Abstract The Municipality of Oslo  KFIR (Norwegian Board of Appeal for Industrial Property), 13 November 2017 Trade mark registration of a sign that consists of an artwork might be considered contrary to public policy and accepted principles of morality, and be thus refused. Legal context According Article 3(1)(f) of Directive 2008/95, a sign cannot be registered or, if registered, must be declared invalid if it is contrary to public policy or accepted principles of morality. In the context of the trade mark law system, the concept of public policy refers to the body of European Union law applicable in a certain area, as well as to the legal order and the state of law as defined by the Treaties and secondary EU legislation, which reflect a common understanding of certain basic principles and values. The accepted principles of morality concerns, instead, subjective values. They prevent registration of blasphemous, racist, discriminatory or insulting words or phrases, if the meaning conveyed by the sign applied for is unambiguous (see Guidelines for examination of European Union trade marks, EUIPO, Part B, Examination, Section 4, Absolute grounds for refusal, Chaper 7, Trademark contrary to public policy or acceptable principles of morality). Facts The Oslo Municipality, which manages several copyrights of some Norwegian artists, applied for trade mark protection for a number of artworks of one of the most eminent Norwegian sculptors, Gustav Vigeland, in relation to which copyright was about to lapse. The Norwegian Intellectual Property Office (NIPO) refused to register some of these artworks as trade marks in view of the lack of distinctive character and because these signs would be considered as shapes that add substantial value to the goods. Under appeal, the Norwegian Board of Appeal for Industrial Property (KFIR), after noting that it would be possible to add, as a further ground of refusal, the incompatibility with public order and accepted principles of morality, referred six questions to the European Free Trade Association (EFTA) Court in order to determine if an artwork which will become part of the public domain may be registered as a trade mark in principle. In its judgment (Municipality of Oslo, E-5/16), the EFTA Court noticed first that there is no provision in Directive 2008/95 which prevents a sign from being protected under both trade mark and copyright laws. The reason is simple: the objectives pursued by these rights are different. On one hand, a trade mark has the function to guarantee the identity of the origin of the goods or services covered. On the other, copyright protection provides an incentive to contribute to the enrichment of economy and society at large. Thus, an economic operator could register as a trade mark an artwork protected by copyright. However, the court noted that the fact that copyright is limited in time creates legitimate expectations, in particular to the benefit of the public. The considerations relating to the public domain also serve the general interest in protecting creations of the mind from commercial greed and ensuring the freedom of the arts. The court recalled that the requirement of distinctiveness—Article 3(1) points (b) to (d)—does not ensure that a sign is, in general, kept free for use. Indeed, a non-distinctive trade mark may become eligible for registration as a result of acquired distinctiveness through use. With regard to the concept of ‘signs contrary to accepted principles of morality’, the judges reaffirmed that this ground relates to signs which are considered to be offensive by reasonable consumers with an average sensitivity and tolerance. Now, an artwork—and more particularly the ones at issue—does not appear to be likely to offend anyone. Nevertheless, the court noted that certain pieces of art could have a particular status and be considered as prominent parts of a nation’s cultural heritage, an emblem of sovereignty or of the nation’s foundations and values. As a result, a trade mark registration can be perceived as 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. In such a case, the registration of the sign could offend the average consumer and be contrary to accepted principles of morality. Concerning the concept of ‘public policy’, it referred to principles and standards regarded to be of a fundamental concern to the state and society as a whole. The court added that registration of a sign may be refused on this basis only in exceptional circumstances. This could be the case if the registration as a trade mark of a work of art 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. Analysis In its decision of 13 November 2017, the referring Board implemented all the recommendations of the EFTA Court. From the outset, the Board noted that the trade mark system should not be used and seen as an alternative means to secure or extend the exlusive rights of copyright holders once an artwork falls into the public domain. Indeed, there is a risk that the trade mark holder would exploit the value of the work as an artwork and thus benefit from functions which should return to the public domain with the lapsing of copyright protection. In line with the opinion of the EFTA Court, the Board specified that the requirement of distinctive character is not an efficient tool to prevent the registration of an artwork as a trade mark, since distinctiveness can be acquired through use. The Board found that Article 3(1)(f), dealing with public policy and accepted principles of morality, is far more promising. In this regard, the Board recalled that Vigeland was one of the most eminent Norwegian sculptors, and the artworks—for which registration is sought—must be considered to hold significant cultural value. The artist and the Vigeland space in Oslo (a park and a museum) are seen by the Norwegian population as belonging to Norwegian cultural heritage. Then, the Board considered that registration of the works as trade marks, even for specific goods and services, would remove them from the public domain, and therefore could limit their public access. Even if it is not disputable that the attempt to maintain control over Vigeland’s artwork as works of art is a noble objective, such registrations would contradict the considerations and fundamental societal interests justifying the limitation of the term of copyright protection of Vigeland’s works. Therefore, according to the exceptional circumstances of the case, the trade mark registrations at issue must be refused on public order grounds. Practical significance For a long time now, the trade mark system has increasingly departed from its initial function and has been used to protect anything and everything. This case offers a demonstration that the tools which could be used in order to prevent the registration of certain signs are broader than initially thought. Indeed, public policy and accepted principles of morality are traditionally used to prevent the registration of subversive signs, for example, blasphemous, racist, discriminatory or insulting words or phrases. This ground of refusal henceforth must be assessed broadly to prevent registration of signs whose commercial use could be considered by the public as immoral. For example, the sign #JeSuisCharlie has been refused by the EUIPO and French Office on the basis of this ground of refusal. The decision of the KFIR could be understood as a further step in the judicial construction of this new approach to ‘morality’. However, the impact of this case—and of the EFTA Court decision—must be put in context and relativized. Indeed, the reference to Article 3(1)(f) seems excessive and, even if the ground of refusal has been rejected, it would have been more rigorous to use—despite its defects—Article 3(1)(b) and (c) instead: the requirement of distinctiveness. A well-known artwork—part or not of the public domain—should not be registered as a trade mark because it would fail to be perceived by the consumer as a trade mark. Besides, such a sign should be considered as descriptive in the sense that it would be perceived as describing the fact that the designated goods are merchandising products. But, obviously, such an assessment could be contrary to the will of the copyright owners and perspective trade mark holders. © The Author(s) 2018. Published by Oxford University Press. All rights reserved. This article is published and distributed under the terms of the Oxford University Press, Standard Journals Publication Model (https://academic.oup.com/journals/pages/about_us/legal/notices)
Journal of Intellectual Property Law & Practice – Oxford University Press
Published: Mar 19, 2018
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