Trade mark protection of public domain works: CREATe academics contribute to Opinion by European Copyright Society

CREATe research has explored the public domain in the context of copyright law. However, can cultural works that are in the public domain as a matter of copyright law, be protected as registered trade marks? The European Copyright Society has just published an Opinion on a case that raises this issue. The Drafting Committee for the Opinion included Prof. Lionel Bently (University of Cambridge) and Prof. Estelle Derclaye (University of Nottingham).

The case (E-05/16), pending before the EFTA Court (which interprets the Agreement on the European Economic Area, as it applies to European Free Trade Association states), concerns applications filed by the Municipality of Oslo to register as trade marks some 90 visual works and sculptures by the Norwegian artist Gustav Vigeland. Vigeland’s works, which are displayed in Oslo’s famous Vigeland Sculpture Park and the Vigeland Museum, are no longer protected by copyright, as this expired in 2014. The questions before the EFTA Court, referred by the Norwegian Board of Appeal for Industrial Property Rights, concern the application of absolute grounds of refusal under the Trade Marks Directive (Directive 2008/95/EC) to subject matter that is in the public domain as a matter of copyright law.

The European Copyright Society Opinion, which is available to download on-line, acknowledges that the cumulation of different forms of intellectual property, in general, should not be problematic; different IP rights serve different functions. However, cases of ‘dysfunctional cumulation’ may arise: where cumulation ‘may distort competition’ or where ‘one area of intellectual property law undermines the rationales and objectives of protection in another.’ In such circumstances the proper approach, argues the Opinion, should be to read the ‘co-equal bodies of law’ in ways that ‘reconcile and best effectuate their respective purposes.’

In the case of copyright and trade mark law, ‘dysfunctional cumulation’ may arise ‘where a copyright work has clearly evolved in the cultural domain and has a particular cultural and/or artistic significance’. The Opinion identifies a number of basic principles of trade mark law (e.g. functions of a trade mark, distinctive character, exclusions from registration, limits on scope of protection) which ‘should be sufficient’ to prevent such undesirable cumulation in most cases, though, in some cases, courts may need to resort to public policy (an absolute ground for refusing a trade mark). It then addresses the specific questions raised by the reference, concerning the proper interpretation of various absolute grounds of refusal under the EU Trade Marks Directive (Art. 3(1)(f) public policy/morality, 3(1)(e)(iii) shapes which give substantial value to goods, 3(1)(b)-(c) distinctive character/signs which serve in trade to indicate kind, purpose etc. of goods).

The European Copyright Society was founded in 2012 and brings together scholars from across the European Union; its focus is critical and independent thinking about European Copyright Law. Other Opinions issued by the Society can be found here:

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