IP rights in fashion, culture and art remain ‘unsettled and uncertain’
Case law relating to IP rights in the cultural space remains contradictory and confusing, according to a panel discussion at a major case law conference in Europe.
Legal clarity over IP rights in culture, fashion and entertainment remains far from settled, as delegates at the fourth annual EU Intellectual Property Office (EUIPO) Case Law Conference discovered.
Kicking off the panel discussion on July 7, Yann Basire—associate professor at CEIPI, University of Strasbourg—explored how the question of adequately protecting book and press titles was complex and deserved further and “non dogmatic” study.
Part of the problem, he explained, was that case law delivered by the EUIPO boards of appeal was “contradictory and confusing”.
“The EUIPO’s examination guidelines state that while the titles of famous books may well retain their distinctiveness in relation to paintings, clothes or pencils, they will not have a distinctive role in relation to goods and services whose content merely reflects the general context or genre,” he explained.
Reputation of literary works
A 2015 board of appeal decision centring on the “The Diary of Anne Frank”, he noted, was particularly problematic.
A charitable foundation had applied unsuccessfully for the registration of “The Diary of Anne Frank” and “The Diary of a Young Girl”, covering trademarks including “printed matter, periodicals, magazines, newspapers and books” and the “arranging of guided tours for cultural or educational purposes”.
On appeal, the EUIPO board held that while the story of Anne Frank is widely known and popular with the public, it did not describe the goods and services in question.
“How can it be justified that for the simple reason that ‘everyone knows the story of Anne Frank’, that the sign ‘The Diary of Anne Frank’ is devoid of distinctive character even though it refers to a unique work?” queried Basire.
In his view, it was wrong to state “on a peremptory basis”, as in the Anne Frank decision, that reputation has no bearing on the assessment of distinctiveness. “This is not true as it may influence the consumer’s perception of the work,” he argued.
Thematic significance
Other decisions have been more severe, he said, alluding to decisions relating to “Pinocchio” and “The Jungle Book”.
For example, ‘The Jungle Book’ is a book title originally attributable to a particular literary work. The Board of Appeal held that due to the enormous popularity of the book, and the passing of time, its title had gradually gained a thematic significance in the public’s perception, which extends beyond the actual content of the books concerned.
“The EUIPO’s Examination Guidelines state that while the titles of famous books may well retain their distinctiveness in relation to paintings, clothes or pencils, they will not have a distinctive role in relation to goods and services whose content merely reflects the general context or genre,” he said.
Noting that this reasoning seemed “artificial”, he insisted that the decisions are not satisfactory as there is a confusion between the notions of “autonomous descriptiveness” and descriptiveness itself.
On this basis, he noted that under current case law, the fame of a title “could kill its inherent trademark-ability”.
Unconventional fashion marks
This lack of clarity also extended to the fashion space, with entrepreneurs finding that the registration of unconventional fashion marks remained a growing challenge.
This dilemma had persisted despite a ruling nearly a decade ago that had promised to deliver more explicit guidelines, according to Eleanora Rosati, professor of Intellectual Property Law at Stockholm University.
In 2013, the clothing company G-Star accused the fashion label Cofemel of infringing their copyright in respect of several items of clothing.
The Court of Justice of the European Union (CJEU) in Cofemel v G-Star Raw (C-683/17) ruled in 2019 that the only requirement for a design to qualify for copyright protection in the EU is originality.
But according to Rosati, the application of Cofemel (C-683/17) still faces uncertainties and “resistance” at the EUIPO.
“The originality criterion can not be satisfied when choices dictated by technical considerations, rules or constraints leave no room for creative freedom,” she noted ruefully.
Cultural symbols
Meanwhile, the registration of cultural symbols as trademarks posed additional legal uncertainties, as Knud Wallberg, partner at Zacco, explained.
Many trademarks contain or reproduce cultural symbols, he said.
And a swathe of such symbols have become “publicly available” for exploitation as trademarks, to the extent that these symbols have “become generic or stock knowledge”, notwithstanding that their historic origin may be known to the public, added Knud.
Such examples include the titles of several fairy tales by Hans Christian Andersen, including “The Little Mermaid” and “The Ugly Duckling”.
“The Board of Appeal found that a mark—which contains a title of a well-known Andersen fairy tale—will therefore be descriptive of such goods and services that may contain or include reproductions of, or adaptations of all or part of that fairy tale; or that may otherwise contain elements that refer to the content of the fairy tale, including reference to the characters that are featured in the fairy tale,” he said.
But many other cultural symbols, including “traditional cultural expressions”, have not become generic or stock knowledge and may still indicate “geographical origin” for some goods and services,” he warned.
The Banksy saga and bad faith
Another problem, he explained, was that the concept of ‘bad faith’ as relating to cultural symbols was not clearly defined.
For example, elusive British street artist Banksy lost a series of trademark disputes at the EUIPO, failing to keep the rights to iconic artworks including “Flower Thrower”, “Girl with an Umbrella”, “Love Rat” and “Bomb Hugger”.
Graffiti greeting card company, Full Colour Black, successfully filed five cancellation actions on the grounds of bad faith against trademark registrations held in the name of Pest Control Office (Banksy’s legal representatives).
Pointing to what he termed the “Banksy saga”, Knud noted that the cancellation division’s definition of bad faith could, however, present future question marks.
According to the division, “bad faith may apply if it transpires that the EUTM proprietor never had any intention to use the contested EUTM…” he said.
This decision, argued Knud, still presented the question of whether such works are free to be used and registered and/or exploited as trademarks in the future.
Consequently, the legal situation in this specific area of trademark law, he said, is “far from settled”.
“The aim is—as always—to achieve legal certainty. So to register or not to register artworks and cultural expressions as trademarks will continue to be a relevant question in the years to come,” he added.
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