European Union: Trademarks And Protection Of Cultural Heritage – A Conflict Of Legally Protected Interests

Mona Lisa, Girl with a Pearl Earring, Discobolus, or David. All these famous works of art have a lot in common – they are popular, their authors passed away centuries ago and the works can undoubtedly be classified as the world's cultural heritage. But can they be used in the form of trademarks?

The intention of business entities to register some cultural heritage works of art as trademarks is quite natural, as these works enjoy considerable popularity, reputation and goodwill among consumers. The opportunity to associate your brand with one of these works is appealing. How does the current and effective legislation perceive these efforts, and what is the practice of the decision-making authorities? Below, we suggest our answers to these questions.

Limits to the registration of works of art as trademarks

Registering a well-known work of art (whether a painting, sculpture or architectural work) as a trademark is not expressly prohibited by EU law as long as the work is in the public domain. An applicant may apply for registration of a work of art as a trademark under the condition that the period of copyright ownership, which in Europe is generally 70 years from the death of the author, has expired. After that, virtually anyone can use these (public domain) works of art for any purpose, e.g. as the dominant element of their trademark.

However, that is not all. An application for a trademark consisting of a work of art may be rejected by the competent trademark authority for lack of distinctive character, among other things. The fact that the work of art is well-known and has already been used, for example, in advertisements by several undertakings may lead the competent authority to conclude that the relevant consumer would not associate the trademark with the products of a single competitor.

Another reason for rejecting an application may be that it violates public order and good morals. In such cases, it is not necessarily the trademark itself that is perceived as offensive, but rather the fact that the competent authority considers the registration of the trademark itself to be contrary to public order and good morals. Trademark applications involving globally renowned works of art are thus inherently prone to rejection.

When is it not possible?

One of the earliest decisions regarding a trademark using a famous work of art was a decision by the German Patent Office in 1997, which rejected an application for the registration of a trademark featuring the Mona Lisa as its main element, precisely because of the previous use of this famous work in advertising by several competitors.

The reproduction of another work by Da Vinci, Lady with an Ermine, was the subject of an application for registration by the National Museum in Krakow in 2001. The aim was to obtain exclusive rights of use for financial gain (sale of promotional items with the motif of the work). However, the application procedure was discontinued (by withdrawal of the application). The applicant itself may have realised that the immediate thoughts of consumers who look at the trademark would always be exclusively related to the artwork, its author, and not to the owner of the trademark. Thus, the registration lacks practical purpose or, at least, it cannot fulfil the main function of trademarks, i.e. the protective and distinguishing function.

The EFTA Court has also passed a significant negative decision, rejecting the City of Oslo's trademark application for works by Norwegian sculptor Gustav Vigeland and ruling that certain works of art 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". The registration of such works could then be perceived by the relevant public as offensive and contrary to generally accepted principles of morality, as it could result in the monopolisation of the right to a work that should be freely available to all.

It is possible!

Member State authorities and the EUIPO may differ in the way they interpret the provisions of EU trademark law, which can often lead to different and sometimes completely contradictory outcomes. An example is the registration of a trademark using Rembrandt's painting The Night Watch¹. While the Dutch authorities rejected the application on the grounds of lack of distinctiveness, the EUIPO considered the trademark eligible and allowed its registration.

Another example is the registration of Johannes Vermeer's painting, The Milkmaid², by Nestlé for their dairy range, which is one of the most successful marketing strategies using a famous work of art. Vermeer's other work, Girl with a Pearl Earring³, has also been successfully registered as a trademark, giving Vermeer a 2-0 lead in the imaginary duel with Da Vinci. Just the combination of a logo with the use of an artwork as a background can provide a clue to success with a trademark registration using art. In fact, this idea has also been successfully used in practice by the Dutch beer brand Grolsch, which promoted its products with artwork creatively linked to slogans and its "standard" trademark registered earlier. It is precisely this combination of artwork and figurative trademarks that can lead to the creation of a close link between the trademark and the product or manufacturer in the minds of relevant consumers, which goes beyond the public's association with the original author of the work.

In contrast to Oslo, Paris was successful in obtaining a trademark registration for the famous Eiffel Tower⁴, which shows that architectural works can also be eligible for registration as a trademark.

The Banksy case

At first, it seemed that nothing would prevent the well-known, albeit anonymous, street artist Banksy from registering his works as trademarks. As a result, he had a number of his best-known works registered as trademarks through the company Pest Control Office Limited.

However, a British greeting card company, Full Colour Black Limited, has successfully filed motions to cancel several of these trademarks on the grounds of invalidity, claiming that Banksy was trying to use trademark protection to monopolise works of art in order to effectively replace the copyright protection which is beyond his reach due to anonymity. This allegedly constituted bad faith and therefore the trademarks should be cancelled. The EUIPO subsequently rejected some of the registered trademarks on the grounds of bad faith trademark applications, claiming that Banksy's (or his nominee company's) conduct, including the launch of an e-shop for merchandise using his artworks, demonstrated that he never intended to use the trademark as such and that his sole purpose was to circumvent the barriers to enforcing copyright in his works.

However, following Banksy's appeal, the appellate authority, in the context of the decision regarding the fate of a trademark using the work of a forlorn monkey called "Laugh Now But One Day We'll Be In Charge", came to the categorically formulated conclusion that it is possible to protect the same work of art through copyright and as a trademark simultaneously. This decision may thus represent the beginning of a new era in which artists may consider trademark protection as complementary protection for their works. However, Full Colour Black Limited will likely not accept the latest ruling. Hence, the last line in the saga of Banksy and trademarks has probably not yet been written.

Another issue that the authorities have been addressing recently is how to deal with the situation when one of the author's descendants or heirs registers a famous work as a trademark after the copyright protection has expired. We will summarise our position on this topic in a follow-up article on our blog next time.

Conclusion

To conclude, it is necessary to emphasise that the intellectual property system seeks to establish a fair balance between the protection of intellectual property and the public interest. In the past, the CJEU repeatedly pointed out that trademark law should not be used to circumvent the natural expiration of copyright protection by the lapse of the term of the economic rights enjoyed by such works of art. Following this warning, the EU has adopted legislation⁵ that prohibits individual EU Member States from protecting simple reproductions of works of art in the public domain through copyright or related rights.

Thus, if you are considering registering a new trademark in which a public domain art work is to play the main role, what is important is not only the graphic layout and design of the trademark itself (a simple reproduction is more likely to be rejected), but also the inclusion in the list of goods and services with which the trademark will be used (so that the distinctive character can be inferred). The decision-making practice of the trademark authorities is, in fact, inconsistent and changes as often as the theory of how van Gogh lost his ear.

Footnotes

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.