered on October 5, 2016) [hereinafter Vigeland Report].

(16) Id. ¶ 96.

(17) Malte Stieper, Geistiges Eigentum an Kulturgütern: Möglichkeiten und Grenzen der Remonopolisierung gemeinfreier Werke, 11 GRUR 1083, 1090–91 (2012); Alexander Peukert, Die Gemeinfreiheit: Begriff, Funktion, Dogmatik, 111–13 (2012), https://ssrn.com/abstract=2627191.

(18) Tobias Cohen Jehoram, Constant van Nispen & Tony Huydecoper, EUROPEAN TRADEMARK LAW 556 (2010).

(19) Annette Kur, Funktionswandel von Schutzrechten: Ursachen und Konsequenzen der inhaltlichen Annäherung und Überlagerung von Schutzrechtstypen, in GEISTIGES EIGENTUM IM DIENST DER INNOVATION 23, 45, 50 (Gerard Schricker, Thomas Dreier, & Annette Kur eds., 2001) [hereinafter Kur, Functional Change of IP Rights]. Cf. Kur, Enigma of Aesthetic Functionality, supra note 6, at 9.

(20) Kur, Functional Change of IP Rights, supra note 19, at 44.

(21) Id. at 42–44.

(22) D.W. Feer Verkade, The Cumulative Effect of Copyright Law and Trademark Law: Which Takes Precedence?, in INTELLECTUAL PROPERTY AND INFORMATION LAW: ESSAYS IN HONOUR OF HERMAN COHEN JEHORAM 69, 72 (Jan J.C. Kabel & Gerard J.H.M. Mom eds., 1998).

(23) Id.

(24) Id. at 73.

(25) Benjamin Raue, NACHAHMUNGSFREIHEIT NACH ABLAUF DES IMMATERIALGÜTERRECHTSSCHUTZES? 120–22, 199–201 (2010).

(26) Senftleben, Vigeland and the Status of Cultural Concerns in Trade Mark Law, supra note 4, at 716–17; Caspar van Woensel, MERK, GOD EN VERBOD 412–13 (2007); Klinkert & Schwab, supra note 4, at 1073; Wilhelm Nordemann, Mona Lisa als Marke, in WETTBEWERB IN RECHT UND PRAXIS 389, 391 (1997); Ralph Osenberg, Markenschutz für urheberrechtlich gemeinfreie Werkteile, 2 GRUR 101, 102–03 (1996).

(27) Cf. Calboli, supra note 3, at 28–30.

(28) Case T-435/05, Danjaq LLC v. OHIM, ¶ 26 (GCEU June 30, 2009) [hereinafter Mission Productions].

(29) Id.

(30) Stieper, supra note 17, at 1090–91; Peukert, supra note 17, at 111–13.

(31) Mission Productions, supra note 28 ¶ 26.

(32) Id. ¶¶ 25–28.

(33) HR Apr. 16, 1999, NJ 1999, 697 m.nt. Eerste Kamer, 9098 (R97/163HR) (Bigott-Batco/Doucal), ¶ 3.9 (Neth.). Cf. COHEN JEHORAM, VAN NISPEN, & HUYDECOPER, supra note 18, at 556.

(34) Case LJN AV3384, Benetton Grp. SpA v. G-Star Int’l BV, ¶ 3.11 (Dutch Supreme Court Sept. 8, 2006). Cf. R.A.M. Quanjel-Schreurs, Enkele procesrechtelijke aspecten van cumulatie van auteurs- en merkenrecht: Naar aanleiding van het Benetton/G-Star-arrest, AUTEURS-, MEDIA- & INFORMATIERECHT, May 1, 2007, at 76, 80–83.

(35) Stieper, supra note 17, at 1090–91; Peukert, supra note 17, at 111–13.

(36) Benetton, supra note 34, ¶ 3.11.

(37) Pierre Bourdieu, DIE REGELN DER KUNST: GENESE UND STRUKTUR DES LITERARISCHEN FELDES 370 (1999).

(38) Id. at 372.

(39) Dastar Corp., supra note 1, 33–34 (2003) (internal citations omitted).

(40) Antoon A. Quaedvlieg, AUTEURSRECHT OP TECHNIEK: DE AUTEURSRECHTELIJKE BESCHERMING VAN HET TECHNISCH ASPECT VAN INDUSTRIËLE VORMGEVING EN COMPUTERPROGRAMMATUUR 21–22 (1987).

(41) BOURDIEU, supra note 37, at 370.

(42) But see QUAEDVLIEG, supra note 40, at 40–45 (describing the profound problems arising from this approach focusing on non-substitutability in a strict sense).

(43) See also European Copyright Society (ECS), Trade Mark Protection of Public Domain Works: A Comment on the Request for an Advisory Opinion of the EFTA Court: Case E-05/16: Norwegian Board of Appeal for Industrial Property Rights—Appeal from the Municipality of Oslo, 39 EUR. INTELL. PROP. REV. 457, 458–59 (2017) (summarizing this practical approach).

(44) Vigeland Judgment, supra note 4, ¶ 29.

(45) See Mona Lisa, supra note 4, at 1022.

(46) Id. at 1023. For case comments, see Senftleben, Der kulturelle Imperativ des Urheberrechts, supra note 4, at 102–04; Assaf, supra note 4, at 5; Ohly, supra note 4, at 203; Klinkert & Schwab, supra note 4, at 1067; Nordemann, supra note 4, at 389.

(47) Mona Lisa, supra note 4, at 1023.

(48) Case C-218/01, Henkel KGaA v. DPMA, ¶ 52 (CJEU Feb. 12, 2004); Cases C-53/01 to C-55/01, Linde AG et al., ¶ 48 (CJEU Apr. 8, 2003).

(49) Henkel, supra note 48, ¶ 49.

(50) Libertel Groep BV, supra note 9, ¶ 65.

(51) Id. ¶ 66.

(52) Artur Wandtke & Winfried Bullinger, Die Marke als urheberrechtlich schutzfähiges Werk, 8/9 GRUR 578 (1997); Senftleben, Der kulturelle Imperativ des Urheberrechts, supra note 4, at 103–04. For a solution based on public order and morality considerations, see Klinkert & Schwab, supra note 4, at 1073; VAN WOENSEL, supra note 26, at 412–13; Osenberg, supra note 26, at 102–03; Nordemann, supra note 4, at 391. See also the critique expressed by Ohly, supra note 4, at 207; Fedor Seifert, Markenschutz und urheberrechtliche Gemeinfreiheit, in WETTBEWERB IN RECHT UND PRAXIS 1018 (2000).

(53) Admittedly, the doctrine of aesthetic functionality may be considered as well, as discussed in more detail below. For a critical assessment of aesthetic functionality as a ground for refusal, see Dinwoodie, supra note 6, at 685–91; Kur, Enigma of Aesthetic Functionality, supra note 6, at 6–12.

(54) Case C-361/04P, Picasso v. OHIM, ¶¶ 5–6 (CJEU Jan. 12, 2006).   

(55) Id. ¶ 20.

(56) Id.

(57) Id. ¶ 27.

(58) See id. ¶¶ 11, 32 (discussing the rejection of this counterargument advanced by the Picasso estate).

(59) With regard to examples of cases where this occurred, see Assaf, supra note 4, at 2–3; Senftleben, Der kulturelle Imperativ des Urheberrechts, supra note 4, at 101–02.

(60) Council Directive 2008/95 art. 5(2), 2008 O.J. L299/25 (EC) [hereinafter Former Trademark Directive]; Council Directive 2015/2436 art. 10(2)(c), 2015 O.J. L336/1 (EU) [hereinafter New Trademark Directive].

(61) New Trademark Directive art. 14(1)(c).

(62) Bundesgerichtshof [BGH] [Federal Court of Justice] Feb. 3, 2005, Case I ZR 159/02, Lila Postkarte, 2005 GRUR 583 (Ger.) [hereinafter Lila Postkarte].

(63) Id.

(64) “It is calm above the tree tops, somewhere a cow is bellowing. Moo!” The attribution to “Rainer Maria Milka” is an allusion to the famous German writer Rainer Maria Rilke. See id.

(65) Id. at 584.

(66) Id. at 584–85.

(67) Id.

(68) Id.

(69) Id. at 585.

(70) See Annette Kur & Martin Senftleben, EUROPEAN TRADE MARK LAW: A COMMENTARY ¶¶ 6.39–.41 (2017) (discussing the considerations underlying this legislative change).

(71) For a more detailed discussion of this point, see Jens H. Schovsbo, Mark My Words: Trademarks and Fundamental Rights in the EU, 7 U.C. IRVINE L. REV. (forthcoming 2018).

(72) For a more detailed discussion of this development, see KUR & SENFTLEBEN, supra note 70, ¶¶ 5.14–.15, 5.49–.56; Martin R.F. Senftleben, Keyword Advertising in Europe—How the Internet Challenges Recent Expansions of EU Trademark Protection, 27 CONN. J. INT’L L. 39 (2011). As to the recognition of a potential gatekeeper function of the trademark use requirement in U.S. law, see Stacey L. Dogan & Mark A. Lemley, The Trademark Use Requirement in Dilution Cases, 24 SANTA CLARA COMPUTER & HIGH TECH. L.J. 541, 542 (2008) (“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 Graeme B. Dinwoodie & Mark D. Janis, Confusion Over Use: Contextualism in Trademark Law, 92 IOWA L. REV. 1597, 1657–58 (2007), who doubt that problems arising in the current “expansionist climate” could be solved by recalibrating the notion of trademark 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 U.S. debate, see Mark Davison & Frank Di Giantomasso, Use as a Trademark: Avoiding Confusion When Considering Dilution, 31 EUROPEAN INTELL. PROP. REV. 443 (2009); Mark P. McKenna, Trademark Use and the Problem of Source, 2009 U. ILL. L. REV. 773 (2009).

(73) Case C-487/07, L’Oréal SA v. Bellure NV, ¶ 58 (CJEU June 18, 2009). Cf. KUR & SENFTLEBEN, supra note 70, ¶¶ 1.12–.39.

(74) Estelle Derclaye & Matthias Leistner, INTELLECTUAL PROPERTY OVERLAPS: A EUROPEAN PERSPECTIVE 328 (2011).

(75) Former Trademark Directive art. 3(3); New Trademark Directive art. (4)(4).

(76) For a detailed discussion of this conditional character of a refusal based on a lack of distinctiveness, see Martin Senftleben, Public Domain Preservation in EU Trademark Law—A Model for Other Regions?, 103 TRADEMARK REP. 775, 783–84 (2013); Lotte Anemaet, The Public Domain is Under Pressure: Why We Should Not Rely on Empirical Data When Assessing Trademark Distinctiveness, 47 INT’L REV. INTELL. PROP. & COMP. L. 303 (2016).

(77) Cf. Anemaet, supra note 76, at 331–32; Senftleben, supra note 76, at 812–13; Lisa P. Ramsey, Descriptive Trademarks and the First Amendment, 70 TENN. L. REV. 1095, 1150 (2003); Robert C. Denicola, Trademarks as Speech: Constitutional Implications of the Emerging Rationales for the Protection of Trade Symbols, 182 WIS. L. REV. 158, 170 (1981). See also ECS, supra note 43, at 460–61.

(78) Picasso, supra note 54, ¶ 27. Cf. Wandtke & Bullinger, supra note 52, at 578.

(79) See Klinkert & Schwab, supra note 4, at 1068 (expressing similar concerns). Cf. Senftleben, supra note 4, Der kulturelle Imperativ des Urheberrechts, 103–04.

(80) 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 nineties. See AlteTVSpots, Licher Pilsner Wegung 1992, YOUTUBE (Dec. 14, 2012), https://www.youtube.com/watch?v=dfGGjk1QEeM.

(81) Henkel, supra note 48, ¶ 52 (CJEU Feb. 12, 2004); Case C-104/01, Libertel Groep BV, supra note 9, ¶ 65.

(82) Libertel, supra note 9, ¶ 55.

(83) Given the widespread recognition of Milka lilac (CTM Registration 000031336 of Oct. 27, 1999 (Kraft Foods)) and Deutsche Telekom magenta (CTM Registration 000212787 of Aug. 3, 2000 (Deutsche Telekom)) as abstract color marks in the EU, it may already be asked whether it is still correct to deny inherent distinctiveness in the case of eccentric colors, even though there is increased consumer awareness that color may serve as an indication of commercial source. UPS brown (CTM Registration 000962076 of Sept. 17, 2001 (United Parcel Service)) constitutes an additional example indicating that an abstract color may serve as a source identifier, even if it is much less exceptional.

(84) Henkel, supra note 48, ¶ 49.

(85) With regard to EU legislation, this has explicitly been confirmed. See, e.g., Koninklijke Philips Electronics NV, supra note 5, ¶ 75.

(86) Hauck, supra note 2, ¶ 14.   

(87) Id. ¶ 32.   

(88) Id. ¶¶ 31–32.   

(89) Id. ¶ 34.

(90) Id. ¶ 35.

(91) Bundespatentgericht [BPatG] [Federal Patent Court] Nov. 9, 2005, Porträtfoto Marlene Dietrich, ¶ 4.2 (Ger.) [hereinafter Portrait Photo of Marlene Dietrich].

(92) Marlene Dietrich, supra note 4, ¶ 11.

(93) Id. ¶¶ 12–15. For relevant case precedents, see Bundesgerichtshof [BGH] [Federal Court of Justice] Dec. 5, 2002, Case I ZB 19/00, Winnetou, 6 (Ger.); Bundesgerichtshof [BGH] [Federal Court of Justice], Jan. 23, 2003, Case I ZR 171/00, Winnetous Rückkehr, 10 (Ger.).

(94) Former Trade Mark Directive art. 3(3) (art. 4(4) of the New Trademark Directive), 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.

(95) Marlene Dietrich, supra note 4, ¶ 17.

(96) Portrait Photo of Marlene Dietrich, supra note 91, ¶¶ 8.1, 8.2.

(97) Marlene Dietrich, supra note 4, ¶¶ 19–22. See also the confirmation of this point in Bundesgerichtshof [BGH] [Federal Court of Justice] Mar. 31, 2010, Case I ZB 62/09, Marlene-Dietrich-Bildnis II, ¶¶ 20–28 (Ger.) [hereinafter Marlene Dietrich II].

(98) Picasso, supra note 54, ¶ 27.

(99) With regard to these and further examples, see Assaf, supra note 4, at 2–3; Senftleben, Der kulturelle Imperativ des Urheberrechts, supra note 4, at 101–02.

(100) Cf. Martin Senftleben, The Trademark Tower of Babel—Dilution Concepts in International, US and EC Trademark Law, 40 INT’L REV. INTELL. PROP. & COMPETITION L. 45, 50–55 (2009); J. Thomas McCarthy, Dilution of a Trademark: European and United States Law Compared, 94 TRADEMARK REP. 1163 (2004); Barton Beebe, A Defense of the New Federal Trademark Antidilution Law, 16 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 1143, 1157 (2006).

(101) Case C-375/97, General Motors Corp. v. Yplon SA, ¶¶ 24, 26 (CJEU Sept. 14, 1999). With respect to the territorial expansion required, see id. ¶ 28; Case C-301/07, PAGO Int’l GmbH v. Tirolmilch registrierte Genossenschaft mbH, ¶ 29 (CJEU Oct. 6, 2009).

(102) Under the former Trademark Directive 2008/95, this followed from Case C-292/00, Davidoff & Cie SA v. Gofkid Ltd. (CJEU Jan. 9, 2003). It has been made explicit in art. 10(2)(c) new Trademark Directive 2015/2436. As to the scope of protection offered in cases of marks having a reputation, see particularly L’Oréal SA, supra note 73. See also Martin Senftleben, Trade Mark Protection—A Black Hole in the Intellectual Property Galaxy?, 42 INT’L REV. INTELL. PROP. & COMP. L. 383 (2011); Ansgar Ohly, Keyword-Advertising auf dem Weg von Karlsruhe nach Luxemburg, 8 GEWERBLICHER RECHTSSCHUTZ UND URHEBERRECHT 709, 711–12 (2009).

(103) This test applies in cases of blurring and tarnishment. See Case C-252/07, Intel Corp. v. CPM U.K. Ltd., ¶ 77 (CJEU Nov. 27, 2008); Case C-383/12P, Envtl. Mfg. LLP v. OHIM, ¶ 37 (CJEU Nov. 14, 2013). Cf. KUR & SENFTLEBEN, supra note 70, ¶¶ 5.223–.228; Adrien Bouvel, Marques et renommée: À propos de l’arrêt “Intel” rendu par la Cour de justice des communautés européennes le 27 novembre 2008, in LES DÉFIS DU DROIT DES MARQUES AU XXIE SIÈCLE 123 (Christophe Geiger & Joanna Schmidt-Szalewski eds., 2010); Antoon A. Quaedvlieg, INTEL en verwatering: Economisch gedrag en juridisch bewijs, BIJBLAD BIJ DE INDUSTRIËLE EIGENDOM 253 (2009); Antoon A. Quaedvlieg, Herkomst- en goodwillinbreuk in het merkenrecht na INTEL en l’Oréal, ARS AEQUI 799 (2009); Susie Middlemiss & Steven Warner, Comment, The Protection of Marks with a Reputation: Intel v. CPM, 31 EUROPEAN INTELL. PROP. REV. 326, 331–32 (2009).

(104) L’Oréal, supra note 73, ¶ 49. For a critical comment on intuitive protection against free-riding as a species of unjust enrichment law, see Mark A. Lemley & Mark P. McKenna, Owning Mark(et)s, 109 MICH. L. REV. 137 (2010).

(105) Case C-102/07, Adidas AG v. Marca Mode CV, ¶ 43 (CJEU Apr. 10, 2008).

(106) For a discussion of the concept of trademark use in EU trademark law, see: KUR & SENFTLEBEN, supra note 70, ¶¶ 5.14–.15, 5.49–.56; Annette Kur, Confusion Over Use?—Die Benutzung “als Marke” im Lichte der EuGH-Rechtsprechung, 1 GRUR: INTERNATIONALER TEIL 1, 11 (2008); Po Jen Yap, Essential Function of a Trade Mark: From BMW to O2, 31 EUROPEAN INTELL. PROP. REV. 81, 86–87 (2009); Ilanah Simon Fhima, How Does “Essential Function” Doctrine Drive European Trade Mark Law?, 36 INT’L REV. INTELL. PROP. & COMPETITION L. 401 (2005); Patricia L. Loughlan, Protecting Culturally Significant Uses of Trade Marks (Without a First Amendment), 22 EUROPEAN INTELL. PROP. REV. 328 (2000). For a fundamental critique of the continuous expansion seeking to reduce the scope of trademark protection to the traditional origin function, see moreover Peukert, supra note 17, at 96–107.

(107) This stricter test, however, was mentioned with regard to the traditional identification function of trademarks in Case C-48/05, Adam Opel AG v. Autec AG, ¶ 24 (CJEU Jan. 25, 2007).

(108) Case C-408/01, Adidas-Salomon AG v. Fitnessworld Trading Ltd., ¶ 39 (CJEU Oct. 23, 2003); Adidas v. Marca , supra note 105, ¶ 41.

(109) Case C-17/06, Céline SARL v. Céline SA, ¶¶ 21–23 (CJEU Sept. 11, 2007); Case C-62/08, UDV N. Am. Inc. v. Brandtraders NV, ¶ 47 (CJEU Feb. 19, 2009). 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 Cases C-236/08 to 238/08, Google France SARL v. Louis Vuitton Malletier SA et al., ¶ 72 (CJEU Mar. 23, 2010); Case C-324/09, L’Oréal SA v. eBay Int’l AG, ¶ 92 (CJEU July 12, 2011). For a discussion of this development, see Martin Senftleben, Adapting EU Trademark Law to New Technologies: Back to Basics?, in CONSTRUCTING EUROPEAN INTELLECTUAL PROPERTY 137, 147–48 (Christophe Geiger ed., 2013).

(110) See Adidas v. Fitnessworld, supra note 108, ¶¶ 39–41 (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 Adidas v. Marca, supra note 105, ¶¶ 47–49; Adam Opel, supra note 107, ¶ 44; Bundesgerichtshof [BGH] [Federal Court of Justice] Nov. 24, 2011, Case I ZR 175/09, Medusa, ¶¶ 19–20 (Ger.).

(111) Adidas v. Fitnessworld, supra note 108, ¶ 39 (CJEU Oct. 23, 2003); Lila Postkarte, supra note 62, at 584–85.

(112) Cf. KUR & SENFTLEBEN, supra note 70, ¶¶ 5.50–.54; DERCLAYE & LEISTNER, supra note 74, at 328.

(113) Cf. Irene Calboli, Overlapping Rights: The Negative Effects of Trademarking Creative Works, in THE EVOLUTION AND EQUILIBRIUM OF COPYRIGHT IN THE DIGITAL AGE 52, 52–54 (Susy Frankel & Daniel Gervais eds., 2014); DERCLAYE & LEISTNER, supra note 74, at 328.

(114) Wolfgang Sakulin, TRADEMARK PROTECTION AND FREEDOM OF EXPRESSION: AN INQUIRY INTO THE CONFLICT BETWEEN TRADEMARK RIGHTS AND FREEDOM OF EXPRESSION UNDER EUROPEAN LAW 292–93 (2011); William McGeveran, Four Free Speech Goals for Trademark Law, 18 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 1205, 1206–07, 1224–25 (2008); Jesse A. Hofrichter, Tool of the Trademark: Brand Criticism and Free Speech Problems with the Federal Dilution Revision Act of 2006, 28 CARDOZO L. REV. 1923, 1926 (2007); James Gibson, Risk Aversion and Rights Accretion in Intellectual Property Law, 116 YALE L.J. 882, 913 (2007); Julie E. Cohen, Copyright, Commodification, and Culture: Locating the Public Domain, in THE FUTURE OF THE PUBLIC DOMAIN: IDENTIFYING THE COMMONS IN INFORMATION LAW 121, 156 (Lucie Guibault & P. Bernt Hugenholtz eds., 2006); Patricia Aufderheide & Peter Jaszi, Untold Stories: Creative Consequences of the Rights Clearance Culture for Documentary Filmmakers, CTR. FOR SOC. MEDIA 29–30 (Dec. 2004), http://archive.cmsimpact.org/sites/default/files/UNTOLDSTORIES_Report.pdf; Lawrence Lessig, FREE CULTURE: HOW BIG MEDIA USES TECHNOLOGY AND THE LAW TO LOCK DOWN CULTURE AND CONTROL CREATIVITY 185–88 (2004).

(115) Arpan Banerjee, Non-Origin Infringement: Has Trade Mark Law Gone Too Far?, 43 INT’L REV. INTELL. PROP. & COMPETITION L. 555, 564 (2012); David M. Morrison, Bridgeport Redux: Digital Sampling and Audience Recoding, 19 FORDHAM INTELL. PROP. MEDIA & ENT. L.J. 75, 131–36 (2008); Hofrichter, supra note 114, at 1926; Cohen, supra note 114, at 154–56; Teresa M. Amabile, CREATIVITY IN CONTEXT 115–20, 231–32 (1996).

(116) For a more detailed discussion of the chilling effect of cease-and-desist strategies, see: Calboli, supra note 3, at 31–32; McGeveran, supra note 114, at 1206–07; LESSIG, supra note 114, at 185–88.

(117) For an explicit recognition of the deterrent effect that can follow from the legal uncertainty surrounding a use privilege and the need to factor this legal uncertainty into the equation, see Bundesverfassungsgericht [BVerfG] [Federal Constitutional Court] May 31, 2016, Case 1 BvR 1585/13, Sampling, ¶ 100 (Ger.).

(118) For a more detailed discussion of this point, see: Anemaet, supra note 76, at 331–32; Calboli, supra note 3, at 34; Calboli, supra note 113, at 76–78; Senftleben, supra note 76, at 816–17, 823–25. With regard to the field of traditional knowledge and traditional cultural expressions, see: Susy Frankel, Third-Party Trade Marks as a Violation of Indigenous Cultural Property: A New Statutory Safeguard, 8 J. WORLD INTELL. PROP. 83 (2005) [hereinafter Frankel, Third-Party Trade Marks]; Susy Frankel, Trademarks and Traditional Knowledge and Cultural Intellectual Property Rights, in TRADEMARK LAW AND THEORY: A HANDBOOK OF CONTEMPORARY RESEARCH 433 (Graeme B. Dinwoodie & Mark D. Janis eds., 2008) [hereinafter Frankel, Trademarks and Traditional Knowledge] (discussing the concept of “cultural offence” in New Zealand and a sui generis protection regime that would offer grounds for opposition under trademark law).

(119) Marlene Dietrich, supra note 4, ¶¶ 19–22; Marlene Dietrich II, supra note 97, ¶¶ 20–28.

(120) See supra note 13 and accompanying text.

(121) Vigeland Report, supra note 15, ¶ 32.

(122) Id. ¶ 27.

(123) Id. ¶¶ 28–30.

(124) Vigeland Judgment, supra note 4, ¶¶ 84–86. As to the innovative character of the decision, see Christophe Geiger & Leonardo Machado Pontes, Trade Mark Registration, Public Policy, Morality and Fundamental Rights 11–12 (Centre for Int’l Intell. Prop. Studies, Paper No. 2017-01), https://ssrn.com/abstract=3009170 (placing the judgment in the context of previous EU office practice).

(125) For an overview, see: Geiger & Machado Pontes, supra note 124, at 8–11; KUR & SENFTLEBEN, supra note 70, ¶¶ 4.205–.218; ECS, supra note 43, at 459–60.

(126) Vigeland Judgment, supra note 4 ¶¶ 89–90, 93.

(127) Id. ¶ 91.

(128) Id. ¶ 92.

(129) Id. 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, Third-Party Trade Marks, supra note 118, at 87–91.

(130) Vigeland Judgment, supra note 4, ¶ 93.

(131) Id. ¶¶ 94–96.

(132) Id. ¶ 96.

(133) Id.