1. CIPIL, University of Cambridge November 18, 2014 Protecting Mickey Mouse and the Mona Lisa in Perpetuity? Prof. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

2. Contents The problem Available balancing tools –Exclusion from protection –Requirement of distinctive character –Scope of protection Problem solved?

3. The problem

4. public domain of cultural expression (cultural heritage) Copyright law: an inspiration system

5. public domain of distinctive signs (source identifiers) Trademark law: a transparency system

6. static trademark protection vs. cyclic innovation in copyright Conflict between the protection systems

7. drying-out of sources of inspiration monopolisation of building blocks of new creations =impediment of the cultural inspiration cycle Risks

8. Balancing tools

9. signs excluded from protection protection with limited scope requirement of distinctiveness as a gatekeeper exclusion of signs acceptance on certain conditions scope of protection Available balancing tools

10. Exclusion from protection (unconditional exclusion)

11. Art. 3(1) TMD The following shall not be registered or, if registered, shall be liable to be declared invalid: f)trade marks which are contrary to public policy or to accepted principles of morality;...

12. Art. 3(1) TMD The following shall not be registered or, if registered, shall be liable to be declared invalid: g)trade marks which are of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service;...

13. Art. 3(1) TMD The following shall not be registered or, if registered, shall be liable to be declared invalid: h)trade marks which have not been authorised by the competent authorities and are to be refused or invalidated pursuant to Article 6ter of the Paris Convention for the Protection of Industrial Property, hereinafter referred to as the ‘Paris Convention’.

14. exclusion of armorial bearings, flags, and other State emblems of Union countries exclusion of armorial bearings, flags, other emblems, abbreviations, and names, of international intergovernmental organizations Art. 6ter PC

15. Art. 3(2) TMD Any Member State may provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where and to the extent that: c)the trade mark includes badges, emblems and escutcheons other than those covered by Article 6ter of the Paris Convention and which are of public interest...

16. Extensions possible at the national level

17. signs consisting of a shape resulting from the nature of the goods themselves necessary to obtain a technical result giving substantial value to the goods (Art. 3(1)(e) TMD) Further exclusions

18. fundamental distinction between the trademark and the product freedom of competition (need to keep product features free) preservation of the public domain (no conflict with cyclic innovation) Need for shape exclusions

19. Example technical solutions

20. ‘… to prevent trade mark protection from granting its proprietor a monopoly on technical solutions or functional characteristics of a product which a user is likely to seek in the products of competitors.’ (para. 78) no monopolisation of decisive product features safeguarding freedom of competition CJEU, 18 June 2002, case C-299/99, Philips/Remington

21. ‘In refusing registration of such signs, Article 3(1)(e), second indent, of the Directive reflects the legitimate aim of not allowing individuals to use registration of a mark in order to acquire or perpetuate exclusive rights relating to technical solutions.’ (para. 82) no artifical extension of the term of patent protection CJEU, 18 June 2002, case C-299/99, Philips/Remington

22. patent protection expired reappropriation via trademark law? Example technical solutions

23. ‘…the prohibition on registration as a trade mark of any sign consisting of the shape of goods which is necessary to obtain a technical result ensures that undertakings may not use trade mark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions.’ (para. 45) Lego brick qualified as functional shape alternatives not decisive (para. 55) CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)

24. result: technical know-how remains free after patent expiry costs: risk of confusion/unfair free riding? ‘In the present case, it has not been disputed that the shape of the Lego brick has become distinctive in consequence of the use which has been made of it and is therefore a sign capable of distinguishing the appellant’s goods from others which have another origin.’ (para. 40) CJEU, 14 September 2010, case C-48/09 P, Lego/OHIM (Mega Brands)

25. Example industrial design

26. exclusion of substantial value shapes relevant: value due to beauty or attractiveness irrelevant: value due to trademark recognition Benelux Court of Justice, NJ 1989, 834, Burberrys I

27. ‘…the shape of a product which gives substantial value to that product cannot constitute a trade mark […] where, prior to the application for registration, it acquired attractiveness as a result of its recognition as a distinctive sign following advertising campaigns presenting the specific characteristics of the product in question.’ (para. 28) traditional Benelux distinction overruled? CJEU, 20 September 2007, case C-371/06, Benetton/G-Star

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

29. need to prevent monopoly also in the case of substantial value shapes ‘Like the ground for refusal to register that applies to the shapes of goods which are necessary to obtain a technical result, the ground that concerns refusal to register signs consisting exclusively of shapes which give substantial value to the goods is to prevent the granting of a monopoly on those shapes.’ (para. 66)

30. General Court, 6 October 2011, case T-508/08, Bang & Olufson this need arises in particular in the case of specific design ‘Indeed, the shape for which registration was sought reveals a very specific design and the applicant itself admits [...] that that design is an essential element of its branding and increases the appeal of the product at issue, that is to say, its value.’ (para. 74)

31. General Court, 6 October 2011, case T-508/08, Bang & Olufson this need arises in particular in the case of specific design ‘Furthermore, it is apparent [...] that the aesthetic characteristics of that shape are emphasised first and that the shape is perceived as a kind of pure, slender, timeless sculpture for music reproduction, which makes it an important selling point.’ (para. 75)

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

33. rationales underlying shape exclusions competition: no monopoly on essential product characteristics term extension: no evergreening of rights with limited period of protection CJEU, 18 September 2014, case C-205/13, Hauck/Stokke

34. need to safeguard competition in case of shape resulting from nature of the goods not only when indispensable (natural and regulated products) but also when inherent to the generic function ‘…that shapes with essential characteristics which are inherent to the generic function or functions of such goods must, in principle, also be denied registration.’ (para. 25)

35. CJEU, 18 September 2014, case C-205/13, Hauck/Stokke no artificial extension of limited protection in the case of substantial value shapes catalogue of essential characteristics –nature of the category of goods concerned –artistic value of the shape in question –dissimilarity from other shapes on the market –substantial price difference –promotion strategy accentuating aesthetic characteristics (para. 35)

36. copyright protection limited in time term extension via trademark law? accumulation of rights possible in many cases Example literary and artistic works

37. difference justified because of substitutability? Literary and artistic works

38. Pierre Bourdieu

39. Lack of distinctiveness (conditional acceptance)

40. secondary meaning genericism dilution (-) (+) (-) Different degrees of distinctiveness

41. Art. 3(1) TMD The following shall not be registered or, if registered, shall be liable to be declared invalid: b)trade marks which are devoid of any distinctive character;...

42. Art. 3(1) TMD The following shall not be registered or, if registered, shall be liable to be declared invalid: c)trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, or the time of production of the goods or of rendering of the service, or other characteristics of the goods or services;...

43. Art. 3(1) TMD The following shall not be registered or, if registered, shall be liable to be declared invalid: d)trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade;...

44. Art. 3(3) TMD in these cases, the exclusion from trademark protection is less absolute backdoor: acquisition of distinctive character in consequence of use in trade ‘A trade mark shall not be refused registration or be declared invalid in accordance with paragraph 1(b), (c) or (d) if, before the date of application for registration and following the use which has been made of it, it has acquired a distinctive character.’

45. Attempts to register cultural heritage signs

46. positive image of cultural symbols Risk of free riding

47. Federal Patent Court of Germany, 25 November 1997, ‘Mona Lisa’ The Mona Lisa is not distinctive. The Mona Lisa has become customary in trade practices. But there is no conflict with morality or public order.

48. Guernica for weapons? distinctive? customary in trade practices?

49. Solveig’s song for beer? distinctive? customary in trade practices?

50. CJEU, C-283/01, Shield Mark/Kist ‘I find it more difficult to accept […] that a creation of the mind, which forms part of the universal cultural heritage, should be appropriated indefinitely by a person to be used on the market in order to distinguish the goods he produces or the services he provides with an exclusivity which not even its author's estate enjoys.’ (Opinion A-G Colomer, 3 April 2003, para. 52)

51. Leaving the issue to the marketing efforts of the industry? Distinctiveness a sufficient safeguard?

52. Limited scope of trademark rights

53. principle of specialty (protection relating to specific goods/services) notion of trademark use –mere references to the trademark sufficient? –cultural, political, religious, educational context but enhanced protection of well-known marks –may cover all kinds of goods and services –proof of confusion not necessarily required Limited scope of trademark protection

54. Broad notion of trademark use ECJ, C-63/97, BMW/Deenik ECJ, C-48/05, Adam/Autec ECJ, C-17/06, Céline ECJ, C-533/06, O2/Hutchison structural incentive: no harmonisation under Art. 5(5) of the Trade Mark Directive

55. ornamental trademark use taking advantage of the distinctive character of the Milka mark ‘It is calm above the tree tops/Somewhere a cow is bellowing/Moo.’ (Rainer Maria Milka) BGH, 3 February 2005, Lila Postkarte

56. deterrent effect of potential trademark infringement Impact on cultural productions

57. Louis Vuitton v. Nadia Plesner Plesner: Darfurnica (2010)

58. Low threshold of becoming well-known criterion: knowledge/recognition of the mark amongst the public US: famous marks, niche fame (-) EU: marks having a reputation, niche reputation (+)

59. Exceptions as a way out?

60. ornamental trademark use taking advantage of the distinctive character of the Milka mark with due cause as it is justified by the constitutional guarantee of freedom of arts BGH, 3 February 2005, Lila Postkarte ‘It is calm above the tree tops/Somewhere a cow is bellowing/Moo.’ (Rainer Maria Milka)

61. identical signs identical goods or services adverse effect on one of the protected trademark functions, including investment, advertising, communication But which parody defence in double identity cases?

62. Problem solved?

63. risk of privatising (re-monopolising) parts of the cultural heritage undesirable redefinition of important cultural expressions in commerce free riding on the status, reputation and favourable image of cultural expressions discouragement of ‘cultural heritage grabbing’ Cultural grounds for refusal necessary?

64. Art. 3(2) TMD Any Member State may provide that a trade mark shall not be registered or, if registered, shall be liable to be declared invalid where and to the extent that: b)the trade mark covers a sign of high symbolic value, in particular a religious symbol;...

65. signs consisting of a shape resulting from the nature of the goods themselves necessary to obtain a technical result giving substantial value to the goods (Art. 3(1)(e) TMD) Broader understanding of shape exclusions?

66. The end. Thank you! For publications, search for ‘senftleben’ on www.ssrn.com. contact: m.r.f.senftleben@vu.nl