Trademark Protection and Freedom of Expression

Transcription

1 Trademark Protection and Freedom of Expression An Inquiry into the Conflict between Trademark Rights and Freedom of Expression under European Law Wolfgang Sakulin Law & Business

2 Information Law Series VOLUME 22 General Editor Prof. P. Bernt Hugenholtz Institute for Information Law University of Amsterdam The titles published in this series are listed at the back of this volume.

3 Published by: Kluwer Law International PO Box AH Alphen aan den Rijn The Netherlands Website: Sold and distributed in North, Central and South America by: Aspen Publishers, Inc McKinney Circle Frederick, MD United States of America Sold and distributed in all other countries by: Turpin Distribution Services Ltd. Stratton Business Park Pegasus Drive, Biggleswade Bedfordshire SG18 8TQ United Kingdom Printed on acid-free paper. ISBN # Wolfgang Sakulin, Rotterdam 2010, c/o Kluwer Law International, Alphen aan den Rijn, The Netherlands. All rights reserved. No part of this publication may be reproduced, stored in a retrieval system, or transmitted in any form or by any means, electronic, mechanical, photocopying, recording, or otherwise, without written permission from the publisher. Permission to use this content must be obtained from the copyright owner. Please apply to: Permissions Department, Wolters Kluwer Legal, 76 Ninth Avenue, 7th Floor, New York, NY , USA. permissions@kluwerlaw.com Printed in Great Britain.

4 Preface and Acknowledgement List of Abbreviations v xv Chapter 1 Introduction Trademark Protection versus Freedom of Expression: Introduction to a Possible Conflict The Evolution of the Conflict Over Trademark Use Key Elements of the Conflict Two Basic Functions of Trademarks The Idiosyncrasy of Trademarks Monologic and Dialogic Communication Trademarks as Identifiers A Change in Advertising Paradigms: From Identifiers to Communicators Emergence of a Political Dimension to the Conflict Emergence of a Social and Cultural Dimension of the Conflict Conflicts in the New Media Research Question and Outline Limitation of the Subject Matter A Comparative Perspective 22 Chapter 2 Trademark Rights and Their Rationales Introduction A Bird s-eye View of European Trademark Law 26

5 The European Trademark Law Framework The Grant and Revocation of Trademark Rights Grounds for Refusal of Registration Revocation of Registration The Scope of Trademark Rights Identity Protection and Protection against Confusing Use Identity Protection under Article 5.1.a TMDir Protection against Confusion under Article 5.1.b TMDir Protection of the Distinctive Character and Repute Use in Relation to Goods and Services Free-Riding, Blurring, and Tarnishment Article 5.5 TMDir Limitations of Trademark Rights Rationales for the Grant and Scope of Trademark Rights Trademark Functions in Trade Source Identification Function Product Distinction Function Quality or Guarantee Function Goodwill and Advertising Function The Essential Function of Trademarks as Viewed by the ECJ Economic Rationales Background Lowered Search-Costs and Dynamic Efficiency Protection of the Goodwill and Advertising Function Lowered Search Costs Dynamic Efficiency Trademarks as Psychological Commodities Perception Advertising and Negative Effects on Rationality Interim Conclusion Ethical and Fairness-Based Rationales Unfair Competition and the Underlying Principles of Truth and Unjust Enrichment Truthfulness 69 viii

6 Unjust Enrichment as a Principle An Extended Version of Lockean Labour Rationale Protection of the Goodwill and Advertising Function Limitations Interim Conclusion Trademark Rights in Light of the Rationales The Grant and Revocation of Trademark Rights Grounds for Refusal of Registration Revocation of Registration Identity Protection and Protection against Confusing Use Identity Protection Protection against Confusion Level of Proof for the Protection against Confusion Protection of Distinctive Character and Repute The Definition of Reputation Use in Relation to Goods and Services Taking Unfair Advantage Blurring Tarnishment Article 5.5 TMDir Limitations of Trademark Rights Conclusion 104 Chapter 3 Freedom of Expression as a Possible Limitation to Trademark Rights Introduction A Bird s- Eye View of the Provisions Protecting Freedom of Expression Article 10 ECHR Freedom of Expression under EU Law Freedom of Expression under United Kingdom Law Freedom of Expression under Dutch Law Article 5 of the German Grundgesetz Invoking Freedom of Expression in a Conflict with Trademark Rights Indirect Horizontal Effect of Article 10 ECHR Indirect Horizontal Effect and Positive Obligations Positive Obligations and Expressive Diversity 122 ix

7 Horizontal Effect of Article 10 ECHR in EU Law Horizontale Doorwerking in the Dutch Legal Order Horizontal Effect in the United Kingdom Mittelbare Drittwirkung of Article 5 GG The Constitutionalisation of Private Law Rationales for Freedom of Expression General Rationales for Freedom of Non-Commercial Expression Truth, Democracy, and the Role of the State Discovering Truth Democracy and Control of Power Minority Views, Opposition, Exaggeration, and Pluralism Limitations The Self-Fulfilment of Individuals Dialogic Democracy: A Supplementary Rationale for the Use of Trademarks in Non-Commercial Expression The Rationale for Freedom of Commercial Expression Interim Conclusion The Varying Level of Protection Non-Commercial Expression Expression on Matters of Public Interest Public Figures and Public Symbols Public Figures and Public Symbols The Countervailing Interests Artistic Expression Chilling Effects on Public Discourse Purely Commercial Expression Mixed-Expression Article 10 ECHR Article 5 GG Conclusion 175 Chapter 4 Balancing the Grant and Revocation of Trademark Rights with Freedom of Expression Introduction General Introduction The Public Interest Stemming from Freedom of Expression Outline The Grant of Trademark Rights and the Grounds for Refusal 189 x

8 4.2.1 The Need for a Critical Assessment at the Time of Registration Ground for Refusal I: Descriptiveness Criteria Found in the Jurisprudence of ECJ and CFI Extending the Notion of Descriptiveness Even Further Ground for Refusal II: Customariness Ground for Refusal III: Non-Distinctiveness Room for Interpretation in Line with Freedom of Expression Laudatory Signs and Slogans Signs of High Social, Cultural, or Political Value Limitation of the Previous Grounds for Refusal: Acquired Distinctiveness Test and Evidence De Jure (Partial) Exclusion from Acquiring Distinctiveness Grounds for Refusal of Bad Faith and Public Order Bad Faith Public Order and Public Policy The Ground for Revocation for Generic Trademarks Conclusion 227 Chapter 5 Balancing the Scope of Trademark Rights with Freedom of Expression Introduction General Introduction The Freedom of Expression at Stake Outline Balancing by Interpreting the Constitutive Criteria of the Scope The Limitation of Trademark Rights to Use in the Course of Trade Jurisprudence of the ECJ United Kingdom Trade Marks Act The German Markengesetz Benelux Convention on Intellectual Property (BVIE) Interim Conclusion 245 xi

9 Identity-Protection and Protection against Confusion Freedom of Commercial Expression and Confusion Use in Relation to Goods and Services under Article 5.1 TMDir Likelihood of Confusion Freedom of Non-Commercial and Mixed Expression Freedom of Non-Commercial and Mixed Expression of Third Parties Interpretative Protection of Expressive Diversity Interim Conclusion The Protection of Distinctive Character and Repute Use in Relation to Similar and Dissimilar Goods and Services Use under the Warenzeichengesetz Use under the Markengesetz Taking Advantage of the Distinctive Character or Repute (Free-Riding) Freedom of Commercial Expression Freedom of Non-Commercial and Mixed Expression Detriment to the Distinctive Character or Repute (Blurring and Tarnishment) Freedom of Commercial Expression Freedom of Non-Commercial and Mixed Expression Article 5.5 TMDir and the Benelux Experience Interim Conclusion Balancing under the Limitations to the Scope Rejection of an Alternative Means of Expression or Necessity Test The Necessity Test for Referential Use and Due Cause 284 xii

10 Article 10.2 ECHR Freedom of Commercial Expression Freedom of Non-Commercial and Mixed Expression Interim Conclusion Balancing with Freedom of Commercial Expression Confusion Descriptive Use Referential Use and Comparative Advertising Taking Unfair Advantage (Free-Riding) Blurring and Generic Use Tarnishment, Discrediting Use, and Denigration Interim Conclusion to Freedom of Commercial Expression Balancing with Freedom of Non-Commercial and Mixed Expression Assessing Commerciality in Mixed Expression Balancing under European Trademark Law A Non-Commercial Use Exception Descriptive Use, Generic Use, and Expressive Diversity (Expressively) Descriptive and Generic Use Expressive Diversity Use of Trademarks in Meaning Making and a Possible Parody Exception Examples of Meaning Making in Art, Parody, and Criticism A Parody Exception for Trademark Law? Balancing Harm with Freedom of Expression Awareness Campaigns The Criticism of Individuals Balancing in Extreme Cases Chilling Effects Conclusion 329 xiii

11 Chapter 6 Summary and Recommendations Summary Recommendations 345 Annex 353 Bibliography 359 Table of Cases 381 xiv