Can an artwork, going to be a public domain, be registered as a trademark?

Oslo Municipality applied for trade mark protection for a number of artworks that will become freely available under the Norwegian Copyright Act. Oslo Municipality applied for trade mark protection with regard to several artworks of the oeuvre of Gustav Vigeland, one of the most eminent Norwegian sculptors. Following the refusal to register some trademarks the municipality has appealed.

Oslo Municipality considered that works of art may, in principle, be registered as trade marks. The case concerned shapes that are unique and well suited to distinguish goods and services and all of the shapes have been exclusively connected to Oslo Municipality. Many of these shapes are well known and valuable, in particular, due to the efforts and investments made by Oslo Municipality. Further, the case did not concern a trade mark that is claimed, in itself, to be “contrary to public policy”. It was merely the registration of the mark, leading to the exclusion from the public domain, which is allegedly contrary to “public policy”.

The Norwegian Government was of opinion that a sign that consists of a work of art is not as such excluded from registration, nor is dual protection under copyright and trade mark law prohibited. A sign must fulfill the requirement of distinctiveness. It may be in practice more difficult to substantiate a finding of distinctive character for certain categories of marks. This applies for known works of art, as the mark is likely to be perceived by consumers as the artwork, and not as an indication of commercial origin.

ESA submitted that the fact that the copyright protection period has expired cannot in itself lead to the conclusion that registration of the work at issue is precluded. However, not every work that has previously been protected by copyright can be registered as a trade mark as soon as the protection period has expired. The work must fulfil the criterion of distinctiveness. In this case it may be particularly difficult to establish distinctiveness, as well as an indication of commercial origin for some works.

In the European Commission’s view, the mere fact that a mark consists of, or includes, an artistic work that is protected by copyright does not in itself justify a refusal. However, the effect of granting a trade mark right would, in certain circumstances, be to perpetuate exclusive rights over the work of art, which should normally be in the public domain and capable of being freely used by any person including any economic operator. To appropriate a work of art for an indefinite period through the registration of a trade mark contradicts the very purpose and logic of the time limits established for copyright. It would also grant the trade mark owner more extensive rights than those enjoyed by the author’s estate. Hence, once copyright protection of the work has expired, the work of art should be able to be freely used by any person. The better known the work of art is, the more likely the author or artist will be known to the general public.

In relation to identification of goods or services, the Czech Government argued that a trade mark which is a two-dimensional representation of a sculpture can hardly serve to identify the goods or services covered by that trade mark. It is more likely that the relevant group of consumers would be tempted to consider the trade mark on the products only as a reproduction of the relevant piece of art. Therefore, the requirement of distinctiveness in relation to sculptures not fulfilled.

Findings of the Court

The protection of copyright and the protection of trade marks pursue different aims, apply under distinct legal conditions and entail different legal consequences. In principle, nothing prevents a sign from being protected under both trade mark and copyright law. The public domain entails the absence of individual protection for, or exclusive rights to, a work. Once communicated, creative content belongs, as a matter of principle, to the public domain. In other words, the fact that works are part of the public domain is not a consequence of the lapse of copyright protection. Rather, protection is the exception to the rule that creative content becomes part of the public domain once communicated.

The protection afforded by a trade mark grants its proprietor the exclusive right to use it in the course of trade and, allows him, in certain circumstances, to prevent others from using the mark. Thus, a trade mark based entirely on copyright protected work carries a certain risk of monopolisation of the sign for a specific purpose, as it grants the mark’s proprietor such exclusivity and permanence of exploitation which not even the author of the work or his estate enjoyed.

In order to acquire distinctiveness, a strong link must be created between the work and the goods and services so that an averagely informed, reasonably aware and perceptive consumer would recognise the work not as an expression of the creativity of the author or as part of the public domain common to all mankind, but merely as an indication of commercial origin.

Refusal based on grounds of “public policy” must be based on an assessment of objective criteria whereas an objection to a trade mark based on “accepted principles of morality” concerns an assessment of subjective values. In this case, the question appeared to be whether a removal from the public domain of the signs and the artworks at issue – which would be the necessary consequence of a registration – may be contrary to public policy or to accepted principles of morality.

EEA States may lay down rules in national law to refuse trade mark registration to the extent that the use of the trade mark may be prohibited by virtue of a copyright. However the fact that an artwork has previously enjoyed copyright protection may not in itself form the basis for refusing trade mark registration.

As far as the question relates to refusal of registration on the basis that the sign is contrary to accepted principles of morality, the Court noted that the subjective values, which are relevant for the assessment of this ground of refusal, are determined by reference to the perception of the sign by the relevant public. The perception of whether a mark is contrary to accepted principles of morality is influenced by the circumstances of the particular EEA State in which the consumers who form part of the relevant public are found. The signs at issue do not appear to be offending by their nature a reasonable consumer with average sensitivity and tolerance thresholds.

However, 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.

Consequently, the assessment of whether trade mark registration of a sign that consists of an artwork would be contrary to accepted principles of morality must be carried out on a case-by-case basis. This assessment must take into account the status or perception of the artwork in the relevant EEA State and, where relevant, the nature of the goods or services for which registration as a trade mark has been applied, such that registration must be refused if the work is being misappropriated. It may also be necessary to consider the extent to which the sign contains elements, which may lead to a desecration of the work.

The registration of a sign that consists of works for which the copyright protection period has expired as a trade mark is not in itself contrary to public policy or accepted principles of morality. Whether registration for signs that consist of works of art, as a trade mark shall be refused on the basis of accepted principles of morality depends in particular, on the status or perception of the artwork in the relevant EEA State. The risk of misappropriation or desecration of a work may be relevant in this assessment. Registration of a sign may only be refused on basis of the public policy exception provided for in Article 3(1)(f) of the Trade Mark Directive if the sign consists exclusively of a work pertaining to the public domain and if registration of this sign would constitute a genuine and sufficiently serious threat to a fundamental interest of society.