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Trademark Law InstituteLeiden, March 20-21, 2009
The Need to Keep Signs, Belonging to the
Cultural Heritage, Free
Prof. Martin SenftlebenVU University Amsterdam
Bird & Bird, The Hague
The problem
(macro perspective)
Copyright law: an inspiration system
public domain of cultural expression
(cultural heritage)
Trademark law: a transparency system
public domain of cultural expression
(cultural heritage)
Risks
• drying-out of sources of inspiration
• monopolisation of building blocks of
new creations
= impediment of the cultural inspiration
cycle
Counter-arguments
(micro
perspective)
Registration unlikely
BPatG, 25 November 1997, ‘Mona Lisa’
• The Mona Lisa is not
distinctive.
• The Mona Lisa has
become customary in
trade practices.
• But there is no conflict
with morality or public
order.
Guernica for weapons?
• distinctive?
• customary in trade practices?
Solveig’s song for beer?
• distinctive?
• customary in trade practices?
ECJ, 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, April 3, 2003, para. 52)
Limited scope
of protection
Overview
• requirement of trademark use
• principle of specialty
• restriction to use in trade
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 Trademark Directive
• 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
‘Über allen Wipfeln ist Ruh, Irgendwo blökt eine Kuh. Muh!’ (Rainer Maria Milka)
BGH, 3 February 2005, Lila Postkarte
deterrent effect of
potential trademark
infringement
Impact on cultural productions
Low threshold of becoming well-known
• criterion: knowledge/recognition of the
mark amongst the public
• US: famous marks, niche fame (-)
• EC: marks having a reputation,
niche reputation (+)
favorable image
of cultural
symbols
Risk of free riding
Impact on cultural productions
• registered painting as a book cover?
• registered portrait in a concert
advertisement?
= impediment of the marketing of cultural
productions
Only use in trade
• nonetheless: definition power
• individuals are no longer free to attach
meaning to cultural symbols
• for creators, a specific cultural symbol is
not substitutable
Commercial definition supersedes cultural meaning
technology
commerce
culture
patent law
trademark law
copyright law
Solutions?
Solutions?
• copyright: moral rights of the author?
• traditional cultural expressions: rights of
indigenous peoples?
• trademark law: concept of bad faith?
Cultural grounds for refusal
• 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’
