ARTISTIC USES OF TRADE MARKS IN EU LAW: THE NEED FOR THE
U.S. Rogers v Grimaldi DOCTRINE?
A growing number of scholars have drawn attention to need to protect the
public domain and cultural follow-on innovation, which is threatened by
protection of non-traditional marks.1 These scholars oppose trade mark
registration in the first place, advancing valuable academic proposals in this
regard. This paper contributes to these debates but goes beyond the existing
scholarship by arguing that it is a unlikely that legislators will undertake a volte
face regarding the trend towards statutory protection, and proposing instead to
rely on the newly created defence of artistic use as a means for preserving the
cultural significance and inherently valuable expression of signs that become
subject of trade mark registration. It argues that existing doctrinal precedence
of permitted uses of EU trade marks will not help as their focus is entirely on the
private interests of proprietors. It proposes instead adopting the Rogers test,2
which exists in U.S. case-law as a tool for balancing competing interests in
disputes involving trade marks in expressive creations, as a EU framework for
incorporating other interests and values in deciding non-infringing artistic uses
that implicate fundamental freedoms such as freedom of the arts and freedom
of expression. The 2015 EU trade mark law reform introduced new limitations
to the use of registered marks, one of which relates to non-infringing use for
artistic expression. This expressive use defence to infringement is also
bolstered by the introduction of a general obligation to apply the EU Trade
Marks Directive “in a way that ensures full respect for fundamental rights and
freedoms, and in particular the freedom of expression.”3 These changes were
hardly due to legislators’ sensitivity to the artistic and expressive interests of
creators, consumers and the general public but largely due to scholarship calls
for EU reforms to stress the importance of the need for providing more breathing
space for values other than private interests in the system of undistorted
competition underlying EU law.4 There are nonetheless no examples or
illustrations of the type of non-infringing artistic or expressive uses of registered
Martin Senftleben, “Towards a New Copyright/Trademark Interface –Why (And How) Signs with
Cultural Significance Should be Kept Outside Trademark Law” in Graeme Dinwoodie (ed), Research
Handbook on Trademark Reform, (2021, EE) p.130. See also the following articles published in Irene
Calboli and Martin Senftleben (eds), The Protection of Non-Traditional Trade Marks, (OUP, 2019):
Martin Senftleben, “A Clash of Culture and Commerce: Non-Traditional Marks and the Impediment of
Cyclic Cultural Innovation,” Lisa Ramsey, “Non-Traditional Trade Marks and Inherently Valuable
Expression,” and Katya Assaf-Zakharov, “Non-Traditional Trademark Protection: A (Non-Traditional)
Means of Cultural Control.”
2 Rogers v Grimaldi, 875 F.2d 994 (2nd Cir. 1989). See also, VIP Products LLC v Jack Daniel’s
Properties, Inc, 953 F.3d 1170 (9th Cir. 2020) (affirming the application of Rogers beyond titles and also
to the use of trade dress elements to parody a registered mark). For the district court’s decision on
remand granting judgement for the defendant, see 2021 WL 5710730 (D. Arizona, 2021) (unreported).
An appeal to the 9th Circuit has been filed.
3 Recital 27, TMD.
4 Martin Senftleben et al, “The Recommendation on Measures to Safeguard Freedom of Expression
and Undistorted Competition: Guiding Principles for Further Development of EU Trade Mark Law”(2015)
6 E.I.P.R.37
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trade marks that EU legislators envisaged and which may be permitted even
where their proprietors can establish a likelihood of infringement. However this
absence of legislative illustrations arguably provides extensive leeway for EU
courts and tribunals to develop much-needed defences within the growing
intersection of intellectual property rights such as trade marks and freedom of
expression.
This intersection is only going to become more widespread in the light of
significant changes to the EU concept of a registrable mark, which after 2015
allows for flexibility in the technical means of representing and claiming an
almost unlimited range of subject-matter as trade mark including such nontraditional marks as scents, sounds, taste, touch and multimedia. Non-infringing
artistic uses of trade marks are arguably a positive legislative development
since these non-traditional marks not only raise important competition concerns
but also contain highly relevant expressive content that artists, competitors,
consumers and the general public may use to communicate ideas or opinions.
With no legislative guidance however, it is difficult to know several questions
that govern the potential scope of this newly created artistic use defence,
namely its relationship to the infringement analysis (Does the defence apply
only after a proprietor has proved the risk of infringement, or does it apply as a
factor within perhaps an appropriately modified infringement analysis?), what
the relevant circumstances are for finding that the defendant is indeed making
artistic use (Does the defence require objective or subjective facts for
establishing a defendant’s artistic motives?), what factors are relevant for
finding expressive content.
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