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Copyright in trade marks: are there problems?
On 17 November, I wrote on this weblog:
From time to time I have been asked about the copyright position regarding graphic representations of signs which constitute artwork (sketches, photographs, representations of three-dimensional objects etc) are deposited by Community and trade mark applicants with a granting office. Numerous questions arise in this context. For example,* can it be assumed that the publication of a sign in a register, and subsequently in the text of judicial or quasi-judicial decisions concerning it, is a permitted act regardless of whether the owner of the sign is the owner of the copyright?
* is a use of a sign in the course of lawful comparative advertising implicitly a permitted use of a copyright work if that use does not infringe the trade mark?
* is the use of a sign regarded as a permitted act with regard to its copyright when it is included for illustrative purposes in articles in law journals, trade magazines or newspapers? If readers have any thoughts or experiences on these matters, or know of any jurisprudence on them, they are requested to post them as comments below.
The answer below has been kindly sent to Class 46 by Paula Grønlund and Hanne Weywardt, MAQS Law Firm, Denmark:
A key question whether a trade mark may enjoy copyright protection at all, which is the main discussion in the IP community in Denmark. The general point of view in Denmark is that a trade mark, having been created to serve as a business characteristic for a company's products, cannot enjoy copyright protection. It is the general assumption in Danish law that such ordinary marks do not in general meet the copyright “originality” requirement. However, when it comes to the few marks that do in fact meet the copyright requirements the scene is somewhat unclear.
Traditionally the theory has been that these types of trade marks could be protected under both types of regulations. For now Danish case law is only providing little guidance on the matter. Some Danish law professors (according to Immaterialret, 1. ed. 1. imp., 2008, p. 94 by Jens Schovsbo and Morten Rosenmeier) do however seem to find that the protection under both regulations should not be possible. This is inter alia based on the Dior judgement in Case C-337/95, paragraph 58, which states:
"Having regard to that case-law — there being no need to consider the question whether copyright and trade mark rights may be relied on simultaneously in respect of the same product —, it is sufficient to hold that, in circumstances such as those in point in the main proceedings, the protection conferred by copyright as regards the reproduction of protected works in a reseller's advertising may not, in any event, be broader than that which is conferred on a trade mark owner in the same circumstances.”
The dilemma is of course the unlimited protection one would obtain when being protected under both regulations. This would evidently mean that the trade mark owner could prevent everybody else from using the mark – also when it comes to non-similar goods. Whereas copyright protection is general and extends also to cases where there is no product similarity, trade mark law is limited to competitive relationships.
The situation is however different when it comes to pre-existing works used as trade marks with the permission from the copyright holder. In this situation the copyright will coexist alongside the trade mark. Therefore whenever a person gets the permission to use a work as a trade mark the protection related to the prior work will not be terminated. This will again make the trade mark owner able to prevent everybody else from using the mark - even for non-similar types of goods.
Also it is said to be the case where the trade mark has been “created” by for example an advertising company. In this situation the “creator” will be able to maintain his copyright protection. An interesting case has recently appeared in Denmark concerning the Hermès brand. The very well-known Birkin bag (as well as the Kelly bag) was registered as a trade mark in Denmark and is now protected as a Community trade mark. In a very recent case, the Maritime and Commercial Court in Denmark explicitly stated that the Birkin bag was indeed protected both under the Danish Copyright Act and the Danish Trade Mark Act.
In Denmark neither the Copyright Act nor the Trade Mark Act can forbid the use of a mark or a work protected under the Copyright Act in an article or in a book -- as long as this is done in a good manner and serves a purpose. This of course does not include a commercial use of the sign or work.
To the question on the comparative advertising – the amount of case law on the area is limited. A concern in this regard could however be the “droit moral” protection you enjoy in the situation, as stated above, where the mark has been created from a pre-existing work or where the mark somehow has been created by e.g. an advertising company. How far this protection goes is difficult to say. However, our opinion is that the comparative advertisement would be permitted as long as the use is done in a good manner - as stated in the Marketing Act as well as the Trade Mark Act.
Posted by: Blog Administrator @ 21.33Tags: copyright in signs,
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03 December 2010 @ 08.05
Surely, under UK copyright law, the Catnic principle will apply to agraphic (or musical or literary) work that corresponds to a trade mark. The question whether there is copyright in a trade mark is conceptually erroneous. The trade mark must be considered as seomething separate from the copyruight work. Copyright protects the work, and whether the work is used as a trade mark is irrelevant (save for the possible application of some exception as mentioned above). I know of no copyright law that includes trade marks as a type of copyright work!
