Political Parody Can Be A ‘due Cause’ Defense Against Trademark Dilution Claims

Some instruction manuals result in solid furniture, others in trademark debates. On September 8, the Court of Justice of the European Union (CJEU) issued a landmark ruling on the interplay between trademark rights and freedom of expression, ruling that a political party’s use of a reputable trademark for parody or campaigning purposes can, in principle, be considered a ‘due cause’ justifying such use under EU trademark law. On the specific facts of the case, however, the CJEU found strong indications that the IKEA-themed immigration campaign of the Belgian political party Vlaams Belang did not meet that bar, leaving the final assessment to the referring Belgian court.

“IKEA plan” for immigration policy

The dispute arose after Vrijheidsfonds, a non-profit organization campaigning on behalf of Vlaams Belang, presented an immigration policy program at a press conference. The program was titled the “IKEA plan”, meaning “Immigratie Kan Echt Anders” (“immigration can really be different”). This plan was designed as an IKEA instruction manual and listed fifteen policy proposals presented as ready to be ‘assembled’ by the Belgian government, designed with IKEA’s trademarks and well-known figures of construction guys. The campaign was also amplified on social media and through a more detailed version of the program on the party’s website.

Inter IKEA Systems B.V. (Inter IKEA), the holder of the Benelux and EU IKEA trademarks, sued Vrijheidsfonds for trademark infringement before the Commercial Court of Brussels. Vrijheidsfonds admitted using the IKEA marks without authorization, but argued it had done so to leverage the marks’ reputation to strengthen and spread its political message, characterizing the use as ‘due cause’ under EU trademark law.

The Commercial Court referred the matter to the CJEU with prejudicial questions, asking for clarification on whether freedom of expression—including political speech and parody—can constitute a ‘due cause’ for use of a trademark, and if so, which criteria national courts should apply to balance the competing fundamental rights.

Dilution and the ‘due cause’ defense

Contrary to copyright law, European trademark law does not contain a parody exception. However, trademark law has an equivalent option: the ‘due cause’ defense. Article 9(2)(c) of the EU Trade Mark Regulation (EUTMR) and Article 10(2)(c) of the EU Trade Mark Directive (the Directive) allow holders of reputable trademarks to prevent a third party from using an identical or similar sign, for dissimilar goods or services, where that use without due cause takes unfair advantage of, or is detrimental to, the distinctive character or reputation of that mark.

Additionally, Article 10(6) of the Directive allows EU Member States to protect well-known marks against use of a sign other than for the purpose of distinguishing goods or services, again subject to a ‘due cause’ qualification. The Benelux legislator incorporated this in Article 2.20(2)(d) of the Benelux Convention on Intellectual Property (BCIP).

In this particular case, the most important question was whether the freedom of expression could qualify as a ‘due cause’. The CJEU answered this question positively, referring to Articles 17(2) and 11 of the Charter of Fundamental Rights: freedom of expression can, in principle, constitute ‘due cause’. However, and importantly, the CJEU held that merely invoking freedom of expression isn’t enough: the party invoking this right must set out the concrete reasons for the trademark use and demonstrate that, and why, they outweigh the trademark holder’s rights and interests. In other words: based on these arguments, national courts must balance:

• the trademark holder’s property right and functions of the trademark

• the third party’s freedom of expression and its interests in using the sign

taking into account all relevant circumstances of the case.

The balancing factors identified by the CJEU

Subsequently, the CJEU provided a non-exhaustive list of relevant factors for that balancing exercise:

• The third-party’s intent (which must reflect good faith).

• Whether the use of the mark conveys an idea or opinion about the mark and/or its owner, its practices, or its goods or services.

• Whether the expression contributes to a debate of general interest and/or occurs in a strictly commercial context, bearing in mind that political speech and matters of general interest leave little room for restrictions of the freedom of expression.

• The consequences of the third party’s use for the trademark holder or for the substance of the exclusive right attached to the mark, including the intensity, scale, and manner of the use, the mark’s reputation, the degree of similarity between sign and mark, and whether the use could create the impression that the trademark holder endorses or supports the political message conveyed, where the holder in fact projects neutrality toward political parties or otherwise disassociates itself from that message.

The CJEU also clarified that:

• a third-party’s bad-faith use (aimed at damaging the trademark or its distinctive character, or pursuing the sole aim of free-riding on its reputation) cannot qualify as due cause

• use outside a strictly commercial context may enjoy broader protection than commercial speech. Thus, the balancing exercise under Article 10(6) of the Directive—or in this case Article 2.20(2)(d) BCIP—won’t necessarily result in the same outcome as the exercise under Article 9(2)(c) or 10(2)(c) of the Directive.

The CJEU also noted, drawing on case law of the European Court of Human Rights, that expression outside the strictly commercial sphere (such as satire and parody) may be entitled to broader protection than purely commercial speech. National courts should weigh this factor in, without making it a standalone criterion.

Applying the criteria; why the balancing probably favors IKEA

While it is up to the referring national court to make the final assessment, the CJEU couldn’t resist giving pointed guidance on the case. Leaving the actual decision to the referring court, the CJEU provided the following pointers:

• IKEA is an acronym coined from personal names without any semantic meaning that would justify third-party use.

• The IKEA marks hadn’t become a public cultural reference or part of everyday language.

• Vrijheidsfonds hadn’t used the IKEA marks to feed a debate about Inter IKEA or its goods or services. Although a debate on asylum and immigration policy can qualify as a matter of general interest, this debate bore no connection to the IKEA marks as such, so that the use of those marks appeared limited to free-riding on their reputation.

• Vrijheidsfonds had used signs strongly similar to, or even identical with, the IKEA marks, going beyond mere use of the verbal element ‘IKEA’.

• It wasn’t a case of one-time use; the use was repeated and disseminated online to a potentially unlimited audience. It couldn’t be excluded that this use gave the relevant public the impression that IKEA endorsed or supported the political message conveyed.

Taken together, the CJEU concluded that this use concerned signs at least strongly similar to the IKEA marks, which—given its intensity, scale, and manner—was capable of causing significant harm to the marks’ reputation, and didn’t appear to outweigh the rights and interests of Inter IKEA as a trademark holder. It is now up to the Brussels Court to make a final assessment in light of all relevant circumstances.

Conclusion and takeaways

This decision confirms that freedom of expression, including political speech and political parody, has a place in trademark law and can in principle amount to ‘due cause’. However, it isn’t a free pass: the party invoking it must thoroughly show that its interests in using the trademark outweighs the trademark holder’s rights.

Trademark holders now have a sort-of instruction manual with factors to invoke in response: intent, contribution to a genuine debate about the brand itself, commercial context, intensity of the use, and the risk of perceived endorsement of the message. On the other end, parodists or campaigners will need more tools than just good intentions or a good cause to justify free-riding on someone else’s brand.

Worth noticing for Benelux trademark holders is the separate referral to Article 10(6) of the EUTMD and the incorporation thereof in Article 2.20(2)(d) BCIP. Even where use of a trademark does not constitute use “in the course of trade”, a comparable balancing exercise applies. This exercise could however result in a different outcome, given the (often) broader protection to non-commercial expression.