Robustness Check: Evaluating and Strengthening Artistic Use Defences in EU Trademark Law
International Review of Intellectual Property and Competition Law (IIC) 53 (2022), Forthcoming
35 Pages Posted: 12 Apr 2022
Date Written: March 15, 2022
EU trademark law fails to provide for robust gatekeeper requirements that render infringement claims against use in artistic contexts futile from the outset. Under the aegis of the CJEU, the general requirements of use “in the course of trade” and “in relation to goods or services” have lost their potential to prevent trademark owners from establishing prima facie infringement. The regulation of artistic use differs markedly from the situation in the area of comparative advertising where the 2015 trademark law reform led to the adoption of a new rule that shields advertisers complying with the requirements set forth in the Directive on Misleading and Comparative Advertising against trademark infringement claims.
In the absence of a comparable rule for artistic use, artists can only invoke defences for referential, descriptive and non-infringing use to justify the use of trademarks in their creative work. This imbalance in the treatment of commercial expression on the one hand, and artistic expression on the other, is further enhanced by the additional requirement to ensure compliance with honest practices in industrial and commercial matters. The honest practices test subordinates artistic creativity to behavioural standards in the field of industry and commerce. It poses a threat to art autonomy. The CJEU enhances this risk by replicating standard confusion and dilution criteria in the honest practices analysis.
To offer sufficient room for freedom of expression and freedom of the arts, it is indispensable against this background to change the configuration of the EU limitation infrastructure for artistic use. As a way out of the dilemma, it is advisable to introduce a legal presumption of fair use which the trademark owner can only overcome by showing that the artistic use explicitly causes confusion or deliberately blurs, tarnishes or takes unfair advantage of the distinctive character or repute of a trademark with a reputation.
Keywords: trademark law, European Union, freedom of expression, freedom of art, fairness, honest practices, descriptive use, non-distinctive use, referential use, use as a mark, NFT artworks, upcycling
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