One of the most topical issues in European trademark law is the protection of the freedom of expression. There is an established case-law of the Court of Justice of the European Union (CJEU) according to which trademark protection extends also to such uses of the trademark which go beyond its function of guaranteeing the origin and quality of goods. A key issue that arises with that regard is the balancing, on the one hand, of the freedom of expression, which lies in the public interest, with the private interest of trademark owners, on the other hand.
This is especially relevant in the context of the recent evolution of the socio-economic role of brands (protected by law as trademarks), which are increasingly viewed as marketing channels and investment assets, and not only as means of guaranteeing the origin and quality of goods to clients. These extended functions of trademarks have a direct impact upon the extent of legal protection granted to owners of trademarks and, as a consequence, impact upon the freedom of expression of third parties wishing to refer to a trademark without the proprietor’s consent.
The recent Commission proposal for a trademark reform package did not address trademark-related concerns regarding the freedom of expression. In contrast, the EP Committee on Legal Affairs’ report proposes to include an explicit derogation from trademark protection in order to allow their use by third parties for purposes of parody, artistic expression, criticism or comment.
This EPRS Navigator presents a selection of information sources on the intersection of European trademark law and the freedom of expression in the context of the forthcoming reform of the EU trademark regulation and trademark directive.
Legislation in force
Legislation in preparation
Current situation of the trademark law reform
The Commission trademark reform package, based on a Study on the Overall Functioning of the European Trade Mark System: Background, Findings, Proposals, prepared by the Max Planck Institute, has been accompanied by an impact assessment. According to the impact assesment, the main problems of the existing regulation are the heterogeneity of the business environment in the tradmark field, the lack of procedural aspects in the Trademark Directive, the optional character of some provisions of that Directive and the insufficient level of cooperation between national trademarks offices. The Ex-Ante Impact Assessment Unit (now part of EPRS Directorate C) prepared an initial appraisalof the Commission’s impact assessment in July 2013. The appraisal identified certain methodological weaknesses of the impact assessment, although it concluded that it is consistent with the legislative proposals that it caccompanies.
In the report adopted by the Committee on Legal Affairs (rapporteur Cecilia Wikström, ALDE/Sweden) several amendments have been proposed, encompassing inter alia an explicit rule regarding the conditions of the use of a trademark by a third party which is not an infringement of trademark owner rights. This would cover both use in a commercial context (e.g. comparative advertising, putting forward a legitimate alternative to the goods or services of the proprietor of the trademark), as well as use strictly connected to the freedom of expression (use for purposes of parody, artistic expression, criticism or comment).
The Commission reform proposal was debated in Council on 26 May 2014 and is now awaiting a Council 1st reading.
Council of the EU
EU Human Rights Guidelines on Freedom of Expression Online and Offline / Council of the European Union May 2014.
In this document the Council of the European Union defines the EU position toward the freedom of expression and expresses its commitment to respecting, protecting and promoting the freedom of expression within its borders. In practice it means that the EU recognises that the freedom of expression can be limited by law only in certain, strictly defined ways and under specific circumstances. Conclusively, any of such restrictions must pass the three-prong cumulative test described in the guideline. Therefore, this guideline provides an interpretative tool also for trademark disputes where an aspect of freedom of speech infringement is involved.
Case law of the Court of Justice of the EU
– Gillette v. LA-Laboratories (CJEU Third Chamber, Case C-228/03, 17. 3. 2005)
Gillette is an owner of trademark on razors and LA-Laboratories sells replaceable blades compatible with Gillette razors using the Gillette trademark for advertising. The Court decided that the condition of ‘honest use’ constitutes a duty to act fairly in relation to the legitimate interests of the trade mark owner. It means that if one sells accessories or spare parts for goods protected by a trademark one may use this trademark whenever it is necessary to indicate the intended purpose of accessories or spare parts.
– L’Oréal v. Bellure (CJEU First Chamber, Case C-487/07, 18. 7. 2009)
L’Oréal owns some well-known trademarks for perfumes and other fragrance products and Bellure markets smell-alikes of these fine fragrances. The CJEU asserted that each use of a trademark with reputation by a third party – which was liable to affect this trademark – created an advantage taken unfairly in order to ‘ride on the coat-tails’ of the mark with a reputation, even if this was not capable of jeopardising the essential function of the mark. In other words, the CJEU stated that when one sells a fragrance in a bottle imitating another company’s bottle (protected by a trademark with reputation) and in addition one explicitly states that one’s fragrance is a cheaper imitation of the more expensive one, then such a person will ‘ride on the coat-tails’ of the reputed trademark and consequently will be deemed to have infringed it.
– Google France and Google Inc. v. Louis Vuitton (CJEU Grand Chamber, C-236/08 to C-238/08, 23. 3. 2010)
Google operates an internet search engine and offers a paid referencing service called ‘AdWords’ as a form of paid advertisement. Vuitton sued Google because of the infringement of its trade marks by offering keywords which correspond to Vuitton’s trade marks in connection with expressions indicating imitation (e.g. ‘imitation’ and ‘copy’). The CJEU stated that the owner of a trademark is (in certain circumstances) entitled to prohibit an advertiser from using a keyword identical with a trade mark.
– BergSpechte v. Trekking (CJEU First Chamber, C‑278/08, 25. 3. 2010)
In this case, BergSpechte is the proprietor of the trademark for clothing, travel arrangement and sporting activities, whilst trekking.at Reisen organises sporting activities. BergSpechte sued trekking.at because of the use of its trademark as a keyword in an internet referencing service. The CJEU decision was similar to the Google France and Google Inc. v. Louis Vuitton decision – which means that an advertiser as a third party cannot use a trademark in keyword advertising.
– Portakabin Ltd, Portakabin BV v. Primakabin BV(CJEU First Chamber, C‑558/08, 8. 7. 2010)
Portakabin Ltd manufactures and supplies mobile buildings and Primakabin sells and leases new and second-hand mobile buildings. Portakabin brought an action against Primakabin because of the infringement of its trademark by keyword advertising through Google’s “Ad Words” service. The CJEU decided that the national court must assess whether or not the ad gives the impression that the reseller and the trade mark proprietor are economically linked, or that the ad can have a detrimental effect on the reputation of the trademark.
– L’Oréal v. eBay (CJEU Grand Chamber, C‑324/09, 12. 7. 2011)
L’Oréal is a manufacturer and supplier of perfumes, cosmetics and hair-care products, eBay operates an electronic marketplace advertising some of the products using search engine operators such as Google. L’Oréal brought actions against eBay because of infringement of its trademarks. In its ruling, the CJEU decided that the national courts must order the operator of an online marketplace to prevent the infringements of trademark rights.
– Interflora v. Marks & Spencer (CJEU First Chamber, C-323/09, 22. 9. 2011)
Interflora Inc., operates a worldwide flower-delivery network, M & S retails a wide range of goods and supplies services including delivery of flowers. M & S used the Interflora trademark in the keyword advertising. The CJEU decided that the trademark law protects the trade mark proprietor against any adverse effect on any of the functions of the mark.
The International Association for the Protection of Intellectual Property(AIPPI) adopted a Resolution on Conflicts between trademark protection and free speech (for the Meeting of the Executive Committee held in Berlin in September 2005) in order to explore to how such conflicts are and can been resolved. AIPPI directed a set of questions to its member states, out of which Question no. 188 (Q188) addressed the issue of conflicts between trademark protection and the freedom of expression. 33 states submitted their reports (for an overview see the AIPPI Summary Report).
Report Q188, in the name of the German Group, Conflicts between trademark protection and freedom of expression
The German working group stated that German trademark law does not include any express provision on the interrelationship between trademarks and the freedom of expression. Nevertheless, in cases assessing the above-mentioned conflict several limitations are taken into account, such as the intention of the person using the mark, the the importance of the topic addressed by that person and the form of the expression.
Report Q188, in the name of the United Kingdom Group, Conflicts between trademark protection and freedom of expression
The United Kingdom working group informed that despite the lack of express protection of criticism, parody, satire, irony or artist’s use of a trademark is usually evaluated as lawful. The authors state that in consequence, there is not a very developed body of case law concerning free speech aspect in trademark law disputes.
Report Q188, in the name of the Italian Group, Conflicts between trademark protection and freedom of expression
The Italian working group has declared that their trademark law does not contain specific regulations of conflicts between the right to freedom of speech and trademark law but on the other hand, it is clear that the trademark right does not allow its holder to prohibit non-commercial uses and non–confusing uses of its trademark. There is a rich body of Italian case-law addressing the topic, according to which use of a third party’s trademark for the purposes of critique is lawful, the parodic or ironic use of such a trademark is usually unlawful, the use of third party’s trademark in original works is usually lawful, the use of such a trademark as an expression of allegiance or loyalty is usually unlawful and, finally, the use of another’s trademark in making a comparison between different companies is normally lawful.
Report Q188, in the name of the Czech Group, Conflicts between trademark protection and freedom of expression
The Czech working group concluded that the Czech Trademark law does not regulate the conflict between trademark rights and freedom of speech and that also any practical experience, case law or academic opinions on this issue are absent in the Czech context.
Council of Europe
Comments relating to freedom of expression and freedom of association with regard to new generic level domains / Wolfgang Benedek, Joy Liddicoat, Nico van Eijk. Council of Europe, October 2012.
In subchapter 4.4 of this document, the authors briefly describe how the ECtHR has addressed the conflict between trademarks and the right to freedom of expression both inside and outside the domain name context.
Research and stakeholders
Human Rights and Intellectual Property: From Concepts to Practice /Centre d’Études Internationales de la Propriété Intellectuelle, April 2013.
This web page includes the contributions presented during the Congress of the European Intellectual Property Institutes Network (EIPIN) in April 2013.
Trademarks Function, Don’t They? CJEU Jurisprudence and Unfair Competition Principles /Annette Kur. Max Planck Institute for Innovation & Competition Research Paper, 2014, nr 14-05, 24 pp.
The author analyses controversies in trade mark law and policy based on the case law of the Court of Justice (CJEU) concerning the functions of a trade mark. In particular, the author states that the risk of infringement of trademark rights must be appraised in relation to free and efficient competition and in the light of other potential countervailing values such as free speech. Finally, she stipulates that the current EU trademark protection system needs a more comprehensive evaluation scheme which would be based on general principles such as equity and fairness.
Marques 2013: the clash between trademarks and free speech /World Intellectual property review, September 2013.
Comments on the Proposed Revisions to the EU Community Trade Mark Regulation and Trade Marks Directive / International Trademark Association, June 2013.
Resolution on Protection against the dilution of a trademark / The International Association for the Protection of Intellectual Property, October 2010.
Resolution on Relevant public for determining the degree of recognition of famous marks, well-known marks and marks with reputation / The International Association for the Protection of Intellectual Property, September 2013.
Trademark protection and freedom of expression: an inquiry into the conflict between trademark rights and freedom of expression under European law / Wolfgang Sakulin. Kluwer Law International, 2011. 403 p.
This monograph gives a detailed overview of the intersection between trademark protection and freedom of expression in the European context. The author shows that protection of the freedom of expression enshrined in the European Convention on Human Rights and Fundamental Freedoms may be the source of an effective protection of the rights of third parties using trademarks.
Adapting EU trademark law to new technologies: back to basics / Martin Senftleben. In: Constructing European intellectual property—achievements and new perspectives, ed. C. Geiger, Edward Elgar, Cheltenham, 2013, pp. 137-176.
The author of this paper questions the expanded scope of trademark protection in the EU by stressing the lack of arguments dealing with the overall welfare of society and public interest in the current EU trademark law.
Mechanisms for Limiting Trade Mark Rights to Further Competition and Free Speech (subscription needed) / Lisa P. Ramsey and Jens Schovsbo. In: International Review of Intellectual Property and Competition Law, 2013, vol. 6, pp. 671-700.
In this article the authors make a comparison of the EU and US limitations of trademark rights for purposes of promoting competition, protecting free speech, and furthering other public interests. They also make suggestions regarding the reform of trademark law both on national and the EU level
Trademarks and free speech (subscription needed) /Ilanah Simon Fhima. In: International Review of Intellectual Property and Competition Law, 2013, vol. 3, pp. 293-321.
This paper considers the relationship between free speech and trademark law from a European perspective. The author reviews and examines cases focusing balancing free speech with trade mark law and concludes that there is only a small genuine impact of this approach on European trade mark law.
Allegro without Vivaldi: Trademark Protection, Freedom of Speech, and Constitutional Balancing / Wojciech Sadurski. In: European Constitutional Law Review, 2012. vol. 8, pp. 456-492.
In his study, Wojciech Sadurski focuses on general normative (moral) aspects of trademark law/freedom of speech dilemma. He explains that in a conflict between fundamental values of freedom of speech and claims based on trademark rights the interests in freedom of speech should prevail..
The Confusion trap: rethinking parody in trademark law / David A. Simon. Washington Law Review, 2013. vol. 3, pp. 1021-2013.
This paper deals with the parody as one of the most common intersections between trademark law and freedom of speech. In his detailed analysis, Simon comprehensively explains the legal doctrine of parody, then he asserts practical similarities of copyright law and trademark law in matter of parody and finally he introduces new methodology of identification and legal protection of parody. In conclusion, he proposes that we should move away from confusion or supplement the confusion analysis to provide more space for parodic uses. Specifically, he proposes using a presumption that parody and satire are protected expressions and that courts should determine whether the parody of a trademark is likely to confuse (in infringement cases) or whether parodies may be qualified as “non-commercial uses” (in dilution cases).
Brand value / Economist.com, May 2013.
The aim of this article is to analyse the characteristics of brand protection for a non-specialist audience.
L’Oreal victory over protecting brands raises questions on free trade / The Guardian, May 2010.
In this article, the L’Oréal case is briefly introduced and a general trademark protection is described.
More EPRS information
Community trade mark reform / Samuel Monaco, Helmut Masson, Rafał Mańko. European Parliamentary Research Service keysource, June 2013.
This keysource contains information resources, including stakeholder views, concerningthe forthcoming Community trademark reform.
Trademark law in the European Union: Current legal framework and proposals for reform / Rafał Mańko. European Parliamentary Research Service Briefing, July 2013.
This briefing analyses the changing socio-economic functions of trademarks, presents the existing EU legislation and case-law on the topic, and gives an overview of the Commission reform proposal.
Trademark reform package / Rafał Mańko. European Parliamentary Research Service Briefing, February 2014.
This short briefing presents the situation of the legislative proceedings concerning the trademark reform package (as of February 2014), with particular emphasis on the report adopted by the EP Committee for Legal Affairs in January 2014.