Works Of Art In Public Domain And Trade Mark Protection

Copyright, contrary to trade mark rights, is not of indefinite duration but ends, in most countries, 70 years after the death of the author. Trade mark rights can be renewed every ten years, so that they can last indefinitely, as long as renewal fees are paid.

The possibility of registering artistic work as trade marks, in order to obtain longer protection after copyright protection has run out, seems like a clever strategy for owners of works of art or museums that hold them. It is not as easy as it seems, though.

In a case earlier this year (Case E-5/16, Decision of 6 April 2017 http://www.eftacourt.int/uploads/tx_nvcases/5_16_Judgment_EN.pdf), the EFTA court ruled on this topic, upon a request by the Norwegian Industrial Property Office (NIPO) for an advisory opinion from the Board of Appeal on the interpretation of Art. 3(1)(b) to (f) Directive 2008/95/EC.

The Municipality of Oslo had applied to register several trade marks that consisted of depictions of works of art by Norwegian artist Gustav Vigeland, all of which were out of copyright because the protection period had run out. NIPO's Board of Appeal sought advice from the court regarding the criteria and circumstances that might be relevant to a refusal of such applications. The EFTA court clarified that, in principle, nothing prevents a sign from being protected under both trade mark and copyright law, because trade mark law does not make any distinction as to the legal nature of a sign that can constitute a trade mark and because both rights have different purposes.

Nevertheless, it also pointed out that the lapse of copyright protection after a determined period also serves the principles of legal certainty and the protection of legitimate expectations that, after that period, the creative content can be used without limitation. Once a work is in the public domain, there is no longer individual protection for that work, which is why several criteria have to be met if such work is to be protected as a trade mark, with the consequence of a potentially everlasting exclusivity.

Firstly, the work must fulfil the essential function of a trade mark, namely to guarantee the identity of the origin of the marked product, so that the consumer is able to distinguish the product or service from those of others, without any possibility of confusion. The essential question is, does the consumer perceive the artistic work as an identifier of the artist or of goods and services from a different...