Trademarks in works of art are allowed
An artist may incorporate another person's registered trademark in a work of art, provided that the work of art 'is the original result of a creative design process that is not aimed at damaging the trademark or the trademark owner'.
This was decided by the Benelux Court of Justice on 14 October 2019. Trademark owner Moët Hennesy objected to the use of Dom Pérignon's trademarks in the artwork of Belgian artist Cédric Peers.
Mr. Peers used both the distinctive shield-shaped logo of Dom Pérignon and images of the bottle as a whole in a series of artworks. Some of these works show women in skimpy outfits. The artist describes his own style as ‘contemporary, playing with pointillism and pop-art’. The judge called it working with ‘an ironic and sometimes erotic touch’.
The Benelux Court of Justice ruled that ‘artistic freedom, as an aspect of the artist's right to freedom of expression’ may constitute ‘due cause’ for the use of the trademark, within the meaning of the relevant legal provision (Article 2.20 (2)(d) Benelux Convention on Intellectual Property, ‘BCIP’).
The Advocate General (AG) noted that the Court of Justice of the European Union, in a judgment regarding Article 2.20 (2)(c) BCIP, which also contains the concept of 'due cause', had ruled that the purpose of this concept is to ‘strike a balance between the interests in question’ (between the owner of a registered trademark and the third party using that sign). According to the AG it is only logical to use the same interpretation of the term ‘due cause' when it comes to Article 2.20 (2)(d) BCIP, as this benefits both transparency and legal certainty.
Intellectual property rights are protected under Article 1 Protocol to the Convention for the protection of human rights and fundamental freedoms (ECHR), which states that ‘every natural or legal person is entitled to the peaceful enjoyment of his possessions’.
This standard forms the basis for the provision of Article 2.20 (2)(d) BCIP. Artistic freedom, on the other hand, is seen as an aspect of freedom of expression and is therefore protected under Article 10 ECHR. Protection of these fundamental rights is not absolute. Rather, both rights should be weighed in the context of concrete circumstances.
Case law of the European Court of Human Rights has shown that freedom of artistic expression is considered essential for the social dialogue in a democratic society and for the self-development of each individual. As a consequence, the freedom of artistic expression (Article 10(2) ECHR) can only be restricted if there is a ‘pressing social need’. As the freedom of artistic expression enjoys a high level of protection, it will be hard to argue there is such a ‘pressing social need’ in most cases.
The AG found that use of a trademark (sign) in a work of art constitutes a due cause within the meaning of Article 2.20 (2)(d), as long as the artistic expression is the result of a creative process that transforms reality by adding the personal touch of the artist. This requirement of an artistic expression having to be 'the original result of a creative process' will probably not be too high a standard.
There are three grounds for trademark infringement in Article 2.20 (2)(d) BCIP. The first ground is unjustified ‘free-riding’, meaning the undue commercial advantage that the alleged infringer derives by riding on the coat-tails of a mark with a reputation.
In this regard the AG not only found that use of a trade mark in the context of artistic expression occurs for other reasons than ‘to distinguish goods or services’, but also that the mere fact that a work of art is the result of a creative process while contributing to a social dialogue means that the use is with ‘due cause’. As a consequence, if the artist has used the sign with due cause, it automatically means that the advantage he obtains from the use is justified as well.
Secondly, trademark infringement may occur if use of the sign without due cause is detrimental to the distinctive character of the trademark. This will be the case if the sign (identical or similar to the trademark) that is used is liable to weaken the distinctive character of the trademark by making it less capable of distinguishing the goods of the proprietor of the trademark from goods of a different origin.
As Mr. Peers’ art places Dom Perignon’s trademark in an entirely different context, it will still evoke the same direct association with champagne among consumers, which means there won’t be any loss of distinctiveness.
Finally, a trade mark infringement may occur if use of the sign is detrimental to the reputation of the trade mark. This happens when the senses of the public are manipulated in such a way that as a result, the appeal of the trademark is reduced. However, according to the AG, there will be sufficient distance between the art expression and the brand itself, due to the creative process and the essential ambiguous connotation of art. Moreover, art may even insult, shock or cause worry, so long as the artist stays within the limits of the permitted freedom of speech.
Furthermore, well-known brands tend to be in the spotlights and will therefore have to display a wider tolerance in respect of criticism. After all, it was the trademark owner that sought out these spotlights in the first place.
However, according to both the AG and the Benelux Court of Justice, an art work may ‘not be aimed at damaging the trademark or the trademark owner’. With his description 'The Damn Pérignon Collection', it seemed like the artist was heading for trouble. But, according to the AG, this description would not affect the appeal of the brand nor have any effect on its customers desire to purchase the champagne, as the artist did not question its quality.
This is an important judgment of the Benelux Court of Justice which confirms that freedom of artistic expression generally prevails over trademark law.
Benelux Court of Justice 14 October 2019, case A 18/1,
Moët Hennessy Champagne Service / Cedric Art.